[Chap26:03]CHAPTER 26:03
PATENTS ACT
Acts 26/1971, 39/1973 (ss. 39 and 52), 42/1976 (s. 15), 39/1979, 15/1981,
29/1981, 41/1983, 12/1986 (s. 13), 11/1991 (s. 17), 20/1994 (s. 7).
ARRANGEMENT OF SECTIONS
PART I
PRELIMINARY
Section
1. Short title.
2. Interpretation.
PART II
ADMINISTRATION
3. Patent Office, Controller, registrars of patents and other
officers.
4. Seal.
5. Register of Patents.
PART III
APPLICATIONS GENERALLY
6. Persons entitled to make application.
7. Form of application.
8. Complete and provisional specifications.
9. Contents of specification.
10. Effective date of claims of complete specification.
11. Examination of applications and specifications.
12. Ante-dating and post-dating of applications and
specifications.
13. Refusal of application in certain cases.
14. Powers of Registrar if specification or application
defective.
15. Lapsing of applications.
16. Acceptance and publication of complete specification and
cancellation thereof.
17. Opposition to grant of patent.
18. Substitution of applicants.
19. Prior knowledge or publication of invention excused in
certain circumstances.
20. Provisions for secrecy of certain inventions.
PART IV
GRANT, EFFECT AND TERM OF PATENT
21. Grant and sealing of patent.
22. Amendment of patent granted to deceased applicant.
23. Date of patent.
24. Extent, effect and form of patent.
25. Term of patent.
26. Patents of addition.
27. Renewal of patents.
28. Restoration of lapsed patents.
29. Licences of right.
30. Cancellation of entry made in terms of section 29.
31. Compulsory licence in case of abuse or insufficient use of
patent rights.
32. Inventions relating to food or certain other commodities.
33. Supplementary provisions as to licences.
34. Use of patented inventions for service of the State.
35. Special provisions as to State use during emergency.
36. Reference of disputes as to State use.
PART V
SPECIAL PROVISIONS RELATING TO SPECIFICATIONS, ANTICIPATION AND RIGHTS IN
INVENTIONS
37. Amendment of specification by Registrar.
38. Amendment of specification with leave of Court or Patents
Tribunal.
39. Restrictions on recovery of damages in certain cases.
40. Savings for anticipation.
41. Co-ownership of patents.
42. Disputes as to inventions made by joint inventors.
43. Disputes as to inventions made by employees.
44. Avoidance of certain restrictive conditions in contracts.
45. Revocation of patents.
46. Consequences of revocation on grounds of fraud.
47. Surrender of patents.
PART VI
INFRINGEMENTS
48. Procedure and conditions in action for infringement.
49. Relief for infringement of partially valid specification.
50. Restrictions on recovery of damages for infringement.
51. Remedy for groundless threats of infringement proceedings.
52. Power of Court to make declaration as to non-infringement.
PART VII
ASSIGNMENTS AND CORRECTIONS
53. Provisions as to assignments.
54. Power of Registrar to authorize corrections.
55. Rectification of Register.
PART VIII
FUNCTIONS OF REGISTRAR IN RELATION TO CERTAIN EVIDENCE, DOCUMENTS AND POWERS
OF REGISTRAR
56. Evidence of certain entries and documents.
57. Requests for information as to patent or patent application.
58. Loss or destruction of patent.
59. Exercise of discretionary powers of Registrar.
60. Proceedings before Registrar.
61. Registrar may award costs.
62. Advertisements to be approved by Registrar.
PART IX
PATENT AGENTS
63. Patent agents and their functions.
64. Qualification and registration of patent agents.
65. Removal of names from Register of Patent Agents.
66. Privileges of attorneys.
67. Entitlement to practise as patent agent and power of
Controller to refuse to deal with certain agents.
68. Prohibition of certain acts of patent agents.
PART X
PATENTS TRIBUNAL AND APPEALS
69. Appeals from Registrar.
70. Patents Tribunal.
71. General powers of Patents Tribunal.
72. Right of audience.
73. Costs and security for costs.
74. Appeals to Supreme Court.
75. Assessors.
76. Time for appeals.
77. Rules.
78. References to Patents Tribunal by Registrar.
PART XI
INTERNATIONAL ARRANGEMENTS
79. Convention countries.
80. Supplementary provisions as to Convention applications.
81. Special provisions as to vessels, aircraft and land
vehicles.
82. Protocol on Patents and Industrial Designs.
83. Protection of inventions communicated under international
agreements.
PART XII
OFFENCES AND PENALTIES
84. Falsification of certain documents.
85. Deceiving or influencing Registrar or other officer.
86. Witness giving false evidence.
87. Prohibition on trafficking in patents by officers.
88. Unauthorized claim of patent right.
89. Unauthorized use of certain words.
90. Penalties.
PART XIII
GENERAL
91. Lodging and authentication of documents.
92. Expenses of administration.
93. Provisions as to fees.
94. Saving for certain forfeitures.
95. Patent and Trade Marks Journal.
96. Power to make regulations.
97. Savings.
SCHEDULE: Protocol.
AN ACT to consolidate and amend the law relating to patents; and to provide
for matters incidental to or connected with the foregoing.
[Date of commencement: 1 February 1972.]
PART I
PRELIMINARY (sections 1-2)
[Chap26:03s1]1 Short title
This Act may be cited as the Patents Act [Chapter 26:03].
[Chap26:03s2]2 Interpretation
(1) In this Act-
'applicant' includes a person in whose favour a direction has been
given under section eighteen or his legal representative;
'appointed day' means the 1st February, 1972;
'article' includes any substance or material and any equipment,
machinery or apparatus, whether affixed to land or not;
'assignee', in relation to an invention, means-
(a) a person who has derived his title to the invention for
Zimbabwe directly or indirectly from the inventor thereof or from the
latter's assignee; or
(b) the legal representative of a person referred to in
paragraph (a);
'Controller' means the Controller of Patents, Trade Marks and
Industrial Designs appointed in terms of paragraph (a) of subsection (2) of
section three;
'Convention application' means an application made by a person
referred to in subsection (2), as read with subsection (3), of section six;
'Convention country' means a country or territory which the
President has, in terms of section seventy-nine, declared to be a Convention
country for the purposes of this Act;
'Court' means the High Court;
'date of lodging', in relation to any document lodged under this
Act, means the date on which the document is lodged or, where it is deemed
by virtue of any provision of this Act or the repealed legislation to have
been lodged on any different date, the date on which it is deemed to have
been lodged;
'department of the State' means any-
(a) department of the State; or
(b) statutory corporation or authority which is prescribed for
the purposes of this definition;
'effective date', in relation to-
(a) an application which has been ante-dated or post-dated under
this Act or the repealed legislation, means the date to which that
application has been so ante-dated or post-dated;
(b) an application in a Convention country, means the date on
which the application in respect of the relevant invention was made in the
Convention country in question or is in terms of the laws of that country
deemed to have been so made;
(c) any other application, means the date on which that
application was lodged at the Patent Office;
'examiner' means a person appointed in terms of paragraph (c) of
subsection (2) of section three to be an examiner;
'exclusive licence' means a licence from a patentee which confers on
the licensee, or on the licensee and persons authorized by him to the
exclusion of all other persons, including the patentee, any right in respect
of the patented invention;
'invention' means any new and useful art, whether producing a
physical effect or not, process, machine, manufacture or composition of
matter which is not obvious or any new and useful improvement thereof which
is not obvious, capable of being used or applied in trade or industry and
includes an alleged invention;
'inventor' means the person who actually devised the invention and
includes the legal representative of an inventor but does not include a
person to whom an invention has been communicated, either from within or
outside Zimbabwe;
'Journal' means the Patent and Trade Marks Journal published in
terms of section ninety-five;
'legal representative' means-
(a) the liquidator or receiver of a company;
(b) the representative recognized by law of any person who has
died, become insolvent or bankrupt or assigned his estate, is an infant or a
minor, is of unsound mind or is otherwise under a disability;
'Minister' means the Minister of Justice, Legal and Parliamentary
Affairs or any other Minister to whom the President may from time to time
assign the administration of this Act;
'patent' means letters patent for an invention granted for Zimbabwe
under section twenty-one or the corresponding provision of the repealed
legislation;
'patentee' means the person for the time being entered on the
Register as grantee or proprietor of a patent;
'patent agent' means a person who is registered or deemed to have
been registered as such in terms of this Act;
'patent of addition' means a patent granted under section twenty-six
or the corresponding provision of the repealed legislation;
'Patent Office' means the Patent Office established under section
three;
'patented article' means any article in respect of which a patent
has been granted and is for the time being in force;
'Patents Tribunal' means the Patents Tribunal established under
section seventy;
'published' means made available to the public and, without
prejudice to the generality of the foregoing provision, a document shall be
deemed, for the purposes of this Act, to be published if it can be inspected
as of right by members of the public, whether upon payment of a fee or
otherwise;
'Register' means the Register of Patents kept at the Patent Office
under section five;
'Register of Patent Agents' means the Register of Patent Agents kept
under subsection (1) of section sixty-four;
'Registrar' means the Controller or a registrar of patents appointed
in terms of paragraph (b) of subsection (2) of section three;
'repealed legislation' means the Patents Act, 1957 (No. 13 of 1957)
or the Patents Act [Chapter 222 of 1939];
'specification' means a provisional or a complete specification, as
the circumstances may require, referred to in section nine;
(2) Subject to sections nineteen, forty, eighty and eighty-three,
an invention shall be deemed to be new for the purposes of this Act if on or
before the effective date of the application for a patent in respect thereof
the invention was not-
(a) known or used anywhere in Zimbabwe by anyone other than the
applicant or his agent or the person or persons from or through whom such
applicant has derived his right or title:
Provided that secret knowledge or secret user
otherwise than on a commercial scale shall be disregarded; or
(b) worked anywhere in Zimbabwe otherwise than by way of
reasonable technical trial or experiment by the applicant or any person or
persons from or through whom such applicant has derived his right or title;
or
(c) described in a patent specification available to public
inspection in accordance with any repealed legislation or this Act; or
(d) described in writing or in any other way in any publication
of which there was a copy anywhere in or outside Zimbabwe at the effective
date of the application; or
(e) claimed in any complete specification for a patent which was
lodged in accordance with any repealed legislation or this Act and which,
though not available to public inspection at the effective date of the
application, was deposited pursuant to an application for a patent which is,
or will be, of prior date to the date of any patent which may be granted in
respect of the said invention.
(3) A reference in this Act to the date of a patent shall be
construed as a reference to the appropriate date specified in subsection (1)
of section twenty-three.
PART II
ADMINISTRATION (sections 3-5)
[Chap26:03s3]3 Patent Office, Controller, registrars of patents and other
officers
(1) There shall be established an office, to be called the Patent
Office, for the registration of patents and other matters in terms of this
Act.
(2) There shall be-
(a) an officer, to be styled the Controller of Patents, Trade
Marks and Industrial Designs, who shall exercise general supervision and
direction of the Patent Office; and
(b) one or more registrars of patents who shall, subject to the
control of the Controller, have all the powers conferred by this Act upon
the Registrar; and
(c) such examiners and other officers as the Minister considers
necessary for the better carrying out of the provisions of this Act;
whose offices shall be public offices and form part of the Public Service.
(3) An examiner or other officer referred to in paragraph (b) of
subsection (2) shall, if the Minister so directs, have the power to do any
act or thing which may be lawfully done by a registrar of patents under this
Act or any other enactment.
[Chap26:03s4]4 Seal
There shall be a seal of the Patent Office and impressions thereof
made for the purposes of this Act or the repealed legislation shall be
judicially noticed.
[Chap26:03s5]5 Register of Patents
(1) There shall be kept at the Patent Office a Register of Patents,
in which shall be entered-
(a) particulars of patents in force, of assignments and
transmissions of patents and of licences under patents; and
(b) notice of all matters which are required by or under this
Act to be entered in the Register and of such other matters affecting the
validity or proprietorship of patents as the Registrar thinks fit.
(2) All registers of patents established and kept under the
repealed legislation shall, under arrangements made by the Controller with
the approval of the Minister, be incorporated with and form part of the
Register of Patents established under subsection (1), so, however, that such
arrangements shall in no way be deemed to extend the term and effect of any
patent registered in such registers beyond the term and effect provided in
respect of such patent by this Act.
(3) Subject to this Act, the Register shall, at all convenient
times, be open to inspection by the public and a certified copy, sealed with
the seal of the Patent Office, of any entry in the Register shall be given
on payment of the prescribed fee to any person requiring it.
(4) The Register shall be prima facie evidence of any matters
required or authorized by or under this Act to be entered therein or which
were required or authorized by or under the repealed legislation to be
entered in a register of patents referred to in subsection (2).
(5) No notice of any trust, whether expressed, implied or
constructive, shall be entered in the Register and the Registrar shall not
be affected by any such notice.
PART III
APPLICATIONS GENERALLY (sections 6-20)
[Chap26:03s6]6 Persons entitled to make application
(1) An application for a patent for an invention may be made by any
of the following persons-
(a) a person claiming to be the inventor of the invention who
owns the invention in respect of Zimbabwe; or
(b) an assignee;
and may be made by that person either alone or jointly with any other
person.
(2) Without prejudice to subsection (1), an application for a
patent for an invention in respect of which protection has been applied for
in a Convention country may be made by the person by whom the application
for protection was made or by the assignee of that person:
Provided that no application shall be made under this subsection
after the expiration of twelve months from the date of the application for
protection in a Convention country or, where more than one such application
for protection has been made, from the date of the first such application.
(3) An application for a patent may be made under subsection (1) or
(2) by the legal representative of-
(a) a deceased person who, immediately before his death, was
entitled to make such an application; or
(b) a person under disability who, had it not been for such
disability, would himself have been entitled to make such application.
[Chap26:03s7]7 Form of application
(1) An application for a patent shall-
(a) be made in the prescribed form; and
(b) be lodged at the Patent Office in the prescribed manner; and
(c) state an address for service in Zimbabwe to which all
notices and communications may be sent; and
(d) in so far as they are not already stated for the purposes of
paragraph (c), state the full postal, residential and business addresses of
the applicant.
(2) An assignee or legal representative making or joining in an
application shall furnish such proof of title or authority as the Registrar
may require or as may be prescribed.
(3) An application form shall-
(a) state that the applicant owns the invention in respect of
Zimbabwe; and
(b) give the full name of the inventor; and
(c) where the inventor is not the applicant or one of the
applicants, contain a declaration that the applicant believes him to be the
inventor.
(4) A Convention application, in addition to the requirements set
out in subsection (3), shall state-
(a) the Convention country in which such application for
protection was made; and
(b) the number of such application; and
(c) the effective date of such application; and
(d) in which respect the applicant in the Convention country and
in Zimbabwe qualifies.
[Chap26:03s8]8 Complete and provisional specifications
(1) An application for a patent-
(a) which is not a Convention application, shall be accompanied
by either a complete specification or a provisional specification;
(b) which is a Convention application, shall be accompanied by a
complete specification.
(2) Subject to this section, where an application referred to in
paragraph (a) of subsection (1) is accompanied by a provisional
specification a complete specification shall be lodged within twelve months
from the date that the application was lodged and if the complete
specification is not so lodged the application shall be deemed to be
abandoned:
Provided that the complete specification may be lodged at any time
after the expiration of the twelve months but within fifteen months from the
date the application was lodged if a request to that effect is made to the
Registrar and the prescribed fee is paid on or before the date on which the
complete specification is lodged.
(3) Where two or more applications accompanied by provisional
specifications have been lodged in respect of matters which are cognate or
of which one is a modification of another, a single complete specification
may, subject to this section and section nine, be lodged in pursuance of
those applications or, if more than one complete specification has been
lodged, may, with the leave of the Registrar, be proceeded with in respect
of those applications.
(4) Where applications for protection have been made in one or more
Convention countries in respect of two or more matters which are cognate or
of which one is a modification of another, a single Convention application
may, subject to this section and section nine, be made in respect of those
matters at any time within twelve months from the effective date of the
earliest of the said applications for protection.
(5) In considering the validity of applications made in terms of
subsection (3) or (4) and in determining other relevant matters under this
Act the Registrar shall have regard to the effective dates of the
applications or the Convention applications concerned relating to the
several matters claimed in the specification, and the requirements of
subsection (4) of section seven shall, in the case of any such application,
apply separately to the applications for protection in respect of each of
the said matters.
(6) Where an application for a patent, not being a Convention
application, is accompanied by a specification purporting to be a complete
specification, the Registrar may, if the applicant so requests at any time
before the expiration of the period specified in subsection (2) and before
the acceptance of the specification, direct that it shall be treated for the
purposes of this Act as a provisional specification and proceed with the
application accordingly.
(7) Where a complete specification has been lodged in pursuance of
an application for a patent accompanied by a provisional specification or by
a specification treated by virtue of a direction under subsection (6) as a
provisional specification, the Registrar may, if the applicant so requests
at any time before the acceptance of the complete specification, cancel the
provisional specification and post-date the application to the date of
lodging of the complete specification.
