Arusha Protocol takes root: Fresh growth for plant variety protection in Africa

The November protocol provides an important framework for Africa’s breeders and innovators to better protect their IP, explain Pieter Visagie and Nicky Garnett of Adams & Adams.

The Arusha Protocol (“the Protocol”) provides for registered intellectual property protection to be obtained in respect of plant varieties in African Regional Intellectual Property Organization (ARIPO) member states that are also signatories to the Protocol.

The most recent protocol under the ARIPO umbrella, it came into effect on November 24, 2024 and provides for the central administration for filing and registration of plant breeders’ rights.

ARIPO was established in 1976 by the Lusaka Agreement, which was entered into between 15 countries. The Lusaka Agreement provided for cooperation between the member states in intellectual property matters, including the administration of intellectual property registration procedures.

Since ARIPO’s inception, membership of the organisation, via accession to the Lusaka Agreement, has grown to 22 countries (“member states”). The member states are as follows:

Botswana, Cape Verde, eSwatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sào Tomé and Príncipe, Seychelles, Sierra Leone, Somalia, Sudan, Tanzania, Uganda, Zambia and Zimbabwe.

Although the membership of ARIPO sits at a total of 22 countries, it is necessary for member states to accede separately to the various protocols within the ARIPO system.

Not all member states have acceded to each of ARIPO’s five working protocols. Current membership of each of the Protocols is illustrated in figure one.

Figure 1: AIRPO member states’ membership of protocols

ARIPO member states retain their national intellectual property laws, so it is possible for potential applicants to elect to obtain protection nationally in each member state or regionally via an ARIPO application, designating the countries of interest to them.

Centralisation of the process simplifies IP administration and maintenance for IP owners resulting in a bundle of national rights being granted upon registration.

Although ARIPO still remains involved for purposes of maintenance fee payments and post registration activities, any registered IP right granted by ARIPO is governed by the national laws of each member state in respect of which such a right has been granted under ARIPO’s protocols.

Member states also have the right to refuse registration of any IP right that has been granted by ARIPO, within a set time period after having been informed of such grant and on the basis of specified grounds.

Although the Arusha Protocol was signed at a Diplomatic Conference in Arusha, Tanzania, on July 6, 2015, the coming into effect was delayed pending ratification by at least four member states.

The Republic of Rwanda, the Republic of São Tomé and Príncipe, and the Republic of Cape Verde were the first ARIPO member states to ratify the Protocol, doing so in 2019, 2020, and 2022, respectively.

The fourth ARIPO member state to have ratified the Protocol was the Republic of Ghana, on November 24, 2023. Thus, the provisions providing for the Protocol to come into force were triggered and the Protocol officially came into force on November 24, 2024.  The Protocol therefore currently has four contracting states (“Contracting States”).

New era for plant protection

The coming into force of the Protocol marks the start of a new era in plant variety protection on the African continent. Up to the date on which the Protocol officially came into force, the only way in which plant variety protection could be sought in ARIPO member states was to do so directly in each country.

Many African countries do not have any legislation dealing with plant variety protection and where such legislation exists it is often underutilised and out of date with current practices.

Fewer than 30 of the 54 countries in Africa currently provide for registered protection to be obtained in respect of plant varieties. Of these, many do not have sufficient operational systems, hindering the efforts of plant breeders to obtain registrations for new varieties in many countries.

Now, with the provisions of the Protocol activated, ARIPO will be enabled to administer the process of the application for and granting of plant breeders’ rights centrally, on behalf of the four member states that have ratified the Protocol, when such states have been designated in an application for registration of a plant variety under the Protocol.

In alignment with international standards, the Protocol is based on the legal framework set out by the International Union for the Protection of New Varieties of Plants (UPOV) in its International Convention for the Protection of New Varieties of Plants (“the UPOV Convention”) as updated in 1991.

UPOV was established by the UPOV Convention in Paris in 1961. The UPOV Convention was revised in 1972, 1978 and 1991. UPOV's mission is stated as being to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society.

