ARRANGEMENT OF SECTIONS
1. Short title
3. Continuance of Marks, Patents and Designs Office
4. Registrar, Deputy Registrar and Assistant Registrars of Marks, Patents and Designs
5. Functions of Registrar
6. Seal of office
7. Registers for patents, etc.
8. Patentable inventions
9. Matter excluded from patent protection
10. Right to an invention
11. Who may apply for patent
12. Application for patent
13. Withdrawal and amendment of application
14. Unity of invention
15. Division of application
16. Joint applicants
17. Right of priority
18. Conversion of patent application into application for utility model certificate
19. Information concerning corresponding foreign applications for patents
20. Filing date of application for patent
21. Publication, observations and opposition
22. Examination of applications
23. Grant of patent
24. Rights conferred by patent
25. Exceptions to rights conferred by patent
26. Transfer of rights to patent
27. Proceedings for infringement of patent
28. Duration and maintenance of patent
29. HARARE Protocol Patents
30. Joint patentees
31. Compulsory licences in the public interest or for competition
32. Importation of patented products by Government or third party
33. Compulsory licences for failure to exploit patent
34. Licences in respect of dependent patents
35. Termination of contracts relating to licences
36. Invalidation of patents
International Application under the Patent Cooperation Treaty
37. Effect of international application designating Botswana
38. Office as receiving, designated and elected office
39. National processing
40. Entering national phase
41. Processing of international applications
Utility Model Certificates
42. Applicability of provisions relating to patents
43. Duration of utility model certificate
44. Conversion of application for utility model certificate into application for patent
45. Registrable industrial design
46. Application for registration of design
47. Right of priority
48. Filing date of application
49. Examination of application
50. Registration of design
51. Right to industrial design
52. Transfer of right to design
53. Rights conferred by registration
54. Exceptions to rights conferred by registration
55. Proceedings for infringement of industrial design
56. Duration and renewal of registered design
57. HARARE Protocol Designs
58. Inspection of registered design
59. Invalidation of registration of design
International Registration under the Hague Agreement
60. Examination and refusal of protection, etc.
61. Effects of an international registration
62. Invalidation of internationally registered design
63. Recordings in the International Register
Layout Designs of Integrated Circuits
64. Subject matter of protection for layout designs
65. Originality of layout design
66. Application for layout design
67. Filing date of application for layout design
68. Registration of layout design
69. Rights conferred by registration
70. Exceptions to rights conferred by registration
71. Invalidation of registered layout design
72. Duration of protection
73. Importation by persons other than owner
Marks, Collective Marks and Trade Names
74. Acquisition of exclusive right to mark
75. Saving of vested rights
76. Application for registration of mark
77. Filing date of application for registration of mark
78. Examination of application for registration of mark
79. Opposition to registration of mark
80. Registration of mark
81. Rights conferred by registration
82. Exceptions to rights conferred by registration
83. Proceedings for infringement of mark
84. Transfer of rights in mark
85. Duration and renewal of registration of mark
86. Invalidation of registration of mark
87. Removal of mark on grounds of non-use
88. Reinstatement of lapsed mark rights
89. Banjul Protocol on marks
90. Collective marks
91. Invalidation of registration of collective mark
92. Licensing of marks and collective marks
93. Trade names
International Registration under the Madrid Protocol
94. Initial examination of international applications
95. Lapse of basic application or basic registration
96. Initial refusal of registration by Office
97. Refusal of registration by Office
98. Registration under Madrid Protocol
99. Opposition to protection of internationally registered mark
100. Invalidation of internationally registered mark
101. Time limit of notification to International Bureau
102. Collective and certification marks
103. Replacement of internationally registered mark
105. Applicability of provisions relating to marks
106. Acquisition of exclusive right to geographical indication
107. Application for registration of geographical indication
108. Examination of application for registration of geographical indication
109. Opposition to registration of geographical indication
110. Registration of geographical indication
111. Rights of registered owner, etc.
112. Exceptions to rights conferred by registration
113. Invalidation of registration of geographical indication
Acts of Unfair Competition
114. Acts of unfair competition