[Chap26:03s9]9 Contents of specification
(1) A specification shall-
(a) indicate whether it is a provisional or a complete
specification; and
(b) commence with a title clearly indicating the subject to
which the relevant invention relates.
(2) A provisional specification shall fairly describe the
invention.
(3) A complete specification shall-
(a) fully describe the invention and the manner in which it is
to be performed; and
(b) disclose the best method of performing the invention known
to the applicant at the time when the specification is lodged at the Patent
Office; and
(c) end with a claim or claims defining the subject-matter for
which protection is claimed.
(4) The claim or claims of a complete specification shall-
(a) relate to a single invention; and
(b) be clear and succinct; and
(c) be fairly based on the matter disclosed in the
specification.
(5) A specification may, and if so required by the Registrar shall,
be accompanied by drawings and such drawings shall be deemed to be part of
the specification:
Provided that if drawings which accompanied a provisional
specification are sufficient for the purpose of a complete specification, it
shall suffice if that complete specification refers to such drawings.
(6) Subject to subsections (1) to (5), a complete specification
lodged at the Patent Office after a provisional specification or with a
Convention application may include claims in respect of developments of or
additions to the invention which was described in the provisional
specification or, as the case may be, in respect of which application for
protection was made in a Convention country, being developments of or
additions in respect of which the applicant would be entitled to make a
separate application for a patent:
Provided that an application shall, in so far as the complete
specification contains claims in respect of any such developments or
additions, be deemed to have been made on the date on which the complete
specification was lodged at the Patent Office.
(7) Where a complete specification claims a new substance, the
claims shall be construed as not extending to that substance when found in
nature.
[Chap26:03s10]10 Effective date of claims of complete specification
(1) A claim of a complete specification shall have effect from the
date provided in this section in relation to that claim and a patent shall
not be invalidated by reason only of the publication or use of the
invention, so far as claimed in any claim of the complete specification, on
or after the effective date of that claim or by the grant of another patent
upon a specification claiming the same invention in a claim of the same or a
later effective date.
(2) Where the complete specification is lodged in pursuance of a
single application preceded by a provisional specification or by a
specification which is treated by virtue of a direction under subsection (6)
of section eight as a provisional specification, and the claim is fairly
based on the matter disclosed in that specification, the effective date of
that claim shall be the effective date of the application.
(3) Where the complete specification is lodged or proceeded with in
pursuance of two or more applications accompanied by such specifications as
are mentioned in subsection (2), and the claim is fairly based on the matter
disclosed in one of those specifications, the effective date of that claim
shall be the effective date of the application accompanied by that
specification.
(4) Where the complete specification is lodged in pursuance of a
Convention application, and the claim is fairly based on the matter
disclosed in the application for protection in a Convention country or, if
the Convention application is founded upon more than one such application
for protection, in one of those applications, the effective date of that
claim shall be the effective date of the relevant application for
protection.
(5) Where, under subsections (1) to (4), any claim of a complete
specification would, but for this subsection, have two or more effective
dates, the effective date of that claim shall be the earlier or earliest of
those dates.
(6) In any case to which subsection (2), (3), (4) or (5) does not
apply, the effective date of a claim shall be the date of lodging of the
complete specification in Zimbabwe.
[Chap26:03s11]11 Examination of applications and specifications
(1) An application for a patent, including any specification and
other document accompanying such application or subsequently lodged within
such time as may be prescribed at the Patent Office in pursuance of such
application, shall be examined by an examiner for the purpose of
ascertaining-
(a) whether the application, specification and accompanying
documents comply with the requirements of this Act, including whether any of
the grounds of opposition specified in subsection (1) of section seventeen
are applicable; and
(b) in the case of a complete specification lodged after a
provisional specification or of a Convention application, whether the matter
claimed is substantially the same as that disclosed in the provisional
specification or in the application lodged in the Convention country, as the
case may be.
(2) An examination or investigation required by this Act shall not
be deemed to warrant the validity of any patent and no liability shall be
incurred by the State, the Minister, the Registrar or any examiner or other
officer of the Patent Office by reason of or in connection with any such
examination or investigation or report or other proceeding consequent
thereon.
[Chap26:03s12]12 Ante-dating and post-dating of applications and
specifications
(1) At any time after an application has been lodged under this Act
and before acceptance of the complete specification, the Registrar may, at
the request of the applicant and upon payment of the prescribed fee, direct
that the application shall be post-dated to such date as may be specified in
the request:
Provided that-
(i) no application shall be post-dated under this subsection to
a date later than six months from the date on which it was actually lodged
or would, but for this subsection, be deemed to have been so lodged;
(ii) a Convention application shall not be post-dated under this
subsection to a date later than the last date on which, under this Act, the
application could have been made.
(2) Where an application or specification lodged under this Act is
amended before acceptance of the complete specification, the Registrar may
direct that the application or specification shall be post-dated to the date
on which it is amended or, if it has been returned to the applicant, to the
date on which it is again lodged under this Act.
(3) Where, at any time after an application or specification has
been lodged at the Patent Office and before acceptance of the complete
specification, a fresh application or specification is lodged in respect of
any part of the subject-matter of the first-mentioned application or
specification, the Registrar may direct that the fresh application or
specification shall be ante-dated to a date not earlier than the date of
lodging of the first-mentioned application or specification.
(4) An appeal shall lie from any decision of the Registrar under
subsection (2) or (3).
[Chap26:03s13]13 Refusal of application in certain cases
(1) If it appears to the Registrar in the case of any application
for a patent that-
(a) it is frivolous on the ground that it claims as an invention
anything obviously contrary to well-established natural laws; or
(b) the use of the invention in respect of which the application
is made would be contrary to law; or
(c) it claims as an invention a substance capable of being used
as food or medicine which is a mixture of known ingredients possessing only
the aggregate of the known properties of the ingredients or that it claims
as an invention a process producing such a substance by mere admixture;
he may refuse the application.
(2) If it appears to the Registrar that any invention in respect of
which an application for a patent is made might be used in any manner
contrary to law, he may refuse the application unless the specification is
amended by the insertion of such disclaimer in respect of that use of the
invention or such other reference to the illegality thereof as the Registrar
thinks fit.
(3) An appeal shall lie from any decision of the Registrar under
subsection (1) or (2).
[Chap26:03s14]14 Powers of Registrar if specification or application
defective
(1) If, in the case of a complete specification lodged in pursuance
of an application for a patent, which application was accompanied by a
provisional specification, the result of any examination made in terms of
subsection (1) of section eleven is adverse to the applicant in regard to
any matter referred to in that subsection or it is found that the invention
described in the complete specification includes matter not included in the
provisional specification, the Registrar may, subject to subsection (6) of
section nine-
(a) refuse to accept the complete specification until it has
been amended to his satisfaction; or
(b) with the consent of the applicant, cancel the provisional
specification and direct that the application be post-dated to the date upon
which the complete specification was lodged at the Patent Office; or
(c) where the complete specification includes matter not
included in the provisional specification-
(i) allow the application to be proceeded with in so far
as the matter included both in the provisional and in the complete
specification is concerned; and
(ii) allow an application for the additional matter
included in the complete specification to be made and authorize the
application for such additional matter, if lodged at the Patent Office
within such period as he may determine, to be dated with the date on which
the complete specification was lodged at the Patent Office.
(2) If in the case of a Convention application it is found that the
matter claimed is not substantially the same as that claimed in the
application made in the Convention country in question, the Registrar may,
subject to subsection (6) of section nine-
(a) refuse to accept the application until it has been amended
to his satisfaction; or
(b) with the consent of the applicant, treat the application as
an application which is not a Convention application.
(3) If in the case of a Convention application it is found that the
specification lodged in Zimbabwe includes matter not included in the
specification lodged in the Convention country, the Registrar may-
(a) allow the application to be proceeded with in so far as the
matter included in both the Convention country and the Zimbabwe
specifications is concerned; and
(b) allow an application for the additional matter to be made
and authorize such application, if lodged at the Patent Office within such
period as he may determine, to be dated with the date on which the Zimbabwe
specification was lodged at the Patent Office.
(4) An appeal shall lie from any decision of the Registrar under
subsection (1), (2) or (3).
[Chap26:03s15]15 Lapsing of applications
(1) If a complete specification is not accepted within eighteen
months from the date of lodging of the complete specification, the
application to which that specification relates shall lapse unless-
(a) an appeal has been lodged in respect of the application and
has not been determined or abandoned; or
(b) the time within which an appeal in respect of the
application may be lodged has not expired; or
(c) the delay in accepting the specification was not due to any
neglect or default on the part of the applicant:
Provided that if, within twenty-one months from the date of the
lodging of the complete specification, the applicant, by notice accompanied
by the prescribed fee, so requires, the said period of eighteen months shall
be extended to such period, not exceeding twenty-one months from the date of
the lodging of the complete specification, as may be specified in that
notice.
(2) If, at the expiration of the period allowed under subsection
(1), an appeal to the Patents Tribunal is pending under any of this Act in
respect of the application or, in the case of an application for a patent of
addition, either in respect of that application or in respect of the
application for the patent for the main invention, or the time within which
such an appeal could be brought in accordance with Part X, apart from any
future extension of time thereunder, has expired, then-
(a) where such an appeal is pending or is brought within the
time aforesaid or before the expiration of any extension of that time
granted, in the case of the first extension, on an application made within
that time or, in the case of a subsequent extension, on an application made
before the expiration of the last previous extension, the said period shall
be extended until such date as the Patents Tribunal may determine;
(b) where no such appeal is pending or is so brought, the said
period shall continue until the end of the time aforesaid or, if any
extension of that time is granted as aforesaid, until the expiration of the
extension or the last extension so granted.
[Chap26:03s16]16 Acceptance and publication of complete specification
and cancellation thereof
(1) Subject to section fifteen, the complete specification may be
accepted by the Registrar at any time after the applicant has complied with
the requirements imposed upon him by this Act:
Provided that the applicant may give notice to the Registrar
requesting him to postpone acceptance until such date, not being later than
eighteen months from the date of lodging of the complete specification, as
may be specified in the notice and the Registrar may postpone acceptance
accordingly.
(2) Subject to subsection (5), on the acceptance of a complete
specification the Registrar shall give notice to the applicant who shall,
within the prescribed period or within such further period as the Registrar
may allow, advertise in the Journal the fact that the specification has been
accepted and, unless the acceptance of the specification is so advertised,
the application shall lapse.
(3) Upon advertisement in terms of subsection (2) the application
form, the specification and the other documents essential to obtain
acceptance which were lodged in pursuance thereof shall be open to public
inspection unless the acceptance of the complete specification has been
cancelled in terms of subsection (5) before such advertisement.
(4) After the date of the publication in terms of subsection (2) of
notice of acceptance of a complete specification and until the sealing of a
patent in respect thereof, the applicant shall have the like privileges and
rights as if a patent for the invention had been sealed on the date of the
publication of the notice unless the acceptance of the complete
specification has been cancelled in terms of subsection (5) before that
date.
(5) If so requested before the advertisement in the Journal in
terms of subsection (2) of the acceptance of a specification, the Registrar
may at any time prior to the publication of such advertisement cancel in the
prescribed manner the acceptance of that complete specification and on such
cancellation he shall-
(a) make a note thereof in the Register; and
(b) if the advertisement of the acceptance is subsequently
published in the Journal, cause notice of the cancellation of the acceptance
of the specification to be published in the Journal.
(6) The cancellation of the acceptance of a complete specification
in terms of subsection (5) shall not preclude the Registrar from
re-accepting that complete specification at a later date if at the time the
applicant requested the cancellation he also gave notice to the Registrar
such as is referred to in the proviso to subsection (1).
[Chap26:03s17]17 Opposition to grant of patent
(1) Any person interested, including the State, may within three
months from the date of the advertisement of the acceptance of a complete
specification which has not been cancelled in terms of subsection (5) of
section sixteen or within such further period as the Registrar, on
application made to him within the said period of three months, may allow,
or, with the consent of the applicant, at any time before the sealing of the
patent, oppose the grant of a patent in accordance with this section by
giving written notice to the registrar of the Patents Tribunal of opposition
to such grant on any of the following grounds and no others-
(a) that the applicant is not a person entitled under section
six to make the application;
(b) that the application is in fraud of the rights of the person
giving such notice or of any persons under or through whom he claims;
(c) that the invention does not relate to an art, whether
producing a physical effect or not, process, machine, manufacture or
composition of matter which is capable of being applied in trade or
industry;
(d) subject to section twenty-six, that the invention is obvious
in that it involves no inventive step having regard to what was common
knowledge in the art at the effective date of the application;
(e) that the invention, in so far as is claimed in any claim of
the complete specification, is not useful;
(f) that the complete specification does not fully describe and
ascertain the invention and the manner in which it is to be performed;
(g) that the claims of the complete specification do not
sufficiently and clearly define the subject-matter for which protection is
claimed;
(h) that the complete specification does not disclose the best
method of performing the invention known to the applicant at the time when
the specification was lodged at the Patent Office;
(i) that the application form or any other document filed in
pursuance of the application contains a material misrepresentation;
(j) that the matter described or claimed in the complete
specification is not the same as that described in the provisional
specification, and-
(i) in so far as it is not described in the provisional
specification, was not new at the date when the complete specification was
lodged at the Patent Office; or
(ii) forms the subject of a pending application made in
Zimbabwe for a patent the effective date of which is prior to the date on
which the complete specification was lodged at the Patent Office;
(k) in the case of a Convention application, that the
specification describes or claims matter other than that for which
protection has been applied for in the Convention country and that such
other matter either-
(i) forms the subject of an application for a patent in
Zimbabwe which, if granted, would bear a date in the interval between the
lodging of the application in the Convention country and the effective date
of the application in Zimbabwe; or
(ii) is not an invention as defined in this Act;
(l) that the invention was not new at the effective date of the
application;
(m) that the specification includes claims which, in terms of
subsection (1) of section thirteen, should have been refused.
(2) Any notice of opposition given under subsection (1) shall-
(a) state the grounds on which the objector intends to oppose
the grant of the patent; and
(b) be accompanied by a statement setting out particulars of the
facts alleged in support of the said grounds;
and proof of service on the applicant concerned of a copy of such notice and
of such statement shall be furnished to the registrar of the Patents
Tribunal.
(3) A copy of any notice given under subsection (1) and of any
statement which in terms of subsection (2) accompanies such notice shall be
served by the objector on the applicant for the patent.
(4) If the applicant wishes to contest the opposition, he shall,
within such time as is prescribed or such further time as the registrar of
the Patents Tribunal may allow, lodge with him a counter-statement setting
out particulars of the grounds upon which the opposition is to be contested.
(5) A copy of any counter-statement in terms of subsection (4)
lodged with the registrar of the Patents Tribunal shall be served by the
applicant on the objector concerned.
(6) Particulars delivered in terms of this section may from time to
time, with the leave of the registrar of the Patents Tribunal, be amended.
(7) No evidence shall be admitted in proof of any ground on which
particulars have not been delivered in terms of this section, except by
leave of the Patents Tribunal.
(8) After receiving a notice of opposition under subsection (1) and
compliance with any other provisions of this section which are applicable
the registrar of the Patents Tribunal shall arrange for the matter to be
heard by the Patents Tribunal in the manner prescribed and the Patents
Tribunal may make such order therein as it considers just:
Provided that if before the Patents Tribunal hears the matter a
request is made in terms of section thirty-seven for the amendment of the
specification concerned, proceedings in connection with the notice of
opposition shall be suspended until such time as the request for such
amendment has been heard and determined after which the proceedings in
connection with the notice of opposition may be-
(a) continued, in which case such notice and any statement in
connection therewith may be amended and the periods specified in this
section extended to such extent as the registrar of the Patents Tribunal may
permit; or
(b) withdrawn, in which case the objector may apply to the
Patents Tribunal for an award in respect of the costs incurred by him in
connection with the objection.
(9) Upon being notified of the order of the Patents Tribunal by the
registrar thereof, the Registrar shall take such further action therein as
may be necessary.
(10) The registrar of the Patents Tribunal shall inform the
Registrar of any notice of opposition or counter-statement which is lodged
with him in terms of this section and of any amendment of particulars which
is permitted in terms of subsection (6).
[Chap26:03s18]18 Substitution of applicants
(1) If the Registrar is satisfied, on a claim made in the
prescribed manner at any time before a patent has been granted, that, by
virtue of any assignment or agreement made by the applicant or one of the
applicants for a patent or by virtue of this Act or by operation of law, the
claimant would, if the patent were then granted, be entitled thereto or to
the interest of an applicant therein or to an undivided share of the patent
or of that interest, the Registrar may, subject to this section, direct that
the application shall proceed in the name of the claimant or in the names of
the claimant and the applicant or the other joint applicant or applicants,
as the case may require.
(2) Subject to the provisions of subsection (4), no direction in
terms of subsection (1) shall be given by virtue of any assignment or
agreement for the assignment of the right to an invention which is made by
one or two or more joint applicants for a patent except with the consent of
the other joint applicant or applicants.
