NATIONAL PATENT SYSTEMS AND CAPACITY BUILDING …

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NATIONAL PATENT SYSTEMS AND CAPACITY BUILDING-CHALLENGES AND OPPORTUNITIES

SEPTEMBER 12th -15th 2017Presented by: Stanley Atsali*

The Case Of [email protected]

*[These are views of a patent examiner, and does not represent the official position of the Government of Kenya]

Core module 1 Protect your ideas 3/43

OUT LINE

1. Constitutional provisions on protection of intellectual property rights, identified gapsand emerging issues in relation to Genetic Resources, Traditional Knowledge and need for Patent Disclosure Requirement

2. National, ARIPO, PCT applications and emerging challenges

3. Patenting living matter(IPA section 29 and Regulations 11)

4. Way Forward

Constitutional provisions on protection of IPRs

• Specific provisions for protection of intellectual property rights are in Articles 40(5), 11 and 69.

• Article 40 (5) requires the state to support, promote and protect the intellectual property rights of the people of Kenya while Article 11 recognizes culture as the foundation of the nation and as the cumulative civilization of the Kenyan

Article 11. of the Constitution

Obligates the state to :(a) promote all forms of national and cultural

expression through literature, the arts, traditionalcelebrations, science, communication, information,mass media, publications, libraries and othercultural heritage;

(b) recognize the role of science and indigenoustechnologies in the development of the nation; and

(c) promote the intellectual property rights of thepeople of Kenya.


Article 11……..

Obligated parliament to enact a legislation to:(a) ensure that communities receive

compensation or royalties for the use oftheir cultures and cultural heritage; and

(b) recognize and protect the ownership ofindigenous seeds and plant varieties, theirgenetic and diverse characteristics and theiruse by the communities of Kenya.


TK and TCEs Act of 2016

• This is an ACT of Parliament to provide a framework for the protection and promotion of traditional knowledge and cultural expressions and to give effect to Articles 11, 40 and 69(1) (c) of the Constitution; and for connected purposes. In this Act:


• In sections 26 (1) , the Act stipulates that an authorization granted to access protected traditional knowledge associated with genetic resources shall not be an authorization to access the associated genetic resources, and defines genetic resources as microorganisms, plant and animal material including indigenous seeds, genetic plant varieties and traditional animal breeds.

Article 69 of the ConstitutionObligates the state to:• Ensure sustainable exploitation, utilization,

management and conservation of the environmentand natural resources, and ensure the equitablesharing of the accruing benefits;

Q 1.[Could sections 26 (1) of the TK and TCEs Act of2016 be an opportunity for Patent DisclosureRequirement ? PDR - TRIPS 29 biss].

• Protect and enhance intellectual property in, andindigenous knowledge of, biodiversity and thegenetic resources of the communities.

Q 2.[How can we define genetic resources? Could itbe Animals, plants and micro-organisms?].


GAP.

• Intellectual Property Rights institutions in Kenya are KIPI for industrial property, Ke.COBO for copyrights and related rights and KEPHIS for plant breeders rights.

• Q3. If animals are genetic resources just like plants and micro-organisms, could this be an opportunity for developing a regime for Animal breeders rights per provisions of Article 69 of the constitution?


Paris Convention -Article 1(3)

Stipulates that industrial property shall be understood in the broadest sense, and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.

• Microorganisms, also known as biological material,can be protected by patents or utility models (seeIndustrial Property Act section 29 and regulation11, where KALRO and KEMRI are the designatednational depositories, while Indigenous seeds andplant varieties are protected by KEPHIS.

• However, there is no IP regime for protection ofTraditional Animal Breeds.


NATIONAL, ARIPO and PCT PATENT APPLICATIONS

• KIPI is a substantive examining office and administers industrial property rights comprising patents, industrial designs and utility models,(IPA Act of 2001) and the trademarks by Trademarks Act, Cap 506, and has a role in the implementation of the Traditional Knowledge and Traditional Cultural Expressions Act of 2016.

