Key Benefits:
8. Patentable inventions
(1) An invention shall be patentable if it is new, involves an inventive step, and is capable of industrial application.
(2) An invention may be or relate to a product or a process.
(3) An invention is considered to be new if it does not form part of the state of the art.
(4) For the purposes of this Act, the state of the art in relation to an invention, means anything which has been disclosed to the public, whether in Botswana or outside Botswana, in a tangible form, orally, by use or in any other way, prior to the filing or priority date of the application claiming the invention.
(5) For the purpose of determining the novelty of a claimed invention, a matter contained in another application filed with the Office and having an earlier filing or priority date shall form part of the state of the art, if the application is published under this Act.
(6) Disclosure of information which would otherwise affect the patentability of an invention claimed in the application shall not affect the patentability of that invention where the information was disclosed by-
(a) the applicant or his or her predecessor in title; or
(b) a third party that obtained the information directly or indirectly from the applicant or his or her predecessor in title, if the disclosure took place-
(i) during the 12 months preceding the filing date; or
(ii) where priority is claimed, during the 12 months preceding the priority date of the application.
(7) An invention shall be considered as involving an inventive step if, having regard to the state of the art relevant to the application claiming the invention as defined in subsection (4), it would not have been obvious to a person having ordinary skill in the art.
(8) An invention shall be considered as being capable of industrial application if it can be used in trade, or in any kind of industry including handicraft, agriculture, fishery and other services.
9. Matter excluded from patent protection
(1) For the purposes of this Act, the following shall not be regarded as inventions and shall be excluded from patent protection-
(a) a discovery or a plant, animal, micro-organism or substance as found in nature, including the human body;
(b) a scientific theory or mathematical method;
(c) a literary, dramatic, musical or artistic work or other aesthetic creation;
(d) a scheme, rule or method for doing business, performing a mental act or playing a game;
(e) a computer program.
(2) For the purposes of this Act, the following shall not be protected by patents, even if they are inventions-
(a) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised in relation thereto, except products for use in any such methods;
(b) an invention the commercial exploitation of which is necessary to protect public order or morality including protection of human or animal health, plant life or to avoid prejudice to the environment;
(c) plants and animals other than micro-organisms;
(d) essentially biological processes for the production of plants or animals.
(1) The right to a patent shall belong to the inventor.
(2) If two or more persons have made an invention jointly, the right to the invention shall belong to them jointly.
(3) Where two or more persons have made the same invention but independently of each other, the person whose application bears the earliest filing date, or, if priority is claimed, the person whose application bears the earliest validly claimed priority date shall, unless that application is abandoned, withdrawn or rejected by the Registrar, have the right to the patent.
(4) Where an invention is made in execution of a contract of employment, the right to the patent shall, in the absence of any agreement to the contrary, belong to the employer.
(5) The inventor shall be named as such in the patent, unless, in a special declaration in writing signed by him or her and addressed to the Registrar, he or she indicates that he or she wishes not to be named, and any promise or undertaking by the inventor made to any person to the effect that he or she will make such a declaration shall be without legal effect.
(1) An application for a patent in respect of an invention may be made by the inventor or by any other person who has acquired the right to apply from the inventor.
(2) Unless otherwise agreed, joint inventors may jointly apply for a patent.
(1) Every application for a patent shall be filed with the Registrar and shall contain-
(a) a request;
(b) a description;
(c) one or more claims defining the matter for which protection is sought;
(d) drawings (where referred to in the description or the claims);
(e) an abstract in the prescribed form,
and shall be accompanied by such fee as may be prescribed.
(2) A request referred to in subsection (1) shall contain a petition that a patent be granted, the name of and other prescribed information concerning the applicant, the inventor and the agent, if any, and the title of the invention.
(3) Where the applicant is not the inventor, the request shall be accompanied by a statement justifying the applicant's right to the patent.
(4) The description set out in the application shall disclose the invention in a manner which is sufficiently clear and complete to enable a person having ordinary skill in the art to carry out the invention, and shall indicate at least one mode known to the applicant in which the invention can be performed.