(3) Subject to subsection (4), no direction in terms of subsection
(1) shall be given by virtue of any assignment or agreement for the
assignment of the right to an invention unless-
(a) the invention is identified therein-
(i) by reference to the number of the application for
the patent; or
(ii) in such other manner as appears to the Registrar to
be sufficient;
or
(b) there is produced to the Registrar an acknowledgement by the
person by whom the assignment or agreement was made that the assignment or
agreement relates to the invention in respect of which that application is
made.
(4) Subsections (2) and (3) shall not preclude a direction in terms
of subsection (1) being given where the rights of the claimant in respect of
the invention have been finally established by a decision of the Patents
Tribunal or any court to which an appeal against such a decision has been
brought.
(5) Where one or two or more joint applicants for a patent has died
at any time before the patent has been granted, the Registrar, if satisfied
of such decease-
(a) may alter the application by substituting the legal
representative of such deceased applicant; and
(b) shall thereafter seal the application in the names of the
surviving applicants and of such legal representative;
unless, upon a request in that behalf made by the survivor or survivors and
with the consent of the legal representative, the Registrar directs that the
application shall proceed and be sealed in the name of the survivor or
survivors alone.
(6) If any dispute arises between joint applicants for a patent
whether or in what manner the application should be proceeded with, the
Registrar may, upon application made to him in the prescribed manner by any
of the parties and after giving to all parties concerned an opportunity to
be heard, give such directions as he thinks fit for enabling the application
to proceed in the name of one or more of the parties alone or for regulating
the manner in which it shall be proceeded with or for both those purposes,
as the case may require.
(7) An appeal shall lie from any decision of the Registrar under
subsection (1), (2), (3), (5) or (6).
[Chap26:03s19]19 Prior knowledge or publication of invention excused
in certain circumstances
(1) A patent shall not be refused or held to be invalid by reason
only of the fact that the invention in respect of which the patent is
applied for or was granted or any part thereof was published, used or known
prior to the effective date of the application if the applicant or the
patentee, as the case may be, proves-
(a) that the knowledge was acquired or the publication or use
was made without his knowledge or consent; and
(b) that the knowledge acquired or the matter published or used
was derived or obtained from him; and
(c) if he learned of the disclosure, use or knowledge before the
effective date of his application for the patent, that he applied for and
obtained protection for his invention with all reasonable diligence after
learning of the disclosure:
Provided that the protection afforded by this subsection shall not
extend to an applicant for a patent or a patentee who has or whose
predecessors in title have commercially worked the invention in Zimbabwe,
otherwise than for the purpose of reasonable technical trial thereof, prior
to the effective date of the application.
(2) The exhibition at an industrial or international exhibition
certified as such by the Minister of an invention or the publication
subsequently of any description of the invention so exhibited by any person
without the privity or consent of the inventor or the reading of a paper by
the inventor before a learned society or the publication of such paper shall
not prejudice the right of the inventor to apply for or obtain a patent in
respect of the invention or the validity of any patent granted on the
application if-
(a) the application for a patent is made not later than six
months from the date of the opening of the exhibition or the reading or
publication of that paper, as the case may be; and
(b) the inventor has, before exhibiting the invention or reading
such paper or permitting such publication, given to the Registrar the
prescribed notice of his intention to do so.
[Chap26:03s20]20 Provisions for secrecy of certain inventions
(1) Where, before or after the appointed day, an application for a
patent has been made in respect of an invention and it appears to the
Registrar that the invention is one of a class notified to him by the
competent authority as relevant for defence purposes, he may give directions
for prohibiting or restricting the publication of information with respect
to the invention or the communication of such information to any person or
class of persons specified in the directions, and while such directions are
in force the application may, subject to the directions, proceed up to the
acceptance of the complete specification but the acceptance shall not be
advertised nor the specification published, and no patent shall be granted
in pursuance of the application.
(2) Where the Registrar gives any directions in terms of subsection
(1), he shall give notice of the application and of the directions to the
competent authority and thereupon the following provisions shall have
effect, that is to say-
(a) the competent authority shall, upon receipt of such notice,
consider whether the publication of the invention would be prejudicial to
the defence of Zimbabwe and, unless a notice under paragraph (c) has
previously been given by the competent authority to the Registrar, shall
reconsider that question before the expiration of nine months from the date
of lodging of the application for the patent and at least once in every
subsequent year;
(b) for the purposes of paragraph (a), the competent authority
may, at any time after the complete specification has been accepted or, with
the consent of the applicant, at any time before the complete specification
has been accepted, inspect the application and any documents furnished to
the Registrar in connection therewith;
(c) if, upon consideration of the invention, at any time it
appears to the competent authority that the publication of the invention
would not, or would no longer, be prejudicial to the defence of Zimbabwe,
the competent authority shall give notice to the Registrar to that effect;
(d) on the receipt of any notice in terms of paragraph (c), the
Registrar shall revoke the directions and may, subject to such conditions,
if any, as he thinks fit, extend the time for doing anything required or
authorized to be done by or under this Act in connection with the
application, whether or not that time has previously expired.
(3) When directions have been given in terms of subsection (1), if
any use of the invention is made during the continuance in force of such
directions by or on behalf of or to the order of a department of the State,
section thirty-four shall apply in relation to that use as if a patent had
been granted for the invention.
(4) If an applicant for a patent has suffered loss or damage by
reason of his invention having been kept secret in pursuance of directions
in terms of subsection (1), the Minister, with the consent of the Minister
of Finance, shall pay to him such reasonable compensation as is agreed upon
or, in default of agreement, as may be determined by the Patents Tribunal on
a reference under subsection (1) of section thirty-six.
(5) Where a patent is granted in pursuance of an application in
respect of which directions have been given in terms of subsection (1), no
renewal fees shall be payable in respect of any period during which those
directions were in force.
(6) If any person fails to comply with any direction given under
this section he shall be guilty of an offence.
(7) In this section-
'competent authority' means the Minister responsible for defence or
any other Minister whom the President, by statutory instrument, designates
as being the competent authority for the purposes of this section.
PART IV
GRANT, EFFECT AND TERM OF PATENT (sections 21-36)
[Chap26:03s21]21 Grant and sealing of patent
(1) Subject to this Act relating to opposition and to any other
power of the Registrar to refuse the grant, a patent sealed with the seal of
the Patent Office shall, if the prescribed request is made within the time
allowed under this section, be granted to the applicant or applicants within
that time or as soon as may be thereafter, and the date on which the patent
is sealed shall be entered in the Register.
(2) Subject to this Act relating to patents of addition, a request
under this section for the sealing of a patent shall be made not later than
the expiration of six months from the date of the publication of the
complete specification:
Provided that-
(i) where at the expiration of the said six months any
proceeding in relation to the application for the patent is pending in the
Court or before the Registrar or the Patents Tribunal, the request may be
made within the prescribed period after the final determination of that
proceeding;
(ii) where the applicant or one of the applicants has died before
the expiration of the time within which under this subsection the request
could otherwise be made, the request may be made at any time within-twelve
months after the date of the death or at such later time as the Registrar
may allow.
(3) The period within which a request for the sealing of a patent
may, in terms of subsection (2), be made may from time to time be extended
by the Registrar to such longer period as may be specified in an application
made to him in that behalf if the application is made and the prescribed fee
paid within that longer period:
Provided that the first-mentioned period shall not be extended under
this subsection by more than six months or such shorter period as may be
prescribed.
(4) Where in any case-
(a) the longest period for making a request for the sealing of a
patent allowable in that case by or under subsection (1), (2) or (3) has
been allowed; and
(b) it is proved to the satisfaction of the Registrar that
hardship would arise in connection with the prosecution by an applicant of
an application for a patent in any country outside Zimbabwe unless that
period was extended;
the period referred to in paragraph (a) may be extended from time to time by
the Registrar to such longer periods as appear to him to be necessary in
order to prevent that hardship arising if an application in that behalf is
made to him and the prescribed fee is paid within the first-mentioned period
or, in the case of a second or subsequent application under this subsection,
within the period to which that period was extended on the last preceding
application under this subsection.
(5) For the purposes of this section, a proceeding shall be
considered-
(a) to be pending, so long as the time for any appeal therein,
apart from any future extension of that time, has not expired;
(b) to be finally determined, when the time for any appeal
therein, apart from any future extension of that time, has expired without
the appeal being brought.
[Chap26:03s22]22 Amendment of patent granted to deceased applicant
Where, at any time after a patent has been sealed in pursuance of an
application under this Act or the repealed legislation, the Registrar is
satisfied that the person to whom the patent was granted has died or, in the
case of a body corporate, had ceased to exist before the patent was sealed,
he may amend the patent by substituting for the name of that person the name
of the person entitled thereto according to law, and the patent shall have
effect and shall be deemed always to have had effect accordingly.
[Chap26:03s23]23 Date of patent
(1) Subject to this Act, the date of a patent shall be-
(a) in the case of a patent granted under this Act or the
Patents Act, 1957 (No. 13 of 1957), the effective date of the application
therefor;
(b) in the case of a patent granted under the Patents Act
[Chapter 222 of 1939] or the Patents (Transitional Provisions) Act, 1958
(No. 5 of 1958), the date of application therefor.
(2) The date of a patent referred to in paragraph (a) of subsection
(1) shall be entered in the Register and in the patent.
[Chap26:03s24]24 Extent, effect and form of patent
(1) Subject to this Act, a patent shall have the same effect
against the State as it has against a subject.
(2) A patent shall be in such form as may be prescribed.
(3) A patent shall be granted for one invention only but it shall
not be competent for any person in an action or other proceeding to take any
objection to a patent on the ground that it has been granted for more than
one invention.
(4) The effect of a patent shall be to grant to the patentee,
subject to this Act and the conditions of the patent, full power, sole
privileges and authority by himself, his agents and licensees during the
term of the patent to make, use, exercise and vend the invention within
Zimbabwe in such a manner as to him seems meet, so that he shall have and
enjoy the whole profit and advantage accruing by reason of the invention
during the term of the patent.
[Chap26:03s25]25 Term of patent
The term of every patent shall, subject to this Act, be-
(a) in the case of a patent granted under this Act or the
Patents Act, 1957 (No. 13 of 1957), twenty years from the date of lodging of
the complete specification at the Patent Office;
(b) in the case of a patent granted under the Patents Act
[Chapter 222 of 1939] or the Patents (Transitional Provisions) Act, 1958
(No. 5 of 1958), fourteen years from the date of application therefor.
[Chap26:03s26]26 Patents of addition
(1) Subject to this section, where an application for a patent is
pending or a patent has been granted for an invention (hereinafter referred
to as the main invention) and the applicant or patentee applies for a
further patent in respect of any improvement in or modification of the main
invention, the Registrar may, if the applicant so requests, grant a patent
for the improvement or modification as a patent of addition.
(2) Subject to this section, where an invention, being an
improvement in or modification of another invention, is the subject of an
independent patent and the patentee in respect of that patent is also the
patentee in respect of the patent for the main invention, the Registrar may,
if the patentee so requests, by order revoke the patent for the improvement
or modification and grant to the patentee a patent of addition in respect
thereof, bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless
the date of lodging of the complete specification was the same as or later
than the date of lodging of the complete specification in respect of the
main invention.
(4) A patent of addition shall not be sealed before the sealing of
the patent for the main invention and if the period within which, but for
this provision, the sealing of a patent of addition could be made under
section twenty-one expires before the period within which the sealing of the
patent for the main invention may be so made, the sealing of the patent of
addition may be made at any time within the last-mentioned period.
(5) A patent of addition shall remain in force for as long as the
patent for the main invention remains in force, including any extension of
the term thereof in terms of paragraph (d) of section ninety-seven, but no
longer, and no fee shall be payable for the renewal of a patent of addition:
Provided that, where the patent for the main invention is revoked,
the Registrar or the Patents Tribunal, as the case may be, may order that
the patent of addition shall become an independent patent in which case-
(a) the fees payable in respect of such independent patent and
the times for the payment thereof shall be determined according to the date
of the former patent of addition;
(b) the normal term of the independent patent shall not extend
beyond the date on which the patent for the main invention would have
expired if it had not been revoked.
(6) The grant of a patent of addition shall be conclusive evidence
that the invention is a proper subject for such a patent, and shall not be
refused, nor shall any such patent be liable to be revoked or invalidated on
the ground only that the invention claimed in the complete specification
does not involve any inventive step having regard to the main invention, so,
however, that the provisions of this subsection shall not apply to an
independent patent referred to in the proviso to subsection (5).
(7) A patent for a main invention and its patent of addition shall
not be capable of assignment apart from one another.
(8) An appeal shall lie from any decision of the Registrar under
this section.
[Chap26:03s27]27 Renewal of patents
(1) Subject to subsection (2), every patent, including a patent
granted or registered under the repealed legislation, shall lapse if the
fees prescribed for its renewal are not paid within the prescribed times.
(2) The Registrar may, upon application by the patentee and subject
to the payment of such additional fees as may be prescribed, extend the time
for payment of a fee referred to in subsection (1) for a period not
exceeding six months.
[Chap26:03s28]28 Restoration of lapsed patents
(1) Where a patent has lapsed by reason of the failure to pay any
renewal fee within the prescribed time or any extension in terms of
subsection (2) of section twenty-seven of that time, the patentee may,
within three years from the date on which the patent lapsed, apply in the
prescribed manner to the Registrar for the restoration of the patent and any
patent of addition:
Provided that where the patent was held by two or more persons
jointly, the application may, with the leave of the Registrar, be made by
one or more of those persons without joining the others.
(2) An application in terms of subsection (1) shall contain a
statement, to be verified in such manner as may be prescribed, fully setting
out the circumstances which led to the failure to pay the renewal fee.
(3) After receiving an application in terms of subsection (1) the
Registrar-
(a) may require from the applicant such further evidence as he
considers necessary;
(b) shall, if he considers it to be necessary or the applicant
so requires, permit the applicant to be heard in connection with his
application.
(4) If the Registrar is satisfied that prima facie the failure to
pay the renewal fee was unintentional and there was no undue delay in making
the application he shall direct the patentee to advertise the application in
the Journal and any person may, within the prescribed period, give notice to
the Registrar of opposition to the application on either or both of the
following grounds-
(a) that the failure to pay the renewal fee was not
unintentional; or
(b) that there has been undue delay in the making of the
application.
(5) If, after publication of a notice in terms of subsection (4)-
(a) notice of opposition is given within the prescribed period,
the Registrar shall notify the applicant and shall give to him and to the
person opposing the application an opportunity to be heard before he decides
the case;
(b) no notice of opposition is given within the prescribed
period or, such notice having been given, the Registrar considers that the
application should be granted, the Registrar shall, upon payment of any
unpaid renewal fee and such additional fee as may be prescribed, make an
order restoring the patent and any patent of addition specified in the
application:
Provided that the Registrar shall not make an order in terms of this
paragraph unless he is satisfied that the failure to pay any renewal fee in
connection with the patent was unintentional and that no undue delay has
occurred in the making or prosecution of the application.
(6) An order in terms of subsection (5) restoring a patent-
(a) may be made subject to such conditions as the Registrar
thinks fit, including a condition requiring the registration in the Register
of any matter in respect of which the provisions of this Act relating to
entries in the Register have not been complied with; and
(b) shall contain the provision specified in subsection (7) for
the protection of persons who may have availed themselves of the
subject-matter of the patent after a lapse of a period of six months from
the date on which the renewal fee was due;
and if any condition imposed in terms of this subsection is not complied
with by the patentee, the Registrar may, after giving to the patentee an
opportunity to be heard, revoke the order and give such directions
consequential on the revocation as he thinks fit.
(7) The provision referred to in paragraph (b) of subsection (6)
shall be that the patentee shall not commence or prosecute any action or
other proceedings or recover damages-
(a) in respect of any infringement of the patent which has taken
place after the lapse of the said period and before the date of the order;
(b) in respect of any use of the subject-matter of the patent at
any time after the date of the order by the employment of any means or
composition of matter actually made within or imported into Zimbabwe or in
respect of any process put into operation in Zimbabwe in infringement of the
patent after the lapse of the said period and before the date of the order
or in respect of the sale, purchase or use of any article which is the
product of the use of the said means, composition of matter or process:
Provided that the employment of the said means,
composition of matter or process shall be limited to the person by or for
whom the said means, composition of matter or process was so made, imported
or put into operation, his legal representative, his successors or assigns
or his vendees, as the case may be;
(c) in respect of the employment at any time after the date of
the order of any further means, composition of matter or process, being a
reproduction or improvement of the means, composition of matter or process
referred to in paragraph (b) or in respect of the sale, purchase or use of
any article which is the product of the said further means, composition of
matter or process:
Provided that the employment of the said further
means, composition of matter or process shall be limited to a person
entitled to use as specified in paragraph (b) the means, composition of
matter or process specified in that paragraph.
(8) An appeal shall lie from any decision of the Registrar under
this section.
[Chap26:03s29]29 Licences of right
(1) At any time after the sealing of a patent the patentee may
apply to the Registrar for the patent to be registered as one in respect of
which licences may be issued as of right:
Provided that no such application may be made in respect of an
exclusive licence.