Traditional Knowledge and Handicrafts
115. Registration of traditional knowledge
116. Who may register traditional knowledge
117. Rights conferred by traditional knowledge
118. Notification of registration of traditional knowledge
119. Invalidation of registration of traditional knowledge
120. Expiry of protection of traditional knowledge
121. Specific rights over traditional knowledge
122. Right to institute infringement proceedings
123. Transfer, assigning, etc., of rights over traditional knowledge
124. Exploitation of traditional knowledge rights by others
125. Granting of licences by owners of traditional knowledge
126. Registration of handicrafts
127. Validity of industrial property titles relating to traditional knowledge
128. Changes in ownership
129. Licence contract
131. Correction of errors
132. Exercise of discretionary powers
133. Extension of time for applications
134. Offences and penalties
136. Application of international treaties
138. Repeal of Cap. 68:03
140. Act to bind State
Act 14, 1996,
Act 19, 1997,
Act 8, 2010,
S.I. 69, 2012.
An Act to provide for the protection of industrial property in Botswana, giving effect to various international conventions, treaties and protocols to which Botswana is a party and for matters related thereto.
[ Date of Commencement: 31st August, 2012]
Preliminary (ss 1-7)
This Act may be cited as the Industrial Property Act.
In this Act, unless the context otherwise requires-
"ARIPO" means the African Regional Intellectual Property Organization;
"Banjul Protocol" means the Banjul Protocol on Marks of 27th April, 1994 as last revised or amended;
"basic application" means an application for registration of a mark filed with the Office under section 76;
"basic registration" means the registration of a mark under section 80;
"Budapest Treaty" means the Budapest Treaty of 28 April, 1977 as last revised or amended including the Regulations, on the international recognition of the deposit of micro-organisms for the purposes of patent procedure;
"collective mark" means any visible sign belonging to a collective owner and capable of distinguishing the origin or other common characteristic, including the quality, of goods or services of different enterprises which use the sign subject to the control of that owner;
"Common Regulations" means, in respect of industrial designs, the Common Regulations adopted under the Hague Agreement and, in respect of marks, the Common Regulations under the Madrid Protocol;
"convention country" means a country which is a party to the Paris Convention;
"court" means the High Court of Botswana;
"geographical indication" means an indication or sign which identifies goods as originating in the territory of a country or a region or locality in a country where a quality, reputation or other characteristic of the goods is essentially attributable to that geographical origin;
"HARARE Protocol" means the Protocol on Patents and Industrial Designs Within the Framework of the African Regional Industrial Property Organization (ARIPO) adopted at Harare, Zimbabwe, on December 10, 1982 as last revised or amended;
"industrial design" means any composition of lines or colours or any three dimensional form, whether or not associated with lines or colours, which gives a special appearance to a product of industry or handicraft;
"integrated circuit" means a circuit, in its final or intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in or on a piece of material and that is intended to perform an electronic function;
"International Bureau" means the International Bureau of the World Intellectual Property Organization (in this Act referred to as "WIPO");
"International Classification", in respect of marks, means the classification according to the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of June 15, 1957, as last revised or amended, and, in respect of industrial designs, means the classification according to the Locarno Agreement concerning the International Classification for Industrial Designs, of October 8, 1968, as last revised or amended;
"International Patent Classification" means the classification according to the Strasbourg Agreement of March 24, 1971 as last revised or amended;
"International Register" means the official collection of data concerning international registrations, as maintained by the International Bureau;
"invention" means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology;
"Journal" means the journal of marks, patents and designs referred to in section 5 (e);
"Madrid Protocol" means the Madrid Protocol on International Registration of Marks adopted in Madrid on 27th June, 1989 as last revised or amended;
"mark" means any visible sign capable of distinguishing the goods or services of an enterprise;
"Master" means the Master of the High Court;
"Office" means the Patents, Marks and Designs Office referred to in section 3;
"office of origin" means the office with which the basic application was filed or by which the basic registration was made;
