Patents Act, 2016

This section gives the Act its short title and lets the Minister set the commencement date by statutory instrument.

This section defines key terms used in the Act.

This Act binds the Republic.

The Agency administers this Act.

The Agency’s seal must be used for purposes of this Act, and an impression made for those purposes must be judicially noticed.

The Registrar must carry out the powers and functions given in this Act, and the Board may delegate specified Agency functions and powers to the Registrar when needed.

The Agency has power to handle patent and utility model applications and related international patent-office functions.

The Board must appoint assistant registrars, examiners, and other necessary officers, and those staff have the Registrar’s powers when acting under the Registrar’s control.

Examinations, investigations, or other acts done under the Act do not validate themselves, and Board members, the Registrar, examiners, and other officers are not liable for them.

The Agency must establish and maintain a Register of Patents.

The Registrar may correct the patent Register, and must notify the applicant or patentee if the correction is initiated by the Registrar. Some correction applications must be advertised, objections may be made, and a person aggrieved may appeal to the High Court.

The Register must be open for public inspection during prescribed hours on payment of the prescribed fee, and the Minister may make regulations for the registration process and procedures.

Regulations may set rules for patent and utility model applications, fees, Registrar procedures, copies, searches, notices, and other Register-related matters.

The Registrar must arrange periodic publication of an Industrial Property Journal covering protected patents and utility models, and may sell copies of it with Board approval on price and manner.

A patent may be granted for an invention only if it is new, involves an inventive step, and is capable of industrial application, subject to section 17.

This section says certain inventions are not patentable.

Patents must not be granted for the listed categories of inventions, including certain treatment and diagnostic methods, many biological materials, obvious or frivolous inventions, and traditional knowledge.

An invention counts as new if it was not already part of the state of the art before the priority date, and certain disclosures do not destroy novelty.

An invention is treated as having an inventive step if it would not be obvious to a person skilled in the art at the relevant filing or priority date.

An invention counts as capable of industrial application if it can be made or used in an industry.

Patent applications for certain micro-biological inventions are only allowed if the applicant deposits a culture, gives the Agency the required micro-organism details, and provides the depository institution name and file number.

The Minister may, after consulting the Agency and by statutory instrument, exclude certain inventions from patent protection for up to two years if the Agency considers them harmful or offensive to the public.

Certain inventors, assignees, representatives, joint inventors, and successors in title may file a patent application.

Two or more people who jointly made an invention may apply for a patent.

An inventor has the right to be named in a patent application, even if the inventor assigned or transferred the invention rights. The inventor may also notify the Registrar in writing if they do not want to be named.

Patent applications must be filed at the Agency in the prescribed form and manner, with the prescribed fee.

A patent application must include specified content, and if the applicant is not the inventor, the request must be accompanied by proof of the applicant’s right to apply.

An applicant for a patent involving genetic resources or associated traditional knowledge must disclose the country of origin and the source of those resources or knowledge.

A non-resident applicant must file and process a patent-related application through a registered patent agent.

A patent application must be filed with a request to grant a patent, and the request must include the applicant’s name, the inventor’s name, the invention’s title or subject matter, and any other prescribed information.

Patent applications usually need a complete or provisional specification, and a missing complete specification must be filed within the stated time or the application lapses.

A complete specification must describe the invention clearly, disclose the best known method, end with claims, and include a chemical denomination description when relevant.

A patent application may include claims, and each claim must meet specific drafting requirements.

If a patent application refers to drawings, the drawings must be filed with the application; otherwise the Registrar notifies the applicant to file them within up to three months.

An abstract must be a summary of the invention disclosure and must not be used to interpret the scope of protection sought.

A patent application must cover only one invention or a group of inventions linked by a single inventive concept.

The Registrar must assign a filing date to a patent application, and the filing date can shift depending on when requirements, corrections, or drawings are lodged.

If two or more people independently create the same invention and each files a patent application, the patent goes to the applicant with the earliest filing date, or the earliest priority date if priority is claimed.

The Registrar may backdate a fresh patent application to no earlier than the filing date of the earlier application, and a patent granted from that fresh application cannot be revoked or invalidated only because the claimed invention is not new in light of the earlier disclosure.

The Registrar may, on the applicant’s request, post-date or ante-date a patent application after it is lodged and before publication.

This section sets how to determine an invention’s priority date for a patent application.