(2) Where an application has been made in terms of subsection (1),
the Registrar shall notify the application to any person entered on the
Register as being entitled to an interest in the patent and, if satisfied,
after giving any such person an opportunity to be heard, that the patentee
is not precluded by contract from granting licences under the patent, cause
to be entered in the Register notice that licences in respect thereof may be
issued as of right.
(3) Where an entry in the Register is made in terms of subsection
(2) in respect of a patent-
(a) any person shall, at any time thereafter, be entitled as of
right to a licence under the patent upon such terms as may, in default of
agreement and subject to the provisions of subsection (4), be settled by the
Registrar on the application of the patentee or the person requiring the
licence;
(b) the Registrar may, on the application of the holder of any
licence granted under the patent before the entry in the Register, order the
licence to be exchanged for a licence to be granted by virtue of the entry
upon terms to be settled in terms of paragraph (a);
(c) if in proceedings for infringement of the patent, otherwise
than by the importation of goods, the defendant undertakes to take a licence
upon terms to be settled by the Registrar in terms of paragraph (a), no
interdict shall be granted against him, and the amount, if any, recoverable
against him by way of damages shall not exceed double the amount which would
have been payable by him as licensee if such a licence had been granted
before the earliest infringement;
(d) the renewal fees payable in respect of the patent after the
date of the entry in the Register shall be one-half of the renewal fees
which would be payable if the entry were not made.
(4) In settling the terms of the licence for the purposes of
paragraph (a) or (b) of subsection (3), the Registrar shall-
(a) take cognizance of section thirty-two with respect to a
patent falling under that section; and
(b) provide, inter alia, for the following matters-
(i) the period of the licence;
(ii) the terms of renewal, if any;
(iii) the amount of and method for payment of royalties;
(iv) arrangements for cancellation of the licence upon
application made to him by the patentee after failure by the licensee to pay
royalties or to observe any other conditions included in the licence by the
Registrar, who is hereby authorized to include such conditions, so, however,
that no such licence may be cancelled unless the licensee, after reasonable
notice given to him by the patentee, has failed to observe such conditions.
(5) The licensee under any licence granted by virtue of an entry in
the Register made in terms of this section shall, unless, in the case of a
licence the terms of which are settled by agreement, the licence otherwise
expressly provides, be entitled to call upon the patentee to take
proceedings to prevent any infringement of the patent, and if the patentee
refuses or neglects to do so within two months after being so called upon,
the licensee may institute proceedings for the infringement in his own name
as if he were patentee, making the patentee a defendant:
Provided that a patentee so added as defendant shall not be liable
for any costs unless he enters an appearance and takes part in the
proceedings.
(6) An application for an entry in the Register made in terms of
this section shall contain a statement, to be verified in such manner as may
be prescribed, that the patentee is not precluded by contract from granting
licences under the patent, and the Registrar may require from the applicant
such further evidence as he may think necessary.
(7) An application for an entry in the Register made in terms of
this section-
(a) which relates to a patent of addition, shall be treated as
an application in relation to the patent for the main invention also; or
(b) which relates to a patent in respect of which a patent of
addition is in force, shall be treated as an application in relation to the
patent of addition also;
and where a patent of addition is granted in respect of a patent in respect
of which an entry in terms of this section has already been made, an entry
in respect of the patent of addition shall also be made:
Provided that no royalty shall be paid by a licensee in respect of
such entry.
(8) An entry in the Register made in terms of this section shall be
published in the Journal.
(9) An appeal shall lie from any decision of the Registrar under
this section.
[Chap26:03s30]30 Cancellation of entry made in terms of section 29
(1) Within such time as may be prescribed after an entry has been
made in terms of section twenty-nine in respect of a patent, the patentee
may apply to the Registrar for cancellation of the entry and, where such an
application is made and the balance paid of all renewal fees which would
have been payable if the entry had not been made, the Registrar may, if
satisfied that there is no existing licence under the patent or that all
licensees under the patent consent to the application, cancel the entry
accordingly.
(2) Within the prescribed period after an entry referred to in
subsection (1) has been made, any person who claims that the patentee is,
and was at the time the entry was made, precluded by a contract in which the
claimant is interested from granting licences under the patent may apply to
the Registrar for cancellation of the entry.
(3) Where the Registrar is satisfied, on application made under
subsection (2), that the patentee is and was precluded as claimed in terms
of subsection (2), he shall cancel the entry and thereupon the patentee
shall be liable to pay, within such period as may be prescribed, a sum equal
to the balance of all renewal fees which would have been payable if the
entry had not been made, and if that sum is not paid
within that period the patent shall cease to have effect at the expiration
of that period.
(4) Where the entry made in respect of a patent is cancelled under
this section, the rights and liabilities of the patentee with respect to it
shall thereafter be the same as if the entry had not been made.
(5) An applicant shall advertise in the Journal any application
made by him under this section and within the prescribed period after such
advertisement-
(a) in the case of an application under subsection (1), any
person interested; or
(b) in the case of an application under subsection (2), the
patentee and additionally, or alternatively, any person interested;
may give notice to the Registrar of opposition to the cancellation.
(6) Where any notice of opposition is given in terms of subsection
(5), the Registrar shall-
(a) fix a date for the hearing of the application; and
(b) advise in writing the parties of the date so fixed; and
(c) after giving the applicant and the opponent an opportunity
to be heard, give such decision on the application as he may consider just.
(7) An application made under this section for the cancellation of-
(a) the entry made in respect of a patent of addition shall be
treated as an application for the cancellation of the entry made in respect
of the patent for the main invention also; or
(b) the entry made in respect of a patent in respect of which a
patent of addition is in force shall be treated as an application for the
cancellation of the entry made in respect of the patent of addition also.
(8) An appeal shall lie from any decision of the Registrar under
this section.
[Chap26:03s31]31 Compulsory licence in case of abuse or insufficient
use of patent rights
(1) Subject to subsection (13), any person interested who can show
that he has been unable to obtain a licence under a patent on reasonable
terms may, after the expiration of a period of three years subsequent to the
date on which that patent was sealed, or four years subsequent to the date
on which the application in respect thereof was lodged, whichever period
last expires, apply to the Registrar in the prescribed manner for a
compulsory licence on the ground that the reasonable requirements of the
public with respect to the invention in question have not been or will not
be satisfied.
(2) An application under subsection (1) shall-
(a) set out fully the nature of the applicant's interest, the
facts on which he bases his case and the relief he seeks; and
(b) be accompanied by an affidavit verifying the facts set out
in the application.
(3) If, after consideration of an application under subsection (1),
the Registrar is satisfied that the applicant has a bona fide interest and
that a prima facie case for relief has been made out, he shall direct the
applicant-
(a) to serve copies of the application and of the relevant
affidavit upon the patentee and upon any other person appearing from the
Register to be interested in the patent; and
(b) to advertise the application in the Journal.
(4) If the patentee or any other person wishes to oppose the grant
of a licence under this section, he may, within the prescribed period or
within such further period as the Registrar may on application allow,
deliver to the Registrar a counter-statement, verified by affidavit, setting
out fully the grounds on which the application is opposed, and shall at the
same time serve upon the applicant copies of the counter-statement and of
such affidavit.
(5) When, in relation to an application or an opposition thereto,
the provisions of subsections (1) to (4) have been complied with to the
extent therein required, the Registrar shall hand all relevant papers to the
registrar of the Patents Tribunal, who shall arrange for the matter to be
heard by that Tribunal in the manner prescribed and, subject to the
provisions of this section, the Patents Tribunal may make such order therein
as it deems just.
(6) The reasonable requirements of the public referred to in
subsection (1) shall be considered not to have been satisfied in any of the
following circumstances-
(a) if the patented invention, being an invention capable of
being worked in Zimbabwe, is not being worked therein on a commercial scale
and there is no satisfactory reason for such non-working:
Provided that, if an application for a compulsory
licence is made on this ground and the Patents Tribunal is of the opinion
that the time which has elapsed since the sealing of the patent has by
reason of the nature of the invention or for any other reason been
insufficient to enable the invention to be worked within Zimbabwe on a
commercial scale, the Patents Tribunal may make an order adjourning the
hearing of the application for such period as will in its opinion be
sufficient for that purpose;
(b) if the working of the invention within Zimbabwe on a
commercial scale is being prevented or hindered by the importation of the
patented article by-
(i) the patentee or persons claiming under him; or
(ii) persons directly or indirectly purchasing from the
patentee; or
(iii) persons against whom the patentee is not taking or
has not taken proceedings for infringement;
(c) if the demand for the patented article in Zimbabwe is not
being met to an adequate extent and on reasonable terms;
(d) if, by reason of the refusal of the patentee to grant a
licence or licences upon reasonable terms, the trade or industry of Zimbabwe
or the trade of any person or class of persons trading in Zimbabwe or the
establishment of any new trade or industry in Zimbabwe is being prejudiced,
and it is in the public interest that a licence or licences should be
granted;
(e) if any trade or industry in Zimbabwe or any person or class
of persons engaged therein is being prejudiced by unfair conditions attached
by the patentee, whether before or after the appointed day, to the purchase,
hire, licence or use of the patented article or to the using or working of
the patented process;
(f) if any condition, which under section forty-four is null and
void as being in restraint of trade and contrary to public policy, has been
inserted in any contract made in relation to the sale or lease of or any
licence to use or work any article or process protected by the patent:
Provided that, for the purpose of determining whether there has been
any abuse of the monopoly rights under a patent, due regard shall be had to
the fact that patents are granted not only to encourage invention but also
to secure that inventions shall so far as possible be worked on a commercial
scale in Zimbabwe without undue delay.
(7) The Patents Tribunal may order the grant to the applicant of a
licence on such terms as it may think expedient, including a term precluding
the licensee from importing into Zimbabwe any goods the importation whereof,
by persons other than the patentee or persons claiming under him, would be
an infringement of the patent.
(8) If, in respect of an application under this section, the
Patents Tribunal is satisfied that the invention which is the subject of the
application-
(a) is not being worked on a commercial scale within Zimbabwe;
and
(b) is such that it cannot be so worked without the expenditure
of capital for the raising of which it will be necessary to rely on the
patent monopoly;
it may, unless the patentee or those claiming under him will undertake to
find such capital, order the grant to the applicant or any other person, or
to the applicant jointly with one or more other persons, if able and willing
to provide such capital, of an exclusive licence on such terms as the
Patents Tribunal may think just, but subject to subsections (9), (10) and
(11).
(9) The terms of an exclusive licence ordered to be granted under
subsection (8) shall, with due regard to the risks to be undertaken by the
licensee in providing the capital and working the invention, be so framed
as-
(a) to secure to the patentee the maximum royalty compatible
with the successful working of the invention within Zimbabwe on a commercial
scale and at a reasonable profit; and
(b) to guarantee to the patentee a minimum yearly sum by way of
royalty, if and so far as it is reasonable to do so.
(10) In addition to any other terms of an order under or licence
ordered to be granted under subsection (8), the licence and the order shall
be made revocable at the discretion of the Patents Tribunal if the licensee
fails to-
(a) work the invention within the time specified in the order;
or
(b) expend the amount specified in the licence as being the
amount which he is able and willing to provide for the purpose of working
the invention on a commercial scale within Zimbabwe; or
(c) pay to the patentee the royalties payable in terms of the
licence.
(11) In deciding to whom an exclusive licence is to be granted, the
Patents Tribunal shall, unless good reason is shown to the contrary, prefer
an existing licensee to a person who, according to the Register, has no
interest in the patent.
(12) The order directing the grant of an exclusive licence under
this section-
(a) shall, unless otherwise provided in the order, operate-
(i) to divest the patentee of any right which he may
have as patentee to work or use the invention; and
(ii) to revoke all existing licences;
and
(b) may, if considered fair and equitable by the Patents
Tribunal, be made subject to the condition that the licensee shall give
proper compensation to be fixed by the Patents Tribunal for any money or
labour expended by the patentee or any existing licensee in developing or
working the invention.
(13) A licensee under this section shall be entitled to call upon
the patentee concerned to institute any proceedings which may be necessary
to prevent infringement of the patent in question and shall in all other
respects have the same rights as any other licensee, and if the patentee
fails, within two months after being called upon by the licensee or within
such further period as the Patents Tribunal may allow, to institute any such
proceedings, the licensee may himself institute such proceedings as if he
were the patentee, making the patentee a defendant, but the patentee shall
not be liable for any costs in connection with such proceedings unless he
enters an appearance and takes part in those proceedings.
(14) The existence of a compulsory licence granted solely on the
ground that an invention is not being worked in Zimbabwe on a commercial
scale shall not preclude the grant of further licences, including compulsory
licences, in respect of that invention, but the holder of any compulsory
licence shall not be entitled to transfer that licence or grant a
sub-licence thereunder except to a person to whom the business or the part
of the business in connection with which the rights under the licence were
exercised, has been transferred.
(15) Except in the case of a licence to be granted under subsection
(8), no licence shall be granted in terms of this section or of section
thirty-two while an entry in terms of section twenty-nine in respect of the
relevant patent remains in the Register.
(16) An appeal shall lie from any refusal of the Registrar to issue
directions in terms of subsection (3).
(17) For the purposes of this section-
'patented article' includes any article made by a patented process.
[Chap26:03s32]32 Inventions relating to food or certain other
commodities
(1) Subject to subsection (15) of section thirty-one and without
prejudice to the other foregoing provisions of this Act, where a patent is
in force in respect of-
(a) a substance capable of being used as food or medicine or in
the production of food or medicine; or
(b) a process for producing a substance referred to in paragraph
(a); or
(c) any invention capable of being used as or as part of a
surgical or curative device;
the Patents Tribunal shall, on application made to it by any person
interested, order the grant to the applicant of a licence under the patent
on such terms as it thinks fit, unless it appears to that Tribunal that
there are good reasons for refusing the application.
(2) In settling the terms of a licence under this section the
Patents Tribunal shall endeavour to secure that food, medicine and surgical
and curative devices shall be available to the public at the lowest prices
consistent with the patentees deriving a reasonable advantage from their
patent rights.
(3) A licence granted under this section shall entitle the licensee
to make, use, exercise and vend the invention as a food or medicine or for
the purposes of the production of food or medicine or as part of a surgical
or curative device, but for no other purposes.
[Chap26:03s33]33 Supplementary provisions as to licences
An order under this Act for the grant of a licence shall, without
prejudice to any other method of enforcement,
have effect as if it were an agreement executed by the patentee and all
other necessary parties granting a licence in accordance with the order.
[Chap26:03s34]34 Use of patented inventions for service of the State
(1) Notwithstanding anything in this Act, any department of the
State or any person authorized in writing by the Minister may make, use or
exercise any invention disclosed in any specification lodged at the Patent
Office for the service of the State in accordance with this section.
(2) If, and so far as the invention has, before the effective date
of the relevant claim of the completed specification, been duly recorded by
or tried by or on behalf of a department of the State or a person authorized
in terms of subsection (1) otherwise than in consequence of the
communication thereof, directly or indirectly, by the patentee or any person
from whom he derives title, any use of the invention by virtue of subsection
(1) may be made by such department of the State or person free of any
royalty or other payment to the patentee.
(3) If and so far as the invention has not been so recorded or
tried as is mentioned in subsection (2), any use of the invention made by
virtue of subsection (1) at any time after the acceptance of the complete
specification in respect of the patent or in consequence of any such
communication as is mentioned in subsection (2), shall be made upon such
terms as may be agreed upon, either before or after the use, between the
Minister and the patentee with the approval of the Minister of Finance or as
may, in default of agreement, be determined by the Patents Tribunal on a
reference under subsection (1) of section thirty-six.
(4) The authority of the Minister in respect of an invention may be
given under subsection (1)-
(a) either before or after the patent is granted and either
before or after the acts in respect of which the authority is given are
done; and
(b) to any person, whether or not he is authorized directly or
indirectly by the patentee to make, use, exercise or vend the invention.
(5) Where any use of an invention is made by or with the authority
of the Minister under subsection (1), then, unless it appears to him that it
would be contrary to the public interest so to do, the Minister shall notify
the patentee as soon as practicable after the use is begun, and furnish him
with such information as to the extent of the use as he may from time to
time require.
(6) For the purposes of this section and sections thirty-five and
thirty-six, any use of an invention for the supply to the government of a
country outside Zimbabwe, in pursuance of any agreement or arrangement
between the Government of Zimbabwe and the government of that country, of
articles required for the defence of that country shall be deemed to be a
use of the invention for the service of the State, and the power of a
department of the State or a person authorized by the Minister under this
section to make, use and exercise an invention shall include power-
(a) to sell such articles to the government of any country in
pursuance of any such agreement or arrangement as aforesaid; and
(b) to sell to any person any articles made in the exercise of
the powers conferred by this section which are no longer required for the
purpose for which they were made.
(7) The purchaser of any articles sold in the exercise of powers
conferred by this section and any person claiming through him shall have
power to deal with them in the same manner as if the patent were held on
behalf of the President.
(8) Regulations in terms of section ninety-six may govern the
rights of third parties in relation to any use of a patented invention, or
an invention in respect of which an application for a patent is pending,
made for the service of the State in terms of this section or section
thirty-five.
