PATENTS ACT

“Agency” means the Patents and Companies Registration Agency established under section 3 of the Patents and Companies Registration Agency Act, 2010;

[Ins by s 2(a) of Act 14 of 2010.]

“applicant” includes a person in whose favour a direction has been given under section 23, or his legal representative;

“article” includes any substance or material, and any equipment, machinery or apparatus, whether affixed to land or not;

“assignee” means—

(a) the person who has derived his title to the invention for Zambia directly or indirectly from the inventor thereof or from the latter’s assignee; or

(b) the legal representative of such person;

“Convention” means the Union Convention of Paris, dated the 20th March, 1883, for the Protection of Industrial Property, revised at Brussels on the 14th December, 1900, at Washington on the 2nd June, 1911, at The Hague on the 6th November, 1925, and at London on the 2nd June, 1934, and any revision thereof to which the Acceded with effect from 1st April, 1958. [GN 39 of 1958.]1former Federation of Rhodesia and Nyasaland or the former Protectorate of Northern Rhodesia may have acceded or to which the Acceded with effect from 24th October, 1964. [GN 1751 of 1965.]2Republic may accede in terms of section 7;

“convention application” means an application made by a person referred to in paragraph (c) of section 11;

“convention country”, in relation to any provision of this Act, means a country (including any colony, protectorate or territory subject to the authority or under the suzerainty of that country, or any territory over which a mandate or trusteeship is exercised) which the Minister has, with a view to the fulfilment of the provisions of the Convention, by statutory notice, declared to be a convention country;

“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 to have been lodged on any different date, the date on which it is deemed to have been lodged;

“effective date” means, in relation to—

(a) an application which has been ante-dated or post-dated under this Act, the date to which that application has been so ante-dated or post-dated;

(b) an application in a convention country, 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;

[Am by s 2(b) of Act 14 of 2010.]

“examiner” means an examiner appointed under section 4;

“exclusive licence” means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and “exclusive licensee” shall be construed accordingly;

“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 Zambia;

“legal practitioner” means a person admitted or otherwise entitled to practise as a barrister and solicitor in terms of the Legal Practitioners Act;

“legal representative” means—

(a) the liquidator or receiver of a company;

(b) the representative recognised by law of any person who has died, become bankrupt, assigned his estate, is an infant or a minor, or of unsound mind, or is otherwise under a disability;

“new”, in relation to an invention, means, subject to the provisions of sections 8, 10 and 46, that, on or before the effective date of application for a patent in respect thereof, the invention was not—

(a) known or used anywhere in the former Federation of Rhodesia and Nyasaland or, after the 1st January, 1964, in the former Protectorate of Northern Rhodesia or, after the 24th October, 1964, in the Republic (hereinafter in this definition referred to as “the said territories”) 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 (secret knowledge or secret user otherwise than on a commercial scale being excluded);

(b) worked anywhere in the said territories 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;

(c) described in a patent specification available to public inspection in accordance with the Patents (Southern Rhodesia) Act, Chapter 208 of the 1948 Edition of the Laws, the Registration of United Kingdom Patents Act, Chapter 205 of the 1957 Edition of the Laws (hereinafter in this section referred to as “such legislation”) or this Act and bearing a date less than 50 years prior to such effective date;

(d) described in writing in any publication of which there was a copy anywhere in the said territories at the effective date of the application, or in a publication printed and published outside the said territories less than 50 years prior to such date;

(e) claimed in any complete specification for a patent which was lodged in accordance with such 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;

“patent” means letters patent for an invention granted for Zambia under section 25;

“patent agent” means a person who is registered as such in terms of sub-section (1) of section 68;

“patent of addition” means a patent granted under section 31;

…

[“Patent Office” rep by s 2(c) of Act 14 of 2010.]

“patented article” means any article in respect of which a patent has been granted and is for the time being in force;

“patentee” means the person for the time being entered on the register as grantee or proprietor of a patent;

“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 Agency under section 6;

[Am by s 2(d) of Act 14 of 2010.]

“register of patent agents” means the register of patent agents kept under sub-section (1) of section 68;

“ Registrar” means the person appointed as Registrar under section 14 of the Patents and Companies Registration Agency Act, 2010;

[Subs by s 2(e) of Act 14 of 2010.]

