Chapter III:

Patent Laws and Utility

Models
Nurilign M. Gurmessa
Wallagga University
February 2023
Objectives of the chapter
•G
1. Justifications for Patent Protection
2. Subject Matter Protected
3. Requirements for Patent Protection
4. Ownership and Transfer of Patent
5. Priority of Patent Application
6. Examination of Patent Applications and Grant of Patent
7. Rights Accorded by Patent
8. Limitations to Patent Rights
9. Termination and Invalidation of Patent
10.Infringement of Patent Rights and Remedies
Legal Frameworks
National Legal Frameworks
• Inventions, Minor Inventions, and Industrial Designs Proclamation No. 123/
1995.
• Inventions, Minor Inventions and Industrial Designs Regulation No.
12/1997.
• Articles 127, 148 and 155 (4) of the 1960 Commercial Code of Ethiopia.
Articles 127 (2) (d) & 148 (1) - patent is one of the (incorporeal)
elements of business.
Article 155 (4) - stipulated the laws that govern the assignment of
patent.
Article 148 (2) - hinted at or foresaw the enactment of patent law; it
explicitly and unequivocally stated that “patents shall be subject to the
provisions of special laws”.
• Article 720 (2) of the Criminal Code – imposes criminal sanctions.
Legal Frameworks
International Legal Frameworks
• (1) Paris Convention for the Protection of Industrial Property –
adopted in 1883.
• Applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models, service marks, trade
names, geographical indications and the repression of unfair
competition.
• (2) Patent Law Treaty (PLT) – adopted in 2000.
• The aim of the PLT is to harmonize and streamline formal procedures
in respect of national and regional patent applications and patents
and, thus, to make such procedures more user friendly.
• With the significant exception of filing date requirements, the PLT
provides the maximum sets of requirements the office of a Contracting
Party may apply.
Legal Frameworks
International Legal Frameworks
3) PATENT Cooperation Treaty (PCT) – adopted in
• The Patent Cooperation Treaty (PCT) assists applicants in seeking patent
protection internationally for their inventions, helps patent offices with
their patent granting decisions, and facilitates public access to a wealth of
technical information relating to those inventions.
• By filing one international patent application under the PCT, applicants can
simultaneously seek protection for an invention in a large number of
countries.
• To increase your understanding of the PCT, watch the following videos:
• Learn the PCT: Episode 1 - Introduction to the PCT System - YouTube
• Learn the PCT: Episode 2 - Basics of the PCT – YouTube
Legal Frameworks
International Legal Frameworks
• 4) Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure - adopted in 1977.
• Disclosure of the invention is a requirement for the grant of patents.
• Normally, an invention is disclosed by means of a written description.
• Where an invention involves a microorganism or the use of a microorganism,
disclosure is not possible in writing but can only be effected by the deposit, with a
specialized institution, of a sample of the microorganism.
• The Budapest Treaty concerns a specific topic in the international patent process:
microorganisms.
• The main feature of the Treaty is that a contracting State which allows or requires
the deposit of microorganisms for the purposes of patent procedure must recognize,
for such purposes, the deposit of a microorganism with any “international depositary
authority”, irrespective of whether such authority is on or outside the territory of the
said State.
• In practice this means that the requirement to submit microorganisms to each and
every national authority in which patent protection is sought no longer exists.
Legal Frameworks
International Legal Frameworks
• 5) Strasbourg Agreement Concerning the International Patent
Classification - concluded in 1971 and amended in 1979.
• The Strasbourg Agreement establishes the International Patent
Classification (IPC) which divides technology into eight sections with
approximately 80,000 subdivisions.
• Classification is indispensable for the retrieval of patent documents in
the search for "prior art".
• Such retrieval is needed by patent-issuing authorities, potential
inventors, research and development units and others concerned with
the application or development of technology.
What is ‘patent’?
• The term patent was derived from a Latin word “Patere” which means
“Open Letters”.
• As its normal usage tells:
 “Open” means make the invention available to the public and
The term “Letter” refers to grant of title, by a royal decree, for exclusive use of
the invention by the owner of the invention.
From this patent can be seen as a monopoly offered by a crown as a reward to
its subject for making useful inventions to the crown.
• A patent is an exclusive right granted by a government for an invention,
which is a product or a process that provides, in general, a new way of
doing something, or offers a new technical solution to a problem.