[Chap26:03s35]35 Special provisions as to State use during emergency
(1) During any period of emergency the powers exercisable in
relation to an invention by a department of the State or a person authorized
by the Minister under section thirty-four shall include power to make, use,
exercise and vend the invention for any purpose which appears to the
Minister necessary or expedient-
(a) for the efficient prosecution of any war in which Zimbabwe
may be engaged; or
(b) for the maintenance of supplies and services essential to
the life of the community; or
(c) for securing a sufficiency of supplies and services
essential to the well-being of the community; or
(d) for promoting the productivity of industry, commerce or
agriculture; or
(e) for fostering and directing exports and reducing imports or
imports of any classes, from all or any countries and for redressing the
balance of trade; or
(f) generally, for ensuring that the whole resources of the
community are available for use, and are used, in a manner best calculated
to serve the interests of the community; or
(g) for assisting the relief of suffering and the restoration
and distribution of essential supplies and services in any part of Zimbabwe
or any foreign country that is in grave distress as the result of war;
and any reference in that section or in section thirty-six to the service of
the State shall be construed as including a reference to the purposes
referred to in paragraphs (a) to (g).
(2) In subsection (1)-
'period of emergency' means any period beginning on such date as may
be declared by the Minister, by statutory instrument, to be the commencement
and ending on such date as may be so declared to be the termination of a
period of emergency.
[Chap26:03s36]36 Reference of disputes as to State use
(1) Any dispute as to-
(a) the exercise by a department of the State or a person
authorized by the Minister of the powers conferred by section thirty-four;
or
(b) the terms for the use of an invention for the service of the
State thereunder; or
(c) the compensation payable upon a reference to the Patents
Tribunal under subsection (4) of section twenty; or
(d) the right of any person to receive any part of a payment
determined in terms of paragraph (b) or (c);
may be referred to the Patents Tribunal by any party to the dispute in such
manner as may be prescribed.
(2) In any proceedings under this section to which a department of
the State is a party, the Minister may-
(a) if the patentee is a party to the proceedings, apply for
revocation of the patent upon any ground upon which a patent may be revoked
under section forty-five;
(b) in any case, put in issue the validity of the patent without
applying for its revocation.
(3) If in any proceedings under this section any question arises
whether an invention has been recorded or tried as mentioned in section
thirty-four or has been used by or on behalf of or to the order of a
department of the State under subsection (3) of section twenty, and the
disclosure of any document recording the invention or of any evidence at the
trial or use thereof would, in the opinion of the Minister, be prejudicial
to the public interest, the disclosure may be made confidentially to the
legal practitioner, if any, appearing for the other party or to an
independent expert agreed upon by the parties.
(4) In determining under this section any dispute between a
department of the State and any person as to terms for the use of an
invention for the service of the State, the Patents Tribunal shall have
regard to any benefit or compensation which that person or any person from
whom he derives title may have received or may be entitled to receive,
directly or indirectly, from any department of the State in respect of the
invention in question.
PART V
SPECIAL PROVISIONS RELATING TO SPECIFICATIONS, ANTICIPATION AND RIGHTS IN
INVENTIONS (sections 37-47)
[Chap26:03s37]37 Amendment of specification by Registrar
(1) Subject to this section, an applicant for a patent or a
patentee may at any time, by request in writing lodged at the Patent Office,
seek leave to amend either his provisional or his complete specification.
including drawings forming part thereof, and shall in making any such
request state the nature of the proposed amendment and the reasons therefor.
(2) Where there are joint applicants or patentees, a request in
terms of subsection (1) shall be made by them jointly or by one or more of
them with the written consent of the other or others, and in the case of
disagreement between them the Registrar may, if satisfied that one or more
of them should be allowed to proceed alone and subject to such conditions as
he may impose, permit the request to be made without the consent of the
others:
Provided that all parties interested shall be notified by the
applicant of the request and be entitled to be heard before any decision is
given thereon.
(3) After the acceptance of a complete specification-
(a) no amendment thereof shall be effected except by way of
disclaimer, correction or explanation; and
(b) no amendment thereof shall be allowed, except for the
purpose of correcting an obvious mistake or a false statement which was made
in the belief that it was true, the effect of which would be that-
(i) the specification as amended would claim or describe
matter not in substance disclosed in the specification before the amendment;
or
(ii) any claim of the specification as amended would not
fall wholly within the scope of a claim of the specification before the
amendment.
(4) The request for an amendment of an accepted complete
specification and its nature and the reasons therefor shall be advertised by
the applicant in the Journal, and, at any time within three months of the
advertisement or such further time as the Registrar, subject to such
conditions as he may impose, may allow, any person may give notice at the
Patent Office of opposition to the amendment.
(5) Notice of opposition in terms of subsection (4) shall be given
in the prescribed manner to the Registrar and to the person making the
request, and the Registrar shall hear the person making the request and the
person who has given notice of opposition and determine whether and subject
to what conditions, if any, the amendment ought to be allowed.
(6) Where a complete specification has not been accepted, the
Registrar shall determine whether and subject to what conditions, if any,
the amendment ought to be allowed.
(7) No request for amendment under this section shall be allowed if
and so long as any proceedings are pending for infringement or revocation of
the patent in question.
(8) An appeal shall lie from any decision of the Registrar made
under this section.
[Chap26:03s38]38 Amendment of specification with leave of Court or
Patents Tribunal
In any action for infringement of a patent or any proceedings before
the Patents Tribunal for the revocation of a patent, the Court or the
Patents Tribunal, as the case may be, may, subject to subsection (3) of
section thirty-seven, allow the patentee to amend his complete specification
in such manner and subject to such terms as to costs, advertisement or
otherwise as the Court or the Patents Tribunal may think fit, and, if in any
such proceedings for revocation the Patents Tribunal decides that the patent
is invalid, it may allow the specification to be amended under this section
instead of revoking the patent.
[Chap26:03s39]39 Restrictions on recovery of damages in certain cases
Where an amendment of a specification by way of disclaimer,
correction or explanation has been allowed under this Act after the
publication of the specification, no damages shall be awarded in any
proceedings in respect of the use of the invention before the date of the
decision allowing the amendment if the Court or the Patents Tribunal is
satisfied that the specification as originally published was not framed in
good faith and with reasonable skill and knowledge.
[Chap26:03s40]40 Savings for anticipation
An invention claimed in a complete specification shall not be deemed
to have been anticipated by reason only of the communication of the
invention to a department of the State or to any person authorized by the
Minister to investigate the invention or its merits or of anything done by
any person whomsoever in consequence of such a communication for the purpose
of the investigation.
[Chap26:03s41]41 Co-ownership of patents
(1) Where a patent is granted to two or more persons, each of those
persons shall, unless an agreement to the contrary is in force, be entitled
to an equal undivided share in the patent.
(2) Subject to this section, where two or more persons are
registered as patentees then, unless an agreement to the contrary is in
force, each of those persons shall be entitled, by himself or his agents, to
make, use, exercise and vend the patented invention for his own benefit
without accounting to the other or others.
(3) Subject to subsections (6), (7) and (8) and to any agreement
for the time being in force, a licence under a patent shall not be granted
and a share in a patent shall not be assigned except with the consent of all
persons, other than the licenser or assignor, who are registered as
patentees.
(4) Where a patented article is sold by one of two or more persons
registered as patentees, the purchaser and any
person claiming through him shall in respect of such article be entitled to
deal with it in the same manner as if it had been sold by a sole patentee.
(5) Subject to this section, the rules of law applicable to the
ownership and devolution of movable property generally shall apply in
relation to patents as they apply in relation to other incorporeal rights.
(6) Where two or more persons are registered as patentees, the
Registrar may, upon application made to him in the prescribed manner by any
of those persons, give such directions in accordance with the application as
to the sale or lease of the patent or any interest therein, the grant of
licences under the patent or the exercise of any right under subsections (1)
to (5) in relation thereto as he thinks fit.
(7) If any person registered as patentee fails to execute any
instrument or to do any other thing required for the carrying out of any
direction given under this section within fourteen days after being
requested in writing so to do by any of the other persons so registered, the
Registrar may, upon application made to him in the prescribed manner by any
such other person, give directions empowering any person to execute that
instrument or to do that thing in the name and on behalf of the person in
default.
(8) Before giving directions in pursuance of an application under
subsection (6) or (7), the Registrar shall give an opportunity to be heard-
(a) in the case of an application under subsection (6), to the
other person or persons registered as patentees;
(b) in the case of an application under subsection (7), to the
person in default.
(9) An appeal shall lie from any decision of the Registrar under
this section.
(10) No directions shall be given under this section so as to
affect the mutual rights or obligations of trustees or of the legal
representatives of a deceased person or their rights or obligations as such.
[Chap26:03s42]42 Disputes as to inventions made by joint inventors
(1) Where a dispute arises between two or more persons as to the
rights of the parties in respect of an invention made by those persons
jointly or in respect of any patent to be granted in respect thereof, the
Registrar may, upon application made to him in the prescribed manner, and
after giving to each of the parties an opportunity to be heard, determine
the matter in dispute and make such orders for giving effect to his decision
as he considers expedient.
(2) Upon an application made to him under subsection (1), the
Registrar may, unless satisfied that one of the parties is entitled to the
exclusion of the other or others to the benefit of the invention in respect
of which the application is made, by order provide for the apportionment,
between the parties or two or more of the parties, of the invention and of
any patent to be granted in respect thereof in such manner as the Registrar
considers just.
(3) A decision of the Registrar under this section shall have the
same effect as between the parties and persons claiming under them as a
decision of the Patents Tribunal.
(4) An appeal shall lie from any decision of the Registrar under
this section.
(5) Where it is claimed that an invention referred to in subsection
(1) has been made jointly by two or more persons and that the interest of
any such joint inventors has, by virtue of any assignment or agreement or by
operation of law, been transferred to the claimant, the claimant shall be
regarded, for the purposes of subsection (1), as though he were the joint
inventor.
[Chap26:03s43]43 Disputes as to inventions made by employees
(1) Where a dispute arises between an employer and a person who is
or was at the material time his employee as to the rights of the parties in
respect of an invention made by the employee, either alone or jointly with
other employees, or in respect of any patent granted or to be granted in
respect thereof, the Registrar may, upon application made to him in the
prescribed manner by either of the parties and after giving to each of them
an opportunity to be heard, determine the matter in dispute and may make
such orders for giving effect to his decision as he considers expedient.
(2) A decision of the Registrar under subsection (1) shall have the
same effect as between the parties and persons claiming under them as a
decision of the Patents Tribunal.
(3) An appeal shall lie from any decision of the Registrar under
subsection (1).
[Chap26:03s44]44 Avoidance of certain restrictive conditions in
contracts
(1) Subject to subsection (2), it shall not be lawful in any
contract made after the appointed day in relation to the sale or lease of or
a licence to use or work any article or process protected by a patent to
insert a condition the effect of which will be-
(a) to prohibit or restrict the purchaser, lessee or licensee
from using any article or class of articles, whether patented or not, or any
patented process supplied or owned by any person other than the seller,
lessor or licenser or his nominee; or
(b) to require the purchaser, lessee or licensee to acquire from
the seller, lessor or licenser or his nominee any article or class of
articles not protected by the patent;
and any such condition shall be null and void, as being in restraint of
trade and contrary to public policy.
(2) Subsection (1) shall not apply if-
(a) the seller, lessor or licenser proves that at the time the
contract was entered into the purchaser, lessee or licensee had the option
of purchasing the article or obtaining a lease or licence on reasonable
terms without the conditions referred to in subsection (1); and
(b) the contract entitles the purchaser, lessee or licensee to
relieve himself of his liability to observe any such condition on giving the
other party three months' notice in writing and on payment, if the Patents
Tribunal so directs, of compensation for such relief, in the case of a
purchase of such sum, or in case of a lease or licence of such rent or
royalty, for the residue of the term of the contract, as may be fixed by the
Patents Tribunal.
(3) Any contract relating to the lease of or licence to use or work
any patented article or patented process may, at any time after the patent
or all the patents by which the article or process was protected in Zimbabwe
at the time of the making of the contract has or have ceased to be in force,
and notwithstanding anything to the contrary in the same or in any other
contract, be determined by either party on giving three months' notice in
writing to the other party.
(4) Nothing in this section shall-
(a) affect any condition in a contract whereby any person is
prohibited from selling any goods other than those of a particular person;
(b) be construed as validating any contract which would, apart
from this section, be invalid;
(c) affect any right of determining a contract or condition in a
contract exercisable independently of this section;
(d) affect any condition in a contract for the lease of or a
licence to use a patented article whereby the lessor or licenser reserves to
himself or his nominee the right to supply such new parts of the patented
article as may be required to put or keep it in repair.
[Chap26:03s45]45 Revocation of patents
(1) An application for the revocation of a patent may be made to
the Court or to the Patents Tribunal by any person interested, including the
State, upon any one or more of the grounds on which the grant of a patent
might have been opposed, but, subject to the provisions of subsection (2),
of proviso (ii) to paragraph (b) of subsection (7) of section eighty and of
paragraph (b) of subsection (1) of section eighty-three, on no other
grounds.
(2) Where an order for the granting of a licence under the patent
has been made in pursuance of an application under section thirty-one, any
person interested may, at any time after the expiration of two years from
the date of that order, apply to the Court or to the Patents Tribunal for
the revocation of the patent upon any of the grounds specified in subsection
(6) of section thirty-one and, if upon such application the Court or the
Patents Tribunal, as the case may be, is satisfied-
(a) that any of the said grounds are established; and
(b) that the purpose for which an order may be made in pursuance
of an application under section thirty-one could not be achieved by the
making of any further order under that section;
it may order the patent to be revoked.
(3) An application for the revocation of a patent shall state the
grounds on which the applicant relies and shall be accompanied by a
statement setting out particulars of the facts alleged in support of the
said grounds, and a copy of the application and of the statement shall be
served by the applicant on the patentee and proof of such service shall be
furnished to the registrar of the Patents Tribunal.
(4) If the patentee wishes to contest an application made in terms
of subsection (1) or (2), he shall, within such time as may be prescribed or
such further time as the Court or the Patents Tribunal, as the case may be,
may allow, lodge with the registrar of the Patents Tribunal a
counter-statement setting out particulars of the grounds upon which the
application is contested and deliver to the applicant a copy of that
statement.
(5) Except by leave of the Court or the Patents Tribunal, as the
case may be, no evidence shall be admitted in proof of any ground,
particulars of which are not delivered in terms of subsection (3) or (4).
(6) Particulars delivered in terms of subsection (3) or (4) may
from time to time be amended by leave of the Court or the Patents Tribunal,
as the case may be.
(7) The Court or the Patents Tribunal, as the case may be, shall
appoint a time for the hearing of an application in terms of subsection (1)
or (2), and shall thereafter decide whether the patent shall be revoked or
whether and, if so, subject to what amendments, if any, of the specification
or claims thereof, the patent shall be upheld:
Provided that the Court or the Patents Tribunal, as the case may be-
(a) shall not allow any amendment of the specification or claims
of the patent if it is established to its satisfaction that the original
complete specification and claims were not framed in good faith and with
reasonable skill and knowledge; and
(b) may, in the exercise of its discretion as to costs, take
into consideration the conduct of the patentee in framing his original
specification and claims and permitting them to remain as so framed.
(8) An order for the revocation of a patent under this section may
be made so as to take effect either unconditionally or in the event of
failure to comply, within such reasonable period as may be specified in the
order, with such conditions as may be imposed by the order with a view to
achieving the purposes for which an order may be made in pursuance of an
application under section thirty-one, and the Court or the Patents Tribunal,
as the case may be, may, on reasonable cause shown in any case, by
subsequent order extend any period so specified.
(9) The registrar of the Patents Tribunal shall inform the
Registrar of any application or counter-statement which is lodged with him
in terms of this section and of any amendment of particulars which is
permitted in terms of subsection (6).
[Chap26:03s46]46 Consequences of revocation on grounds of fraud
(1) Where-
(a) a patent is revoked on the ground of fraud; or
(b) a patent fraudulently obtained has been surrendered and
revoked; or
(c) the grant of a patent has been refused under the provisions
of paragraph (b) of subsection (1) of section seventeen;
the Patents Tribunal may, on the application of the person entitled to the
invention for Zimbabwe or his legal representative, made in accordance with
this Act, direct the grant to him of a patent for the whole or any part of
the invention, bearing the same date as the patent so revoked or as would
have been borne by the patent which has been refused if the grant thereof
had not been refused.
(2) Where, in proceedings before the Patents Tribunal in connection
with opposition to the grant of a patent, the Patents Tribunal has found
that the subject-matter was in part obtained from the objector and has
required that the specification be amended by the exclusion of that part of
the matter, the Patents Tribunal may direct that, on the application of the
inventor or any person claiming through or under him made in accordance with
this Act within three months after the date of the direction or within such
further period as the Patents Tribunal may allow, a patent for that excluded
part of the matter bearing the date of and having the same effective date as
the opposed application be granted to the applicant concerned.