“specification” means a provisional or a complete specification, as the circumstances may require, referred to in section 14;

(2) A reference in this Act to the date of a patent shall be construed as a reference to the appropriate date specified in sub-section (1) of section 27.

[S 2 am by Act 12 of 1959; GN 185 of 1964; SI 175 of 1965; Act 18 of 1980.]

PART II
ADMINISTRATION

3. Administration of Act

This Act shall be administered by the Agency.

[S 3 subs by s 3 of Act 14 of 2010.]

4. Registrar and other staff

(1) The Registrar shall exercise the powers and perform the duties assigned to the Registrar by this Act and the Patents and Companies Registration Agency Act, 2010.

(2) The Agency may appoint, on such terms and conditions as it may determine, examiners and such other staff as it considers necessary for the performance of its functions under this Act.

[S 4 subs by s 4 of Act 14 of 2010.]

5. Seal

(1) The seal of the Agency kept in terms of the Patents and Companies Registration Agency Act, 2010, shall be used for the purposes of this Act and the impression thereof made for such purposes shall be judicially noticed.

(2) On the commencement of this Act, any impression of a seal made for the purposes of this Act before the commencement of this Act shall be deemed to be an impression of the seal of the Agency.

[S 5 subs by s 5 of Act 14 of 2010.]

6. Register of patents

(1) There shall be kept at the Agency 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 Patents (Southern Rhodesia) Act, Chapter 208 of the 1948 Edition of the Laws, or the Registration of United Kingdom Patents Act, Chapter 205 of the 1957 Edition of the Laws (hereinafter in this section referred to as “such legislation”) shall, under arrangements made by the Registrar with the approval of the Minister, be incorporated with and form part of the register established under sub-section (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 such legislation under which it was granted.

(3) Subject to the provisions of this Act, the register of patents shall, at all convenient times, be open to inspection by the public, and certified copies, sealed with the seal of the Agency, of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.

(4) The register of patents shall be prima facie evidence of any matters required or authorised by or under this Act to be entered therein.

(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
INTERNATIONAL PROVISIONS

7. Convention arrangements

If the Republic accedes to the Convention and any revision thereof as a country of the Union for the Protection of Industrial Property constituted thereunder, the Republic of Zambia declared to be a country of the Union with effect from 24th October, 1964 by GN 1751 of 1965.3Minister shall, by Gazette notice, declare that Zambia has become such a country with effect from the date stated in such notice.

[S 7 am by GN 185 of 1964; SI 175 of 1965.]

8. Convention applications

(1) Subject to the provisions of section 11, any person who qualifies under Article 2 or 3 of the Convention and who has applied for protection for an invention in a convention country or his legal representative or assignee (if such 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 in terms of this Act within 12 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 the patent 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 Agency:

Provided that—

(i) nothing in this sub-section 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 Zambia;

(ii) no patent granted on a convention application lodged within 12 months after the date stated in terms of section 7 shall bear a date or be effective from a date prior to the date so stated.

(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 invention, 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

(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 sub-section (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 sub-section (4) of section 13 be deemed to have been made by the same applicant.

(5) Where an applicant referred to in sub-section (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 Agency 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 Agency within such time and in such manner as may be prescribed.

(7) A patent granted in Zambia for an invention upon an application made in terms of this section shall not be invalidated by reason only of—

(a) the invention having been known or used or published in Zambia 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 Zambia after the effective date of the application in the convention country of a patent of another person for the same invention:

Provided that—

(i) the effective date of the patent of such other person shall not be prior to the effective date in Zambia of the convention application; and

(ii) the convention patentee shall be entitled to have the patent of such other person revoked upon due application under and in compliance with the provisions of section 50.

(8) An application for a patent under this section shall be made in the same manner as for an application in terms of section 12, save that the application shall be accompanied by a complete specification.

(9) For the purposes of this Act, matter shall be deemed to have been disclosed in an application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or in documents submitted by the applicant for protection in support of and at the same time as that application, but no account shall be taken of any disclosure by any such document unless a copy of the document is lodged at the Agency with the convention application or within such period as may be prescribed after the lodging of that application.