(5) Where an invention refers to or involves the use of biological material that is not available to the public and cannot be described in the patent application in such a manner as to enable the invention to be reproduced by a person skilled in the art, the description shall be regarded as inadequate for the purposes of this Act unless-
(a) the biological material has been deposited with a depositary institution recognised by the Minister no later than the date on which the patent application was filed at the Office;
(b) the application as filed contains relevant information available to the applicant on the characteristics of the biological material deposited;
(c) the application states the name of the depository institution and the deposit accession number; and
(d) other prescribed conditions regarding the formalities for the deposit and the supply of samples of the deposited material are complied with.
(6) For purposes of subsection 5 (a) an international depositary authority recognised under the Budapest Treaty shall be recognised without requiring a Minister's decision to recognise it.
(7) A claim referred to in subsection (1) shall be clear and concise and shall be fully supported by the description, and the description and any drawings filed may be used to interpret the claim.
(8) An abstract referred to in subsection (1) shall not be taken into account for the purpose of interpreting the scope of the protection but shall merely serve as technical information.
13. Withdrawal and amendment of application
(1) An application for a patent may, at any time before the patent is granted, be withdrawn by the applicant.
(2) The applicant may, of his or her own initiative at any time before the grant of a patent, amend or correct his or her application.
(3) The applicant shall not, in amending his or her application under this section, include any material matter which was not disclosed in the initial application as filed.
(1) An application for a patent shall be in respect of a single invention or, where it is in respect of a group of inventions, the inventions shall be so linked as to form a single general inventive concept or have a unity of invention.
(2) The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground for the invalidation or revocation of the patent.
(1) An applicant may, at any time before the grant of a patent, divide his or her application into two or more applications (in this Act referred to as "divisional applications"), provided that each divisional application shall not include any matter which was not disclosed in the initial application as filed.
(2) The Registrar shall accord each divisional application the same filing date and, where applicable, the same priority date, as the initial application.
(3) The Registrar may require an applicant to divide the applications where the terms of section 14 (1) have not been complied with.
(1) Where two or more persons make a joint application for a patent, the applicants shall, in the absence of an agreement to the contrary, have equal undivided shares in the application and no one applicant shall deal with the application in any way without the consent of the other applicant or applicants.
(2) Without prejudice to subsection (1), if any steps are required to be taken to save the application from being abandoned, any applicant may, on his or her own behalf as well as on behalf of any other joint applicant, take such steps without recourse to the other applicant or applicants.
(1) An application for a patent made under this Part may contain a declaration, in writing, claiming priority, as provided for in Article 4 of the Paris Convention, of one or more earlier national, regional or international applications filed by the applicant or his or her predecessor in title in any convention country or any member of the World Trade Organization.
(2) Where a declaration of priority is made under subsection (1) the applicant shall, within such time as may be prescribed, furnish the Registrar with a copy of the application earlier filed which copy shall be certified as correct by the patent office with which it was so earlier filed.
(3) Where the earlier application referred to in subsection (2) is not in the English language and the Registrar deems that the validity of the priority claim is relevant to determine whether the invention concerned is patentable, the applicant shall submit an English translation of such earlier application within two months from the date of being notified to that effect by the Registrar.
(4) Where an applicant does not satisfy the requirements of subsections (2) and (3) and any regulations pertaining thereto, the declaration shall be considered as having not been made.
(5) The effect of the declaration referred to in subsection (1) shall be as provided for in Article 4B of the Paris Convention.
(6) The applicant may, in such form as may be prescribed, request the correction or addition of a priority claim, provided the filing date of the application before the Office is not later than the date of the expiration of the priority period calculated from the filing date of the earliest application whose priority is claimed.
(7) Where an application that claims or could have claimed the priority of an earlier application has a filing date that is later than the date on which the priority period expired, the Registrar shall, within two months from that date, upon request being filed as prescribed, restore the right of priority if the request states the reasons for the failure to comply with the priority period.
(8) The Registrar shall restore the right of priority where he or she finds out that the failure to file the subsequent application within the priority period occurred in spite of due care required by the circumstances having been taken.
