Patents of Invention

– Industrial Property Act No. 8 of 2010, in force since August 31, 2012.
– Industrial Property Regulations, Statutory Instrument No. 69 of 2012.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 30, 1966.
– ARIPO, Harare Protocol on Patents and Industrial Designs, since May 6, 1985.
– WTO’s TRIPS Agreement, since May 31, 1995.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 15, 1998.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 15, 1998.
– Patent Cooperation Treaty (PCT), since October 30, 2003.

Filing

Applicant: may be the inventor either alone or jointly or another person(s) who has acquired the right from the inventor(s).

Naming of the inventor(s): the inventors must be named in the patent, unless a special written declaration has been sent to the Registrar indicating that the inventor does not wish to be named.

Types of patents: patent of invention and ARIPO patent designating Botswana.

Novelty: not disclosed to the public in Botswana or elsewhere, in any tangible form or orally or by use, or any other way, prior to the filing or priority date.

Novelty grace period: disclosure by the inventor(s) or any third party which obtained the information directly or indirectly from the inventor(s), where the information was disclosed in the twelve months preceding the filing or priority date.

Exceptions to protection: a discovery, a scientific theory or mathematical method, a literary dramatic, musical or artistic work or other aesthetic creations, a scheme, rule or method of doing business, performing a mental act or playing a game, a program for a computer, methods of treatment and diagnostic methods.

Priority: Paris Convention applies. An invention claimed may have more than one priority date.

Conversion: a patent application may be converted into a utility model application at any time before grant or refusal.

Filing requirements for an application (to be sent to authorized agent):
1. Power of attorney (not legalized);
2. Request form in triplicate;
3. Specification, drawings and abstract in triplicate;
4. Assignment of invention and priority rights (if applicable);
5. Certified copy of priority document (if applicable).

PCT national phase applications: the Botswana legislation now recognizes the PCT. Time limits for entering the national phase: directly in Botswana under both Chapter I and Chapter II is 31 months from the priority date. The time limit for filing an ARIPO regional phase application (designating Botswana) under both Chapters I and II is 31 months.

Minimum requirements to obtain a filing date:
1. Application containing the name of the applicant;
2. Specification, claims and drawings (if applicable); and
3. Payment of the application fee.

Terms for filing the missing documents: the power of attorney and the assignment of invention must be filed within one month of the filing date. The priority document must be filed within three months of the filing date. For national phase applications the priority document is only required where the applicant has failed to comply with Rule 17.1 of the Regulations under the PCT.

Electronic filing: not available in Botswana.

Examination, Granting, Protection

Examination: formal examination is undertaken after filing. The Registrar may refer the application to an examining authority for substantive examination.

Amendments: the applicant may amend or correct the application at any time before grant. Amendments may not go beyond the disclosure in the application as initially filed.

Divisions: divisional applications may be filed at any time before publication of the decision of grant.

Publication: the Act makes provision for the publication of the details of the application eighteen months from the priority date or the filing date at the Registry. The abstract and a representative drawing will also be published on grant and the records will be available for public inspection.

Duration of protection: twenty years from the filing date. The term cannot be extended.

Supplementary Protection Certificates for pharmaceuticals or plant protection products: not provided for.

Annuities: payable annually, commencing on the first anniversary of filing.

Annuity grace period: there is a six-month grace period for the late payment of an annuity on payment of a surcharge.

Amendments of issued patents: there is no specific provision for the amendment of a granted patent.

Restoration: no provision.

Marking: not compulsory, but advisable.

Assignment and licenses: must be in writing and be recorded in the Register to have effect against third parties.

Working: the actual working of an invention is required. Non-working of a patent or utility model in Botswana could lead to the grant of a compulsory license, but not to cancellation.

Modification of Protection after Registration

Rights of prior user: are protected in Botswana.

Opposition: provided for after publication of the application.

Cancellation – nullification: no provision.

Compulsory licenses: any interested person may apply to High Court for the grant of a compulsory license, after the expiration of four years from the filing date of the patent or after three years from the date of grant thereof, whichever expires last, if the invention is not worked, or is worked insufficiently in Botswana. The person applying for the compulsory license must have taken all reasonable steps to obtain a license on reasonable terms, from the owner of the patent. Nominal working or an offer to license would not suffice in an application for a compulsory license on such grounds.

Infringement and remedies: the manufacture, importation, exportation, offer for sale, sale and use of the patented product or the product produced by the patented process, or the stocking of the patented product for the purpose of offering for sale are considered to be acts of infringement. The available remedies are an interdict; delivery up or destruction of any infringing product; damages; and any other remedy provided for in the general law of Botswana.