• It’s a receiving office for ARIPO and PCT applications

Challenges : National, ARIPO and PCT System

• Patency-it takes an average of ten years tocommercialize a pharmaceutical patent application.There is need for patent examining territories/countriesto recruit, train and retain patent examiners

• Maintenance- Example of maintenance of Nationaland ARIPO designated PCT patents and applications.

• Q 4. Could this be an opportunity for individualmaintenance fee for Kenya?


National, ARIPO and PCT System…

• IPA Act of 2001 has provisions for patenting living matter relating to microbiological processes, so long a culture of the concerned microorganism is deposited with either KALRO or KEMRI that are designated national depositories.


Challenges from the constitutional provisions

• There is need for capacity building of communities and TK and TCEs regulatory agencies for domestication of the Patent Disclosure Requirement ( for ABS) and recognised TK repositories and a restricted database at the counties and at the national level.(Kenya-Implementation of the TK and TCEs Act of 2016 )


Challenges for National, ARIPO and PCT patent applications

• There is need for national and ARIPO recognized depositaries for execution of biotechnological and biological based patent applications .

• Q 5. Could this be an opportunity for accenting to the Budapest treaty on deposit of micro-organisms for patent examination purposes ?


WAY FORWARD

There is need for capacity building of communities and TK and TCEs regulatory agencies for domestication of the Patent Disclosure Requirement ( for ABS) and recognized TK repositories and a restricted database at the counties and at the national level.(Kenya-Implementation of the TK and TCEs Act of 2016 )

[END OF DOCUMENT]THANS FOR LISTENING TO ME

19

Overview on Patent Reformsin South Africa

Mr Trod Lehong14 September 2017

Adams & Adams

National IP Policy

→ There are a number of government departments that are insomeway responsible for the registration of IP rights.

→ No overarching IP policy to prescribe how IP should bemanaged in South Africa.

→ Draft National IP policy was approved by Cabinet in 2013.

→ The Draft National IP policy was heavily criticized for beingincoherent, inconsistent and impractical.

→ The IP Consultative Framework was approved by Cabinet inJuly 2016 as a basis for the development of the National IPPolicy.

National IP Policy cont.

→ The IP Consultative Framework adopted a consultativeapproach to developing a National IP Policy.

• Formation of an Inter-Ministerial Committee on IP.

• Broader consultation with both local and internationalstakeholders (WIPO, WHO, UNDP, RSA Law firms,industry, government departments).

• Phased approach to dealing with IP issues, i.e. shortterm and long term objectives.

• Draft IP Policy was approved by Cabinet on 3 August2017.

National IP Policy cont.

→ The IP Policy in its broadest sense looks to address thefollowing short term issues:

• Local manufacture and export in line with industrialpolicy,

• Patents – substantive search and examination,• Patent opposition,• Patentability criteria,• Disclosure requirements,• Parallel importation,• Exceptions,• Compulsory licenses,• IP & competition law.

Filing Stats

→ South Africa receives on average

nine thousand (9000) applications

a year;

→ 10% are local applications (first

filings);

→ about 75% are national phase or

foreign applications (second

filings) and

→ about 15% are patent applications

originating from South Africa, filed

abroad.

→ Electronically and/or manually

→ Inefficient workflows

→ Duplication of work

Depository System

→ Section 34 of the Patents Act Provides as follows:

“The registrar shall examine in the prescribed manner every application for a patent and every complete specification accompanying such application or lodged at the patent office, in pursuance of such application and if it complies with the requirements of this

Act, the application, he shall accept it.”

→ Regulation 41 of the Patents Act Provides as follows:

“The registrar shall examine the application accompanied by a complete specification in order to ensure that it complies with the prescribed formalities.”

Depository System cont.

→ Section 25 of the Patent Act stipulates for what a patent "shall not begranted" and lists a number of things which are not considered to bean invention.