(9) Where a copy of an earlier application required under subsection (2) is not filed within the prescribed time limit by an applicant, the Registrar may, upon a request being filed by the applicant as prescribed, restore the right of priority if that request is filed within the time limit for filing such copy, provided that-
(a) the Registrar is satisfied that a request to obtain the copy was filed with the Office that received the earlier application not later than 14 months from the date of filing of that earlier application; and
(b) a copy of the earlier application is filed with the Registrar within one month from having been obtained from the said Office.
(10) Any request under this section shall be subject to payment of the prescribed fees by the applicant.
18. Conversion of patent application into application for utility model certificate
(1) At any time before the grant or refusal of a patent, an applicant for a patent may, upon payment of the prescribed fee convert his or her application for a patent into an application for a utility model certificate.
(2) No person may convert an application under subsection (1) more than once.
19. Information concerning corresponding foreign applications for patents
(1) An applicant shall indicate in the application for a patent the date and the number of other applications filed by him or her or his or her predecessor in title outside Botswana relating to the same or essentially the same invention as that claimed in the application filed in Botswana.
(2) The applicant shall, when requested by the Registrar, furnish the following documents relating to any of the applications referred to in subsection (1)-
(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of such application;
(b) a copy of the patent or other title of protection granted in respect of such application;
(c) a copy of the final decision rejecting the application or refusing the grant requested in respect of the application; and
(d) a copy of the final decision revoking or invalidating the patent or other title of protection granted in respect of such application.
20. Filing date of application for patent
(1) The filing date of an application for a patent shall be the date on which the application is received by the Office if on the date of its receipt, the application contains-
(a) an express or implicit indication that the grant of a patent is sought;
(b) information which will enable the Registrar to establish the identity of the applicant and to contact him or her;
(c) a part which, on the face of it, appears to be a description of the invention; and
(d) a part which, on the face of it appears to be a claim of the invention.
(2) For the purposes of establishing the filing date, information mentioned in 1 (a) may be filed in English or Setswana, provided that where the information is filed in Setswana, a translation into English shall be supplied by the applicant upon request by the Registrar.
(3) Where the application does not comply with the requirements of subsection (1), the Registrar shall, in writing, request the applicant to supply the missing information, and the filing date shall be the date on which the missing information is received by the Office.
(4) If an applicant fails to comply with any request made by the Registrar under subsection (2), the application shall be treated as though it had never been filed.
(5) Where a part of the description of the invention appears to be missing from an application for a patent, or the application makes reference to drawings which are not included in the application, the Registrar shall request the applicant to furnish the missing part or drawings within such time as may be prescribed, and the filing date of the application shall be the date on which such part or drawings are received by the Office.
(6) If the applicant fails to comly with any request made by the Registrar under subsection (5), the Registrar shall accord to the application the date on which the application was received by him or her, as the filing date, and shall treat any reference to such part or drawings as being non-existent.
(7) Notwithstanding the provisions of subsection (6) and subject to the prescribed requirements, a reference, made in the application to a previously filed application shall, for the purposes of establishing the filing date of the application, replace the description and any drawings.
21. Publication, observations and opposition
(1) Upon the expiry of 18 months, counted from the date of filing the application for a patent with the Registrar or, where relevant, from the applicable priority date, the Registrar shall, in the prescribed manner and subject to payment of the prescribed fee by the applicant, publish the application in the Journal and thereafter the application shall be open for public inspection.
(2) The applicant may request, in writing, for the application to be published before the expiry of the period under subsection (1) and subject to compliance with the requirements for publication, the Registrar shall publish the application as requested.
(3) The applicant shall be entitled to claim compensation from any person who, after the publication of the application and before the grant of the patent, performs without authorisation from the applicant in respect of the claimed invention any act that would be regarded as an infringement of a patent granted on the invention.
(4) An applicant may claim compensation referred to in subsection (3) where the applicant gives notice to the person concerned and the claim deals with only those acts covered by the patent as published.
(5) Any interested person may, within the prescribed period and in the prescribed manner, submit to the Registrar, an observation or objection against the application for a patent on grounds that-
(a) the claimed subject matter does not constitute an invention in terms of section 2, or is excluded from patentability under section 9;
(b) the requirements of sections 8, 12 (1), 12 (4), 12 (5), 12 (7) or 14 have not been satisfied; or
(c) sections 13 (3) and 15 (1), where applicable, have not been complied with.