"Paris Convention" means the Paris Convention for the Protection of Industrial Property of March 20, 1883, as last revised or amended;
"patent" means a title granted to protect an invention under this Act;
"Patent Cooperation Treaty" means the Patent Cooperation Treaty of 19th June, 1970, as last revised or amended;
"patentee" means a person, or a successor-in-title to the person, to whom a patent has been granted under this Act;
"priority date" means the date of the earlier application that serves as the basis for the right of priority provided for in the Paris Convention;
"Registrar" means the Registrar of Marks, Patents and Designs appointed under section 4;
"right of priority" means the right of priority provided for in Article 4 of the Paris Convention;
"the Hague Agreement" means the Hague Agreement concerning the International Registration of Industrial Designs as last revised or amended;
"the 1999 Act" means the Act of the Hague Agreement signed in Geneva on July 2, 1999;
"trade name" means the name or designation by which a business or enterprise is distinguished;
"traditional knowledge" means an idea, knowledge, practice, use or invention, written or unwritten, which may be associated to biological diversity, is a cultural, traditional or spiritual belief or value of a group of people;
"TRIPS Agreement" means the Agreement on Trade-related aspects of Intellectual Property contained in Annex 1C of the Agreement establishing the World Trade Organization, concluded on April 15, 1994 as last revised or amended; and
"utility model" means a technical creation that consists of a new shape or configuration of an object or of a component of an object that increases its functionality or utility.
The Marks, Patents and Designs Office established in terms of section 3 of the Act repealed under section 138 of this Act shall continue to exist as if it has been established under this Act.
(1) There shall be a Registrar of Marks, Patents and Designs (referred to in this Act as "the Registrar") who shall-
(a) be a public officer;
(b) subject to the control of the Minister, be responsible for the administration of this Act; and
(c) perform such functions and exercise such powers as may be conferred on him or her by this Act or any other enactment.
(2) The Registrar shall be appointed in accordance with the provisions of the Public Service Act.
(3) There shall be a Deputy Registrar of Marks, Patents and Designs, and such number of Assistant Registrars as it may be necessary to appoint for the efficient functioning of the Marks, Patents and Designs Office.
(4) The Deputy Registrar and Assistant Registrars shall be public officers and shall, likewise, be appointed in accordance with the provisions of the Public Service Act and perform such functions and exercise such powers as the Registrar may lawfully perform or exercise under this Act or any other enactment.
Without derogating from the generality of section 4, the Registrar shall-
(a) process all applications made in terms of this Act;
(b) grant patents and utility model certificates;
(c) register industrial designs, marks, collective marks, geographical indications and traditional knowledge;
(d) administer granted patents and utility model certificates and registered industrial designs, marks, collective marks, geographical indications and traditional knowledge; and
(e) establish and maintain a Journal of marks, patents, designs, geographical indications and traditional knowledge in which he or she shall publish all matters that are required to be published under this Act.
The Registrar shall have a seal of office which shall be affixed to every document issued or granted and to any copy issued in lieu of the original document.
(1) The Registrar shall maintain separate registers for patents, utility model certificates, industrial designs, marks, geographical indications and traditional knowledge and shall, in a section of the register of marks created for that purpose, register collective marks.
(2) There shall be entered in the registers referred to in subsection (1) such particulars as are required by this Act and such further particulars as the Minister may, by regulations, prescribe.
(3) Any person may, upon payment of the prescribed fee, and in accordance with any prescribed conditions, consult, inspect or make a copy of, or obtain an extract from, any register referred to in subsection (1).
Patents (ss 8-36)
(1) An invention shall be patentable if it is new, involves an inventive step, and is capable of industrial application.
(2) An invention may be or relate to a product or a process.
(3) An invention is considered to be new if it does not form part of the state of the art.
(4) For the purposes of this Act, the state of the art in relation to an invention, means anything which has been disclosed to the public, whether in Botswana or outside Botswana, in a tangible form, orally, by use or in any other way, prior to the filing or priority date of the application claiming the invention.
