Reported by David Cochrane and Craig Kahn, Spoor & Fisher, South Africa, and prepared by CIOPORA Office.
Out of 54 states on the African continent roughly a half currently provide protection for Plant Breeders’ Rights (PBR). While Egypt, Ethiopia, Kenya, Morocco, Rwanda, South Africa, Tanzania and Zanzibar, Tunisia, Zambia and Zimbabwe have national PBR laws and offices, in other countries the protection is available through the regional African Intellectual Property Organisation (OAPI) system.
In 2020, there were developments with both the SADC Protocol for the Protection of New Varieties of Plants, and the Arusha Protocol for the protection of New Varieties of Plants. Additionally, Ghana has passed a new PBR Bill that is awaiting official publication.
Here is what breeders seeking protection for their plant varieties on the African continent need to know about the existing and developing systems of PBR protection across Africa:
African Intellectual Property Organisation (OAPI) - OAPI registrations extend automatically to all OAPI Member states that do not have their own national laws. A decision issued by a national court of any member state on the provisions of the OAPI law is binding on all other member states.
Ghana - On 9 November 2020, a Plant Variety Protection Bill 2020 to establish a legal framework to protect the rights of breeders of new varieties of plants or plant groupings and to promote the breeding of new varieties of plants in Ghana, was passed into law. As the law is still awaiting Presidential Assent and publication, it may still be some time before it is possible to file for PBR protection in Ghana.
Protocol for the Protection of New Varieties of Plants, Southern African Development Community (SADC) - SADC is an intergovernmental organization headquartered in Gaborone, Botswana. Its goal is to further regional socio-economic cooperation and integration as well as political and security cooperation among 16 countries in Southern Africa. The SADC member states are Angola, Botswana, Comoros, Congo (DR), Eswatini, Lesotho, Madagascar, Malawi, Mauritius, Mozambique, Namibia, Seychelles, South Africa, Tanzania, Zambia and Zimbabwe. On 29 June 2020, Botswana became the ninth Member state to sign the SADC Protocol with other signatories being Angola, Democratic Republic of Congo, Eswatini, Lesotho, Mozambique, Namibia, Tanzania and Zambia. In terms of Article 44 of the Protocol, it will come into force thirty days after signature by two-thirds (ten) of the SADC Member states. Once it comes into force, SADC Protocol for the Protection of New Varieties of Plants will provide a regional system for the protection of PBR in the signatory states. Each member state will need to have national PBR legislation for the protection to be effective.
Arusha Protocol, The African Regional Intellectual Property Organisation (ARIPO) - ARIPO is a regional system providing for Patent, Trademark and registered Design protection in Member states. Membership of ARIPO is open to all Member states of the United Nations Economic Commission for Africa. The current ARIPO Member states are Botswana, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Mauritius, Namibia, Rwanda, Sao Tome e Principe, Sierra Leone, Somalia, Sudan, the United Republic of Tanzania, Uganda, Zambia, and Zimbabwe. It should be noted that not all the states have signed the Harare Protocol for Patents and Designs and/or the Banjul Protocol for Trademarks. Even though a state is a member of ARIPO, Patent, Design and Trademark protection via ARIPO is only available if the state has acceded to the Harare and Banjul Protocols. Furthermore, unlike OAPI, where a single application automatically covers all Member states and it is not possible to designate the countries of interest, ARIPO applications specifically require the applicant to designate those Member states where protection is required. A Patent, Design or Trademark granted by ARIPO has, in each designated state, the same effect as a Patent, Design or Trademark registered, granted or otherwise having effect under the applicable national law. Enforcement of a granted ARIPO Patent, Design or Trademark is undertaken nationally. On 6 July 2015, The Arusha Protocol for the protection of New Varieties of Plants was adopted by a Diplomatic Conference of ARIPO Member states in Arusha, Tanzania. Sao Tome e Principe, Gambia, Ghana, and Mozambique had signed the Arusha Protocol on 6 July 2015, and Tanzania later signed the Protocol on 28 September 2015. Rwanda deposited its instrument of accession to the Arusha Protocol on 7 June 2019, and Sao Tome e Principe deposited its instrument of ratification of the Protocol on 29 September 2020. The Arusha Protocol will come into force twelve months after four states have deposited their instruments of ratification or accession. Once the Arusha Protocol comes into force, it will also provide a regional system for the protection of PBRs in the signatory states. Each Member state will need to have national PBR legislation for the protection to be effective.
Arusha protocol and SADC protocol – advantages and current challenges. The advantage of the Arusha Protocol is that ARIPO already has an office in place for receiving, processing and granting patent applications and should be able to set up a similar system for PBRs (as has been done at OAPI). Provision is made for ARIPO to rely on DUS test results from other PBR offices, or to entrust any competent institution of a Contracting state or any member of an inter-governmental organization providing an effective PVR system to carry out technical examination for PBR grant. A challenge for the Arusha Protocol is that it has to date only acceded to/ratified by two states. The advantage of the SADC Protocol is that it has already been signed by nine Member states and will come into force when signed by one more member state. A challenge for the SADC Protocol is that a SADC PBR Office will need to be set in place for receiving, processing and granting PBR applications. Provision is made for a SADC PBR Office to enter into an arrangement with any relevant institutions or persons either in or outside SADC Region, to carry out DUS testing, or it may use the results of such tests that have already been carried out by such institution or person. A further challenge for both systems is that those states that do not already have national laws for the protection of Plant Breeders’ Rights will need to enact national laws in order for protection to be effective. It remains to be seen as to whether both the ARIPO Arusha and SADC Protocols will be implemented. Currently, both systems are moving forward, and more countries are preparing laws for the protection of new plant varieties. In the future, we expect to see more African countries that will provide PBR protection. Currently, Algeria, Angola, Botswana, Democratic Republic of Congo, Eswatini (formerly Swaziland), Lesotho, Madagascar, Malawi, Mauritius, Mozambique, Namibia and Uganda either have draft PBR legislation, or are considering implementing PBR legislation soon.
About the author:
Mr David Cochrane, Partner at Spoor and Fisher, South Africa
Mr Cochrane is an admitted Attorney of the High Court of South Africa. In his practice, he specializes in domestic and international patent matters, including the preparation and prosecution of patent applications. As an expert patent attorney, Mr Cochrane has extensive experience in filing patent applications in various technical fields, as well as Plant Breeders’ Rights (PBR). He is the author of the PBR chapter of Dean & Dyer: Intellectual Property Law in South Africa. Being a fellow and a member of the South African Institute of Intellectual Property Law (SAIIPL), he acts as SAIIPL’s PBR Law & Practice lecturer and examiner.
Mr Craig Hahn, Partner at Spoor and Fisher, South Africa Craig has extensive experience in the filing and prosecution of patent, utility model and design applications as well as Plant Breeders’ Rights throughout Africa, including ARIPO and OAPI. He has experience in the drafting of patent specifications for biotechnology, genetic engineering and pharmaceutical products and has experience in patent and design enforcement in Africa.
Craig is a fellow of the South African Institute SA Institute of Intellectual Property Law (SAIIPL) and a member of International Federation of Intellectual Property (AIPPI).