• A patent is the legal right of an inventor to exclude others from making
or using a particular invention.
What is ‘patent’?
• In Ethiopia, “patent" is defined as “the title granted to protect
inventions; the invention may relate to a product or a process – see
Article 2 (5) of Proclamation 123/1995.
• The principle behind the modern patent is that an inventor is allowed
a limited amount of time to exclude others from supplying or using an
invention in order to encourage inventive activity by preventing
immediate imitation.
• In return, the inventor is required to make the description and
implementation of the invention public rather than keeping it secret,
allowing others to build more easily on the knowledge contained in
his invention.
Justifications for the Protection of Patent in Ethiopia
• The traditional utilitarian justifications for granting of exclusive
property rights to inventors underly the Patent Proclamation.
• The preamble of the patent proclamation lists the key policy
objectives underlying the proclamation.
• These are:
• (a) creating favorable conditions to encourage local inventive and
related activities,
• (b) building up national technological capability,
• (c) encouraging the transfer and adoption of foreign technology by
creating conducive environment to assist the national development
efforts of the country, and
• (d) fulfilling the nation's multidimensional demand for a harmonious
scientific and technological progress
Invention Defined
• Patent is a right granted for an INVENTION.
• What is invention?
Discovery vs Invention
•Discovery - is recognizing something that already exists for the first time;
something that nobody has found before.
e.g., how Christopher Columbus discovered the Americas.
•Invention - is creating something totally new with one’s own ideas and
development.
The physical material needed to produce the invention already exists.
They are innovated from the ideas and experiences of the individual.
Thus, making inventions unique.
e.g., how Thomas Edison invented the light bulb.
Invention Defined
Article 2(3) of Proclamation No. 123/1995
• "Invention" is defined as “an idea of an inventor which permits in practice the solution
to a specific problem in the field of technology.”
Important Elements of the Article:
• Idea
 This is about the width of protection/the breadth of coverage that the patent
protection offers.
 Compare this with copyright which protects only the expression of ideas.
 Copyright offers less protection than patent since it applies to the expression only – not
to the use of the ideas – and even allows for some ‘fair use’ (e.g. ‘quotes’ or ‘parody’).
• Inventor - Who is an inventor?
• AI as an inventor?
• Solution to a specific problem
• Field of technology
• The invention may relate to a product or a process - see Article 2 (5) of Proclamation
123/1995.
Requirements for Patentability: External and Internal
Criterion
• (a) External Criterions – Article 4 & article 3
• Historically and, by and large, globally, following external factors have
been recognized as a prerequisite for the grant of a patent in relation
to an invention:
• (i) consists of a subject-matter that is patentable.
• (ii) is novel (i.e. previously unknown to the public).
• (iii) involves an inventive step (which is not obvious to a person skilled
in the art); in other words, the step is non-obvious.
• (iv) is capable of industrial application (i.e. is useful).
Requirements for Patentability …
• (a) External Requirements
• (i) Patentable Subject-Matter
• Some inventions are excluded from patentability due to public policy
considerations.
• It is believed that the granting of exclusive property rights over such
excluded inventions does not serve the ultimate goal of the patent
system which is the enhancement of public welfare.
• In relation to the excluded subject-matters, there is a negative list in
relation to which a patent cannot be granted in various national
legislations.
• In Ethiopia, article 4 of proclamation No. 123/1995 provides such list.
Requirements for Patentability …
• (a) External Requirements
• (i) Patentable Subject-Matter
Article 4(1):
1) The following shall not be patentable:
• a) Inventions contrary to public order or morality.
• b) Plant or animal varieties or essentially biological processes for the
production of plants or animals.
• c) Schemes, rules or methods for playing games or performing commercial
and industrial activities and computer programs.
• d) Discoveries, scientific theories and mathematical methods.
• e) Methods for treatment of the human or animal body by surgery or therapy,
as well as diagnostic methods practiced on the human or animal body.
• f) Works not protected by Copy right.
Public order or morality
• What is public order?
• What is morality?
• Both ‘public order’ and ‘morality’ are elusive terms.
• Public order – maintenance of public safety or public peace.
See the Amharic version of the proclamation – it refers to public
peace.