(3) No action shall be brought for any infringement of a patent
committed-
(a) in the case of a patent granted under subsection (1), before
the date of sealing thereof; or
(b) in the case of a patent granted under subsection (2), before
the date of advertisement of acceptance of the complete specification lodged
in pursuance of the application for such patent.
[Chap26:03s47]47 Surrender of patents
(1) A patentee may at any time, by notice given to the Registrar,
offer to surrender his patent.
(2) Where an offer in terms of subsection (1) is made, the patentee
shall advertise the offer in the Journal, and within the prescribed period
after such advertisement any
person interested may give notice to the Registrar of opposition to the
surrender.
(3) Where any notice of opposition in terms of subsection (2) is
duly given, the Registrar shall notify the patentee.
(4) If, after hearing the patentee and any opponent who is desirous
of being heard, the Registrar is satisfied that the patent may properly be
surrendered, he may accept the offer and by order revoke the patent and he
shall give notice of any such revocation in the Journal:
Provided that if no notice of opposition has been duly given it
shall not be necessary for the Registrar to hear the patentee.
(5) An appeal shall lie from any decision of the Registrar under
this section.
PART VI
INFRINGEMENTS (sections 48-52)
[Chap26:03s48]48 Procedure and conditions in action for infringement
(1) An action for infringement of a patent may only be instituted
by the patentee or the exclusive licensee.
(2) An action for infringement of a patent shall be heard and
determined by the Court and, subject to the provisions of any rules made by
the Court, the following provisions shall apply in connection therewith-
(a) any ground upon which a patent may be revoked under this Act
may be relied upon by way of defence;
(b) the defendant may, by way of counter-claim in the action,
apply for the revocation of the patent;
(c) the plaintiff shall, with his statement of claim or
declaration or on the order of the Court at any subsequent time, deliver
full particulars of the infringement complained of;
(d) the defendant shall, with his statement of defence or plea
or on the order of the Court at any subsequent time, deliver particulars of
any objections on which he relies in support thereof;
(e) at the hearing no evidence shall, except by leave of the
Court, be admitted of any infringement or on any objections of which
particulars have not been so delivered in terms of paragraph (c) or (d);
(f) the Court may allow the patentee to amend his specification,
subject to such terms as to costs, advertisement or otherwise as it may
impose and to the provisions of subsection (3) of section thirty-seven.
(3) In any action under this section where an exclusive licensee is
the plaintiff, the patentee shall, unless he is joined as plaintiff in such
action, be added as defendant:
Provided that a patentee so added as defendant shall not be liable
for any costs unless he enters an appearance and takes part in the
proceedings.
(4) If the patentee is the plaintiff in any action under this
section, he shall give notice thereof to the exclusive licensee under the
patent in question and any such licensee shall be entitled to intervene as a
co-plaintiff and to recover any damages he may have suffered as a result of
the infringement.
(5) No action under this section shall lie in respect of an
infringement which took place before the publication referred to in
subsection (2) of section sixteen.
(6) No action for infringement of a patent may be instituted more
than three years after the date on which that patent has expired or lapsed.
(7) In an action for infringement of a patent the plaintiff shall
be entitled to relief by way of interdict and damages and the Court may, on
application, make such order for an interdict, damages, inspection or
account and impose such terms and give such directions as it may deem fit:
Provided that in awarding damages the Court shall take into account
any dilatory conduct on the part of the patentee or plaintiff in making the
infringer aware of the patent.
(8) In an action for infringement of a patent in respect of an
invention which relates to the protection of a new substance, any substance
of the same chemical composition and constitution shall, in the absence of
proof to the contrary, be deemed to have been produced by the patented
process.
[Chap26:03s49]49 Relief for infringement of partially valid
specification
(1) Where, in any action for the infringement of a patent, the
Court finds that any claim in the specification in respect of which the
infringement is alleged is valid, but that any other claim thereunder is
invalid, then, notwithstanding the provisions of section forty-eight, the
following provisions shall apply-
(a) unless the Court is satisfied that the invalid claim was not
framed in good faith and with reasonable skill and knowledge, the Court
shall, subject to its discretion as to costs and as to the date from which
damages should be reckoned and to such terms as to amendment of the
specification as it may deem desirable, grant relief in respect of any valid
claim which is or has been infringed, without regard to the validity of any
other claim in the specification, and in exercising such discretion the
Court may take into consideration the conduct of the patentee in inserting
the invalid claim in the specification or permitting that claim to remain
there;
(b) if the Court is satisfied that the invalid claim was not
framed in good faith and with reasonable skill and knowledge, the Court
shall not grant any relief by way of damages or costs, but may grant such
other relief in respect of any valid claim which is or has been infringed as
to it seems just and may impose such terms as to amendment of the
specification as a condition of granting any such relief as it may deem
desirable;
(c) if a counter-claim for revocation of the patent has been
made in the action on the ground of invalidity of any claim in the
specification, the Court may postpone the operation of any order made
thereon for such time as may be requisite to enable the patentee to effect
any amendment of the specification pursuant to terms imposed by the Court
and may attach such other conditions to any order to be made on the
counter-claim as the Court may deem desirable.
[Chap26:03s50]50 Restrictions on recovery of damages for infringement
(1) Where-
(a) there has been a change of ownership of a patent, whether by
virtue of assignment, transmission or operation of law; or
(b) an exclusive licence has been granted in respect of a
patent;
no damages for the infringement of the patent shall be recoverable by the
new owner or the exclusive licensee, as the case may be, in respect of any
infringement of that patent during the period from the date of the change of
ownership or grant of exclusive licence, as the case may be, until the
registration in terms of section fifty-three of that change of ownership or
grant of exclusive licence, as the case may be, unless such registration was
effected within six months of the change of ownership or grant of exclusive
licence.
(2) If proceedings are taken in respect of infringement of a patent
committed after the failure to pay any fee within the prescribed time and
before any extension of time for such payment, the Court may, if it thinks
fit, refuse to award any damages in respect of such infringement.
[Chap26:03s51]51 Remedy for groundless threats of infringement
proceedings
(1) Where any person, whether entitled to or interested in a patent
or an application for a patent or not, by circulars, advertisements or
otherwise threatens any other person with proceedings for infringement of a
patent, any person aggrieved thereby may bring an action against him in the
Court in accordance with the rules of Court for any such relief as is
mentioned in subsection (2).
(2) Unless, in any action brought in terms of subsection (1), the
defendant proves that the acts in respect of which proceedings were
threatened constitute or, if done, would constitute, an infringement of a
patent or of rights arising from the publication of a complete specification
in respect of a claim of the specification not shown by the plaintiff to be
invalid, the plaintiff shall be entitled to the following relief, that is to
say-
(a) a declaration to the effect that the threats are
unjustifiable;
(b) an interdict against the continuance of the threats;
(c) such damages, if any, as he has sustained thereby.
(3) For the avoidance of doubt, it is hereby declared that a mere
notification of the existence of a patent shall not constitute a threat of
proceedings within the meaning of subsection (1).
(4) The defendant in any action brought in terms of subsection (1)
may apply, by way of counter-claim in the action, for any relief to which he
would be entitled in a separate action in respect of any infringement by the
plaintiff of the patent to which the threats relate.
[Chap26:03s52]52 Power of Court to make declaration as to
non-infringement
(1) A declaration that the use by any person of any process or the
making or use or sale by any person of any article does not or would not
constitute an infringement of a claim of a patent may be made by the Court
in proceedings between that person and the patentee or the holder of an
exclusive licence under the patent, notwithstanding that no assertion to the
contrary has been made by the patentee or licensee, if it is shown that-
(a) the plaintiff has applied in writing to the patentee or
licensee for a written acknowledgement to the effect of the declaration
claimed and has furnished him with full particulars in writing of the
process or article in question; and
(b) the patentee or licensee has refused or neglected to give
such an acknowledgement.
(2) In proceedings for a declaration brought by virtue of this
section the Court shall make such order in respect of the costs of all
parties to the proceedings as it deems fit:
Provided that a patentee or holder of an exclusive licence under the
patent shall not be liable for any costs unless he enters an appearance and
takes part in the proceedings.
(3) The validity of a claim of the specification of a patent shall
not be called in question in proceedings for a declaration brought by virtue
of this section, and accordingly the making or refusal of such a declaration
in the case of a patent shall not be deemed to imply that the patent is
valid.
(4) Proceedings for a declaration may be brought in terms of this
section at any time after the date of the notice of the acceptance of the
complete specification in pursuance of an application for a patent, and
references in this section to the patentee shall be construed accordingly:
Provided that this subsection shall not apply if the acceptance of
the complete specification has been cancelled in terms of subsection (5) of
section sixteen.
PART VII
ASSIGNMENTS AND CORRECTIONS (sections 53-55)
[Chap26:03s53]53 Provisions as to assignments
(1) Subject to subsection (7) of section twenty-six, the rights
granted to a patentee by a patent shall be capable of assignment and of
devolution by operation of law and of being mortgaged and pledged.
(2) Where any person becomes entitled by assignment, transmission
or operation of law to a patent or to a share in a patent or becomes
entitled as mortgagee, licensee or otherwise to any other interest in a
patent, he may apply to the Registrar in the prescribed manner for the
registration of his title as proprietor or co-proprietor or, as the case may
be, of notice of his interest in the Register, and the Registrar shall, upon
proof of such entitlement to his satisfaction, register such title or notice
against the patent accordingly.
(3) Except for the purposes of an application to rectify the
Register under the provisions of this Act, a document in respect of which no
entry has been made in the Register under subsection (2) or the
corresponding provision of the repealed legislation shall not be admitted in
any proceedings as evidence of the title of any person to a patent or a
share of or interest in a patent, unless the Patents Tribunal or Court
otherwise directs.
[Chap26:03s54]54 Power of Registrar to authorize corrections
(1) The Registrar may authorize-
(a) the correction of any clerical error or omission or error in
translation in any patent, application for a patent or document lodged in
pursuance of such an application or in the Register;
(b) the amendment otherwise of any documents for the amending of
which no express provision is made in this Act;
(c) the condonation or correction of any irregularity in
procedure in any proceedings before him, if such condonation or correction
is not detrimental to the interests of any person.
(2) A correction may be made in terms of subsection (1) either upon
a request in writing accompanied by the prescribed fee or without such a
request.
(3) Where it is proposed to make a correction otherwise than upon a
request in writing, the Registrar shall give notice of the proposal to the
patentee or the applicant for the patent, as the case may be, and to any
other person who appears to him to be concerned, and shall give any such
person an opportunity to be heard before the correction is made.
(4) Where a request is made for the correction of a clerical error
or omission referred to in subsection (1) and it appears to the Registrar
that the correction would materially alter the scope of the document to
which the request relates, the Registrar may require notice of the request
to be advertised in the Journal and to be served upon such persons as he
considers necessary.
(5) Any opposition to a request for a correction in terms of
subsection (1) may be lodged and shall be dealt with by the Registrar in the
manner prescribed.
(6) An appeal shall lie from any decision of the Registrar under
this section.
[Chap26:03s55]55 Rectification of Register
(1) The Patents Tribunal may, on the application of any person
aggrieved, order the Register to be rectified by the making of any entry
therein or the variation or deletion of any entry therein.
(2) The Patents Tribunal may determine any question which it may be
necessary or expedient to decide in connection with the rectification of the
Register.
(3) Notice of an application to the Patents Tribunal in terms of
subsection (1) shall be given in the prescribed manner to the Registrar and
all interested parties, and the Registrar and all such parties shall be
entitled to appear and be heard on the application.
(4) An order made by the Patents Tribunal under this section shall
be served on the Registrar in the prescribed manner and the Registrar shall,
on the receipt of the notice, rectify the Register accordingly.
PART VIII
FUNCTIONS OF REGISTRAR IN RELATION TO CERTAIN EVIDENCE, DOCUMENTS AND POWERS
OF REGISTRAR (sections 56-62)
[Chap26:03s56]56 Evidence of certain entries and documents
(1) A certificate purporting to be signed by the Registrar and
certifying that any entry the making of which is or was at the time
authorized by or under this Act or the repealed legislation has or has not
been made or that any other thing which is or was at the time so authorized
to be done has or has not been done shall be prima facie evidence of the
matters so certified.
(2) A copy of an entry in the Register or of any document kept in
the Patent Office or of any patent or an extract from the Register or any
such document purporting to be certified by the Registrar and sealed with
the seal of the Patent Office shall be admitted in evidence without further
proof and without production of the original.
[Chap26:03s57]57 Requests for information as to patent or patent
application
The Registrar shall, on request made to him in the prescribed manner
by any person and on payment of the prescribed fee, furnish the person
making the request with such information relating to any patent or
application for a patent as may be specified in the request, being
information in respect of any such matters as may be prescribed.
[Chap26:03s58]58 Loss or destruction of patent
Where the Registrar is satisfied that a patent has been lost or
destroyed or cannot be produced, he may at any time cause a duplicate
thereof to be sealed on payment of such fee as may be prescribed.
[Chap26:03s59]59 Exercise of discretionary powers of Registrar
(1) Without prejudice to any provisions of this Act requiring the
Registrar to hear any party to proceedings thereunder or to give to any such
party an opportunity to be heard, the Registrar shall give to any applicant
for a patent or for amendment of a specification an opportunity to be heard
before exercising adversely to the applicant any discretion vested in the
Registrar by or under this Act.
(2) Subject to subsection (2) of section seventy-six, where by this
Act any time is specified within which any act or thing is to be done, the
Registrar may, save where it is expressly otherwise provided, extend the
time, either before or after its expiration, if he is satisfied that the
failure to comply with the provisions relating to such time has not been or
will not be due to any neglect or default on the part of the person
concerned.
[Chap26:03s60]60 Proceedings before Registrar
(1) Evidence in any proceedings before the Registrar under this Act
shall be given by affidavit, so, however, that the Registrar may, if he
thinks fit in any particular case, take oral evidence on oath in lieu of or
in addition to such evidence as aforesaid, and may allow any witness to be
cross-examined on his affidavit or oral evidence.
(2) For the purposes of any proceedings before the Registrar under
this Act, the Registrar shall have the same powers, lights and privileges as
are conferred upon a commissioner by the Commissions of Inquiry Act [Chapter
10:07], other than the powers to order a person to be detained in custody,
and sections 9 to 13 and 15 to 19 of that Act shall apply, mutatis mutandis,
in relation to the hearing and determination of any matter before the
Registrar under this Act and to any person summoned to give evidence or
giving evidence before him.
[Chap26:03s61]61 Registrar may award costs
(1) The Registrar may award costs against any party to any
proceedings before him and in favour of any other party to those
proceedings.
(2) If any party to proceedings before the Registrar is resident
outside Zimbabwe or has no immovable property therein, the Registrar may, on
the application of any other party to the proceedings, order that security
to the satisfaction of the Registrar be lodged or given by the
first-mentioned party in respect of any costs which may be awarded against
him in those proceedings and may refuse, until such security has been lodged
or given, to permit such proceedings to be continued.
(3) Unless otherwise agreed between the parties, any costs awarded
in terms of subsection (1) shall be taxed by the Registrar in accordance
with the provisions prescribed in respect of the awarding of costs in terms
of subsection (1), and any such costs may be recovered by action in a court
of competent jurisdiction.
(4) An appeal shall lie from any decision of the Registrar made
under the provisions of this section.
[Chap26:03s62]62 Advertisements to be approved by Registrar
No advertisement or notice, other than a notice issued under the
authority of the President or the Minister, shall be published by any person
under this Act unless the Registrar has approved the form and contents of
such advertisement or notice, and no advertisement or notice which has not
been so approved shall have any force or effect for the purposes of this
Act.
PART IX
PATENT AGENTS (sections 63-68)
[Chap26:03s63]63 Patent agents and their functions
(1) Subject to this Act, a patent agent may act as agent on behalf
of any person in connection with any matter or proceeding before the
Registrar under this Act and may
draw and sign all documents and make all communications between an applicant
and the Patent Office and may represent an applicant at all attendances
before the Registrar.
(2) A patent agent shall not be guilty of an offence under the
provisions of any enactment prohibiting the preparation for reward of
certain documents by persons not legally qualified by reason only of the
preparation or signature by him of any document relating to patents for use
in the Patent Office or required in any proceedings under this Act before
the Registrar or the Patents Tribunal.
[Chap26:03s64]64 Qualification and registration of patent agents
(1) The Registrar shall-
(a) keep a Register of Patent Agents in which the name of every
person, immediately upon his being accepted for registration, shall be
registered, showing against his name such particulars as the Registrar shall
from time to time deem necessary; and
(b) enter in such Register of Patent Agents all changes relating
to registrations.