(6) The person submitting an observation or objection under subsection (5) shall state the reasons for his or her observation or objection, and attach any documents or other evidence in support of the observation or objection.
(7) The person submitting an observation or objection under subsection (5) shall not become a party to any proceedings under this Act by reason only that he or she submitted an observation or objection under this section.
(8) Where an observation or objection is submitted, the Registrar shall send a copy to the applicant who may, within the prescribed period and in the prescribed manner, send to the Registrar his or her counter-statement.
(9) If the applicant sends a counter-statement, the Registrar shall provide a copy to the person who submitted the observation or objection and the Registrar may, at his or her discretion, hear the parties if either or both wish to be heard.
(10) The Registrar shall consider the observation or objection made under subsection (5) before deciding on the application for a patent.
(11) An interested person referred to in subsection (5) may apply to the High Court, within the prescribed period and in the prescribed manner, on grounds that he or she has been aggrieved by the decision of the Registrar under subsection (10) and in such a case the Registrar shall suspend the patent application proceedings pending a decision on the matter by the court.
22. Examination of applications
(1) The Registrar shall cause the application to be examined for compliance with the requirements of the Act.
(2) The Minister may, by regulations, prescribe the categories of inventions in respect of which an examination under this section shall not cover the requirements of novelty and inventive step.
(3) An examination under this section may be undertaken by persons or institutions appointed by the Registrar, including any designated foreign, national or regional industrial property authorities.
(1) Where the Registrar is satisfied that the requirements of section 22 have been fulfilled, he or she shall grant the applicant a patent.
(2) Where there is any requirement or observation that is missing from the application, the Registrar shall notify the applicant, inviting him or her to comply with any missing requirement or submit any observation within the prescribed time limit and where the applicant fails to provide or submit any missing requirement or observation within the prescribed time limit, the Registrar may refuse the application and notify the applicant of that decision.
(3) Where the Registrar grants a patent, he or she shall-
(a) issue a certificate of the grant of the patent and a copy of the patent to the applicant;
(b) record the patent in the patent register; and
(c) publish, in the Journal, a reference to the grant of the patent.
(4) The Registrar shall, on payment of the prescribed fee, make a copy of any patent granted in terms of this section available to any person who requests such copy.
(5) The Registrar shall, upon request by the patentee, make changes in the text or drawings of the patent in order to limit the extent of the protection conferred by the patent.
24. Rights conferred by patent
(1) The patent confers on the patentee the right to prevent third parties not having such patentee's consent from exploiting the patent in Botswana.
(2) For the purposes of this section, exploitation of a patent means-
(a) where the patent has been granted in respect of a product-
(i) making, offering for sale, selling or using the product, or
(ii) importing the product for the purposes of offering it for sale, selling or using it; and
(b) where the patent has been granted in respect of a process-
(i) using the process, and
(ii) doing any act referred to in paragraph (a) in respect of a product obtained directly by means of the process.
25. Exceptions to rights conferred by patent
(1) The rights conferred by a patent shall not extend to-
(a) acts in respect of articles which have been put on the market in Botswana or abroad by the patentee or by another person acting with the patentee's consent, or having an economic tie to the patentee;
(b) the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Botswana;
(c) acts done only for experimental purposes relating to the subject-matter of the patented invention;
(d) use by a farmer in the harvest of a farm produce for propagation or multiplication by the farmer on the farmer's holding, where there has been a sale of plant propagating material to the farmer by the patentee or with the patentee's consent for agricultural use;
(e) use of an animal or animal reproductive material by a farmer for an agricultural purpose following a sale to the farmer, by the patentee or with the patentee's consent, of breeding stock or other animal reproductive material which constitutes or contains the patented invention;
(f) an act done in respect of the patented invention for purposes of compliance with regulatory marketing approval procedures for pharmaceutical, veterinary, agrochemical or other products subjected to such procedures;
(g) the extemporaneous preparation in a pharmacy of a medicine for an individual in accordance with a prescription given by a medical or dental practitioner, and the use of a medicine so prepared;
(h) acts performed by any person who in good faith, before the filing date or, where priority is claimed, the priority date of the application on which the patent is granted and in Botswana, was using the invention or was making effective and serious preparations for such use;
(i) acts done solely for academic, scientific research, educational or teaching purposes; or
(j) acts done for private non-commercial purposes.
