Lead counsel Sunday Ndamugoba and legal officer Dakila Alloyce of ABC Attorneys explain how to register patent applications in Tanzania
The Tanzania mainland, Tanganyika, is a separate jurisdiction from Zanzibar as far as the registration of patents is concerned. Due to intellectual property not being a union matter, each constituent member of Tanzania has its own laws regulating registration
An invention is patentable in Tanzania, if it is new, involves an inventive step and is industrially applicable. This is the test for patentability as provided for under Section 8 of the Patent (Registration) Act. These three criteria are further elaborated under the provisions of Sections 9, 10, and 11 of the act, respectively.
Application for the registration of a patent in Tanzania is done through filing Form No P2, which must be accompanied by a patent document in triplicate. ‘Patent document’ refers to the entire contents of a patent description of an invention that form the basis for a patent application. It is comprised of the title of an invention, general description of the invention, the claims, an abstract and a technical drawing (if any).
The request for registration of a patent must also be accompanied by a power of attorney made in favour of the agent who will handle the entire process on behalf of the applicant.
All applications are filed at the Tanzania Patent Office, which is located at the Business Registrations and Licensing Agency. After filing the application, there are a number of steps that the Tanzania Patent Office has to take before a patent can be granted.
Preliminary examination: The sole purpose of this is to determine whether the minimum requirements for obtaining a filing date have been met. These requirements include payment of application fees, and whether the patent document is in the required language.
Formal examination: At this stage, the application will be examined to determine whether it complies with the formal requirements. Here, an in-depth analysis of the application is conducted to see if the application is in order and all the required details as prescribed by the law have been provided.
Novelty search: If the formal requirements have been complied with, it follows that the Tanzania Patent Office will carry out a novelty search and will prepare a novelty search report on the basis of the claims, with due regard to the description and drawings (if any). The Tanzania Patent Office will cause an examination to be carried out as to whether the application appears to comply with the requirement of unity of invention.
Publication: Irrespective of the course of the procedure of grant, when the decision to grant is made, the applicant will be requested to pay the grant and publication fees within three months from date of notification. Upon payment of the grant and publication fees, the Tanzania Patent Office allots the patent registration and publication number, in the sequential order of grant, and shall publish a reference to the grant in the Patents Journal.
Substantive examination: The act empowers the minister responsible for patents, by regulations, to direct that applications for patents relating to a specified technical field should be subjected to an examination as to substance. If in the opinion of the Tanzania Patent Office that the subject matter of an invention for which a patent is sought falls within a technical field covered by the terms of a direction by the minister, examination as to substance will be carried out to establish whether the claimed invention is patentable, or whether it is excluded from the patentability and whether the description and the claims complies with the prescribed requirements.
The grant: Within four months from the date of publication of a reference to the grant, the patent will be granted in a prescribed form of grant that contains, apart from information included in the publication of a reference to the grant, the date of publication of the patent and the address of the inventor and the owner of the patent. The patent is deemed to be granted on the date the Tanzania Patent Office published a reference to the grant. After grant, a patent certificate will be issued in a prescribed form. The grant will be entered in the patents register.
Opposition: After publication of the grant, the file becomes open to the public for inspection upon payment of search fees. Thus, upon inspection one may find that they have a ground for opposition. In such a situation, an opposition can be made by way of filing a request for correction of errors in any document filed with the Tanzania Patent Office. This request can be made by any person within three months after the date of publication in a form of notice of opposition. The notice of opposition must be supported by a statement in duplicate setting out fully the facts on which the opponent relies and the relief is sought.
The Tanzania Patent Office will send a copy of the notice and the statement to the person making the request who, if he or she desires to proceed with his or her request for grant of a patent, he or she must file a counter-statement in duplicate within three months from the date of receiving a notice of opposition.
After receiving the counter-statement, the Tanzania Patent Office will give such directions as it may think fit with regard to the subsequent proceedings.
Applications for reconsideration and appeals: If the applicant is dissatisfied with the decision of the registrar, the applicant may either apply for reconsideration or appeal. A request for reconsideration of the decision may be filed at the patent office, whereas the appeal goes to the High Court against the decision of the patent office, which fixes a filing date, rejects the application, and treats the application as if it had not been filed, considers any of the claims to be withdrawn or refuses to grant a patent. With respect to plant varieties, an appeal shall lie to the appeals board from the decisions of the registrar.
From filing an application to grant of patent, the process may take up to four months, if all is in order. Furthermore, annual fees are due for the maintenance of patent protection, both in respect of a published application and for a granted patent.
The first payment of annuities becomes due on the date of the publication of the patent application. Further annuities are payable on the anniversaries of the filing date.