ARIPO Patents, Trademarks & Designs

ARIPO Patents, Trade Marks & Designs

ARIPO Patents: Requesting Examination on Filing? Maybe Think Twice…

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When entering regional phase in ARIPO it is common for applicants to request examination upon filing in order for the application to be examined sooner rather than later. The result of this, however, is additional costs for surcharges that the applicant may not have been aware of.

According to the Rule 11bis of the Harare Protocol 2022 Edition:

The additional fee and claims fee shall be paid on or before filing of the request for substantive examination.

Thus, should an applicant choose to request examination upon entering national phase, the applicant is required to pay the filing fees, search and examination fees and surcharge fees for claims over 10 and pages over 30, on filing. For applicants entering national phase with a lengthy specification, this can result in a considerably higher amount in official fees due than initially anticipated.

In order to circumvent paying a large amount in official fees for claims over 10 and pages over 30, there are two options available for an applicant:

  1. Enter regional phase with a reduced number of claims; or
  2. Enter regional phase with the claims as filed during the international phase and defer requesting examination until the applicant has been able to file a voluntary amendment. Once the amended claims have been filed, the applicant can then request examination on the amended claims.

As examination must be requested within 3 years from the filing date there is time to file a voluntary amendment once the application has been filed at ARIPO.

Should an applicant file an amendment after a request for examination has already been filed, and the amendment seeks to introduce more claims and pages than those paid for, the fees for the newly introduced claims and pages are payable at the time of paying grant and publication fees.

Final thoughts: Be aware of the additional surcharges for extra claims and/or pages that are due when requesting examination in order to avoid bill shock (the startling reaction one feels upon receiving a bill that is much higher than expected!).

For more information on patent applications in ARIPO contact the Galloway & Co. Team at [email protected]

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