(2) Any person ordinarily resident in Zimbabwe who-
(a) has served such period of articles as may be prescribed and
has passed the prescribed qualifying examinations; or
(b) has passed the prescribed qualifying examinations and
produces proof that he is a member in good standing of The Chartered
Institute of Patent Agents incorporated by Royal Charter on the 11th August,
1891; or
(c) produces proof that he holds a qualification recognized by
the Minister as being equivalent to the qualifications required for the
purposes of paragraph (a) or (b);
may make application to the Registrar in the prescribed manner to be
registered as a patent agent, and the Registrar shall arrange such
registration if he is satisfied that there is no good reason why it should
not be arranged and that the applicant is not a person whose name could be
removed from the Register of Patent Agents under paragraph (b), (c) or (f)
of subsection (1) of section sixty-five:
Provided that an officer in the Public Service who has been employed
in the Patent Office shall not be registered as a patent agent or be
permitted to practise as such until at least twelve months have expired
since he ceased to be so employed.
(3) Any person who, immediately prior to the appointed day, was
registered as a patent agent in terms of the Patents Act, 1957 (No. 13 of
1957) shall be deemed to have been registered as a patent agent under this
Act.
(4) An appeal shall lie from any decision of the Registrar made
under the provisions of subsection (2).
[Chap26:03s65]65 Removal of names from Register of Patent Agents
(1) The Registrar may remove from the Register of Patent Agents the
name of any patent agent upon proof to his satisfaction that that patent
agent-
(a) has died; or
(b) has become of unsound mind; or
(c) has been adjudged insolvent under any enactment in force in
Zimbabwe or has made an assignment to or composition with his creditors; or
(d) has ceased to reside in Zimbabwe or has ceased to maintain a
place of business therein; or
(e) has applied for his name to be so removed; or
(f) has, after being convicted in Zimbabwe or elsewhere of the
crime of theft, fraud, forgery or uttering a forged document or perjury,
been sentenced to serve a term of imprisonment without the option of a fine,
whether such sentence is suspended or not, and has not received a free
pardon; or
(g) having been entitled to practise as a legal practitioner or
to be registered as a patent agent, has ceased to be so entitled; or
(h) having been entitled to practise as a legal practitioner or
a patent agent, has ceased to practise as such.
(2) An appeal shall lie from any decision of the Registrar made
under the provisions of subsection (1).
(3) Subject to this section and such procedure as may be
prescribed, the Patents Tribunal may order the Registrar to remove the name
of any patent agent from the Register of Patent Agents or may suspend any
patent agent from practising as such for such time as it thinks fit if it is
satisfied, after due inquiry, that such person has been guilty-
(a) of conduct discreditable to a patent agent; or
(b) of a breach of any regulations prescribing the conduct of
patent agents.
(4) No order shall be made by the Patents Tribunal in terms of
subsection (3) unless the patent agent concerned has been given notice of
any allegations made against him and has had an opportunity to adduce
evidence and to be heard.
(5) Any institute or other organization recognized by the Minister
as being representative of the patent agents in Zimbabwe shall be entitled
to be represented, to adduce evidence and to be heard by the Patents
Tribunal before it makes any order in terms of subsection (3).
(6) Where the name of any patent agent has been removed from the
Register of Patent Agents under the provisions of subsection (1) or (2), his
name shall not be restored to that Register except by direction of the
Patents Tribunal, which may further direct that such restoration shall be
made either without fee or on payment of such fee, not exceeding the
registration fee, as it may fix, and the Registrar shall restore the name
accordingly.
[Chap26:03s66]66 Privileges of attorneys
Every person entitled to practise as a legal practitioner in
Zimbabwe may practise as a patent agent and perform the functions set out in
section sixty-three without being registered as a patent agent, but no such
person shall be entitled to be so registered except under the provisions of
section sixty-four.
[Chap26:03s67]67 Entitlement to practise as patent agent and power of
Controller to refuse to deal with certain agents
(1) No person shall practise as a patent agent unless he is
registered as such or is, by virtue of the provisions of section sixty-six,
entitled so to practise.
(2) A person shall be deemed to practise as a patent agent if-
(a) he performs any of the functions of a patent agent set out
in section sixty-three; or
(b) he carries on within Zimbabwe the business of applying for
or obtaining for others patents in Zimbabwe or elsewhere.
(3) No person who is not a legal practitioner or registered as a
patent agent shall describe himself as, or hold himself out to be, a patent
agent or use any term implying
such a meaning, nor shall such a person permit himself to be so described or
held out.
(4) No person who is not a legal practitioner, whether or not he is
registered as a patent agent, shall describe himself as, or hold himself out
to be, a patent attorney or attorney for patents or use any term containing
the word 'attorney', nor shall such a person permit himself to be so
described or held out.
(5) The Controller may refuse to recognize as agent in respect of
any business under this Act any person who, not being registered as a patent
agent or entitled by virtue of the provisions of section sixty-six to
practise as a patent agent, is, in the opinion of the Controller having
regard to any other activities with which that person is primarily
concerned, acting as a patent agent in applying for patents in Zimbabwe or
elsewhere in the name or for the benefit of a person by whom he is employed.
(6) Any person who contravenes this section shall be guilty of an
offence.
[Chap26:03s68]68 Prohibition of certain acts of patent agents
(1) No patent agent shall have an interest, whether as a partner or
manager or otherwise, in more than one firm of patent agents in Zimbabwe.
(2) No patent agent shall practise under a name or title which
includes the name of any person who is not or was not-
(a) in his lifetime ordinarily resident in Zimbabwe; or
(b) registered as a patent agent under the provisions of this
Act or the repealed legislation.
(3) No person shall practise as a patent agent if he is a party to-
(a) a contract of partnership; or
(b) an arrangement providing for the sharing or paying over of
any professional fees;
relating to the business of a patent agent with any person who is prohibited
from practising as a patent agent.
(4) Any person who contravenes this section shall be guilty of an
offence.
PART X
PATENTS TRIBUNAL AND APPEALS (sections 69-78)
[Chap26:03s69]69 Appeals from Registrar
Where this Act provides for an appeal from a decision of the
Registrar, such appeal shall be made to the Patents Tribunal in accordance
with this Part.
[Chap26:03s70]70 Patents Tribunal
(1) For the purposes of hearing and determining appeals in
accordance with section sixty-nine and of exercising the other powers
conferred upon it by this Act, there is hereby established a Patents
Tribunal which shall consist of a President.
(2) The President of the Patents Tribunal shall be a judge or an
acting judge of the High Court appointed by the Chief Justice.
(3) The Patents Tribunal shall sit at such times as it may appoint.
(4) The Minister shall appoint a registrar of the Patents Tribunal
and such other officers thereof as he may deem necessary.
(5) It shall be the duty of the registrar of the Patents Tribunal
to notify the Controller of any order made by the Patents Tribunal under
this Act.
[Chap26:03s71]71 General powers of Patents Tribunal
(1) The Patents Tribunal shall, in connection with any proceedings
before it under this Act, have all the powers of the Supreme Court and,
without prejudice to the foregoing and to the other powers conferred upon it
by this Act, the Patents Tribunal shall have power to make any order for the
purpose of securing the attendance of any person, the discovery or
production of any document or the investigation or punishment of any
contempt of court which the Supreme Court has power to make.
(2) The procedure and practice of the Patents Tribunal shall, save
as otherwise provided for by rules made under this Part, be those prevailing
in the Supreme Court in so far as the same are applicable and if any matter
should arise which is not contemplated by either such procedure and practice
or such rules, the Patents Tribunal may give instructions regarding the
course to be pursued, which instructions shall be binding on all parties.
(3) Upon any appeal to the Patents Tribunal under this Part, the
Patents Tribunal may-
(a) confirm, set aside or vary the order or decision in
question;
(b) exercise any of the powers which could have been exercised
by the Registrar in the proceedings in connection with which the appeal is
brought;
(c) make such order as to costs as it may think fit.
(4) In any proceedings before it, the Patents Tribunal may accept
evidence by affidavit or take oral evidence on oath and allow any witness to
be cross-examined on his affidavit or oral evidence.
[Chap26:03s72]72 Right of audience
In any proceedings before the Patents Tribunal under this Act the
parties to such proceedings may appear in person or be represented and
appear by a legal practitioner and, in any case where the Patents Tribunal
thinks fit, it may grant leave to the Registrar to intervene and he may
thereafter appear or be so represented.
[Chap26:03s73]73 Costs and security for costs
(1) If any party to any proceedings before the Patents Tribunal is
resident outside Zimbabwe or has no immovable property therein, the Patents
Tribunal may, on the application of any other party to the proceedings,
order that security to its satisfaction be lodged or given by the
first-mentioned party in respect of any costs which may be awarded against
him in those proceedings and may refuse to permit such proceedings to be
continued until such security has been lodged or given.
(2) Unless otherwise agreed between the parties, any costs awarded
in terms of subsection (3) of section seventy-one shall be taxed by the
registrar of the Patents Tribunal in accordance with rules made under this
Part, which taxation shall be subject to appeal to the Patents Tribunal, and
any such costs may be recovered by action in a court of competent
jurisdiction.
[Chap26:03s74]74 Appeals to Supreme Court
(1) Any party to proceedings before the Patents Tribunal may appeal
from any order or decision of such Tribunal to the Supreme Court.
(2) Upon the hearing of an appeal under subsection (1), the Supreme
Court may, without prejudice to its other powers-
(a) confirm, set aside or vary the order or decision in
question;
(b) remit the proceedings to the Patents Tribunal with such
instructions for further consideration, report, proceedings or evidence as
the Supreme Court may think fit to give;
(c) exercise any of the powers which could have been exercised
by the Patents Tribunal in the proceedings in connection with which the
appeal is brought;
(d) make such order as it may think just as to the costs of the
appeal or of earlier proceedings in the matter before the Patents Tribunal.
[Chap26:03s75]75 Assessors
The Patents Tribunal may appoint any person with special expert
knowledge to act as an assessor in an advisory capacity in any case where it
appears to that Tribunal that such knowledge is required for the proper
determination of the case.
[Chap26:03s76]76 Time for appeals
(1) Appeals under this Part, whether from decisions of the
Registrar or orders or decisions of the Patents Tribunal, shall be brought
within three months after the date of the decision or order in question or
within such further time as the Patents Tribunal or Supreme Court to which
the appeal is brought may allow upon application by the appellant concerned.
(2) The powers of the Registrar as to extensions of time under
subsection (2) of section fifty-nine shall not apply in relation to times
for bringing appeals under this Part.
[Chap26:03s77]77 Rules
The Minister may make rules for regulating generally the practice
and procedure of the Patents Tribunal under this Act and with respect to
appeals or references to that Tribunal under this Act as to-
(a) the time within which any requirement of the rules is to be
complied with;
(b) the costs and expenses of and incidental to any proceedings
before that Tribunal;
(c) the fees to be charged in respect of proceedings before that
Tribunal;
(d) the fees to be paid to assessors;
and in particular may make rules providing for the summary determination of
any appeal which appears to the Patents Tribunal to be frivolous or
vexatious or to be brought for the purpose of delay.
[Chap26:03s78]78 References to Patents Tribunal by Registrar
(1) When any matter to be decided by the Registrar under this Act
appears to him to involve a point of law or to be of unusual importance or
complexity, he may, after giving notice to the parties, refer such matter to
the Patents Tribunal for a decision and shall thereafter, in relation to
such matter, act in accordance with the decision of that Tribunal or any
decision substituted therefor on appeal to the Supreme Court.
(2) Where any matter has been referred to the Patents Tribunal in
terms of subsection (1), the Registrar and the parties shall be entitled to
be heard by the Patents Tribunal before any decision is made in such matter
and may appear or be represented in accordance with section seventy-two.
PART XI
INTERNATIONAL ARRANGEMENTS (sections 79-83)
[Chap26:03s79]79 Convention countries
The President may, with a view to the fulfilment of the requirements
of any treaty, convention, arrangement or engagement to which Zimbabwe is a
party, by proclamation in a statutory instrument, declare any country or
territory to be a Convention country for the purposes of this Act.
[Chap26:03s80]80 Supplementary provisions as to Convention
applications
(1) Subject to section six-
(a) any person who has applied for protection for an invention
in a Convention country or his legal representative or assignee, if the
assignee is also so qualified, shall be entitled to a patent for his
invention under this Act, in priority to other applicants if application
therefor is made within twelve months after the effective date of the first
application for protection in the first Convention country in which he made
such application or where more than one such application for protection has
been made, from the effective date of the first such application; and
(b) the patent referred to in paragraph (a) shall have the same
date as the effective date of the application in such Convention country but
the term of the patent shall run from the date on which the complete
specification is lodged at the Patent Office:
Provided that nothing in this subsection shall entitle the patentee
to recover damages for infringements occurring prior to the date on which
his complete specification is advertised as having been accepted in
Zimbabwe.
(2) Where, after the lodging of the first application in the first
Convention country in respect of any invention, a subsequent application is
lodged in that country in respect of the same matter, such subsequent
application shall be regarded as the first application in that country in
respect of that invention if, at the time of the lodging thereof-
(a) the previous application has been withdrawn, abandoned or
refused without having been open to public inspection; and
(b) no priority rights have been claimed by virtue of such
previous application; and
(c) no rights are outstanding in that Convention country in
connection with such previous application.
(3) An application which has been withdrawn, abandoned or refused
shall not, after the lodging of the subsequent application, be capable of
supporting a claim for priority rights under this section.
(4) Where all the rights of each of two or more applicants referred
to in subsection (1) who have made application for protection of inventions
in any one or more Convention countries have become vested in the same
person, those applications shall, for the purposes of subsection (4) of
section eight, be deemed to have been made by the same applicant.
(5) Where an applicant referred to in subsection (1) has applied
for protection for any invention by an application which, in accordance with
the law of any Convention country, is equivalent to an application duly made
in that Convention country, he shall be deemed, for the purposes of this
section, to have applied in that Convention country.
(6) In determining, for the purposes of this Act, whether an
invention described or claimed in a specification lodged in the Patent
Office is the same as that for which protection has been applied for in a
Convention country, regard shall be had to the disclosure contained in the
whole of the documents put forward at the same time as and in support of the
application in the Convention country, being documents of which copies have
been lodged at the Patent Office within such time and in such manner as may
be prescribed.
(7) A patent granted in Zimbabwe for an invention upon an
application referred to in this section shall not be invalidated by reason
only of-
(a) the invention having been known or used or published in
Zimbabwe or elsewhere on or after the effective date of the application in
the Convention country in which application was first made; or
(b) the granting in Zimbabwe, after the effective date of the
application in the Convention country, of a patent to another person for the
same invention:
Provided that-
(i) the effective date of the patent of such other
person shall not be prior to effective date in Zimbabwe of the Convention
application;
(ii) the Convention patentee shall be entitled to have
the patent of such other person revoked upon due application under and
compliance with the provisions of section forty-five.
(8) An application for a patent referred to in this section shall
be made in the manner specified in section seven, save that the application
shall be accompanied by a complete specification.
[Chap26:03s81]81 Special provisions as to vessels, aircraft and land
vehicles
(1) Where a vessel or aircraft registered in a Convention country
or a land vehicle owned by a person ordinarily resident in such a country
comes into Zimbabwe temporarily or accidentally only, the rights conferred
by a patent for an invention shall not be deemed to be infringed by the use
of the invention-
(a) in the body of the vessel or in the machinery, tackle,
apparatus or other accessories thereof, so far as the invention is used on
board the vessel and for its actual needs only; or
(b) in the construction or working of the aircraft or land
vehicle or of the accessories thereof;
as the case may be.
(2) Subsection (1) shall not affect section 17 of the Aviation Act
[Chapter 13:03].
[Chap26:03s82]82 Protocol on Patents and Industrial Designs
(1) Subject to this section, the Protocol set out in the Schedule,
which was contracted within the framework of the African Regional Industrial
Property Organization, shall have the force of law within Zimbabwe.
(2) Any patent, in respect of which Zimbabwe is a designated State,
granted to an applicant by the African Regional Industrial Property
Organization in accordance with the provisions of the Protocol set out in
the Schedule shall, mutatis mutandis, have the same effect in Zimbabwe as a
patent granted under this Act subject to such exceptions, additions,
adaptations and modifications as may be necessary to implement the Protocol.
(3) A patent granted under the Protocol set out in the Schedule,
shall, mutatis mutandis, have such protection where applicable, as is
afforded under this Act to a patent granted in fulfilment of any
international agreement in respect of a Convention country under section 80.
[Chap26:03s83]83 Protection of inventions communicated under
international agreements
(1) Subject to this section, regulations in terms of section
ninety-five may provide for securing that, where an invention has been
communicated in accordance with an agreement or arrangement made between the
Government of Zimbabwe and the government of any other country for the
supply or mutual exchange of information or articles-
(a) an application for a patent for an invention so communicated
made by a person, his legal representative or assignee, entitled under
section six to make such application, shall not be prejudiced, and a patent
granted on such an application shall not be invalidated by reason only that
the invention has been communicated as aforesaid or that in consequence
thereof-
(i) the invention has been published, made, used,
exercised or vended; or
(ii) an application for a patent has been made by any
other person or a patent has been granted on such an application;
(b) any application for a patent made in consequence of such a
communication as aforesaid by a person who is not entitled so to do under
section six may be refused and any patent granted on such an application may
be revoked.
