Patents of Invention
Applicant: any owner of the invention (the applicant is deemed to be the owner); the employer in case of an employee’s invention.
Foreigners and nationals not living in a member country: must appoint a representative residing in a member country.
Novelty: not known in the prior art anywhere.
Exceptions to protection: (1) inventions contrary to order, morals and law; (2) scientific and mathematical theories; (3) plant varieties, animal breeds, etc.; (4) schemes and combinations relating to finance, intellectual actions, games of chance; (5) processes for curing diseases in the field of medicine and veterinary science; (6) mere presentation of information; (7) computer programs; (8) ornamental creations.
Kinds of protection available: (1) patents; (2) patents of addition; (3) utility models.
Priority: according to the Paris Convention.
Territory covered: all countries of the OAPI.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization; name and capacity of an officer signing on behalf of a corporate body is necessary);
2. Specification and abstract in French or English in triplicate;
3. Drawings in triplicate;
4. Certified copy of the basic application, if priority is claimed (not required in PCT cases);
5. Assignment of priority rights, where appropriate (even for PCT cases).
Late filing of documents: certified copy and assignment must be lodged within six months from application date. The power of attorney must also be filed, but there is no specific delay for doing so. The priority document must be translated into French or English, if not in French or English, within three months from application date.
Recordal of assignments or licenses:
1. 1 original copy of the deed of assignment or license (signed in the actual presence of a Notary Public); certified copies are also admitted;
2. Power of attorney (a separate power of attorney is needed for each patent involved).
Recordal of changes of name or address:
1. For changes of name only: official certificate attesting to such change (without legalization);
2. Power of attorney (a separate power of attorney is needed for each patent for which the recordal is requested).
Application forms: some of the requested forms for filing are now available on the OAPI website at the following Internet address: www.oapi.int
Prosecution procedure: examination only as to form, unity of invention, and whether or not the invention is patentable and a partial technical examination directed to the content of the specification. A search report is provided for but not yet in practice.
No publication takes place until a patent is granted.
Granting: the patent is granted without any guarantee as to novelty or validity generally. A certificate of filing is delivered immediately; then a certificate of grant is issued after the formal examination. A notice of grant is published in the Official Bulletin; Letters Patents with printed specification and drawings are delivered to the patentee.
Public inspection: from the date of the publication in the Official Bulletin, the official file becomes open to public inspection. The complete specification in its entirety is published in print and copies thereof are available for sale.
Opposition to application filed: not provided for.
Duration: twenty years from the date of application.
Annuities: renewal fees are payable annually from application date.
Annuity grace period: six months with a fine.
Marking of patented goods: marking is not obligatory, but is advisable (“Brevet O.A.P.I. No. … sans garantie des Gouvernements”). The words “sans garantie des Gouvernements” result from the patents being granted without examination but as to form, they are compulsory if a marking is made.
Modification of Protection after Granting
Assignment and license: must be in writing, actually signed in the presence of a Notary Public and compulsorily registered within one year to be effective against third parties. Registration after one year is rejected.
Working: nominal working is not admitted. Working should be effected within four years from the date of application or three years from the date of grant (the longer of both terms), failing which compulsory licenses may be granted. The patentee may have license offers (declaration of willingness to grant licenses) recorded in order that a “license de plein droit” may be granted to any person who is interested. Licenses ex officio may be imposed when the invention is related to national defense, public health or national economics.
Infringement: an infringement of the rights of a patentee may result in an action filed with the civil courts or inferior criminal courts whereby the injured party is entitled to claim the cessation of further infringement, the removal of the objects of infringement, damages and restitution of the unjustified gains; inferior criminal courts may also impose fines and imprisonment.