Breakthrough Attorneys

breakthroughattorneys.com/quick-look-intellectual-property-law-tanzania/

April 28, 2016

Volume 1: Establishing the Law and Ownership of Patents

The Laws that regulate patents

The rights and duties attached to patent holding
How to Apply for a patent in Tanzania and ARIPO (African Regional Intellectual
Property Organization)

Intellectual property refers to the legal rights which result from intellectual creations in
the industrial, scientific, literary and artistic fields.

Intellectual property law aims at safeguarding intellectual creators and other producers
of intellectual goods and services by granting them certain time-limited rights to own
and in so doing, control the use, reference and possession of those creations. Those
rights do not apply to the physical object in which the creation may be embodied but
instead to the intellectual creation.

Intellectual Property is divided into two. These are:

1. Industrial Property, which includes,

Patents
Trademarks
Industrial designs

2. Copyright

Patents

It is imperative at this juncture to point out that, this article will specifically focus
around the subject on Intellectual property procedural law governing Patents.

In Tanzania Mainland the laws that govern Patents are as follows:

The Patents (Registration) Act of 1995 (Chapter 217 of the Laws)

The Patents Regulations GN. 190 of 1994

In Zanzibar the laws that govern Patents are:

1/6
 Patents Decree, Cap 157 (11 of 1930, Cap 9 of 1934, 27 of 1935, S. 5, 11 of 1958)
Laws of Zanzibar.
Patent Rules (Schedule to Decree No. 11 of 1930) in the Laws of Zanzibar.

Definition of Patent:

A Patent is an exclusive right for an invention. It is a set of exclusive rights granted by a

sovereign state (and with the development of the law and concept, registered by
multinational intellectual property organizations such as WIPO and ARIPO) to an
inventor or assignee for a limited period of time in exchange for detailed public
disclosure of an invention. An invention is a solution to a specific technological problem
and is a product or a process.

An Invention

It is trite that in order for one to enjoy the exclusive recognition, right or protection,
there must be an invention. Under S. 7 of The Patent Act which we will hereon forward
refer to it as “The Act”, an invention means a solution to a specific problem in the field
of technology and may relate to a product or process.

Thus, a patent is generally intended to cover products or processes that possess or

contain new functional or technical aspects. Patents are therefore concerned with, for
example, how things work, what they do, how they do so, what they are made of or how
they are made. The vast majority of patents are for incremental improvements in known
technology. Thus, basically patents law centers around the concepts of novelty (or lack
of anticipation) and inventive step (or lack of obviousness). In other words, not every
invention is patentable unless it is new, could not be easily anticipated and is
industrially applicable. Specifically, S. 8 of the Act provides that, an invention is
patentable if it is new, involves an inventive step and is industrially applicable.

Who enjoys the right to patent?

A patent for an invention is granted to the inventor, giving the inventor the right for a
limited period to stop others from making, using or selling the invention without the
permission of the inventor. When a patent is granted, the invention becomes the
property of the inventor, which – like any other form of property or business asset – can
be bought, sold, rented or hired.

Patents are territorial rights in the sense that they are only recognized and enforced in
the territory/country or jurisdiction under which they have been registered.

As per S. 14(1) of The Act, the right to a patent shall belong to an inventor. To be
recognized as an inventor one should apply to be granted a patent. A Patent application
may be a National Patent Application or an International application. If a country has
ratified an international treaty for instance Patent Cooperation Treaty, an applicant can
lodge an international application with a national or regional patent office or World
Intellectual Property Organization (WIPO) and thus seek patent protection for his
2/6
invention simultaneously in a large number of countries by that single application. (See
Section 2 (b) and 3 of the Harare Protocol on Patents and Industrial Designs Within
the Framework of ARIPO as well as Article 7 – 12 of the Washington International
Patent Cooperation Treaty of 1970 in the WIPO Framework)

Section 18 of the Act provides for the grant of patent. According to the provision, in the
application, the applicant should prove that the invention is novel/new and that it has
never appeared anywhere in the world. (See Section 7 of the Act). According to S. 7(2)
the invention in this respect should not be:

1. Discoveries and mathematical theories.

2. Plant or animal varieties or biological processes other than microbiological and
the product of such processes.

Schemes, rules or methods of doing business or performing purely mental acts

1. Methods for treatment of the human or animal body surgery or therapy,

diagnostic methods but not products for use in any of those methods.

Rights of the owner of a patent (Including Disposition and Assignment)

According to S. 35 of The Act, the owner of the patent acquires the following rights
which if done by anybody other than the owner constitute an infringement. These are:

1. If in respect of a product;

Making, importing or offer for sale, assignment, selling and using the product
Stocking the product for sale or for using

1. If in respect of a process;

The use of that process

Doing acts in (i) above in respect to the product obtained directly by means of the
process.

However, under S. 68(1) and (2) of the Act, a person showing legitimate interest may
request the court to declare that the performance of certain act does not infringe the
patent and the owner or licensee shall have the right to be defendant in the proceedings.
But such declaration shall not be made if:

1. The acts to which the request is made are already the subject of infringement
proceedings.
2. The person making the request is unable to prove that he has previously
demanded from the owner a written acknowledgment of the lawfulness the acts
referred to and he refused or failed to reply in a reasonable time.

