Classification

Malawi is a signatory to the Nice Agreement, and all 45 classes of the International Classification of Goods and Services (Nice Classification) are applied. The country follows a single-class trade mark filing system, and therefore a separate application is required for each class of goods or services.

Convention priority

Provision is made for priority claims, as Malawi is a member of the Paris Convention. An applicant for a trade mark who has applied for the same trade mark in another Paris Convention member country, is entitled to a priority right. This accords them the same effective date as the first filed application, provided the Malawi application is filed within six months of such earlier filing date.

Examination/procedure

Applications are examined as to formal requirements as well as on relative and substantive grounds. Once accepted, the application is advertised in the Official Patents and Trade Marks Journal and in the absence of opposition, the registration certificate is issued.

Opposition

Any interested person may, within 30 days of advertisement, enter opposition against the trade mark application.

Duration and renewal

The registration is valid for an initial period of 10 years from the date of application or priority date, if any. The registration is renewable for further periods of 10 years from the date of expiry of the registration.

Patent protection

Patent protection is available by way of a national filing or via an ARIPO application designating Malawi.  The Act expressly recognises the Harare Protocol of ARIPO and provides that a patent granted under the Protocol (and designating Malawi) shall have effect in Malawi as if it were granted under the Act. It would appear, therefore, that valid patent protection could be obtained via an ARIPO application designating Malawi.

However, Malawi has not yet promulgated regulations to implement the Harare Protocol. Accordingly, there is uncertainty regarding the enforceability of rights obtained through the filing of an ARIPO application designating Malawi.

Malawi has not yet amended its laws to provide for the PCT. Accordingly, it is not certain whether valid patent protection can be obtained via a PCT national phase application in Malawi.

Patentable subject matter

An 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 and which is industrially applicable, or any new and useful improvement thereof.

The following are not patentable:

  • Applications for inventions that are frivolous
  • Applications for inventions that are contrary to law or morality
  • Applications which claim as an invention a substance capable of being used as food or medicine which is a mixture of known ingredients, or applications which claim as an invention a process producing such a substance by mere admixture.

Novelty

An invention is new if, before the filing date or the priority date, the invention was not –

  • Known or used anywhere in Malawi by anyone other than the applicant or the person from whom such applicant has derived his right or title (secret knowledge or secret user otherwise than on a commercial scale being excluded)
  • Worked anywhere in Malawi otherwise than by way of reasonable technical trial or experiment by the applicant or any person from whom such applicant has derived his right or title.
  • Described in a patent specification available to public inspection and bearing a date less than 50 years prior to the effective date of the application
  • Described in writing in any publication of which there was a copy anywhere in Malawi at the effective date of the application, or in a publication printed and published outside Malawi less than 50 years prior to such date;
  • Claimed in any complete specification for a patent which, though not available to public inspection at the effective date of the application, was deposited pursuant to an application which will be of prior date to the date of the application.

Novelty of an invention is not destroyed by disclosure prior to the filing date of the application or convention priority date without the patentee’s knowledge or consent, provided that the matter disclosed was derived or obtained from the patentee; or if the invention had been used by the patentee or his predecessor in title in Malawi, prior to the filing date or priority date, purely for the purpose of reasonable technical trial thereof, provided that the application was filed with reasonable diligence after learning of the disclosure or after the trial or experiment.

Examination/procedure

Applications are subjected to formal examination. The Act also makes provision for applications to be examined to ensure that the subject matter is substantially similar to the subject matter of the priority application (if priority is claimed).

Duration and maintenance

The term of a patent obtained in terms of Malawi’s national legislation is 16 years. Annual renewal fees are payable but are due as from the third anniversary of the filing date and are only payable after sealing. A six month grace period is available.

However, the Harare Protocol states that term of an ARIPO patent designating Malawi is 20 years. This issue has not been tested in the courts. Accordingly, the duration of an ARIPO patent designating Malawi is uncertain.

The Act further provides for the term of the patent to be extended for a maximum period of 10 years on the basis of inadequate remuneration. The application for the extension of the term of the patent must be made before expiry of the main patent and must be advertised for opposition purposes.

Design protection

Design protection is available by way of a national filing or via an ARIPO application designating Malawi. The Harare Protocol is recognised in the Act, and there is a provision that a design registered under the Protocol shall have effect in Malawi as if it were a design registered under the Act. However, Malawi has not fully implemented the Harare Protocol (which regulates patent and design filings in ARIPO) in its national laws. Accordingly, it is unclear whether any valid rights would be obtained by way of an ARIPO design registration designating Malawi.

Registrable subject matter

An industrial design is defined to mean features of shape, configuration, pattern or ornamentation applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction, or features of shape or configuration which are dictated solely by the function which the article, to be made in that shape or configuration, has to perform.

Novelty

In order to be registrable, a design must be new and original. The design will not be registrable if it has been published in Malawi, or is the same as a design already registered. Accordingly, an application must be filed before the design has been published in Malawi.

Novelty is not destroyed by confidential disclosure by the proprietor; or by disclosure in bad faith by anyone except the proprietor; or by the acceptance of a first and confidential order for goods bearing a new or original textile design; or by disclosure to an authorised government department or official. Novelty is also not destroyed if an application is filed by the proprietor of an artistic work already protected under copyright law to register a corresponding design, provided no industrial use was made of the artistic work by the proprietor or with his consent, and provided the artistic work is not excluded from registration by the Designs Act.

Examination/procedure

Examination is conducted by the Registrar to ensure compliance with the formal requirements and also to determine whether the design falls within the definition of a design. If satisfied that the conditions for registration have been met, the Registrar shall register the design and issue the registration certificate. If not, he shall advise the applicant of his objections and the applicant will have an opportunity to respond before a final decision is made.

Duration and maintenance

The initial term of the design registration is five years, which is extendible upon payment of renewal fees for two further five year terms. A grace period of three months is available.

ARIPO designs are, however, only valid for 10 years and are subject to payment of annual maintenance fees. ARIPO also has a six month grace period for payment of renewal fees.

Currently, no legislative provision for plant breeders’ rights or other sui generis protection for plants is available in Malawi.

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