Utility Models Regional Protection
The regional system for registration of utility models that applies to Tanzania and Zanzibar is African Region Intellectual Property Organization (‘ARIPO’). Starting from 01 September 1999, when Tanzania signed the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982, ARIPO utility model applications may be filed. A utility model granted by virtue of the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982 in respect of which United Republic of Tanzania is a designated state, the grant have the same effect in Tanzania and Zanzibar as a if a utility model was granted under the local patent legislation. If the Patent Office communicates to ARIPO office indicating its objection to grant of utility model, the grant by ARIPO has no effect in the United Republic of Tanzania until a decision is made in accordance with the provisions of the Harare Protocol.
Applications for registration of utility models are filed directly with the ARIPO Office or local Patent Office as a ‘Receiving Office’. Representation is not mandatory for applicants whose ordinary residence or principal place of business is in a contracting state of filing. It is however mandatory for applicants whose ordinary residence or principal place of business is not situate in a contracting state or host country of ARIPO. Where an applicant is represented he must be represented by an authorized representative. The representative must be an attorney or legal practitioner who has the right to represent applicants before the Industrial Property Office of a contracting state. The list of practitioners authorized to represent applicants is available at ARIPO and contracting states. It is regularly updated.
There is a pre-registration examination for utility models. This is conducted in three stages. The first stage involves examination to determine whether the application meets the formalities requirements. These formalities requirements are provided in the request form. They include:
- The title of the invention
- Identity of the applicants and inventors
- Designation of States
- Payments of fees
- Identity of the representative
- Prior disclosures
- Priority declarations
Furthermore, the formalities examination is done to ensure presence of documents in support of annotations made on the request form. These documents are submitted either on filing or within three months from the date of filing. These documents may include:-
- The description of the invention
- The power of attorney
- Deed of assignment
- Priority document
- The undertaking to pay
The second stage involves substantive examination. The substantive examination is carried out to determine whether the utility model is industrially applicable and secondly, to establish whether it is new. Novelty in this case is the local novelty in a designated state. On completion of the second stage, the application is forwarded to designated states.
The third stage involves examination by a designated state for novelty and for conformity with the national laws. This examination or verification must be completed within six months from the date of notification by ARIPO. The findings of the examination or verification are made in writing and must be to the effect that the utility model is not registrable under the provisions of the Protocol, or because of the nature of the utility model, such a utility model cannot be registered or has no effect under the national law of that state i.e. for lack of novelty, non-protectable subject matter etc. A designated state need not make any communication if it considers a utility model registrable in its territory.
On expiration of six months period from the date of notification to designated states of the examination report, ARIPO registers the utility model on behalf of all the states where the utility model is eligible for registration. Publication and registration entails recordal of the utility model in the Journal and the Register. It also entails issuance of a Certificate and Publication of a copy of the specification.
Any person who has duly filed a utility model application or his successor in title will enjoy, for the purposes of filing in the other countries, a right of priority within a prescribed period. For the purposes of novelty and priority disclosures, utility model applications cannot be refused on grounds that the invention has been exhibited at an officially recognized exhibition before the date of filing. This exception will only apply if the exhibition occurred not more than six months before the date of filing. A Board of Appeal established under section 4 of the Protocol is entrusted to consider and decide on any appeal lodged by the applicants. The decision of the Board is final.
The application for a utility model must at least contain identify of the applicant, a description of the utility model, a claim or claims, a drawing or drawings or a model, and an abstract. The application must also designate the contracting states for which the utility model is requested to be registered and is subject to payment of the prescribed fees.
Documents presented must be capable of direct reproduction by photography, electrostatic processes, photo-offset and micro-filming and should be in the manner prescribed. A flexible, white, smooth and durable A4 paper should be used. The sheet margins on the sides, top and bottom margined should be as prescribed.
Each utility model application is subjected to substantive examination for compliance with substantive examination requirements. Generally, the protection for utility models is available for utility models which are new and industrial applicable. Prior to registration, each designated state must be accorded the opportunity to give an opinion relating to registration in its territory of the utility model. The grounds for refusal of registration could be that the utility is not registrable under the provisions of the Protocol, or that, because of the nature of the utility model, such utility model cannot be registered or has no effect under the national law of that state. Each designated state is required to carry an examination to ascertain whether the utility model is new in the territory of the state designated.
Application which have been refused can, on request by the Applicant be converted into national applications. A patent application can also be converted into a utility model application or vice versa on request and such a converted application can benefit from priority date for filing of the initial application. Provided annuities are paid, the registration of a utility model affected by ARIPO Office is in each designated state have the same effects as a registration effected or otherwise in force under the applicable national law but not beyond the maximum duration provided for under the said law. As regard to compulsory licenses forfeited or the use of utility models in the public interest, the applicable national laws also apply.
In an international application filed under the PCT designating Tanzania, the registration of a utility model in Tanzania can be applied for; for further details see the section on Patents. A utility model application may relate to one utility model only. Divisional applications may be filed as in the case of a patent application.