This section lets a patent applicant claim priority from earlier patent applications if the stated conditions are met, and it restricts residents of Zambia from filing patent applications outside Zambia without the Registrar’s written authority.

A patent application outside Zambia is restricted unless an earlier application for the same invention was filed with the Agency at least six months before, and there are no current Registrar directions blocking publication or communication.

Patent applicants must disclose and, when asked, provide foreign-application information and documents to the Registrar; they may also submit comments on the furnished documents.

The Registrar may refuse a patent application for listed reasons, may ask for amendment if the problem can be fixed, and an aggrieved person may appeal to the High Court within three months.

An applicant may amend a patent application only in the prescribed manner and only within the original disclosure; the Registrar must handle overbroad amendments, advertisements, objections, decisions, appeals, and certain trade mark acknowledgments as set out here.

The Registrar may authorise correction of a clerical error in a filed document if an applicant requests it.

A patent applicant may split an initial application into two or more divisional applications, but each divisional application cannot add matter beyond what was disclosed in the initial application.

A patent applicant may withdraw the application before grant, rejection, or refusal to grant, following the prescribed procedure and paying the prescribed fee.

A patent application lapses if a complete specification is not lodged within 12 months of filing, unless one of the listed exceptions applies. The Registrar may extend the acceptance period by up to 3 months on application and payment of the prescribed fee.

The Registrar must examine patent applications for compliance, order a prior art search if they comply, notify the applicant to amend a non-compliant application, and refuse it if the applicant does not amend it.

The Registrar may send a patent application for a novelty search, and must reject it if required fees, documents, or proof are not provided within the stated periods.

This section sets out how a patent application is examined, when the Registrar may act on their own motion, and when an application is treated as withdrawn or abandoned.

The Registrar must publish acceptance of a patent application in the Industrial Property Journal, as soon as practicable after the prescribed fee is paid.

Patent applications and accompanying documents must be open to public inspection once the Registrar has accepted and published them, subject to section 94, payment of the prescribed fee, and prescribed hours. If a priority-claiming application is open, the earlier application it claims priority from must also be open for inspection.

A person, including the State, may oppose a patent grant by filing written notice with the Registrar within the stated time limits and before the patent is sealed.

This section sets the procedure for opposing a patent grant, replying to an opposition, changing particulars with the Registrar’s permission, and appealing the Registrar’s decision.

This section assigns ownership of employee inventions, with some exceptions, and gives the employee a right to equitable remuneration in a high-value case.

Section 58 applies to a Government employee, with necessary modifications and subject to other written laws.

Disputes between an employer and employee about an invention made during employment or service must be determined by the High Court.

The Agency must act as a receiving, designated, or elected office for PCT patent applications, and must act as the receiving office when the application is filed by a national or resident of Zambia.

International patent applications are to be treated and processed under the Act or the Patent Coorperation Treaty rules, depending on the application type.

An ARIPO patent generally has effect in Zambia like a patent under the Act, unless the Registrar tells ARIPO it should not have legal effect, or the required ARIPO communication is missing or comes too late.

The Registrar must grant and seal a patent when there is a proper application and the prescribed fee is paid, subject to listed exceptions. The section also sets the patent’s effective date and sealing deadlines.

A patent is dated from the date the specification was filed with the Registrar, and a granted patent lasts 20 years from the application filing date.

The Registrar must publish a notice of the grant of a patent in the Industrial Property Journal.

A patentee or exclusive licensee may apply to the Registrar for a patent term extension, but only starting six months before expiry and only on specified grounds.

The Minister must prescribe an annual maintenance fee for patents, patentees must pay it by the due date, and unpaid patents lapse. The Registrar may extend the payment period by six months if the patentee pays a prescribed administrative penalty to the Agency.

If the maintenance fee is unpaid, patent protection lapses until payment, and the Registrar must remove the patent from the Register.

A patentee can ask the Registrar to restore a patent within six months after removal from the Register, and objections and appeals are allowed under set conditions.

If a patent is restored, the patentee’s rights are subject to conditions imposed by the Registrar.

The patentee has exclusive rights in the patent term, and others may not do the listed acts without the patentee’s written consent.

Patent rights are personal property and can be transferred, but a transfer is only effective if it is written, signed by or for the patentee, and registered with the Patent Office.

