The African economy, which is home to more than a billion people, has tripled since the year 2000 (Michael Lalor; 2014) and currently houses 9 of the 15 fastest growing economies in the world (Spoor & Fisher; 2016), presenting immense business opportunities. In this article, we shall take a look at the patenting systems in Africa, which are a complicated mix of National and Regional systems, and the costs involved.
There are two Regional Patent Offices in Africa, which account for approximately 65% of the countries that make up the continent, with most of the other countries having their own national patent legislations.
African Regional Intellectual Property Organization (“ARIPO”)
ARIPO, established in 1976 under the framework of the Lusaka Agreement, is comprised of 19 member states: Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé & Príncipe, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia, and Zimbabwe (ARIPO Annual Report; 2016). Membership to ARIPO, which was originally restricted to only English-speaking African countries, has subsequently opened up to other countries as well, with the organization currently having three such members: Mozambique (Portuguese), São Tomé & Príncipe (Portuguese), and Somalia (Somali and Arabic). Over the last 40 years, ARIPO has played a significant role in shaping the Intellectual Property landscape in Africa.
A confusing, yet interesting aspect of ARIPO is the fact that it is empowered by separate protocols to grant each type of Intellectual Property, with not all the protocols being in force in all the member states. Thus, while the Harare Protocol on Patents and Designs is in force in all the member states, except Somalia, the Banjul Protocol on Marks is in force in only 10 member states. The Arusha Protocol for the Protection of New Varieties of Plants, adopted in July 2015, will “enter into force 12 months after four States have deposited their instruments of ratification or accession” (ARIPO Annual Report; 2016).
Organisation Africaine de la Propriété Intellectuelle (“OAPI”)
OAPI, which also goes by the English name of ‘African Intellectual Property Organization’, is ARIPO’s sister organization that was established a year later (in 1977) under the framework of the Bangui Agreement. Its missions include: protection of industrial property rights; dissemination of technical information; protection of literary and artistic property rights; promoting the economic development of member states; and providing Intellectual Property training (Hamidou Kone; 2012).
OAPI is comprised of 17 member states: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo, and Union of the Comoros (International Trademark Association; 2013). Of these, Guinea-Bissau (Portuguese) and Mauritania (Arabic) are the member states that do not have French as an official language.
Unlike ARIPO, OAPI is empowered by only the Bangui Agreement, which contains ten annexes that deal with: Patents, Utility Models, Trade Marks and Service Marks, Industrial Designs, Trade Names, Geographical Indications, Literary and Artistic Property, Unfair Competition, Topographies of Integrated Circuits, and Plant Varieties (OAPI; accessed July 5, 2017).
The Differences Between ARIPO and OAPI
Four major differences exist between ARIPO and OAPI. First, ARIPO member states have their own Intellectual Property legislations that coexist with the Harare Protocol on Patents and Industrial Designs. OAPI member states, on the other hand, do not have their own Intellectual Property legislations.
Second, ARIPO is a designation-based system; the designation of member states, which is required at the time of filing, has an influence on the total fee that is to be paid. With an OAPI application, no such designations are required.
Third, ARIPO provides flexibility to member states to refuse a patent granted by it in their individual territories (Oraro & Company Advocates; 2015). On the contrary, OAPI member states cannot refuse a patent granted by OAPI.
Last, but not least, while ARIPO conducts substantive examination (deferred system of examination), OAPI does not carry out such examination.
National Patent Systems and South Africa
Apart from the OAPI member states, most African countries have national patent systems in place. National registration is the only method possible in South Africa, the top patent office in Africa, which is neither a member of ARIPO nor a member of OAPI.
The Costs of Patenting in Africa
Let us now study the costs involved in obtaining and maintaining a PCT National Phase patent through to expiry with ARIPO (AP), OAPI (OA), and South Africa (ZA). We shall assume that three countries have been designated in the ARIPO patent application.
The total estimated costs (including attorney charges) that might be incurred by a company over the lifecycle of a 30-page patent (including five pages of drawings) with 16 claims, amount to $5,216 in South Africa, $30,132 in OAPI, and $37,842 in ARIPO (Figure 1). These estimates are based on the values found within the fee schedules supplied by at least five independent Intellectual Property law associates in each jurisdiction and are inclusive of Value Added Tax (added to the attorney charges) in OAPI.
In ARIPO, the estimated costs are spread across the five different stages of the patenting process: Filing ($1,797), Examination ($1,165), Prosecution ($1,060), Grant ($1,830), and Annuities/Renewal Fees/Maintenance Fees ($31,990). In OAPI and South Africa, on the other hand, there is no examination stage (Table 1).
The estimated filing cost in ARIPO is inclusive of a 20% discount on the filing fee for ‘Going Green’ (i.e. electronic filing). OAPI and South Africa do not offer similar Go Green incentives.
While the fees for excess pages (each set of 10 pages beyond 10 pages) and excess claims (beyond 10 claims) in OAPI are to be paid at the time of filing, the same in ARIPO (beyond 10 claims and 30 pages) are payable at the time of grant. These fees in OAPI (including attorney charges) can be quite high and account for approximately a third of the total estimated filing costs for the above-mentioned filing parameters.
The estimated prosecution costs, which are inclusive of the attorney charges for reporting each office action, preparing the response, and processing the response, are based on a single office action in both ARIPO and South Africa, and 1.5 office actions in OAPI.
The estimated annuities or maintenance fees in ARIPO, which are to be paid from the first anniversary of the filing date (in respect of the second year) to the 19th anniversary of the filing date (in respect of the 20th year), constitute approximately 85% of the total estimated costs. When compared to other regional patent organizations, this proportion is unusually high. In the Eurasian Patent Office, the Gulf Cooperation Council Patent Office, and OAPI, annuities constitute only around 60% – 70% of the total estimated costs.
As Africa develops by leaps and bounds and becomes an increasingly favored investment destination, its Intellectual Property systems are expected to come under the spotlight. However, the lack of a single regional patent office makes the process of obtaining patents in Africa an extremely challenging one as applicants have to navigate their way through a bundle of regional and national legislations, each mandating its own set of procedures. Having a precise idea of the stage-wise costs that could be incurred will go a long way in facilitating the development of a patent filing strategy for Africa.