(2) An economic tie referred to in subsection 1 (a), exists where one person may exercise, directly or indirectly, on the other a decisive influence with respect to the exploitation of the invention, or where a third party may exercise such an influence on both persons.
(3) The right of prior user referred to in subsection 1 (h) may be transferred or may devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the use of preparations for use have been made.
26. Transfer of rights to patent
The right to a patent may be transferred by cession, assignment, testamentary disposition or by operation of patent law.
27. Proceedings for infringement of patent
(1) The patentee shall, in addition to any other rights, remedies or actions available to him or her, have the right to institute court proceedings against any person who infringes the patent by performing, without such patentee's consent or authorisation, any of the acts referred to in section 24 (2), or who performs any act which makes it likely that infringement will occur.
(2) The patentee in proceedings for infringement shall be entitled to relief by way of the following-
(a) an interdict or injunction;
(b) delivery up or destruction of any infringing product, article or product of which the infringing product forms an inseparable part;
(c) damages; or
(d) an account of the profits derived from the infringement.
(3) In any proceedings for infringement, the defendant may counter-claim for the invalidation of the patent and, by way of defence, rely upon any ground on which a patent may be invalidated.
(4) The patentee, before instituting proceedings, shall give notice to every licensee to the patent in question whose name is recorded in the patent register, and any such licensee shall be entitled to intervene as co-plaintiff.
(5) In any proceedings for infringement, other than criminal proceedings, where the subject matter of the patent is a process for obtaining a product, the burden of establishing that the product was not made by the process shall rest on the defendant if the product obtained by the patented process is new in terms of section 8 (3).
(6) In requiring the production of evidence in proceedings for infringement, the court shall take into account the legitimate interests of the defendant in not disclosing his or her manufacturing secrets.
(7) The court shall, in awarding damages, calculate such damages taking into account the amount of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the patent concerned.
(8) The court shall not, in awarding damages under this section, also order, in respect of the same infringement, that the plaintiff be given an account of the profits derived by him or her from the infringement.
28. Duration and maintenance of patent
(1) Subject to subsection (2), a patent shall expire 20 years after the filing date.
(2) In order to maintain a patent or patent application, the patentee or the applicant shall pay in advance to the Registrar for each year starting one year after the filing date of the application for the grant of the patent, such annual maintenance fee as may be prescribed.
(3) A patent shall lapse or a patent application shall be deemed to have been withdrawn if the owner fails to pay the prescribed fees under subsection (2).
(4) Where the patentee or the applicant is late in paying the annual maintenance fee, the Registrar shall, upon the payment of a surcharge that may be prescribed, give the patentee or applicant a grace period of six months, within which to pay the late annual maintenance fee.
A patent in respect of which Botswana is a designated State, granted by ARIPO by virtue of the HARARE Protocol, shall have the same effect and enjoy the same protection in Botswana as a patent granted under this Act unless the Registrar communicates, to ARIPO, in respect of the application therefor, a decision, in accordance with the provisions of the Protocol, that if a patent is granted by ARIPO, that patent shall have no effect in Botswana.
(1) Where a patent is granted to two or more patentees jointly, the joint patentees shall, in the absence of an agreement to the contrary, be entitled to an equal undivided share in the patent.
(2) A joint patent shall be exercised subject to the following provisions-
(a) each joint patentee is entitled to exploit commercially the patent to his or her benefit, but shall be required to pay equitable compensation, fixed by the court in case of a disagreement, to the other joint patentee who is not directly exploiting the patent or has not granted a licence for exploitation in accordance with paragraph (b);
(b) a joint patentee may grant a non-exclusive licence to exploit the patent, but shall be required to pay equitable compensation fixed by the court in case of a disagreement to the other joint patentee who is not directly exploiting the patent or has not granted the licence for exploitation; the other joint patentee may oppose the grant of such licence provided he or she acquires the share of the joint patentee wishing to grant the licence and on condition that the price of that share shall be fixed by the court in case of disagreement;
(c) an exclusive licence or sole licence to exploit the patent may only be granted by agreement among the joint patentees; and
(d) a joint patentee may assign his or her share in the patent, provided that the patentee notifies the other joint patentee of his or her intention and such other joint patentee shall have a right of first refusal to acquire a share during a period of three months computed from the receipt of that notification.