Currently, African countries that are members of UPOV include Ghana, Kenya, Morocco, South Africa, Tunisia, the United Republic of Tanzania, and the African Intellectual Property Organisation (“OAPI”) that has 17 member states.

Being based on the UPOV Convention of 1991, it will be understood that the provisions of the Protocol may, generally speaking, be viewed as more breeder focused rather than farmer focused.

However, it is expected that breeders would, under the security of protection obtainable under the Protocol, be able to make more varieties available to farmers.

This has been the subject of debate, particularly in light of the state of economic development of many African countries, including some that are members of ARIPO. That debate is beyond the scope of this article, however.

Who can register?

Under the Protocol, an application for registration of a plant variety can be made by a breeder who is a resident of Contracting State. Non-resident breeders are also empowered to apply but must appoint a local agent within an ARIPO member state.

Assignment of rights, including the right to apply, from a breeder to a third party is, naturally, also possible.

Applications for registration under the Protocol can be submitted either with ARIPO directly or with the national authority of a member state. Although this provides flexibility in the application process, filing directly with ARIPO is more efficient and administratively productive than filing using a national authority.

While ARIPO is not a member of UPOV, provision is made in the Protocol for the claiming of priority from an application in any country that is a party to an “international agreement for the protection of new plant varieties” (including the UPOV Convention) within a period not exceeding 12 months.

Requirements for the granting of a registration for new plant varieties would be familiar to those familiar with the provisions of the UPOV Convention, including novelty and distinctiveness, uniformity, and stability (DUS).

To meet the novelty requirement, propagating or harvested material of the variety must not have been sold or disposed of in a Contracting State more than one year before the filing date or, in the case of states other than Contracting States, more than four years (or six years for trees and vines) prior to the filing date.

To assess compliance with the DUS requirements, ARIPO may arrange for examination to be undertaken by any competent institution of a Contracting State or of any member of any inter-governmental organisation selected by ARIPO that provides an effective system for plant variety protection.

ARIPO may, as an alternative, consider, and accept, existing DUS examination results from the examination of the relevant variety by a Contracting State or any member of any inter-governmental organisation selected by ARIPO and that provides an effective system for plant variety protection, thus providing room for expediting the examination process.

The Protocol also makes provision for provisional protection to be requested while an application is pending. Such provisional protection may be granted for the period during which an application for registered protection is pending.

In making a request for provisional protection, and in being granted such protection, the applicant has to undertake to withhold selling or offering for sale plants of the relevant variety or any material forming part of, or derived from, plants of the variety, within any ARIPO Member State, until a registration for the variety is granted.

It is interesting to note, here, that the relevant undertaking extends to all ARIPO Member States, and does not apply only to Contracting States. Whether this was intentional or is an oversight, is not known.

Grant of a Breeder’s Right provides the breeder, or proprietor, exclusive authorisation to produce, reproduce, condition for propagation, offer for sale, sell or otherwise market, export, import, and stock the propagating material of the variety in the Contracting States in respect of which the right has been granted.

Exemptions include acts conducted privately for non-commercial purposes, for experimental purposes, or for the purpose of breeding other varieties. Once granted, Breeder’s Rights apply in all designated Contracting States, provided that these states do not refuse the grant, which they are entitled to do within six months after having been informed of the grant.

Breeder’s Rights granted under the protocol are valid for a period of 20 years, except for trees and vines, for which the duration is 25 years. For specified genera and species, a five-year extension of rights may be requested in writing to the ARIPO Office.

It is believed that, at least from an administrative perspective, but hopefully also from the perspective of access to plant varieties in Africa, the implementation of the Arusha Protocol marks a significant step in strengthening the framework for plant variety protection, providing breeders and innovators with new avenues for securing their valuable plant varieties across the region.

Pieter Visagie is a partner and patent attorney at Adams & Adams. He can be contacted at: pieter.visagie@adams.africa

Nicky Garnett is a partner and head of the Africa Patents Section of the Patent Department at Adams & Adams. She can be contacted at nicky.garnett@adams.africa