• Morality – principles concerning right and wrong or good and bad
behavior.
• The concept of morality may be related to beliefs that some behavior is
right and acceptable whereas other behavior is wrong.
• Such belief is founded on the totality of accepted norms deeply rooted in
a particular culture.
• Morality may, thus, vary from one culture to another.
Plant or Animal Varieties or essentially biological
process for the production of animals or plants
Plant or Animal Varieties
• Oncomouse/Harvard Mouse
• The Oncomouse, genetically modified to
develop cancer for the purposes of
medical research, raised complex ethical
issues for patent authorities.
• Transgenic - animals are called "transgenic" when DNA from other species
has been artificially introduced into their genome.
• Transgenic animals have been developed for potentially beneficial
applications, such as medical research, enhanced food production, and the
production of proteins or organs.
• But the genetic manipulation of animals, particularly mammals, also raises
a host of ethical issues that can be highly controversial.
• It also raises questions relating to patentability.
Requirements for Patentability …
• (a) External Requirements
• (ii) Novelty
• Article 3 (1)
• An invention is patentable if it is new, involves an inventive step and is
industrially applicable.
• Article 3 (2) - Newness
• An invention shall be considered new if it is not anticipated by prior art.
Prior art shall consist of everything disclosed to the public, any where 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.
• Prior Art – all the knowledge that existed in the world before the filing
date or priority date.
Requirements for Patentability …
• (a) External Requirements
• (ii) Novelty
• How is novelty assessed?
• Local novelty vs Absolute/universal novelty
 This is based on geographic considerations.
 Absolute novelty is adopted under the proclamation.
• The mode of disclosure
Disclosure by publication
 Oral disclosure
 Disclosure by use
• Time dimension to the disclosure - article 3 (3) provides an excpetion.
Requirements for Patentability …
• (a) External Requirements
• (iii) Inventive Step/Non-obviousness
• Article 3 (4):
• 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.
• Inventive step invention is said to involve an inventive step if it is not obvious
to a person skilled in the art.
• This criterion is basically a qualitative examination to ascertain whether the
contribution is creative enough to warrant a monopoly.
• It is a difficult and problematic task to draw a line between inventions that are
obvious (or non-inventive) and those that are inventive (or non-obvious).
• It involves a 'question of fact’.
Requirements for Patentability …
• (a) External Requirements
• (iii) Inventive Step/Non-obviousness
• Further, the evaluative nature of enquiry means that two reasonable
people can reach different conclusions leading to uncertainty and
inviting criticism of arbitrary use of discretion.
• The philosophy behind the doctrine of obviousness is that the public
should not be prevented from doing anything which was merely an
obvious extension or workshop variation of what was already known
at the priority date.
• The invention must not merely be something new; it must represent a
development over prior art.
• Setting high standards for the inventive step prevents routine
discoveries from being patented.
Requirements for Patentability …
• (a) External Requirements
• (iii) Inventive Step/Non-obviousness
• Three criteria to assess inventive step:
• (1) The problem to be solved,
• (2) The solution to that problem, and
• (3) The advantageous effects of the invention with reference to the
background art.
Requirements for Patentability …
• (a) External Requirements
• (iii) Industrial Applicability/Usefulness
• Article 3(5):
• 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.
• Thus, patent protection is not available for a purely abstract or intellectual
creation.
• The term ‘industry’ is construed in its widest sense, including activities
whether or not they are made for profit and includes agriculture.
• Industry in this sense is any physical activity of a technical character.
• The invention should be capable of providing technical solution to a
problem – otherwise, it will be an abstract theoretical knowledge.
Requirements for Patentability …
• (b) Internal Requirement
• Disclosure/Description of the Invention
• Patent application shall contain a description.
• According to article 9(4)(b):
• the description shall disclose the invention in a manner sufficiently
clear and complete for the invention to be carried out by a person
having ordinary skill in the art, and shall, in particular, indicate at least
one mode known to the applicant for carrying out the invention. The
description may be used to interpret the claims.
• The notion of social contract – society makes a contract with the
inventor by which it agrees to grant exclusive use of the invention for a
period and in return, the inventor agrees to disclose the technical
information in order that it will be made available to society at later
date.
Requirements for Patentability …
• The patentability requirements are relevant:
• In the examination process, where they can be grounds for rejecting an application,
and
• In the litigation context, where they can be grounds for holding an already issued
patent invalid.
