Patent licences and Assignments in Tanzania Mainland

In Mainland Tanzania, licences which are allowed are in the form of licence contract (licence) issued by the licensor to the licensee. In which a licence agreement (the Agreement) is entered between licensor and licensee (the Parties) in which inspection and extracts obtained from the agreement therefrom only with the written permission of both parties. The licensor assigns and grants permission to the licensee to do any of the acts in respect of an invention for which a patent has been granted or an application is pending.[1]

In the absence of any provision to the contrary in the licence, the licensee shall be entitled to do in respect of the invention all the acts for which a patent has been granted or an application is pending without limitation as to the time. The rights in which the licensee is entitled includes:[2]

  1. when the patent has been granted in respect of a product
  2. making, importing, offering for sale, selling and using the product; and
  3. stocking such product for the purposes of offering for sale, selling or using;
  4. when the patent has been granted in respect of a process
  5. using the process; and
  6. doing any of the acts in respect of a product obtained directly by means of the process.[3]

The licensee is not allowed to grant sub-licences to any third party to enjoy the rights entitled to him.[4] The grant of a licence shall not prevent the licensor from granting further licences to third parties or from using the invention himself unless it is an exclusive licence which shall prevent the licensor from granting further licences to third parties and from using the invention himself and the licensee shall be considered an exclusive licensee.[5]

When any person is proposed to be the licensee to do any of the acts in respect of an invention for which a patent has been granted or an application which is pending he must be registered by the Registrar of Patent (the Registrar) at the Business Registration and Licensing Agency (BRELA). The petition for registration of the licence must be made in prescribed form and filed to the Registrar by any party to the licence and pay the prescribed fees for the registration of the licence. Under the petition the party filing it must accompany the petition with copies of:

  1. all the documents constituting the licence, including all the amendments, annexes, riders and other supplements thereto or modifications; and
  2. all other documents or materials relating to the licence necessary for the interpretation or understanding.[6]

The Registrar shall issue the petitioner with a receipt within fourteen (14) days from the date of the petition which shall be a proof of the fact of filing the petition and of the date on which it was filed.[7]

The petition for registration of a licence after being examined by the Register and is of the view that the terms of the licence are prohibited shall notify the petitioner and invite the parties to modify the terms in the licence within forty-five (45) days from the date of the notification. If the licence is unregistrable the Registrar shall refuse to register the licence and notify the parties in writing the reasons for such refusal. But before the refusal to register the licence, the Registrar shall notify the petitioner and allow the parties to:

  1. submit any observations;
  2. correct any defect in the petition; and
  3. amend any term, or to correct any defect, in the licence contract that has been declared by the Registrar to be a term or defect precluding registration,[8]

A licence shall be void if the registration has been refused by the Registrar.[9]

Below are some of the few terms in which the Registrar may refuse to register the licences which include:

  1. permit or require the importation of technology from abroad when substantially similar or equivalent technology may be obtained on the same or more favourable conditions without importation from abroad;
  2. require payment of a price, royalty or other consideration which is disproportionate to the value of the technology to which the contract relates;
  3. require the licensee to acquire any materials from the licensor or from sources designated or approved by him, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
  4. prohibit the licensee from acquiring, or to restrict his acquisition of, any materials from any source, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced; and
  5. prohibit the licensee from using, or to restrict his use of, any materials which are not supplied by the licensor or by sources designated or approved by him, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced.[10]

When the licence becomes registrable, the Registrar shall register the licence in the register of patent and issue a certificate of registration to the petitioner. If the Registrar notices there are some defects in the petition and fails to notify the petitioner on the defects within ninety (90) days from the date of the petition, therefore within fourteen (14) days after the lapse of the ninety (90) days of the failure of the Registrar to notify the petitioner of his decision to refuse to register the licence, the said licence shall be deemed to have been registered and the Registrar shall issue a certificate of registration to the petitioner.[11]

The contents of the licence shall be confidential, unless both parties to the licence agree to permit access thereto by third parties and then only to the extent of the permission granted. Appeals against the decision of the Registrar for the refusal of the registration of the licence must be made in the High Court of the United Republic of Tanzania and the applicant must adduce grounds such as:

  1. that the decision for refusal contains no statement of the reasons for refusal;
  2. that none of the reasons for refusal specified in the decision is a valid reason under this Act or was rightly applied to the petition or to the licence contract; and
  3. that the procedure applied by the Registrar was irregular and prejudicial to the rights of the petitioner.[12]

[1] Section 43(1 & 2) of the Patent (Registration) Act, Cap 217, R.E 2002 and Regulation 42 of the Patent Regulation, GN 490 of 1994.

[2] Section 44(1) of the Patent (Registration) Act, Cap 217, R.E 2002.

[3] Section 36(a & b) of the Patent (Registration) Act, Cap 217, R.E 2002.

[4] Section 44(2) of the Patent (Registration) Act, Cap 217, R.E 2002.

[5] Section 45(1 & 2) of the Patent (Registration) Act, Cap 217, R.E 2002.

[6] Section 48(1, 2, 3 & 4) of the Patent (Registration) Act, Cap 217, R.E 2002 and Regulation 43(1, 2 & 3) of the Patent Regulation, GN 490 of 1994.

[7]   Section 48(5) of the Patent (Registration) Act, Cap 217, R.E 2002.

[8] Section 48(6 & 7) of the Patent (Registration) Act, Cap 217, R.E 2002 and Regulation 45 of the Patent Regulation, GN 490 of 1994.

[9] Section 48(8) of the Patent (Registration) Act, Cap 217, R.E 2002.

[10] Section 49 of the Patent (Registration) Act, Cap 217, R.E 2002.

[11] Section 50(1 & 2) of the Patent (Registration) Act, Cap 217, R.E 2002.

[12] Section 51 & 52 of the Patent (Registration) Act, Cap 217, R.E 2002.