→ The Patents Act does not however provide a mechanism for rejectingan application that is not an invention, or an application that does notmeet the requirements for patentability on the merits e.g.insufficiency of the content of the description and claims, matteroutside of the patentable scope, lack of novelty; lack of inventivestep or industrial applicability.

→ The filtering function is transferred to Courts which cause delays andis costly to the applicant.

Substantive Search & Examination

→ Applications are examined as to formalities and substantively todetermine if the requirements for patentability have been met.

→ Substantive Search and Examination provides some level of certaintyand brings the function that is currently performed by the Courts in-house.

→ There is provision for opposition systems to ensure that quality patentsare granted by the Patent Office.

→ Third party observations

→ Post grant oppositions

→ Pre-grant oppositions

Patent Examiners Recruited

Examiner Highest

Qualification

Expertise

Anathi A. Njokweni PhD Plant Biotechnology

Bheki B. Zulu MSc Physics

Charmain Gazide Honours Chemistry

Denise Le Noury PhD Biochemistry

Enos Khameli BTech Electrical Engineering

Gnineka Mbambisa PhD Chemistry

Hastings H. Cele PhD Physics

Keitumetse Potgieter PhD Plant Biotechnology

Kerileng KM. Molapo PhD Chemistry

Maanda Phosiwa MSc Molecular Biology/Biochemistry

Machele M. Mokgalong Honours Mining

Masisange Mketsu MSc Biochemistry

Mehluli Ncube MSc Physics

Morore Mphahlele PhD Medical Science

Myda Visser Honours Information Technology

Ncedile Madlanga PhD Biotechnology

Thandanani T. Cwele PhD Chemistry

Thobeka Kente PhD Chemistry

→ WIPO academy: Distance Learning courses;

→ Witwatersrand University;

→ South African Institute of Intellectual Property

Law;

→ Japan (sponsored by HIDA/JPO & WIPO, 10

examiners in 2016 and 8 in 2017);

→ Russia (3 examiners – sponsored by

RosPatent);

→ China (2 examiners - sponsored by SIPO);

→ Austria (2 examiners - sponsored by the

Australian Patent Office and WIPO);

→ The UK-IP office spent two weeks training

examiners in Pretoria;

→ The USPTO spent one week training

examiners in Pretoria; and

→ India (3 examiners – sponsored by CIPC and

BRICS).

Training of Examiners

→ Several IP offices (Austria, China, India, Japan, Russia, UK Patentoffice and USPTO) have assisted in the training of the examiners.

→ The examiners have also received training from WIPO, the SouthAfrican Institute of Intellectual Property Law (SAIIPL) through thePatent Board Examination (PEB) and the Witwatersrand University.

→ CIPC has signed a MoU with the European Patent Office (EPO) as astrategic partner to provide training to its examiners on SSE.

→ EPO is regarded as one of the best patent offices in the world, and thedevelopment of our law follows English law, which make the EPO asuitable partner in the training of our examiners.

→ The training of our examiners is scheduled to commence inSeptember 2017, for a period of two years.

Registration Processes

→ We have signed a Memorandum of Understanding (MoU) with theWorld Intellectual Property Organization (WIPO), for a Proof ofConcept (PoC) of the Industrial Property Automation System (IPAS).

→ IPAS Java is an information system designed to streamline theprocessing of trademark, patent and industrial design applications,and later modification of registers, covering most of the operationsside of the work done by an IP.

→ Our intention is to evaluate the effectiveness of IPAS in theautomation of our patent registration processes.

→ The project for the evaluation of IPAS was launched on 25 May 2016.

Technology Fields

→ Table above illustrates some of the important fields to consider in the

recruitment of examiners in capacitating SSE.

Policy Considerations

→ The implementation of SSE will be informed by the IndustrialPolicy Action Plan (IPAP) and the Department of Trade andIndustry (Dti).

→ The Dti through the Inter-Ministerial Committee of IP (IMCIP),will further advise on the key strategic fields in whichapplications for patents will be examined.