Question: What are the procedures of enforcing these requirements in IP Offices and
in the courts?
Article 36 - Invalidation of a Patent
• 1. A patent shall be invalidated in whole or in part by the court upon request by an
interested party if it is proved that:
• a) the subject matter of the patent is not patentable according to Articles 3 and 4 of
this proclamation;
• b) the description does not disclose the invention in a manner sufficiently clear &
complete for it to he carried out by a person skilled in the art.
• 2. Any invalidated patent in whole or in part shall be deemed void from the date of
grant of the patent.
Who is inventor?
• What is inventorship?
• Inventorship means who is listed as an inventor on a patent
application.
• An inventor is someone who conceived the subject matter of the
invention, i.e. made an intellectual contribution.
• Someone is not an inventor if they only contributed by carrying out
experiments to perform or test the invention at the instructions of
another.
• An inventor is entitled to a patent right – see article 7(1) of
proclamation No. 123/1995.
Invention Made in the Course of Employment and Service
Contract
• Article 7(3):
• In the absence of an agreement to the contrary, the right to a patent
for an invention made in the execution of a contract of service or
employment shall belong to the person having commissioned the
work or the employer.
• Article 7(5):
• In the absence of an express term to the contrary, inventions made by
employee or person commissioned which do not come within sub-
article 3 of this article and which result from both the personal
contribution of the author and the resources, data, means, materials
or equipment of the employer shall be owned jointly in equal shares.
Naming of Inventor – Article 8
• The inventor shall be named as such in the application and the patent
unless in a special written declaration addressed to the commission
he indicates that he wishes not to be named, and any promise or
undertaking by the inventor made to any person to the effect that he
will make such declaration shall be without legal effect.
AI and Inventorship
• Is inventor always human?
• The case of Device for Autonomous Bootstrapping of Unified Sentience
(DABUS)
• DABUS is AI machine invented by Stephen Thaler to generate invention.
• The creativity machine, DABUS was responsible for generating two
inventions, which are the subject of patent applications: a plastic food
container based on fractal geometry; and a flashing light (or “neural
flame”) to alert emergencies.
• In 2019, the Artificial Inventor Project team submitted patent applications
listing DABUS (a type of AI-based “creativity machine”) as the inventor.
• This is notable because most jurisdictions only recognize humans as
inventors.
• Their aim? To challenge established norms around inventorship.
Patent Application and Examination
• The process of applying for a patent, also known as patent “prosecution,”
begins when the inventor, on his own or through his agent or attorney, files
an application with the Patent Office for “examination.”
• Article 9(1):
• The person having the right to a patent for an invention in accordance with
Article 7 may, upon payment of the prescribed fees, apply to the commission
for the grant of a patent for that invention.
• Article 9(3):
• The application shall contain a request for the grant of a patent and include
a description of the invention, one or more claims, an abstract, and where
necessary, drawings.
• Two main elements in this sub-article: (1) a request for the grant of a patent,
and (2) contents of a patent application.
• A request for the grant of a patent should be made in accordance with
Article 10 of Regulation No. 12/1997.
Patent Application and Examination
• A request for the grant of a patent:
• shall contain a petition to the effect that a patent be granted, the name
of and other prescribed data concerning the applicant, the inventor and
the agent, if any, and the title of the invention – Article 9(4)(a)
Proclamation No. 123/1995.
• Where the applicant is not the inventor, 'the application shall contain a
statement justifying the applicant's right to the patent – Article 9(4)(a)
Proclamation No. 123/1995.
• shall be made on Form No.1 and shall be signed by each applicant –
Article 10 (1) Regulation No. 12/1997.
• shall indicate each applicant's name, address, nationality and residence
applicant – Article 10 (2) Regulation No. 12/1997.
• The title of the invention shall be short, preferably from two to seven
words, and precise – Article 10 (5) Regulation No. 12/1997.
Patent Application and Examination
• Contents of Patent Application – in addition to a request for the grant
of patent, a patent application shall consist description, claim,
abstract, and drawing, where necessary.
• Description of the Invention
• Article 4(1)(b) Proclamation No. 123/1995:
• The description shall disclose the invention in a manner sufficiently
clear and complete for the invention to be carried out by a person
having 'ordinary skill in the art, and shall, in particular, indicate at
least one mode known to the applicant for carrying out the invention.