If a patent is granted to two or more patentees, they are treated as joint owners unless an agreement in force says otherwise.

Patent rights are limited to industrial or commercial activities and do not cover a list of specified acts.

A patentee’s patent rights do not extend to certain acts involving a product once it has been put on the market in Zambia or elsewhere by the patentee, or by someone else with the patentee’s consent.

A person must not do the acts listed in section 72 without the patentee’s written consent.

Some acts are not patent infringement, including private non-commercial reproduction, reproduction for evaluation/analysis/research/teaching, and using results from such work to create a different invention that meets section 15.

A patentee or exclusive licensee may sue for patent infringement, but must notify other listed licensees first and generally start proceedings within five years of learning the facts.

If a patentee or exclusive licensee applies for infringement relief, the court may grant remedies such as injunctions, delivery up, damages, profits, royalties, or destruction/disposal of infringing goods.

A patentee or licensee may ask the High Court for delivery up of a patented product or article, but a patentee must first notify any assignee or exclusive licensee with a concurrent right of action.

The High Court may order a patented product or article to be delivered up, forfeited, destroyed, or otherwise disposed of, or decide that no order should be made.

Damages and account of profits cannot be awarded against a defendant in a patent infringement case if the defendant did not know, and had no reasonable grounds to suspect, that the patent existed. Patent-marking words alone do not count as notice unless the patent number is included.

A person interested in a protected patent may ask the High Court for a declaration that a specific act is not infringement; the patentee, assignee, or licensee can be joined as defendants.

In patent infringement proceedings, the patentee, assignee, or exclusive licensee usually does not have to join the other party, unless the High Court orders otherwise.

In patent enforcement proceedings, the plaintiff is presumed to be the patentee and the patent is presumed valid unless the defendant disputes it.

In certain patent infringement cases about a patented process, the alleged infringer must prove that the identical product was not made by that process.

The court must order cross-examination of an affidavit deponent in certain cases, and it must refuse to admit the affidavit matters if the deponent does not appear.

The High Court may deal with unjustified threats of patent infringement proceedings, but not if the defendant proves the threatened acts would be infringing.

A patentee may ask to surrender a patent by notice and fee, and the Registrar must publish, notify interested persons, and decide whether to revoke or dismiss after any objection.

A patent may be revoked by the Registrar on application by an interested person, and the Registrar must follow the stated procedure.

The Registrar may revoke a patent if, with the Minister’s consultation, the invention or its use is judged prejudicial to the environment, public safety, or public health, and after a declaration in the Industrial Property Journal.

If a patent is revoked, it is treated as null and void from the date it was granted.

The Minister or the Registrar may restrict publication or communication of certain patent-application information, and violating this section is an offence.

Directions on a patent application can stop publication, disclosure, and grant, and trigger ministerial review and possible compensation.

A patentee may grant a licence by licence contract, but the contract must be written, signed by both parties, and lodged with the Registrar.

The Registrar may refuse to register a licence contract in some cases, must notify and hear the parties before refusing, the contract is not open to public inspection, and an aggrieved person may appeal to the High Court within three months.

If a licence is granted as an exclusive licence, the patentee must not give another licence for the same patent to someone else or act inconsistently with ownership of the patent. The exclusive licensee is entitled to the rights of a patentee under section 72.

A person may apply to the Minister for a compulsory licence after three years from patent grant, and the Minister must follow set steps before deciding.

The owner of a later patent may ask the Registrar for a compulsory licence in limited circumstances, and the Registrar must issue one if satisfied. The earlier patent owner is entitled to a cross-licence, and use under a compulsory licence can only be transferred with assignment of the second patent.

The Minister may direct the Registrar to grant compulsory licences for patented products declared by the Government to be vital to defence, public health, the environment, or the economy.

The Minister may revoke a compulsory licence if an application is made by an interested person or on the Registrar’s advice, and one of the listed grounds exists.

A patentee may ask the Registrar to mark a patent as “licence of right,” and later may ask for that endorsement to be cancelled; the Registrar must endorse it if the contractual condition is met.

The Minister may authorise use of a patented invention for non-commercial purposes when the Government requires it for public health, the environment, or a national emergency, even without the patentee’s consent.

If the Government or an authorised person is using or will use a patented invention for section 105 purposes without a patent search, the Minister must notify the patentee as soon as practicable. A patentee aggrieved by the Minister’s decision may appeal to the High Court within three months.