→ Clear from discussions at multi-forum discussions that thefocus is on pharmaceutical patents.

→ Government objectives of striking a balance between publichealth and access to medicines and the rights afforded toinventors.

Quantifying Numbers

→ The tables below illustrate the requirements for establishmentof SSE.

Career Progression

→ Judged on completion of work

products i.e. a completed search or

an examination report.

→ Progression determined by a

number of factors such as, the

years of experience, the production

targets, the quality of work,

complexity and other functional

skills acquired by the examiner e.g.

finance, legal services,

management, leadership etc.

Quality Management

→ The work of examiners work must be assessed at all times toensure quality and consistency.

Questions

THANK YOU!!

37

Presentation of the MoroccanPatent System

Major phases of the developement of MoroccanIP system :

-Phase one :

1916 Law

1995 : Morocco became member of WTO

align its law with international standard (TRIPS)

-Phase 2:

creation of OMPIC (Law 13-99 of 9/3/2000)

Public administration (young and modern)

management and financial autonomy

- Phase 3:

18/12/2004 : Law 17-97 entered into force

20/02/2006 : revision of the Law 17-97 following the FTA with USA

- Phase 4:

18/12/2014 : the Law 23-13 which complete and modify the Law 17-97 entered into force

Major phases of the developement of Moroccan IP system :

Evolution of patent applications :

Année 2004 2005 2008 2010 2011 2012 2013 2014 2015 2016Nbre

demandes

561 660 1010 1007 1022 1017 1118 1096 1021 1243

0200400600800

100012001400

2004 2005 2008 2010 2011 2012 2013 2014 2015 2016

Some figures

Evolution of patent applications by type of applicants

2010 2011 2012 2013 2014 2015

Universities 39 38 58 138 158 109

Research centers 1 6 16 25 32 31

Companies 26 32 26 49 36 14

Individuals 86 93 96 103 127 70

166 196315 353

224

853 821 803743 797

1022 10171118 1096

1021

0

200

400

600

800

1000

1200

2011 2012 2013 2014 2015

Evolution of the number of patent applications

Dépot d'origine marocaine dépôt d'origine étrangère dépôt national

2011 2012 2013 2014 201519 28 43 55 59

International patent application within the PCT

19%

10%

12%

10%8%8%

10%

10%7% 5%

International patent application by fields of technology (year 2015)

Pharmaceutique et biotechnologie

Mécanique

Dispositifs de commande

Transport

Electronique & électrique

Autres domaine

Télécommunications

Chimie

Informatique

Instrument

The new Moroccan Patent System

Features of the new system : system with searchreport

-Establishment of search report and patentabilityopinion

-Applicant is given the opportunity to amend hisclaims

-On this basis, the patent is granted or the application is refused

Filing of the patent application Art. 30 and 31

OMPIC

Administrative reviewArt. 32 and 33

THE

PUBL

IC

THE

APPL

ICAN

T

18months

Publication of the patent application and the preliminary search report after expiry of 18

months Art. 44

Notification to applicant

Divisional application Art. 38.1

Preliminary search report and opinion on patentability

(PRROP)Art. 43

Filing amended claims and/or observations by applicant

Art. 43.1

Communicate observations to applicant

Applicant's reply to the third party observations

3mon

ths

Final search report and opinion on patentability

Art. 43.2

Observations by third partiesArt. 14.3

Total or partial rejection of the application

Art. 41

Grant of the Patent Art. 46

Publication of the grantedPatent with final search report

and opinion on patentability

Observations to review the decisionArt. 14.2

20months

22months

2mon

ths

Challenges to implement the new system :

1- capacity building :-Human ressources : recruitement of patent examiners (from 3 on 2008 to 20 on 2016)Training on patent examination with the support of EPO (search techniques and tools, complexe issues…)

-Search tools: Access and active use of EPOQUENET from September2008Access to patent private databases (Derwent of Thomson ; Orbit / Questel)Access to the most important NPL private databases(Elsevier/science direct), via WIPO programs…

