We have previously reported on the amendments to the Harare Protocol that came into effect on 1 January 2017. One of these changes was that a mandatory request for search and examination must be made to the African Regional Intellectual Property Organization’s (“ARIPO’s”) office within three-years of the ARIPO filing date, along with payment of search and examination fees. Where no such request and payment is made within the prescribed period, the application lapses. At the time of this amendment, no provision was made for expediting or for delaying the request for search and examination.

However, further amendments have now been made to the Harare Protocol to provide for modified substantive examination, which came into effect on 1 January 2018.

The first option is for expedited/accelerated substantive examination. There are four requirements that must be met for such a request to be granted by the ARIPO office:

1. the application must be for a single invention and/or the applicant must agree to the examination division examining only the first identified invention of an application;
2. the applicant must undertake to immediately respond to any clarifications sought by the examining division;
3. the application cannot be abandoned and then reinstated before conclusion of examination; and
4. a search report based on a set of claims of either the same scope or a narrower scope than the claims of the ARIPO application must be provided to the ARIPO office.

The second option is for delayed substantive examination. The extension is allowed for up to one additional year beyond the prescribed three-year period from the ARIPO filing date. The requirements are:

1. a request for substantive examination must have been lodged within the prescribed three-year period from filing date;
2. a written explanation satisfactory to the director general must have been submitted with this request; and
3. the application must not lapse due to non-payment of annuities during this time.

The ARIPO office has discretion to permit or deny any request for modified substantive examination, although reasons must be provided. 

The ARIPO fee for a request for modified examination is USD700 and the request will not be considered unless the fee is fully paid.

Dr Joanne van Harmelen

patent attorney biotechnology IP [email protected]cell: +27 82 770 5396