If the Government or an authorised person uses a patented invention, the use must be limited to the purposes in section 105.

If the Government or an authorised person uses a patented invention, the patentee must be paid equitable compensation, and the use is not assignable or exclusive.

Patents rules apply to utility models with necessary modifications, and section 15(1)(b) does not apply to utility models.

A utility model certificate must be granted for an invention that is new, capable of industrial application, and meets the Act’s relevant provisions.

A utility model certificate is dated from the filing date of the application, lasts 10 years from that filing date, and proceedings for infringement before publication of the application cannot be started.

An applicant may convert a patent or utility model application into the other type, but only by paying the prescribed fee, and the conversion cannot be done twice. The Registrar must keep the required utility model records.

An ARIPO utility model generally has effect in Zambia, unless the Registrar tells ARIPO that it should not.

The Registrar must maintain a register of patent agents and enter prescribed particulars in it.

Rules for who may register and act as a patent agent, and what the Registrar must do.

A patent agent may act for a person before the Registrar, prepare and sign documents for a patent application, and communicate between an applicant and the Agency. A body corporate must not hold itself out as a patent agent.

The Registrar may remove a patent agent’s name from the register if certain grounds are met.

The Registrar may restore a removed patent agent’s name to the register if an application is made, sufficient cause is shown, and the prescribed fee is paid.

The Registrar may refuse to deal with certain unregistered patent agents who are applying for patents outside Zambia for an employer's benefit.

A person commits an offence if they make, possess, or dispose of certain dies, blocks, machines, instruments, or patent representations in circumstances linked to patent offences.

A person must not describe or hold out as a patent agent, or let someone else do so, unless duly registered under the Act.

If a corporate or unincorporated body commits an offence under the Act, its directors or managers may be held liable on conviction unless they prove lack of knowledge, consent, connivance, or reasonable steps to stop it.

A person commits an offence if they make false statements, false entries, false evidence, or otherwise breach the Act; the penalty on conviction is a fine up to 500,000 penalty units, up to 5 years’ imprisonment, or both.

A person who breaches any provision of the Act, where no specific penalty is set, is liable on conviction to a fine, imprisonment, or both.

The Registrar must not use a discretionary or other power adversely or arbitrarily, and a person who challenges a Registrar decision has a right to apply to the High Court.

The Registrar must appoint assessors when required, and the assessors are to be remunerated by the agency at a rate prescribed by the Minister.

Certified Registrar documents and copies of register entries are admissible as evidence, and a Registrar certificate is prima facie evidence of the matters certified.

The Registrar must provide copies of publicly inspectable documents or a certificate for them when asked and when the prescribed fee is paid.

The Registrar may waive all or part of a prescribed fee if the prescribed circumstances apply.

The Registrar may extend time for doing an act if a person applies and the delay is due to circumstances beyond the person’s control.

If the Act requires the Registrar to do something and no time is set, the Registrar must do it as soon as practicable.

The Registrar may submit a written, signed statement to the Court unless the High Court directs otherwise.

Some advertisements or notices may only be published if they are in the prescribed form and approved by the Registrar; notices issued by the Minister are excluded.

If a certificate issued under the Registrar is lost or destroyed, the Registrar may issue and seal a replacement certificate once satisfied, on payment of a prescribed fee.

Documents that must or may be lodged at the Agency can be lodged with the Registrar or another officer, by hand, by registered post, or electronically; authentication is not required for documents lodged in the Agency or with the Registrar.

Funds needed to administer and implement the Act are to be paid from service fees, monies accrued to the Agency, and monies appropriated by Parliament.

The Registrar may impose an administrative penalty for failure to comply with the Act, and the penalty must be paid to the Agency within the period set by the Registrar.

Prescribed fees must be paid in full before the relevant act is done or the document is treated as filed.

The Minister may make regulations by statutory instrument to carry out this Act.

This section repeals the Patents Act, 1958.

The transitional provisions in the Schedule apply for purposes of this Act.

Patent applications made before the Act started are handled under the old law, but any patent grant must follow this Act.

Older patents, licences, and contracts are continued under this Act, but must comply with it within six months of commencement.

Existing patent agents may keep acting as patent agents, but they must comply with this Act within six months after the Act starts.

Pending proceedings and appeals continue under the repealed Act rules, not this Act.