Patents of Invention

– Patent Act No. 58 of 1971, and Patent Regulations 1981, both effective as from January 1, 1983.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since February 2, 1974.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 16, 1984.
– Patent Cooperation Treaty (PCT), since April 16, 1984.
– ARIPO, Harare Protocol on Patents and Industrial Designs, since April 25, 1984.

Filing

Applicant: the inventor(s) or his/their successor(s) in title (individual or corporation). 

Foreigners: must give an address for service in Sudan. 

Types of patents: patents of invention, patents of improvement.

Patentability conditions: to be patentable an invention shall be new, shall involve an inventive step and shall be capable of industrial application. An invention is considered to involve an inventive step if it does not obviously follow from the state of the art, either as to the method, the application, the combination of methods or the products which it concerns, or as to the industrial results it produces. An invention is considered as capable of industrial application if it can be manufactured or used in any kind of industry including agriculture. 

Exceptions to protection: (1) principles and discoveries of a scientific nature; (2) inventions, the publication or working of which would be contrary to public order or morality.

Novelty: not disclosed to the public anywhere in the world by means of a written or oral disclosure, by use or in any other way at any time before the date of filing the application (or where priority is validly claimed, before the priority date). Not considered a bar to novelty is the exhibition of the invention by the inventor or his successor in title at an official or officially recognized international exhibition provided that the patent application is filed within six months from the first such exhibition.

Priority: according to the Paris Convention.

Filing requirements for an application (to be sent to resident agent):
1. Legalized power of attorney;
2. Specification in English or Arabic, on sheets of paper of A4 size, in triplicate;
3. Formal drawings (if any) on sheets of white paper of size DIN A4 (21 x 29.7 cm), in quadruplicate;
4. If applicant is a body corporate, a certified copy of the Certificate of Incorporation or registration (if necessary with a true translation in English or Arabic), legalized up to a Sudanese Consulate;
5. Priority document, certified (to be filed within three months after the application date).

Electronic filing: not available. 

Electronic signatures: are not accepted (only wet signatures). Scanned copies of documents are accepted, however, the original must be sent within ninety days from the application date.

PCT applications: time limit for entering the national phase: 30 months for both Chapters I and II, and 31 months through ARIPO Chapters I and II.

Examination and Granting

Examination: as to formalities and unity of invention. There is no examination as to novelty, and no substantive examination.

Granting: if the application is found formally in order and the filing fee paid, the application will be accepted. 

Publication: applicant will be invited to pay the publication fee. The patent will then be granted, a Letters Patent document will be issued, and publication of the grant in the Official Gazette of Sudan will follow. 

Rights obtained: patents are granted at the risk of patentee and without any guarantee as to their validity. 

Opposition: no provision for opposition. Granted patents may be nullified by the High Court on request.

Protection

Duration of protection: twenty years from the date of filing.

Annuities: have to be paid at the anniversary date of the filing of the application. 

Annuities grace period: six months with fine. No restoration possible.

Assignment: has to be registered. 

Licenses: must be registered with the Patent Office.

Compulsory licenses: may be granted (1) if the invention, capable of being worked in Sudan, has not been sufficiently worked after a period of four years from application or three years from grant, whichever period expires last; (2) if the invention does not meet on reasonable terms the demand of the market; (3) if the working of the invention is impeded or prevented by importation of the patented product; (4) if the development of industrial activity in Sudan is substantially prejudiced by the refusal of patentee to grant licenses on reasonable terms. The patentee may prove legitimate excuses for non-working. Importation is not a legitimate excuse.

Licenses of right: may be entered in the Register. Any person will be entitled to obtain a license to exploit the patent concerned. In the absence of agreement between the parties, the terms are fixed by the Court. The annuities are reduced by 50%. The patentee may at any time apply for the cancellation of the entry “licenses of right”.

Working: see “Compulsory licenses” above.

Marking: not compulsory. 

Infringement: to be dealt with by the High Court. 

Remedies: injunction, awarding of damages, seizures and destruction of the infringing products or machinery.

Modification of Protection after Granting

Right of prior user: any person who, at the date of filing the application, was in good faith working the invention in Sudan shall be entitled to continue such working. 

Nullification: obtainable by request with the High Court.