(5) For the purpose of determining the novelty of a claimed invention, a matter contained in another application filed with the Office and having an earlier filing or priority date shall form part of the state of the art, if the application is published under this Act.
(6) Disclosure of information which would otherwise affect the patentability of an invention claimed in the application shall not affect the patentability of that invention where the information was disclosed by-
(a) the applicant or his or her predecessor in title; or
(b) a third party that obtained the information directly or indirectly from the applicant or his or her predecessor in title, if the disclosure took place-
(i) during the 12 months preceding the filing date; or
(ii) where priority is claimed, during the 12 months preceding the priority date of the application.
(7) An invention shall be considered as involving an inventive step if, having regard to the state of the art relevant to the application claiming the invention as defined in subsection (4), it would not have been obvious to a person having ordinary skill in the art.
(8) An invention shall be considered as being capable of industrial application if it can be used in trade, or in any kind of industry including handicraft, agriculture, fishery and other services.
(1) For the purposes of this Act, the following shall not be regarded as inventions and shall be excluded from patent protection-
(a) a discovery or a plant, animal, micro-organism or substance as found in nature, including the human body;
(b) a scientific theory or mathematical method;
(c) a literary, dramatic, musical or artistic work or other aesthetic creation;
(d) a scheme, rule or method for doing business, performing a mental act or playing a game;
(e) a computer program.
(2) For the purposes of this Act, the following shall not be protected by patents, even if they are inventions-
(a) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised in relation thereto, except products for use in any such methods;
(b) an invention the commercial exploitation of which is necessary to protect public order or morality including protection of human or animal health, plant life or to avoid prejudice to the environment;
(c) plants and animals other than micro-organisms;
(d) essentially biological processes for the production of plants or animals.
(1) The right to a patent shall belong to the inventor.
(2) If two or more persons have made an invention jointly, the right to the invention shall belong to them jointly.
(3) Where two or more persons have made the same invention but independently of each other, the person whose application bears the earliest filing date, or, if priority is claimed, the person whose application bears the earliest validly claimed priority date shall, unless that application is abandoned, withdrawn or rejected by the Registrar, have the right to the patent.
(4) Where an invention is made in execution of a contract of employment, the right to the patent shall, in the absence of any agreement to the contrary, belong to the employer.
(5) The inventor shall be named as such in the patent, unless, in a special declaration in writing signed by him or her and addressed to the Registrar, he or she indicates that he or she wishes not to be named, and any promise or undertaking by the inventor made to any person to the effect that he or she will make such a declaration shall be without legal effect.
(1) An application for a patent in respect of an invention may be made by the inventor or by any other person who has acquired the right to apply from the inventor.
(2) Unless otherwise agreed, joint inventors may jointly apply for a patent.
(1) Every application for a patent shall be filed with the Registrar and shall contain-
(a) a request;
(b) a description;
(c) one or more claims defining the matter for which protection is sought;
(d) drawings (where referred to in the description or the claims);
(e) an abstract in the prescribed form,
and shall be accompanied by such fee as may be prescribed.
(2) A request referred to in subsection (1) shall contain a petition that a patent be granted, the name of and other prescribed information concerning the applicant, the inventor and the agent, if any, and the title of the invention.
(3) Where the applicant is not the inventor, the request shall be accompanied by a statement justifying the applicant's right to the patent.
(4) The description set out in the application shall disclose the invention in a manner which is sufficiently clear and complete to enable a person having ordinary skill in the art to carry out the invention, and shall indicate at least one mode known to the applicant in which the invention can be performed.
(5) Where an invention refers to or involves the use of biological material that is not available to the public and cannot be described in the patent application in such a manner as to enable the invention to be reproduced by a person skilled in the art, the description shall be regarded as inadequate for the purposes of this Act unless-
(a) the biological material has been deposited with a depositary institution recognised by the Minister no later than the date on which the patent application was filed at the Office;
(b) the application as filed contains relevant information available to the applicant on the characteristics of the biological material deposited;
(c) the application states the name of the depository institution and the deposit accession number; and
(d) other prescribed conditions regarding the formalities for the deposit and the supply of samples of the deposited material are complied with.