How is a patent granted?

3/6
Under the Tanzanian Law, a person who needs to secure patent for his or her invention
has two options. These are:

1. By lodging an application with the Registrar of patents at BRELA,

Under the Patent Act, the inventor or any person who has a right over an invention files
an application for registration of a patent with the office of the Registrar of Patents. (See
S. 18(1) of the Act). The said application should be made by filling FORM NO.2 as
provided by The Patents Regulations. Patents are granted by the Registrar via the
Government authority called BRELA (Business Registrations and Licensing Agency).

According to S.18 of The Act, the Application should contain the following particulars;

A title of the invention,

A description of the invention and stating the technical field under which the
invention falls.

Note:

The description should be in clear language to be understood by a person with average

understanding in the field such that they can work on the invention basing on the
description. More elaborations such as drawings should be made and should also state
what is claimed in the invention.

1. By filing an application with the African Regional Intellectual Property

Organization (ARIPO)

African Regional Industrial Property Organization (ARIPO) based in Harare, Zimbabwe

is empowered by the Harare Protocol on Patents and Industrial Designs to grant
patents and to register utility models and industrial designs on behalf of contracting
states. Applications for the grant of patents may be filed either directly with the ARIPO
office or with the industrial property office of a contracting state. The application is
subject to payment of the prescribed fees.

An applicant may be represented by an attorney, agent or legal practitioner who has the
right to represent applicants before the industrial property office of any Contracting
State.

Where an application is filed directly with the ARIPO Office but the applicant’s ordinary
residence or principal place of business is not situated in the host country of the Office;
or an application is filed with the industrial property office of a Contracting State by an
applicant whose ordinary residence or principal place of business is not situate in a
Contracting State, the applicant should be represented by an agent.

Upon receipt of an application by a contracting state, the industrial property office

must, within a period of one month after the filing of the application, transmit the
application to the ARIPO office.
4/6
The following information and documents are required:

full particulars of the applicant

power of attorney (prescribed form; simply signed)
specification (including claims, drawings and abstract), in English
indication of the contracting states to be designed
assignment document (if the applicant is not the inventor)
Certified copy of the priority document (if priority is claimed).

All documents must be in English. However, it is possible to obtain a filing date in

ARIPO with a specification, claims and drawings in a foreign language provided the
English translation is filed without delay.

A patent granted by virtue of the Protocol on Patent and Industrial Designs within the
Framework of African Region Industrial Property Organization (the Harare Protocol),
1982) in respect of which the United Republic of Tanzania is a designated state, have
the same effect in Tanzania and Zanzibar as if a patent was granted under the local
patent legislation. If the local Patent Office communicates to ARIPO office indicating its
objection to grant of patent, the grant by ARIPO has no effect in the United Republic of
Tanzania until a decision is made in accordance with the provisions of the Harare
Protocol.

What is the duration under which patent protection operates?

In Tanzania, specifically under S. 38(1) of The Act, a patent is protected for 10 years
from the date of grant. Furthermore, under S. 38(2),the owner or licensee of the patent
may request for an extension of the term of the patent for another 5 years provided
that the request have been made not more that twelve months and not less than one
month before the expiration of the patent.

The ARIPO Protocol provides that the duration of a patent in each member country will
be 20 years (as required by WTO/TRIPS). However, the national legislation in some
ARIPO member countries has not been amended to give effect to this provision, and
thus in countries like Tanzania where the national law provides for the duration to be
for a different term then the position becomes confusing. Hence the position in
Tanzania, being a dualist state (that presupposes an international law need to be
incorporated in the domestic law for the international law to be effective) the law of
the state prevails until the incorporation of the ARIPO position is complete.

Patent infringement and Remedies

As per S. 65 of the Act, a person infringes a patent by making, using, offering to sell,
selling or importing any patented invention without the owner’s authority during the
term of the patent.

5/6
A person aggrieved by infringement of patent may institute a suit at the High Court as
stipulated by Section 66 of the Act. The Court is mandated to grant the following relief
for infringement if infringement is proven as per S. 66 of the Act:

An injunction to prevent infringement or to prohibit continuation

Damages and any other remedies.

Breakthrough Attorneys offers a competitive intellectual property team studded

with experienced lawyers in patents registration, ownership rights, infringement,
prosecution and defense of patented rights and attached matters.

Important Notice:
This publication has been prepared for general guidance on matters of interest only,
and does not constitute professional advice. You should not act upon the information
contained in this publication without obtaining specific professional advice. No
representation or warranty (express or implied) is given as to the accuracy or
completeness of the information contained in this publication, and, to the extent
permitted by law, Breakthrough Attorneys, its members, employees and agents
do not accept or assume any liability, responsibility or duty of care for any
consequences of you or anyone else acting, or refraining to act, in reliance on the
information contained in this publication or for any decision based on it.

6/6