Utility Models Registration Process
The main legislation in Tanzania is the Patents Act (Chapter 217 of the Laws of Tanzania). In addition, there are Patents Regulations (Government Notice No. 190 of 1994). Regulation 52 of the Patents Regulations provides among other things that, ‘rules set out in these Regulations apply, mutatis mutandis to utility certificates’. In Zanzibar, the applicable legislation is Zanzibar Industrial Property Act, 2008 and the Industrial Property Regulations, 2014. Tanzania is also a party to the following conventions:
- World Intellectual Property Organization Convention, 1967 (effective for Tanzania as from 30 December 1983);
- Paris Convention (International Union) 1883–1967 (effective for Tanzania as from 16 June 1963);
- Patent Cooperation Treaty (PCT) 1970 (effective for Tanzania as from 14 September 1999);
- Agreement on the Creation of the African Regional Industrial Property Organization, 1979 ((effective for Tanzania as from 12 October 1983);
- The Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) (effective for Tanzania as from 01 September 1999); and
- Agreement on Trade Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization), 1994.
ARIPO definition of utility models applies in Tanzania. ARIPO defines utility model as any form, configuration or disposition of elements of some appliance, working tools and implements as articles of everyday use, electrical and electronic circuitry of other object or part thereof in so far as they are capable of contributing some benefit or new effect of saving in time, energy, or labour or improving the hygienic or sociophysiological working conditions by means of new configuration, arrangement or device or a combination thereof and are industrially applicable. Under local legislation a utility model is known as a utility certificate. The duration of protection is seven years from the date of filing the application, subject to the payment of annual fees; no extension.
Only one article is registrable in one application. For processes, powders or liquids, or chemical compositions, pharmaceuticals or foodstuffs, utility model registration cannot be obtained. There is no protection for utility models if the use of which is contrary to law or public morality. Utility model must not form part of the state of the art, that is to say, not made available to the public by means of a written description anywhere in the world or by public use in Tanzania before the filing or priority date. Utility model must also not form part of the state of the art in patent and utility model applications filed in Tanzania having an earlier priority date as well as ARIPO patent and utility model applications and international patent and utility model applications filed under the PCT and designating Tanzania having an earlier priority date, provided the national phase of such applications in Tanzania has been properly entered into (and a Tanzania translation of the international application has been filed in due form and time).
The entire contents of earlier applications as referred to are of relevancy and not only the claims. The contents of earlier applications are considered when determining novelty, and not when determining whether the invention involves an inventive step. The following are not a bar to novelty:
- (a ) written description or public use within six months prior to the filing or priority date by or with the consent of the applicant or his predecessor in title; and
- written description or public use within six months prior to the filing or priority date due to an evident abuse of the rights of the applicant or his predecessor in title.
The requirements for filing an application are generally the same as in the case of patents. The specification must be sufficiently clear as to enable a person skilled in the art to execute the subject matter of the utility model on the basis of the specifications and drawings. At the end of the specification, one or more claims must be given defining, with reference to specification and drawings, the scope of protection applied for.
After the formal examination, the Patent Office will examine whether the subject matter of the application is a utility model, whether it is susceptible of industrial application, whether it is not contrary to law or public morality, whether the requirement of unity of invention is met, and whether the model is entitled to the right of priority claimed, if any. There is no examination as to novelty or substance (novelty and substance will only be examined in nullification proceedings based on lack of novelty or lack of inventive step). Revision of the decisions of the Patent Office is possible as in the case of patents (see the section on Patents). In the case of a utility model the specification is not printed. After publication of the grant any person may inspect the file of the application on payment of the required fee.
If an applicant has filed a patent application for a certain subject matter he may file a utility model application relating to the same subject matter claiming the filing and priority dates of the earlier patent application during the examination of the patent application until the date the decision on the grant of the patent becomes final or before notification of rejection by the Patent Office. The priority from the earlier patent application is to be claimed on filing the utility model application, in the request for grant of protection, indicating the serial number, filing date and the priority date of the original patent application; documents evidencing the derivation must accompany the application.