2- Practice, Practice and Practice… :-Propose a search report as a paid service for moroccan applicants to evaluate the relevance of their inventions- Systematically preparation of search reports for all regularised applications from residents for internaluse


3- Organisation :- 4 clusters (mechanic and electric (6)/ physics and ICT (5)/ chemistry and biochemistry (3), pharmaceutics (6))- Each examiner is in charge of a set of IPC codes-Validation meeting between the examiners of the same cluster to harmonize the way of doing

we have noticed a significant improvment of the level and the quality of the work done by ourexaminers


4 – Legal framework :

- Signature of validation agreement between Morocco and Europeen Patent Organisation, applicable from march2015 (Morocco recognize the work done by EPO, and do not reexamine applications which take this route)

moroccan patent examiners focus on the examination of national applications and give more support to national innovation

New opportunity provided by the new system:Validation system

4 – Legal framework :

Articles: 50.1 to 50.550.1:a patent application and a patent issued by an IP Office of a State or a community of States, as designated by regulation, hereinafter referred to as the validation Office, shall produce the same effects at the request of the applicant and shall be subject to the same conditions as a patent application or a patent filed with the IP Office, subject to the provisions of Articles which follow below.


Validation states (in force):

-MA Morocco-MD Republic of Moldova


1:international PCTapplications

2:Direct Filing 3:International

applications entering theMoroccan national phase

4:internationalapplications entering theregional European phase

5:Direct Europeanapplications

6:Granted Europeanpatents validated inMorocco


Legal texts:

Law 17/97 as amended and completed by the law 23/13.

Information note on the procedure for the validation of European patents in Morocco.


Protection sans effet dès l’origineArt. 50.4

Annulation du brevet devant OVArt. 50.4

Dépôt de demande de brevet auprès ou désignant l’OV

=Requête de validation au Maroc

Art. 50.2

3 m

ois

OMPIC

Paiement des droits de validation dans les délais.

Art. 50.2

Publication de la demande de brevet + rapport de recherche

LE P

UB

LIC

LE D

EPO

SANT

Organisme de Validation(OV)

Publication par l’OMPIC de la mention de la requête de validation

Art. 50.2

Demande de publication des revendications déposées auprès de l’OV en AR ou FR

Art. 50.3Publication des revendications déposées auprès

de l’OV=

Protection provisoireArt. 50.3

Présentation des revendications du brevet validé en AR ou FR dans le délai+ paiement des

droits exigiblesArt. 50.4

Publication de la mention du brevet validé

Délivrance /publication du brevet par l’OV

Publication par l’OMPIC du brevet validé

Brevet Validé au MarocArt. 50.4

Modification suite à une procédure à

l’OV

OMPIC publie la mention de modification

Other projects :1- Publication Server : http://patent.ompic.ma/- Project conducted with EPO on 2010- Main forces : (regularity, quality, standard format)

data exchange (almost all our patent data is in Espacenet, Epoque, Patenscope)

http://patent.ompic.ma/

Moroccan Patent System

Other projects :2 - IPAS :- Project conducted with WIPO (moderne and flexible tool to manage patent applications workflow)- Better automation of patent procedures

Moroccan Patent SystemOther projects :3 - ArabPat : http://ab.espacenet.com/- ARABPAT is a patent information dissemination platform in Arab countries. - It’s a member of ESPACENET family- It’s a cooperative project between the member countries of the Agadir Agreement (Egypt, Jordan, Morocco and Tunisia), but open to all Arab countries (KSA joined on 2016)- It’s supported by the EPO, the WIPO and the OMPIC.

http://ab.espacenet.com/

Moroccan Patent SystemOther projects :4 – Examination guidelines :- Inspired from EPO guidelines- It’s a cooperative project between the INNORPI and OMPIC with support of EPO

Thank you

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NATIONAL PATENT SYSTEMS AND CAPACITY BUILDING …