(6) For purposes of subsection 5 (a) an international depositary authority recognised under the Budapest Treaty shall be recognised without requiring a Minister's decision to recognise it.
(7) A claim referred to in subsection (1) shall be clear and concise and shall be fully supported by the description, and the description and any drawings filed may be used to interpret the claim.
(8) An abstract referred to in subsection (1) shall not be taken into account for the purpose of interpreting the scope of the protection but shall merely serve as technical information.
(1) An application for a patent may, at any time before the patent is granted, be withdrawn by the applicant.
(2) The applicant may, of his or her own initiative at any time before the grant of a patent, amend or correct his or her application.
(3) The applicant shall not, in amending his or her application under this section, include any material matter which was not disclosed in the initial application as filed.
(1) An application for a patent shall be in respect of a single invention or, where it is in respect of a group of inventions, the inventions shall be so linked as to form a single general inventive concept or have a unity of invention.
(2) The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground for the invalidation or revocation of the patent.
(1) An applicant may, at any time before the grant of a patent, divide his or her application into two or more applications (in this Act referred to as "divisional applications"), provided that each divisional application shall not include any matter which was not disclosed in the initial application as filed.
(2) The Registrar shall accord each divisional application the same filing date and, where applicable, the same priority date, as the initial application.
(3) The Registrar may require an applicant to divide the applications where the terms of section 14 (1) have not been complied with.
(1) Where two or more persons make a joint application for a patent, the applicants shall, in the absence of an agreement to the contrary, have equal undivided shares in the application and no one applicant shall deal with the application in any way without the consent of the other applicant or applicants.
(2) Without prejudice to subsection (1), if any steps are required to be taken to save the application from being abandoned, any applicant may, on his or her own behalf as well as on behalf of any other joint applicant, take such steps without recourse to the other applicant or applicants.
(1) An application for a patent made under this Part may contain a declaration, in writing, claiming priority, as provided for in Article 4 of the Paris Convention, of one or more earlier national, regional or international applications filed by the applicant or his or her predecessor in title in any convention country or any member of the World Trade Organization.
(2) Where a declaration of priority is made under subsection (1) the applicant shall, within such time as may be prescribed, furnish the Registrar with a copy of the application earlier filed which copy shall be certified as correct by the patent office with which it was so earlier filed.
(3) Where the earlier application referred to in subsection (2) is not in the English language and the Registrar deems that the validity of the priority claim is relevant to determine whether the invention concerned is patentable, the applicant shall submit an English translation of such earlier application within two months from the date of being notified to that effect by the Registrar.
(4) Where an applicant does not satisfy the requirements of subsections (2) and (3) and any regulations pertaining thereto, the declaration shall be considered as having not been made.
(5) The effect of the declaration referred to in subsection (1) shall be as provided for in Article 4B of the Paris Convention.
(6) The applicant may, in such form as may be prescribed, request the correction or addition of a priority claim, provided the filing date of the application before the Office is not later than the date of the expiration of the priority period calculated from the filing date of the earliest application whose priority is claimed.
(7) Where an application that claims or could have claimed the priority of an earlier application has a filing date that is later than the date on which the priority period expired, the Registrar shall, within two months from that date, upon request being filed as prescribed, restore the right of priority if the request states the reasons for the failure to comply with the priority period.
(8) The Registrar shall restore the right of priority where he or she finds out that the failure to file the subsequent application within the priority period occurred in spite of due care required by the circumstances having been taken.
(9) Where a copy of an earlier application required under subsection (2) is not filed within the prescribed time limit by an applicant, the Registrar may, upon a request being filed by the applicant as prescribed, restore the right of priority if that request is filed within the time limit for filing such copy, provided that-
(a) the Registrar is satisfied that a request to obtain the copy was filed with the Office that received the earlier application not later than 14 months from the date of filing of that earlier application; and
(b) a copy of the earlier application is filed with the Registrar within one month from having been obtained from the said Office.