(3) A joint patentee may institute proceedings for infringement on his or her rights on the patent after giving prior notice to the other joint patentee, and the other joint patentee may join the proceedings as a co-plaintiff and recover any damages in respect of any loss suffered as a result of the infringement.
(4) If, in any proceedings under subsection (3), a joint patentee does not join the proceedings as a co-plaintiff, damages, if any, shall be awarded to the plaintiff as if he or she were the sole patentee, and the defendant shall not compensate the other patentee in respect of the same infringement.
31. Compulsory licences in the public interest or for competition
(1) The Minister may, without the consent or authority of the patentee and after giving a hearing to the patentee and any other interested party, authorise a Government agency, other person or body to exploit the patented invention on the payment of adequate remuneration to the patentee where-
(a) it is in the public interest to do so for purposes of national security, nutrition, health, development of other vital sectors of the national economy, social service; or
(b) a court or administrative body has determined that the manner of exploitation of the invention by the patentee is anti-competitive or constitutes an abuse of the patent.
(2) In the determination of adequate remuneration under subsection (1), the Minister shall take into account the economic value of the exploitation of the patented invention and the need for the elimination of anti-competitive practices.
(3) The exploitation of the patented invention under subsection (1) shall be for the supply of the domestic market in Botswana only, except where paragraph 1 or 3 of Article 31bis of the TRIPS Agreement applies.
(4) Upon request by the patentee, a Government agency, other person or body authorised to exploit a patented invention under subsection (1), the Minister may, after hearing the parties, vary the terms of the decision authorising the exploitation of the patented invention as circumstances may justify.
(5) The Minister may revoke a decision made under subsection (1) where, after hearing all the parties he or she is satisfied that the circumstances which led to his or her decision have ceased to exist and are not likely to recur, or that the agency, person or body has failed to comply with the terms of the decision.
(6) Notwithstanding the provisions of subsection (5), the Minister shall not terminate the authorisation to exploit the patent if he or she is satisfied that public interest as referred to in subsection (1) justifies the maintenance of his or her decision.
(7) Where a third party has been designated by the Minister to exploit a patent under this section, such exploitation may be transferred only within the enterprise or business within which the patented invention is being exploited.
(8) The authorisation to exploit a patent under this section shall not exclude-
(a) the right by the patentee to grant a licence to another person to exploit the patent; or
(b) the continued exercise, by the patentee, of his or her rights under section 24 (2).
(9) A request to the Minister under subsection (4) by an agency, other person or body for an authorisation to exploit a patent under this section shall be accompanied by evidence that the patentee has received, from the person seeking the authorisation, a request for a contractual licence, and that such person has been unable, within a reasonable time, to obtain the licence on reasonable commercial terms and conditions.
(10) Subsection (9) shall not apply in cases of national emergency or other circumstances of extreme urgency, nor in the cases mentioned in subsection (1) (a).
(11) Where a competition authority has determined that the manner of exploitation of a patent in the field of semi-conductor technology is anti-competitive, the Minister shall authorise the issuance of a compulsory licence if he or she is satisfied that the issuance of a compulsory licence would remedy such practice.
(12) Any person who is aggrieved by a decision of the Minister under this section may appeal to the High Court against that decision.
32. Importation of patented products by Government or third party
(1) Subject to section 31, the Minister may issue a licence to a Government agency or any authorised person for the importation of patented products such as generic pharmaceutical products from any legitimate alternative foreign source without the approval of the patentee where-
(a) it is in the public interest to do so for purposes of national security, nutrition, health, development of other vital sectors of the national economy, social service; or
(b) the market for the patented product is not being supplied in sufficient quantities or on reasonable terms in relation to market demand.
(2) The importation of the patented product by a Government agency or any authorised person shall be solely for public non-commercial use within Botswana, except where paragraph 1 or 3 of Article 31 is of the TRIPS Agreement is applicable.