The description may be used to interpret the claims.
• See Article 11 of Regulation No. 12/1997 for the detail contents and
other aspects of description of the invention.
Patent Application and Examination
• Claim – Article 4(1)(c) Proclamation No. 123/1995:
• The claim or claims shall define clearly and concisely the matter for
which protection is sought. The claim or claims shall be fully supported
by the description.
• See Article 12 of Regulation No. 12/1997 for the detail on various
aspects of patent claim.
• Abstract – Article 4(1)(d) Proclamation No. 123/1995:
• A summary of technical information about the invention.
• The abstract shall merely serve the purpose of technical information;
however, it shall not be taken into account for the purpose of
interpreting the scope of protection.
• See Article 14 of Regulation No. 12/1997 for the detail in relation to
abstract.
Patent Application and Examination
• Drawings – Article 4(1)(e) Proclamation No. 123/1995:
Drawings shall be required when they are deemed necessary for the
understanding of the invention and may be used to interpret the
claims:­
See Article 13 of Regulation No. 12/1997 for the detail in relation to
drawings.
Patent Application and Examination
• Unity of Invention
• Patent application must relate to one invention only or to a group of
inventions so linked as to form a single general inventive concept.
• Article 9(2) Proclamation No. 123/1995:
• Application … shall relate to one invention only. However, two or
more inventions, belonging to a single general concept may be filed as
one application.
• See Article 17 of Regulation No. 12/1997 for more.
Patent Application and Examination
• Filing Date, First to File, and Priority Date
• The filing date is relevant because:
It establishes the duration of the patent.
The priority date of subsequent applications in in other countries, and
the evaluation of novelty and inventive step, and
Entitlement to patent where several applications are filed in respect of
the same invention.
• The date of receipt of the patent application shall be deemed to the filing
date – article 12 of proclamation No. 123/1995.
• First to File vs. First to Invent
• When two or more persons who have independently made the same
invention separately file applications for patents on the same subject
matter, the right to the patent shall belong to the person who filed the first
application – Article 11 (1) of Proclamation No. 123/1995.
Patent Application and Examination
• Priority Date
• The priority date is how we determine whether another patent filing or
publicly available document qualifies as prior art against your patent
application.
• The priority date, sometimes called the “effective filing date”, is the date
used to establish the novelty and/or obviousness of a particular invention
relative to other art.
• Article 11 (2) of Proclamation No. 123/1995
• … where any foreign applicant files his application in Ethiopia within twelve
months from the date which he first filed in a foreign country an application
for the same invention, the date on which the application was first filed in
the foreign country shall be regarded as the date of filing if the applicant
claims the right of priority and furnishes within the prescribed time limit a
copy of the earlier application certified as correct by the office with which it
was filed and other documents and information as prescribed.
Examination of Patent Application
• Two types of examination of patent application – these are formal and
substantive examinations.
• Formal Examination – Article 13(1&2) proclamation No. 123/1995 &
Article 27 of Regulation No. 12/1997
• Article 27 (1):
• In addition to the requirements of Article 9 (3) and (4) (a) of the
proclamation and the Regulations pertaining thereto, the requirements
of Articles 5, 8, 9(7) and (8) and 10 of the proclamation shall be
considered formal requirements for the purpose of the proclamation.
• Formal examination pertains to: the request for the grant of a patent,
description/disclosure of the invention, claim(s), abstract, drawing, rights
of foreign nationals (article 5), naming of the inventor (article 8),
Examination of Patent Application
• Substantive Examination – Article 13(3) proclamation No. 123/1995
& Article 28 of Regulation No. 12/1997
Article 28 (3):
• An application shall be examined as to whether the requirements of
Articles 3,4,7,9(2),(4)(b) and (c) and (5) of the proclamation and the
Regulations pertaining thereto are fulfilled.
• Article 3 – patentability requirement
• Article 4 – non-patentable inventions
• Article 7 – right to a patent
• Article 9(2),(4)(b) and (c) and (5)
Unity of invention
The description/disclosure of the invention, claims, and drawings.