(2) Regulations referred to in subsection (1) may provide that the
publication, making, use, exercise or vending of an invention or the making
of any application for a patent in respect thereof shall, in such
circumstances and subject to such conditions or exceptions as may be
prescribed by the regulations, be presumed to have been in consequence of
such a communication as is mentioned in that subsection.
(3) The powers of the Minister under this section, so far as they
are exercisable for the benefit of persons from whom inventions have been
communicated to the Government of Zimbabwe by the government of any other
country, shall only be exercised if and to the extent that the Minister is
satisfied that substantially equivalent provision has been or will be made
under the law of that country for the benefit of persons whose inventions
have been communicated by the Government of Zimbabwe to the government of
that country.
(4) References in subsection (3) to the communication of an
invention to or by the Government of Zimbabwe or the government of any other
country shall be construed as including references to the communication of
the invention by or to any person authorized in that behalf by the
government in question.
PART XII
OFFENCES AND PENALTIES (sections 84-90)
[Chap26:03s84]84 Falsification of certain documents
Any person who-
(a) makes or causes to be made a false entry in the Register,
knowing the entry to be false; or
(b) makes or causes to be made, or produces or tenders or causes
to be produced or tendered in evidence, any writing falsely purporting to be
a copy of an entry in the Register, knowing the writing to be false;shall be
guilty of an offence.
[Chap26:03s85]85 Deceiving or influencing Registrar or other officer
(1) Any person who-
(a) for the purpose of deceiving the Registrar, an examiner or
any other officer of the Patent Office in the execution of this Act; or
(b) for the purpose of procuring or influencing the doing or
omission of anything in relation to this Act or the repealed legislation or
any matter thereunder;makes or submits a false statement or representation,
whether orally or in writing, knowing the same to be false, shall be guilty
of an offence.
(2) Any person who, having innocently made a false statement or
representation, whether orally or in writing, for the purpose of procuring
or influencing the doing or omission of anything in relation to this Act or
the repealed legislation or any matter thereunder and who, on becoming aware
that such statement or representation was false, fails to advise the
Registrar forthwith of such falsity, shall be guilty of an offence.
[Chap26:03s86]86 Witness giving false evidence
Any person who, after having been sworn or having in lieu thereof
made an affirmation or declaration, wilfully gives false evidence before the
Registrar or the Patents Tribunal concerning the subject-matter of the
proceeding in question, knowing such evidence to be false or not knowing or
believing it to be true, shall be guilty of an offence.
[Chap26:03s87]87 Prohibition on trafficking in patents by officers
(1) Any officer of the Patent Office who buys, sells, acquires or
trafficks in any invention or patent or any right under a patent shall be
guilty of an offence.
(2) Every purchase, sale or acquisition and every assignment of any
invention or patent by or to any officer of the Patent Office shall be null
and void.
(3) Nothing in this section contained shall apply to the inventor
or to any acquisition by bequest or devolution in law.
[Chap26:03s88]88 Unauthorized claim of patent right
(1) If any person falsely and without reasonable cause, the proof
whereof lies on him, represents that-
(a) any article sold by him is a patented article; or
(b) an application has been made for a patent in respect of any
article sold by him;
he shall be guilty of an offence.
(2) For the purposes of subsection (1), a person who sells an
article having stamped, engraved or embossed thereon or otherwise applied
thereto-
(a) the word 'patent' or 'patented' or any Zimbabwe patent
number or any other word expressing or implying that the article is
patented, shall be deemed to represent that the article is a patented
article;
(b) the words 'patent applied for' or 'patent pending' or any
other words expressing or implying that a patent has been applied for, shall
be deemed to represent that an application has been made for a patent in
respect of that article.
[Chap26:03s89]89 Unauthorized use of certain words
If any person, other than a person appointed in terms of section
three, uses on his place of business or on any document issued by him or
otherwise the words 'Patent Office' or any other words suggesting that his
place of business is, or is officially connected with the Patent Office, he
shall be guilty of an offence.
[Chap26:03s90]90 Penalties
Save as otherwise specifically provided elsewhere in this Act, any
person who is guilty of an offence under this Act shall be liable to a fine
not exceeding five thousand dollars or to imprisonment for a period not
exceeding five years or to both such fine and such imprisonment.
PART XIII
GENERAL (sections 91-97)
[Chap26:03s91]91 Lodging and authentication of documents
(1) Any application, notice or document authorized or required
under this Act to be lodged, made or given at the Patent Office or to the
Registrar or any other person, may be delivered by hand or sent by
registered post.
(2) No authentication shall be required in respect of any document
lodged in the Patent Office under the provisions of this Act and used in
proceedings before the Registrar or the Patents
[Chap26:03s92]92 Expenses of administration
All moneys necessary for the administration of this Act shall be
paid out of moneys appropriated for the purpose by Act of Parliament.
[Chap26:03s93]93 Provisions as to fees
(1) Where, under this Act, a fee is payable-
(a) in respect of the performance of any act by the Registrar,
the Registrar shall not perform that act until the fee has been paid; or
(b) in respect of the doing of any act by any person other than
the Registrar, the act shall be deemed not to have been done until the fee
has been paid; or
(c) in respect of the lodging of a document, the document shall
be deemed not to have been lodged until the fee has been paid.
(2) All fees shall be paid at the Patent Office in such manner as
the Registrar, with the approval of the Minister, may accept.
[Chap26:03s94]94 Saving for certain forfeitures
Nothing in this Act shall affect the right of the State or of any
person deriving title directly or indirectly from the State to sell or use
articles forfeited to the State under the provisions of any enactment.
[Chap26:03s95]95 Patent and Trade Marks Journal
(1) The Controller shall publish a journal, to be called the Patent
and Trade Marks Journal, containing particulars of applications for patents
and other proceedings or matters arising under this Act, together with such
reports of cases and other relevant matters as the Minister may deem fit.
(2) The Controller shall make provision for selling copies of the
Journal at such price and in such manner as the Minister may direct.
[Chap26:03s96]96 Power to make regulations
(1) The Minister may make regulations prescribing anything which
under this Act is to be prescribed and generally for the better carrying out
of the objects and purposes of this Act or to give force or effect to its
provisions or for its better administration.
(2) Regulations made by the Minister may provide for-
(a) the form of applications for patents and of any
specifications, drawings or other documents which may be lodged at the
Patent Office, and the furnishing of copies of any such documents;
(b) the procedure to be followed in connection with any
application or request to the Registrar or any proceedings before him, and
the authorizing of the rectification of irregularities of procedure;
(c) the number of times any advertisement or notice which is
required by this Act to be given in the Journal shall be so given;
(d) the service of notices and other documents required to be
served in connection with proceedings under this Act;
(e) the qualifications for eligibility to enter into articles
with a patent agent and matters relating to such articles or service
thereunder;
(f) examinations for the qualifications of patent agents in
terms of this Act, the recognition for such purpose of qualifications
obtained either in or outside Zimbabwe, and the fees to be paid in
connection with the registration of patent agents;
(g) the conduct of the business of the Patent Office;
(h) other fees payable under this Act and fees which may be
charged in relation to the conduct of patent business by patent agents and
legal practitioners performing the functions of patent agents;
(i) authorizing the publication and the sale of copies of
specifications, drawings and other documents in the Patent Office and of
indexes to and abridgements of such documents;
(j) the professional conduct of patent agents.
[Chap26:03s97]97 Savings
Notwithstanding the repeal of the Patents Act, 1957 (No. 13 of
1957)-
(a) any-
(i) patent which was granted or direction which was made
or registered before the appointed day under a law in force in Zimbabwe; or
(ii) licence which was granted before the appointed day
under the repealed legislation;
and which was in force in Zimbabwe immediately before the
appointed day shall continue to have force and effect in terms of this Act
and this Act shall apply thereto as though it had been granted, registered
or made under the corresponding provision of this Act;
(b) section 29 of the Patents Act, 1957 (No. 13 of 1957) shall
continue to apply, mutatis mutandis, in respect of any patent granted under
the Patents Act [Chapter 222 of 1939].
SCHEDULE (Section 82)
PROTOCOL
on Patents and Industrial Designs Within the Framework of the African
Regional Industrial Property Organization (ARIPO)
Preamble
The Contracting States of this Protocol:
Having regard to the Agreement on the Creation of an African Regional
Industrial Property Organization (ARIPO), concluded in Lusaka (Zambia) on
December 9, 1976, and in particular to its Article III(c), in accordance
with which the objectives of the Organization include the establishment of
such common services or organs as may be necessary or desirable for the
co-ordination, harmonization and development of the industrial property
activities affecting its members.
Considering the advantages to be gained by the pooling of resources in
respect of industrial property administration:
Hereby agree as follows:
SECTION 1
General
The African Regional Industrial Property Organization (ARIPO) is empowered
to grant patents and to register industrial designs and to administer such
patents and industrial designs on behalf of the Contracting States in
accordance with the provisions of this Protocol, through its Secretariat
(hereinafter referred to as 'the Office').
SECTION 2
Filing and Transmittal of Applications
(1) Applications for the grant of patents or the registration of
industrial designs by the Office shall be filed by the authorized
representative of the applicant or by the applicant with the industrial
property office of a Contracting State. An applicant may be represented by
an attorney, agent or legal practitioner who has the right to represent
applicants before the industrial property office of the Contracting State
with which the application is filed and, where the applicant's ordinary
residence or principal place of business is outside the country, he shall be
so represented.
(2) The industrial property office with which the application is
filed shall, without delay, transmit that application to the Office.
SECTION 3
Patents
(1) A patent application shall-
(i) identify the applicant;
(ii) contain, as prescribed, a description of the
invention, a claim or claims, a drawing or drawings, where necessary, and an
abstract;
(iii) designate the Contracting States for which the
patent is requested to be granted;
(iv) be subject to the payment of the prescribed fees.
(2) (a) The Office shall examine whether the formal requirements for
applications have been complied with and shall accord the appropriate filing
date to the application.
(b) If the Office finds that the application does not comply with
the formal requirements, it shall notify the applicant accordingly, inviting
him to comply with the requirements within the prescribed period. If the
applicant does not comply with the requirements within the said period, the
Office shall refuse the application.
(c) The Office shall notify each designated State of the fact that a
patent application has been filed which complies with the prescribed formal
requirements.
(3) The Office shall undertake, or arrange for, the substantive
examination of the patent application. If it finds that the invention
claimed in the application does not comply with the requirements of
patentability referred to in subsection (9), it shall refuse the
application.
(4) Where under subsection (2) (b) or (3) the Office refuses the
application, the applicant may, within the prescribed period, request the
Office to reconsider the matter.
(5) If the Office decides to grant the patent, it shall notify the
applicant and each designated State. Where the examination was based on a
search report or an examination report, a copy of the same shall be attached
to the said notification.
(6) Before the expiration of six months from the date of the
notification referred to in subsection (5), a designated State may make a
written communication to the Office that, if a patent is granted by the
Office, that patent shall have no effect in its territory for the reason-
(i) that the invention is not patentable in accordance the
provisions of this Protocol; or
(ii) that, because of the nature of the invention, a patent
cannot be registered or granted or has no effect under the national law of
that State.
(7) After the expiration of the said six months. the Office shall
grant the patent, which shall have effect in those designated States which
have not made the communication referred to in subsection (6). The Office
shall publish the patent granted.
(8) If the Office refuses the application notwithstanding a request
for reconsideration under subsection (4), the applicant may, within three
months from being notified of such refusal, request that his application be
treated, in any designated State, as an application according to the
national law of that State.
(9) Inventions for which patents are granted by the Office shall be
new, shall involve an inventive step and shall be industrially applicable.
An invention is new if it is not anticipated by prior art. Everything made
available to the public anywhere in the world by means of written disclosure
(including drawings and other illustrations) or by use or exhibition shall
be considered prior art provided that such making available occurred before
the date of filing of the application or, if priority is claimed, before the
priority date validly claimed in respect thereof and further provided that a
disclosure of the invention at an official or officially recognized
exhibition shall not be taken into consideration if it occurred not more
than six months before the date of filing of the application or, if priority
is claimed, before the priority date validity claimed in respect thereof.
(10) On each anniversary of the filing of the application, the
Office shall collect the prescribed annual maintenance fee, part of which
shall be distributed among the designated States concerned. The amount of
the fee shall depend on the number of States in respect of which the
application or patent is maintained. Provided it is maintained, a patent
granted by the Office shall in each designated State have the same effect as
a patent registered, granted or otherwise having effect under the applicable
national law but not beyond the maximum duration provided for under the said
law.
(11) A patent granted by the Office shall in each designated State
be subject to provisions of the applicable national law on compulsory
licences, forfeiture or the use of patented inventions in the public
interest.
SECTION 4
Industrial Designs
(1) An application for the registration of an industrial design
filed shall-
(i) identify the applicant;
(ii) contain a reproduction of the industrial design;
(iii) designate the Contracting States for which the
registration is requested to have effect;
(iv) be subject to the payment of the prescribed fees.
(2) (a) The Office shall examine whether the formal requirements for
applications have been complied with and shall accord the appropriate filing
date to the application.
(b) If the Office finds that the application does not comply with
the formal requirements, it shall notify the applicant accordingly, inviting
him to comply with the requirements within the prescribed period. If the
applicant does not comply with the requirements within the said period, the
Office shall refuse the application.
(c) The Office shall notify each designated State of the fact that
an application for the registration of an industrial design has been filed
which complies with the prescribed formal requirements.
(3) Before the expiration of six months from the date of the
notification referred to in subsection (2) (c), each designated State may
make a written communication to the Office that, if the industrial design is
registered by the Office, that registration shall have no effect in its
territory for the reason-
(i) that the industrial design is not new;
(ii) that, because of the nature of the industrial design, it
cannot be registered or a registration has no effect under the national law
of that State; or
(iii) that, in the case of a textile design, it is the subject of
a special register.
(4) After the expiration of the said six months, the Office shall
effect the registration of the industrial design, which shall have effect in
those designated States which have not made the communication referred to in
subsection (3). The Office shall publish the registration.
(5) If the Office refuses the application, the applicant may,
within three months from being notified of such refusal, request that his
application be treated, in any designated State, as an application according
to the national law of that State.
(6) On each anniversary of the filing of the application, the
Office shall collect the prescribed annual maintenance fee, part of which
shall be distributed among the designated States concerned. The amount of
the fee shall depend on the number of States in respect of which the
application or registration is maintained. Provided it is maintained, the
registration of an industrial design effected by the Office shall in each
designated State have the same effect as a registration effected or
otherwise in force under the applicable national law but not beyond the
maximum duration provided for under the said law.
(7) An industrial design registered by the Office shall in each
designated State be subject to the provisions of the applicable national law
on compulsory licences or the use of registered industrial designs in the
public interest.
SECTION 5
Regulations
(1) The Administrative Council of ARIPO shall make Regulations for
the implementation of this Protocol and may amend them, where necessary.
(2) The Regulations shall in particular relate to-
(i) any administrative requirements, matters of procedure, or
any details necessary for the implementation of the provisions of this
Protocol and any relevant international treaties;
(ii) the fees to be charged by the Office and the details of the
distribution of part of those Contracting States.
SECTION 6
Entry Into Force and Final Provisions
(1)(a) Any State which is a member of the Organization or any State
to which membership of the Organization is open in accordance with Article
IV (1) of the Agreement on the Creation of the African Regional Industrial
Property Organization may become party to this Protocol by-
(i) signature followed by the deposit of an instrument
of ratification; or
(ii) deposit of an instrument of accession.
(b) Instruments of ratification or accession shall be deposited with
the Government of the Republic of Zimbabwe.
(c) This Protocol shall enter into force three months after three
States have deposited their instruments of ratification or accession.
(d) Any State which is not party to this Protocol upon its entry
into force under subsection (1) (c) of this Section shall become bound by
this Protocol three months after the date on which such State deposits its
instrument of ratification or accession.
(2) (a) Ratification of, or accession to, this Protocol shall entail
acceptance of the Agreement on the Creation of the African Regional
Industrial Property Organization.
(b) The deposit of an instrument of ratification of, or accession
to, this Protocol by a State which is not a party to the Agreement referred
to in paragraph (a) of this subsection shall have the effect that the said
State shall become party to the said Agreement on the date on which it
deposits its instrument of ratification of, or accession to, this Protocol.
(3) (a) Any Contracting State may denounce this Protocol by
notification addressed to the Government of the Republic of Zimbabwe.
(b) Denunciation shall take effect six months after receipt of the
said notification by the Government of the Republic of Zimbabwe. It shall
not affect any patent application or application for the registration of an
industrial design filed with the Office prior to the expiration of the said
six-month period or any patent granted or registration of an industrial
design affected upon such an application.
(4) (a) This Protocol shall be signed in a single copy and shall be
deposited with the Government of the Republic of Zimbabwe.
(b) The Government of the Republic of Zimbabwe shall transmit
certified copies of this Protocol to the Contracting States, other States
members of the African Regional Industrial Property Organization, and the
States to which membership of the Organization is open in accordance with
Article IV (1) of the Agreement on the Creation of the African Regional
Industrial Property Organization, the World Intellectual Property
Organization and the United Nations Economic Commission for Africa.