(3) A licence issued under subsection (1) shall include the name of the pharmaceutical product and an estimate of the quantities of the pharmaceutical product to be imported during the term of the licence: Provided that the estimate shall not limit the quantity of the pharmaceutical product required to address the public health problem that the importation seeks to address.
(4) Where in respect of the pharmaceutical product referred to in subsection (1) a compulsory licence has been granted in the exporting country under the system set out in Article 31bis of the TRIPS Agreement and the Annex thereto, and remuneration for the licence has been paid accordingly in the exporting country, the obligation to pay remuneration for the compulsory licence to import that product into Botswana shall not apply.
33. Compulsory licences for failure to exploit patent
(1) At any time after the expiration of three years from the date of the grant of a patent or four years from the filing date of the application, whichever occurs later, any person may apply to the High Court for an order to be granted a licence under the patent on the grounds that a market for the patent is not being supplied, or is not being supplied on reasonable terms, in Botswana.
(2) Notwithstanding the provisions of subsection (1) an order to issue a compulsory licence shall not be granted if the patentee satisfies the High Court that circumstances exist which justify the non-exploitation or insufficient exploitation of the patent.
(3) Where the High Court grants an order for the issue of a compulsory licence under this section, it shall-
(a) set out the scope and function of the licence;
(b) fix the time limit for the exploitation of the patent; and
(c) set out the conditions and amount of remuneration to be paid to the patentee.
(4) A request for the issue of a compulsory licence shall be made in the prescribed form subject to payment of the prescribed fees.
34. Licences in respect of dependent patents
(1) If the exploitation of a patent (in this section referred to as "the later patent") is dependent upon the obtaining of a licence under an earlier patent, the patentee in respect of the later patent may apply to the High Court for an order to be issued a licence to exploit the earlier patent, and the order may be granted on such conditions as may be imposed, including a condition that such licence may be used only for the purpose of permitting the later patent to be exploited.
(2) The court shall not grant an order under this section unless the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent.
(3) Where a holder of a plant variety right cannot exploit his or her right without infringing a prior patent, the holder may apply for a compulsory licence for the non-exclusive use of that patent, to the extent necessary to allow the exploitation of the plant variety right.
(4) Where a patentee of a biotechnological invention cannot exploit the patent without infringing a prior plant variety right, the patentee may apply for a compulsory licence for the non-exclusive use of the plant variety right, to the extent necessary to allow the exploitation of such patent.
(5) The High Court may, on an application made to it by the patentee in respect of an earlier patent or plant breeder's right, as the case may be, grant an order for the issue of a licence to use the invention claimed in the later patent or plant breeder's right.
(6) A licence granted under this section shall not be transferable except in conjunction with the transfer of the licence in respect of the later patent.
(7) The provisions of section 31 (1) regarding the remuneration due to the owner of the patent shall apply to licences issued under this section.
35. Termination of contracts relating to licences
Any contract relating to a licence to exploit a patent shall terminate on the date on which the patent under which the licence was granted expires, is revoked or otherwise ceases to protect such invention.
(1) The Registrar or the High Court may, on the application of any interested party, invalidate a patent if it is found-
(a) that the patent is not an invention within the meaning of the term as defined under this Act;
(b) that the patentee is not a person entitled, under section 10, to apply for a patent;
(c) that the patent concerned is not patentable under section 8;
(d) that the invention is a matter which should have been excluded from patent protection;
(e) that the patentee's application did not satisfy the requirements of section 12 (4), (5), (7) and (8) and corresponding regulations, or that the conditions under section 13 (3) or 15 (1), where applicable, were not complied with.
(f) that the patentee failed to inform the Registrar about any corresponding foreign application filed or furnished information which in any material particular was false; or
(g) that the patent was obtained on a misrepresentation.
(2) A claim arising from an invalidated patent shall be regarded as null and void from the date of the grant of the patent.
(3) Where an application for the invalidation of a patent is made to the High Court, it shall be served on the patentee and lodged with the court in the manner and within the time prescribed.
(4) Where subsection (3) applies, the Master shall notify the Registrar of any decision of the court invalidating the patent and the Registrar shall, within such time and such manner as may be prescribed, publish the invalidation reference in the Journal.