Examination of Patent Application
• Consequence of Non-Fulfillment of the Requirements
Formality Requirement - Withdrawal vs Rejection
Article 13 (2) Proclamation No. 123/1995
• “… the application shall he considered withdrawn.”
Article 27(3) Regulation No. 12/1997
• Where the applicant does not comply with the invitation to correct a deficiency, or where
despite the corrections submitted by the applicant, the Commission is of the opinion that
the conditions referred to in sub-Article (1) of this Article are not fulfilled, it shall reject
the application and notify the applicant, in writing, stating the reasons.
Article 27(4) Regulation No. 12/1997
• Refusal of the application shall not affect its filing date which shall remain valid.
Substantive Requirement – Rejection – Article 28(6) Regulation No. 12/1997
• … the Commission, taking due account of the conclusions of the search and examination
report, is of the opinion that the conditions referred to in the proclamation and these
Regulations are not fulfilled, it shall reject the application and notify the applicant of the
same in writing.
Grant of a Patent and Publication
• Article 14 (1) Proclamation No. 123/1995
• A patent shall be granted to an applicant upon fulfillment of the
requirements of this proclamation and the regulations issued
thereunder.
• See Articles 29-33 of Regulation No. 12/1997 for the detail and
specific requirements in this regard.
Grant of a Patent and Publication
• Example of patent certificate:
The Exclusive Rights of Patent Owners in Ethiopia
• In Ethiopia, the rights of patentee are provided under Article 22 (1) of the Patent
Proclamation.
• The article states: “[a] patentee shall have the exclusive right to make, use or otherwise
exploit the patented invention. A third party cannot exploit the patented invention
without securing the patentee's consent.”
• Two points:
• (1) Acts covered by the right – make, use, or otherwise exploit.
• Import monopoly is not granted to the patentee.
• Article 22(2) states: “The patentee shall not have import monopoly right over the
products of the patented invention in Ethiopia.”
• This provision contradicts with the TRIPS Agreement as “importing” is one of the acts
covered by the exclusive rights under Article 28 (1) of the TRIPS Agreement.
• (2) The way the rights are formulated
• It appears that the Patent Proclamation has conferred a positive right upon the
inventor/patentee.
• However, the exclusive rights conferred by patent are normally negative rights which
implies the right to prevent others from doing certain acts relating to the invention.
The Limitations and Exceptions to the Rights of
Patentee
• The limitations to the rights of the patent owner that are recognized in Ethiopia are
mainly provided under Article 25, 26 and 29 of the Patent Proclamation.
• These exceptions and limitations are:
• (a) acts done for non-commercial purposes;
• (b) the use of the patented invention solely for the purposes of scientific research &
experimentation;
• (c) acts in respect of patented Articles which have been put on a market in Ethiopia, by
owner of the patent or with his consent, or
(National Exhaustion?)
• d) the use of patented Articles on aircraft, land vehicles or vessels of other countries
which temporarily or accidentally enter into the air space, territory, or waters of
Ethiopia,
• e) prior use exception – Article 26
• f) government use of patent – Article 25 (2)
• g) compulsory licensing
Compulsory License – Articles 29-33
• What is compulsory license?
• A “compulsory license” is an authorization given by a national
authority to a person, without or against the consent of the title-
holder, for the exploitation of a subject matter protected by a patent
or other intellectual property rights.
• The term “compulsory license” refers to the grant of permission for an
enterprise seeking to use another’s intellectual property without the
consent of its proprietor.
• The grant of a compulsory patent license typically requires the
sanction of a governmental entity and provides for compensation to
the patent owner.
• Two grounds justifying the grant of compulsory license in Ethiopia: (1)
dependent patents and (2) failure to work the patent.
Compulsory License – Articles 29-33
• Dependent patent – Article 29 (1&2)
• It frequently happens that the working of one patent (the ‘second’) is
dependent upon the use of another (the ‘first’), meaning that any
authorization of the use of the second will be meaningless without a
consequential authorization to use the first.
• Failure to Work the Patented Invention – Article 29(3)
• Article 2(9) – Working of a Patented Invention
• "Working of a Patented Invention" means the manufacture of a
patented article or the application of a patented process, by an
effective and serious establishment existing within Ethiopia.
• The duty to work the patented invention – article 27.
• The working of the patented invention has implication in the duration
of patent in Ethiopia – see article 16.
