Globally, an owner of intellectual property rights like trademark, patent, industrial designs…etc shall take all the necessary safeguard means of protecting them. The same is true for Ethiopia. Especially these days given the effects business expansion due to globalization, and various developments in communication mechanisms, it seems vital to do so. Today, someone in another country using your patent could be as destructive as someone using it in your own town. So registering your patent at home country only will not save your patent from being vulnerable overseas.
As one alternative, this note will focus on the legal mechanism of protecting your patent rights in Ethiopia. It give you a brief idea about what is patent and patentable, how to patent it, where to get a patent in Ethiopia and other related issues.
What is patent and patentable invention?
The first issue that should be addresses before submitting a certain invention as patent is defining what patent. According to the Ethiopian patent act, i.e. a Proclamation Concerning Inventions, Minor Inventions and Industrial Designs Proclamation No. 123/1995, patent is an invention that is new, involves an inventive step and is industrially applicable, then it will be patentable.
A patent right shall belong to the inventor. But if two or more persons have jointly made an invention the right to the patent shall belong to them jointly.
But in situations where an invention is made in the execution of a contact of service or employment, the patent shall belong to the person having commissioned the work or the employer.
- An invention is patentable if it is new, involves an inventive step and is industrially applicable.
- An invention shall be considered new if it is not anticipated by prior art. Prior art shall consist of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filling or, where appropriate, the priority date, of the application claiming the invention.
- Notwithstanding the provisions of sub-article (2) of this article the disclosure to the public of the invention shall not be taken into consideration if it occurred within 12 months preceding the filing date or, where applicable, tile priority date, of the application, and if it was by reason or in consequence of acts committed by the applicant or his predecessor in title or an abuse committed by a third party with regard to the applicant or his predecessor in title.
- An invention shall be deemed as involving an inventive step if having regard to the prior art relevant to the application and as defined in sub-article (2) herein above, it would not have been obvious to a person having ordinary skill in the art.
- An invention shall be considered as industrially applicable where it can be made or used in handicraft, agriculture, fishery, social services and any other sectors.
The following shall not be patentable:
- Inventions contrary to public order on morality
- Plant or animal varieties or essentially biological processes for the production of plants or animals.
- Schemes, rules or methods for playing games or performing commercial and industrial activities and computer programmes.
- Discoveries, scientific theories and mathematical methods.
Where to get a patent in Ethiopia?
In Ethiopia patents will be granted by the Ethiopian patent office, The Ethiopian Intellectual Property Office, the office entrusted with the powers of registration and protection of Intellectual property rights, including Patents. Accordingly The Ethiopian Intellectual property office, the patent agency in Ethiopia, registers and patents intellectual property.
A person having the right to a patent for an invention may, upon payment of the prescribed fee, apply to the IP office for the grant of a patent for that invention. Such application for a patent, patent application submitted to the patent agency via your patent agent or your patent attorney in Ethiopia shall contain the following.
- A notarized document containing a description of the invention, one or more claims, an abstract and where necessary drawings.( the document has to be translated in to English)
- a notarized and authenticated power of attorney to the Patent agent or patent attorney in Ethiopia
- The completed patent application forms;
- Payment of the prescribed fee.
The Ethiopian Intellectual property office after examining the patent application, will give either a Patent of Invention or a Patent of Introduction to the applicant.
TYPES OF PATENTS
Patent of Invention
This patent is given to a patent applicant where it is either going to be registered in Ethiopia for the first time or if a period of 12 months have not lapsed since it has been registered in other countries.
If an inventor is granted the patent of invention, the invention will be valid for a period of 15 years. But the validity of the patent may be extended for a further five years provided that proof is furnished that the invention is being properly worked in Ethiopia.
Patent of Introduction
This type of patent may be issued to an invention which has been patented abroad and not expired but has not been patented in Ethiopia following a declaration by the intended party for which he takes full responsibility.
The requirements for patent of introduction are the same as those prescribed for the patent of invention. But the applicant for patent of introduction has to indicate the application number, date and origin of the foreign patent or the requisite source of information if he doesn’t know the details.
This patent of introduction, if registered in Ethiopia, may be valid for a period that may extend up to ten years and shall be coupled with the owner’s obligation to prove the working of the invention each year as from the third year after it has been granted and made to pay the relevant annual fees.
The intellectual property office will accord as the filing date, provided that all the requirements are fulfilled, the date of receipt of the patent application.
Then the intellectual property office will conduct a formal and substantive examination of the application. If a given patent application passes both the formal and substantive examination, the office will;
- Publish a reference to the grant of the patent in the official gazette
- Issue to the applicant a certificate of the grant of the patent and a copy of the patent.
- Record of the patent
- Make available copies of the patent to any person on payment of the prescribed fees.
Transfer of Patents
Any patent or application for a patent may be transferred by sale or inheritance or any other means in accordance with the Ethiopian law. Such transfer shall be recorded with the commission, upon payment of fees prescribed in the regulations
Rights of a Patentee
The patentee shall have the exclusive right to make, use or otherwise exploit the patented invention. But this patentee will not have import monopoly right over the products of the patented invention in Ethiopia.
The patentee will have a right to institute court proceedings against any person who infringes the patent.
Duration of a Patent
The duration of protection for a patent and a patent of introduction are quite different.
A patent will be granted an initial period of protection for a period of fifteen years starting from the filing date of the application for protection. However, the validity of the patent may be extended for a further period of five years provided that proof is furnished that the invention is being properly worked in Ethiopia.
In cases of patents of introduction, a patent of introduction will be considered to be valid for a period that may extend up to ten years and shall be coupled with the owner's obligation to prove the working of the invention each year as from the third year after it has been granted and to pay the relevant annual fees.
The concept of compulsory patents arises where the patentee whose invention cannot be worked effectively without the invention patented earlier applies for a compulsory license to use the earlier invention.
In addition to the above the earlier patentee whose invention cannot he worked effectively without the later invention may apply for a compulsory license to use the later invention.
But the Intellectual property office grants the issuance of compulsory license only where the person requesting for a compulsory license to exploit an invention furnishes proof that he has not been able to conclude a license contract with the patentee for the exploitation of the invention on reasonable terms.
It should be noted that the person who is granted a compulsory license has to pay the patentee a reasonable exploitation fee, the amount of which shall be fixed by both parties. But where the parties disagree on the amount of fee, it shall be fixed by the Commission.
Termination, Invalidation and Surrender of Patent
A patent may be terminated, invalidated or surrendered if it is found to be within the limitations prescribed in the proclamation.
A patent will be considered to be terminated if either the patentee surrenders it by a written declaration to the Commission, orif theannual fee is not paid in due time.
If the subject matter of the patent is not patentable or if the description does not disclose the invention in a manner sufficiently clear & complete for it to be carried out by a person skilled in the art, the court will invalidate a patent in whole or in part by the court upon request by an interested party.
If you have an additional question or comment please Contact us.
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Note: This guide provides vital information on Ethiopian Patent law and practice and is not intended to substitute professional advice given with full knowledge of the specific circumstances of each case and proficiency in the law of Ethiopia such as might be provided by a Patent Attorney or Agent in Ethiopia.