(10) Any request under this section shall be subject to payment of the prescribed fees by the applicant.
(1) At any time before the grant or refusal of a patent, an applicant for a patent may, upon payment of the prescribed fee convert his or her application for a patent into an application for a utility model certificate.
(2) No person may convert an application under subsection (1) more than once.
(1) An applicant shall indicate in the application for a patent the date and the number of other applications filed by him or her or his or her predecessor in title outside Botswana relating to the same or essentially the same invention as that claimed in the application filed in Botswana.
(2) The applicant shall, when requested by the Registrar, furnish the following documents relating to any of the applications referred to in subsection (1)-
(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of such application;
(b) a copy of the patent or other title of protection granted in respect of such application;
(c) a copy of the final decision rejecting the application or refusing the grant requested in respect of the application; and
(d) a copy of the final decision revoking or invalidating the patent or other title of protection granted in respect of such application.
(1) The filing date of an application for a patent shall be the date on which the application is received by the Office if on the date of its receipt, the application contains-
(a) an express or implicit indication that the grant of a patent is sought;
(b) information which will enable the Registrar to establish the identity of the applicant and to contact him or her;
(c) a part which, on the face of it, appears to be a description of the invention; and
(d) a part which, on the face of it appears to be a claim of the invention.
(2) For the purposes of establishing the filing date, information mentioned in 1 (a) may be filed in English or Setswana, provided that where the information is filed in Setswana, a translation into English shall be supplied by the applicant upon request by the Registrar.
(3) Where the application does not comply with the requirements of subsection (1), the Registrar shall, in writing, request the applicant to supply the missing information, and the filing date shall be the date on which the missing information is received by the Office.
(4) If an applicant fails to comply with any request made by the Registrar under subsection (2), the application shall be treated as though it had never been filed.
(5) Where a part of the description of the invention appears to be missing from an application for a patent, or the application makes reference to drawings which are not included in the application, the Registrar shall request the applicant to furnish the missing part or drawings within such time as may be prescribed, and the filing date of the application shall be the date on which such part or drawings are received by the Office.
(6) If the applicant fails to comly with any request made by the Registrar under subsection (5), the Registrar shall accord to the application the date on which the application was received by him or her, as the filing date, and shall treat any reference to such part or drawings as being non-existent.
(7) Notwithstanding the provisions of subsection (6) and subject to the prescribed requirements, a reference, made in the application to a previously filed application shall, for the purposes of establishing the filing date of the application, replace the description and any drawings.
(1) Upon the expiry of 18 months, counted from the date of filing the application for a patent with the Registrar or, where relevant, from the applicable priority date, the Registrar shall, in the prescribed manner and subject to payment of the prescribed fee by the applicant, publish the application in the Journal and thereafter the application shall be open for public inspection.
(2) The applicant may request, in writing, for the application to be published before the expiry of the period under subsection (1) and subject to compliance with the requirements for publication, the Registrar shall publish the application as requested.
(3) The applicant shall be entitled to claim compensation from any person who, after the publication of the application and before the grant of the patent, performs without authorisation from the applicant in respect of the claimed invention any act that would be regarded as an infringement of a patent granted on the invention.
(4) An applicant may claim compensation referred to in subsection (3) where the applicant gives notice to the person concerned and the claim deals with only those acts covered by the patent as published.
(5) Any interested person may, within the prescribed period and in the prescribed manner, submit to the Registrar, an observation or objection against the application for a patent on grounds that-
(a) the claimed subject matter does not constitute an invention in terms of section 2, or is excluded from patentability under section 9;
(b) the requirements of sections 8, 12 (1), 12 (4), 12 (5), 12 (7) or 14 have not been satisfied; or
(c) sections 13 (3) and 15 (1), where applicable, have not been complied with.
(6) The person submitting an observation or objection under subsection (5) shall state the reasons for his or her observation or objection, and attach any documents or other evidence in support of the observation or objection.
(7) The person submitting an observation or objection under subsection (5) shall not become a party to any proceedings under this Act by reason only that he or she submitted an observation or objection under this section.
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