Transfer of Patent Rights
• Article 6: Transfer of Applications or Patents
• Any patent or application for a patent may be transferred by sale or
inheritance or any other means in accordance with the law. Such
transfer shall be recorded with the commission, upon payment of fees
prescribed in the regulations.
• Indivisibility of Patent Rights
• Unlike copyrights, the rights “within” a patent are indivisible.
• That is, the owner of a patent may not assign one claim of the patent
to another, nor may it assign the exclusive right to make or sell one
particular type of product.
Enforcement of Patent Rights
Article 24 – Patentee's Course of Action Against Infringement
• The patentee shall, in addition to any other rights, remedies or
actions available to him, have the right, subject to Articles 25, 26, 29
to 33, to institute court proceedings against any person who infringes
the patent by performing, without his agreement, any of the acts
referred to in Article 22 (1) or who performs acts which make it likely
that infringement will occur.
Criminal sanction
• Article 720 (2) of the Criminal Code.
Patent of Introduction
• See articles 18-21 of the proclamation.
Article 18
• A patent of introduction 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 interested party for which he
takes full responsibility.
• Rationales:
• To encourage the importation & exploitation of inventions protected
in other countries,
• To promote their working in Ethiopia,
• To promote technology transfer to the country.
Utility Models
• Also known as utility innovation (in Malaysia), short term patents (in Belgium & Ireland),
utility certificate (in France) and Petty Patent/Innovation Patent (in Australia).
 There is no universal nomenclature for this type of right.
• Utility Model is a generic term referring to a second tier patent system which offers
cheaper protection to subject matter that falls between patent and sui generis design
laws.
• It is ostensibly a registered intellectual property right which confers exclusive protection
for a technical invention.
• Provide protection for minor or incremental inventions.
• Is important to recognize and encourage small or minor innovative activities not
protected by standard patent law.
• Utility patent protection began in Germany in 1891.
• About 75 countries provide some form of Utility Model Protection (as of 2013).
• Countries with highly successful innovation strategies such as Japan, South Korea, China
and Germany provide Utility Model Protection.
• On the other hand, the United States, the United Kingdom, Singapore, Sweden and
Canada, have not embraced any utility model regime.
Utility Models
• Characteristics of standard patent system:
Stringent patentability requirements – these are beyond the reach
of small innovators,
Complex, costly, and time consuming.
• Utility Models provide for a simplified and less costly system of
protection for minor inventions.
Utility Models
• Utility Models vs. Standard Patent
• Similarities
• Both protect technical innovations/inventions.
• Both give rise to exclusive rights.
• See Article 22 for Patents and Article 38 (3) for Utility Models.
Differences
• These relate to (a) the degree of innovation, (b) substantive criteria for
protection, (c) procedure for protection, and (d) the duration of the period of
protection.
The Degree of Innovation and the Substantive Criteria for Protection
• Utility models require only novelty and industrial application – Article 38(1).
• No requirement for inventive step.
• The novelty requirement is only local – see Article 39.
Utility Models
• Utility Models vs. Standard Patent
Differences
Procedure for Protection – see Article 41
• The decision to allow or refuse the grant of Utility Models is based entirely
on formal examination of the application without any substantive
examination.
• This makes the process less time consuming.
• The validity of Utility Model Certificate can be challenged in the courts of
law.
Duration of Protection – see Article 44 (1)
• A utility model certificate is granted for a period of five years, which may be
renewed for a further five years period provided that proof is furnished that
the minor invention is being worked in Ethiopia.
• The term of protection of Utility Model is generally shorter than that of a
patent.
Utility Models
• Things not Protected by Utility Model Certificate – Article 40
• The following shall not be protected by utility model certificate:
• 1. Changes in the shape, proportions or material of a patented object
or of one that is public property, except where such a change alters
the qualities or functions of the object thereby producing an
improvement in its use or the effects of its intended functions;
• 2. The mere replacement of elements in a known combination by
other known elements having an equivalent function, which does not
thereby produce an improvement in its use or the effect of its
intended functions; or
• 3. Minor inventions that are contrary to public order or morality.
Utility Models
• Conversion of Patent Applications to Applications for Utility Model
Certificates and Vice-Versa – Article 43
Industrial Designs
Important Legal Provisions:
• Articles 46-51 of Proclamation No. 123/1995, and
• Articles 40-46 of Regulation No.12/1997.
