Globally, an owner ofintellectual property rights like trademark, patent, industrial designs…etcshall take all the necessary safeguard means of protecting them. The same istrue for Ethiopia. Especially these days given the effects business expansion dueto globalization, and various developments in communication mechanisms, itseems vital to do so. Today, someone in another country using your patent couldbe as destructive as someone using it in your own town. So registering yourpatent at home country only will not save your patent from being vulnerableoverseas.

As one alternative,this note will focus on the legal mechanism of protecting your patent rights inEthiopia. It give you a brief idea about what is patent and patentable, how topatent it, where to get a patent in Ethiopia and other related issues.

What is patent andpatentable invention?

The first issue thatshould be addresses before submitting a certain invention as patent is definingwhat patent. According to the Ethiopian patent act, i.e. a ProclamationConcerning Inventions, Minor Inventions and Industrial Designs Proclamation No.123/1995, patent is an invention that is new, involves an inventive step and isindustrially applicable, then it will be patentable.

A patent right shallbelong to the inventor.  But if two or more persons have jointly made aninvention the right to the patent shall belong to them jointly.

But in situationswhere an invention is made in the execution of a contact of service oremployment, the patent shall belong to the person having commissioned the workor the employer.

Patentable Inventions

1. An invention is patentable if it is new, involves an inventive step and is industrially applicable.
2. An invention shall be considered new if it is not anticipated by prior art. Prior art shall consist of everything disclosed to the public, anywhere 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.
3. Notwithstanding the provisions of sub-article (2) of this article the disclosure to the public of the invention shall not be taken into consideration if it occurred within 12 months preceding the filing date or, where applicable, tile priority date, of the application, and if it was by reason or in consequence of acts committed by the applicant or his predecessor in title or an abuse committed by a third party with regard to the applicant or his predecessor in title.
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.
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.

Non-PatentableInventions

The following shallnot be patentable:

1. Inventions contrary to public order on morality
2. Plant or animal varieties or essentially biological processes for the production of plants or animals.
3. Schemes, rules or methods for playing games or performing commercial and industrial activities and computer programmes.
4. Discoveries, scientific theories and mathematical methods.

Where to get a patentin Ethiopia?

In Ethiopia patentswill be granted by the Ethiopian patent office, The Ethiopian IntellectualProperty Office, the office entrusted with the powers of registration andprotection of Intellectual property rights, including Patents. Accordingly TheEthiopian Intellectual property office, the patent agency in Ethiopia,registers and patents intellectual property.

Patent Application

A person having theright to a patent for an invention may, upon payment of the prescribed fee,apply to the IP office for the grant of a patent for that invention. Such applicationfor a patent, patent application submitted to the patent agency via your patentagent or your patent attorney in Ethiopia shall contain the following.

1. A notarized document containing a description of the invention, one or more claims, an abstract and where necessary drawings.( the document has to be translated in to English)
2. a notarized and authenticated power of attorney to the Patent agent or patent attorney in Ethiopia
3. The completed patent application forms;
4. Payment of the prescribed fee.

The EthiopianIntellectual property office after examining the patent application, will giveeither a Patent of Invention or a Patent of Introduction to the applicant.

TYPES OF PATENTS

Patent of Invention

This patent is givento a patent applicant where it is either going to be registered in Ethiopia forthe first time or if a period of 12 months have not lapsed since it has beenregistered in other countries.

If an inventor isgranted the patent of invention, the invention will be valid for a period of 15years. But the validity of the patent may be extended for a further five yearsprovided that proof is furnished that the invention is being properly worked inEthiopia.

Patent ofIntroduction

This type of patentmay be issued to an invention which has been patented abroad and not expiredbut has not been patented in Ethiopia following a declaration by the intendedparty for which he takes full responsibility.

The requirements forpatent of introduction are the same as those prescribed for the patent of invention.But the applicant for patent of introduction has to indicate the applicationnumber, date and origin of the foreign patent or the requisite source ofinformation if he doesn’t know the details.

This patent ofintroduction, if registered in Ethiopia, may be valid for a period that mayextend up to ten years and shall be coupled with the owner’s obligation toprove the working of the invention each year as from the third year after ithas been granted and made to pay the relevant annual fees.

Application Procedure

The intellectualproperty office will accord as the filing date, provided that all therequirements are fulfilled, the date of receipt of the patent application.

Then the intellectualproperty office will conduct a formal and substantive examination of theapplication. If a given patent application passes both the formal andsubstantive examination, the office will;

Ø Publish a reference to the grant of thepatent in the official gazette

Ø Issue to the applicant a certificate ofthe grant of the patent and a copy of the patent.

Ø Record of the patent

Ø Make available copies of the patent toany person on payment of the prescribed fees.

Transfer of Patents

Any patent orapplication for a patent may be transferred by sale or inheritance or any othermeans in accordance with the Ethiopian law. Such transfer shall be recordedwith the commission, upon payment of fees prescribed in the regulations

Rights of a Patentee

The patentee shallhave the exclusive right to make, use or otherwise exploit the patentedinvention. But this patentee will not have import monopoly right over theproducts of the patented invention in Ethiopia.

The patentee willhave a right to institute court proceedings against any person who infringesthe patent.

Duration of a Patent

 The duration ofprotection for a patent and a patent of introduction are quite different. 

A patent will begranted an initial period of protection for a period of fifteen years startingfrom the filing date of the application for protection. However, the validityof the patent may be extended for a further period of five years provided thatproof is furnished that the invention is being properly worked in Ethiopia. 

In cases of patentsof introduction, a patent of introduction will be considered to be valid for aperiod that may extend up to ten years and shall be coupled with the owner'sobligation to prove the working of the invention each year as from the third yearafter it has been granted and to pay the relevant annual fees.

Compulsory Patents

The concept ofcompulsory patents arises where the patentee whose invention cannot be workedeffectively without the invention patented earlier applies for a compulsorylicense to use the earlier invention.

In addition to theabove the earlier patentee whose invention cannot he worked effectively withoutthe later invention may apply for a compulsory license to use the laterinvention.

But the Intellectualproperty office grants the issuance of compulsory license only where the personrequesting for a compulsory license to exploit an invention furnishes proofthat he has not been able to conclude a license contract with the patentee forthe exploitation of the invention on reasonable terms.

It should be notedthat the person who is granted a compulsory license has to pay the patentee areasonable exploitation fee, the amount of which shall be fixed by bothparties. But where the parties disagree on the amount of fee, it shall be fixedby the Commission.

Termination,Invalidation and Surrender of Patent

A patent may beterminated, invalidated or surrendered if it is found to be within thelimitations prescribed in the proclamation.

Termination

A patent will beconsidered to be terminated if either the patentee surrenders it by a writtendeclaration to the Commission, or if the annual fee isnot paid in due time.

Invalidation

If the subject matterof the patent is not patentable or if the description does not disclose the inventionin a manner sufficiently clear & complete for it to be carried out by aperson skilled in the art, the court will invalidate a patent in whole or inpart by the court upon request by an interested party.

If you have anadditional question or comment please  Contactus.

“Copyright ©2009-2013 FikaduAsfaw and Associate Law Office”

Related notes

Ø Trademark Registration and its Protection in Ethiopia

Ø HaveYou Heard About The Newly Issued Trademark Law Of Ethiopia?

Ø Whydo you need to protect your Trademark in Ethiopia?

Note: This guideprovides vital information on Ethiopian Patent law and practice and is notintended to substitute professional advice given with full knowledge of thespecific circumstances of each case and proficiency in the law of Ethiopia suchas might be provided by a Patent Attorney or Agent in Ethiopia.