[S 8 am by Act 36 of 1960; GN 185 of 1964.]

9. Special provisions as to vessels, aircrafts 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 Zambia 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) This section shall not affect the provisions of section 16 of the Aviation Act (which exempts certain aircraft from seizure on patent claims).

[S 9 am by GN 185 of 1964.]

10. Protection of inventions communicated under international agreements

(1) Subject to the provisions of this section, the Minister may, by statutory instrument, make regulations for securing that, where an invention has been communicated in accordance with any agreement or arrangement made by or on behalf of the Government with the government of any 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 11 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 11 may be refused and any patent granted on such an application may be revoked.

(2) Regulations made under sub-section (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 sub-section.

(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 by the government of any 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 to the government of that country.

(4) References in sub-section (3) to the communication of an invention to or by the Government or the government of any country shall be construed as including references to the communication of the invention by or to any person authorised in that behalf by the government in question.

[S 10 am by GN 185 of 1964.]

10A. ARIPO Industrial patents

(1) In this section—

(a) “ARIPO” means the African Regional Industrial Property Organisation, formerly known as the Industrial Property Organisation for English-Speaking Africa (ESARIPO), which was established, under the former name, by an agreement adopted at Lusaka on 9th December, 1976; and

(b) “ARIPO Protocol” means the Protocol on Patents and Industrial Designs within the Framework of ARIPO, adopted at Harare on 10th December, 1982.

(2) Where a patent has been granted by ARIPO under section 3(7) of the ARIPO Protocol and the Registrar has not objected, under section 3(6) of the Protocol, to the patent having effect in Zambia, the patent shall for all purposes be deemed to have been granted under this Act.

(3) A patent shall not be deemed to have been granted under this section if, under section 3(6) of the ARIPO Protocol, the Registrar objects to its having effect in Zambia.

[S 10A am by Act 26 of 1987.]

PART IV
APPLICATIONS GENERALLY

11. Persons entitled to make application

Application for a patent for an invention may be made by any of the following persons, that is to say:

(a) a person claiming to be the inventor of the invention who owns the invention in respect of Zambia;

(b) an assignee;

(d) the legal representative of any person who immediately before his death or disability was entitled to make such application;

and may be made by any above-mentioned person either alone or jointly with any other person.

[S 11 am by GN 185 of 1964.]

12. Form of application

(1) Every application for a patent shall—

(a) be made in the prescribed form, which must be signed by the applicant or by a person authorised to sign on his behalf;

(b) be lodged at the Agency in the prescribed manner;

(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) Every application form shall—

(a) state that the applicant owns the invention in respect of Zambia;

(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) Every convention application, in addition to the requirements set out in sub-section (3), shall state—

(a) the convention country in which such application for protection was made;

(b) its number;

(d) the respect in which the applicant in the convention country and in Zambia qualifies under Article 2 or 3 of the Convention.

[S 12 am by GN 185 of 1964.]

13. Complete and provisional specifications

(1) Every application for a patent, other than a convention application, shall be accompanied by either a complete specification or a provisional specification and every convention application shall be accompanied by a complete specification.

(2) If a complete specification does not accompany an application, it shall be lodged within 12 months after the date of lodging of the application or within such further period, not exceeding three months, as the Registrar may in writing allow upon payment of the prescribed fee, and if the provisions of this sub-section are not complied with the application shall lapse.

(3) Where two or more applications accompanied by provisional specifications have been lodged in respect of inventions which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this section and section 14, 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 inventions which are cognate or of which one is a modification of another, a single convention application may, subject to the provisions of sections 11 and 14, be made in respect of those inventions at any time within 12 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 sub-section (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 sub-section (4) of section 12 shall, in the case of any such application, apply separately to the applications for protection in respect of each of the said inventions.

(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 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 sub-section (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.

14. Contents of specification

(1) Every specification shall indicate whether it is a provisional or a complete specification and shall commence with a title sufficiently 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;

(b) disclose the best method of performing the invention known to the applicant at the time when the specification is lodged at the Agency; and

(4) The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.

(5) Every specification shall be accompanied by drawings if required by the Registrar, and such drawings shall be deemed to be part of the specification, but 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 the foregoing provisions of this section, a complete specification lodged at the Agency 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:

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