Industrial Design Defined
• Industrial designs may be described as consisting of those ornamental
aspects or elements of a useful article, including its two dimensional
or three-dimensional features of shape and surface, which make up
the appearance of the article.
• An industrial design constitutes the ornamental or aesthetic
appearance of a product.
• It is what makes a product attractive or appealing to customers, as
opposed to the functional aspects of the product.
Industrial Designs
• Visual and aesthetic appeal are key considerations that influence the
decision of consumers to prefer one product over another.
• Industrial designs help companies differentiate their products from
those of their competitors and enhance their brand image.
• In sum, industrial designs are valuable assets so it is very important to
protect them effectively.
• Industrial design is relevant to a wide variety of industrial, fashion and
handicraft products; from technical and medical instruments to
watches, jewelry, and other luxury items; from household products,
toys, furniture and electrical appliances to cars and architectural
structures; and from textile designs to sports equipment.
Industrial Designs
Industrial Designs
Industrial Designs
• Definition Under Proclamation No. 123/1995
• Article 2(2):
• "Industrial Design" means any composition of lines or colors or any three
dimensional form whether or not associated with lines or colors, provided
that such composition or form gives a special appearance to a product of
industry or handicraft and can serve as a pattern 'for a product of industry or
handicraft.
• The subject matter of the legal protection of industrial designs is not articles
or products, but rather the design which is applied to or embodied in such
articles or products.
• Industrial Design protection does not cover the technical or functional
aspects of a product.
• So in the case of a chair, only the appearance of the armchair could be
protected as an industrial design; any legal protection for technical or
functional aspects would involve other IP rights.
Industrial Designs
• Application to or Embodiment in an Article
• A usual feature of industrial design laws that a design can be
protected only if the design is capable of being used in industry, or in
respect of articles produced on a large scale.
• A design must be applied to utilitarian articles in order to be
protected.
• This requirement is one of the principal matters which distinguishes
the objectives of industrial design protection from copyright
protection, since the latter is purely concerned with aesthetic
creations.
Industrial Designs
• Requirements for Protection – Article 46
• Two requirements: “new and possesses practical applicability.”
• Newness/Novelty – Article 46 (2) (a)
• An industrial design shall be:
• a) considered new when the sum total of its essential features is different
from that of another design known either in Ethiopia or abroad and has
not been disclosed for more than one year before the date of filing of the
application for registration or, where appropriate, before the priority date.
Designs shall be deemed to be identical if their specific features differ only
in immaterial details.
• The novelty of the design constitutes the fundamental reason for the
grant of a reward to the originator through protection by registration of
the industrial design.
• Two types of novelty: Unqualified Universal Novelty and Qualified Novelty.
Industrial Designs
• Newness/Novelty – Article 46 (2) (a)
• Two types of novelty: Unqualified Universal Novelty and Qualified Novelty.
Absolute/Unqualified Universal Novelty
• The design for which registration is sought must be new as against all other
designs produced in all other parts of the world at any previous time and
disclosed by any tangible or oral means.
• Qualified Novelty
• The qualification may relate to:
 Time, meaning that novelty is judged by reference to designs published
within a limited preceding period of time; or
 Territory, meaning that novelty is judged by reference to all designs published
within the relevant jurisdiction, as opposed to anywhere in the world; or
 Means of expression, meaning that novelty is assessed by reference to
written or tangible disclosures anywhere in the world and to oral disclosures
only within the relevant jurisdiction.
Industrial Designs
• Newness/Novelty – Article 46 (2) (a)
Question: which novelty requirement is adopted in Ethiopia?
• Qualified novelty requirement in relation to time.
• Unqualified Universal Novelty in relation to territory.
• Question : what about the means of disclosure?
Industrial Designs
• Requirements for Protection – Article 46
• Posses Practical Applicability
• Article 46 (2) (b)
• An industrial design shall be: “deemed to possess practical
applicability if it is capable of serving as a model for repeated
manufacture of products.”
• Exclusion of Designs Dictated by Function – Article 46(4)
• Designs which are dictated solely by the function which the article is
to perform shall be excluded from protection.
• “The protection … shall not extend to any thing in an industrial design
which serves solely to obtain a technical result.”