The Patents Regualtions, 1981

Pursuant to the powers entrusted to him under Section 56 of the Patents Act, 1971, the Attorney General has issued the following Regulations:

These regulations may be cited as "the Patents Regulations, 1981" and shall enter into force on the date of their signature.

a) the words and expressions cited therein and defined in the Patents Act, 1971 shall have the same meaning as in the said Act.

b) unless the context otherwise requires,

"form" means any of the forms indicated in the Second Schedule joined to these Regulations;

"designs" mean the designs indicated in the Second Schedule joined to these Regulations;

"the Act" means the Patents Act, 1971;

"elected domicile" means the address designated in the Democratic Republic of the Sudan by a foreign applicant for a patent who has no address in the Sudan;

"the Registrar" means the head of the General Service for Commercial Registrations;

"agent" means the authorized agent in accordance with Rule 12;

"patent" means the patent of invention granted under Rule 6.

Subject to the provisions of Section 12 of the Act, a patent application shall be made to the Registrar on Form No.1, which is annexed to these Regulations.

1. Subject to the provisions of subsection (2) of this Rule, the following conditions shall be observed in respect of patent applications:

a) Applications shall be presented on sheets of paper of A4 size (29.7 cm x 21 cm).

b) The margins shall be as follows:

(i) top of first sheet: 8 cm;
(ii) top of other sheets: 2 cm;
(iii) where the margin is on the left side of the sheet: 2,5 cm;
(iv) bottom: 2 cm;
(v) where the margin is on the right side of the sheet: 2 cm.

c) Units of weights and measures shall be expressed in terms of the metric system.

d) Temperatures shall be expressed in degrees centigrade.

e) Density shall be expressed in metric units.

f) Indications of heat, light, energy, sound and magnetism, as well as mathematical formulae, electrical units and chemical formulae, shall be expressed in conformity with the rules of international practice.

g) All applications shall be presented to admit direct reproduction by electrostatic processes, photo offset, microfilming and photography.

h) Only one side of each sheet of paper shall be used. All sheets shall be free from greases or tears, deletions, erasures, interlinations and alterations. They shall not be folded.

i) All sheets of paper used shall be numbered in consecutive order. The numbers shall be placed at the top of the sheet in the middle.

2. As far as the drawing of an invention, if any, is concerned, the following requirements shall be observed:

a) Deep black ink shall be used to execute drawings.

b) Lines shall be clear and sufficiently separated from one another.

c) Shading lines shall be reduced.

d) Indications of scale shall be sufficiently clear and shall be limited to those parts where necessary for proper understanding. Where the scale is given, it shall be represented graphically rather than in writing.

e) The letters and numbers used shall be given uniformly in the different parts of the drawing. They shall be related to the parts to which they refer by neat small lines.

f) The letters and numbers referring to any part of the drawing, as well as the lines separating them from the drawing, shall be written in ink.

g) The sheet of the drawing shall be free from anything that could hinder its photographic reproduction.

h) The drawing shall be prepared on an A4-size sheet (29.7 cm x 21 cm) with a right and left margin of 2 cm. More than one sheet may be used, provided that each sheet is numbered in consecutive order.

i) Where one sheet of paper comprises more than one figure, a sufficient space shall be left between each figure.

1. Any sheet of paper bearing a drawing shall contain the following indications:

a) The applicant's name written on the top of the sheet on the left side.

b) The number of sheets on which the drawing was prepared, as well as the consecutive number of each sheet written on the top on the right side.

c) The word "original" on the top of the sheet on the right side written beneath the indication mentioned in paragraph (b).

d) The date of presentation of the sheet bearing the drawing written on the top of the sheet on the left side beneath the indication mentioned in paragraph (a).

e) The signature of the applicant or his agent written on the bottom of the sheet on the right side.

2. A sheet of paper bearing a drawing shall not contain any indication concerning the description or the title of the invention.

3. A certified copy of the sheet bearing the drawing shall be submitted, provided that it contains the indications mentioned in paragraph (1), as well as the indication "certified copy".

1. The Registrar shall issue to the inventor a patent document on form No. 7, which is annexed to these Regulations.

2. Subject to Section 25 (1) of the Act, an application for the renewal of the patent shall be made to the Registrar on Form No. 6, which is annexed to these Regulations, and shall be accompanied by the prescribed fee.

When informed of the grant of a patent, the inventor shall pay to the Registrar the prescribed fee for publication in the Official Gazette.

Application for the assignment or transfer by succession of a patent shall be made to the Registrar on Form Nos. 3 or 4, respectively, which are annexed to these Regulations, subject to the payment of the prescribed fee.

Where necessary, the Registrars may authorize the applicant to use a foreign language. If the foreign language used is not comprehensible to the Registrar, the latter may request that the applicant annex a translation into Arabic or English to his application.

The Registrar shall maintain a Patent Register in which he shall record all patents granted in the Democratic Republic of the Sudan, as indicated in Form No. 10, which is annexed to these Regulations.

1. Any person may obtain copies of patents registered at the Patent Office on payment of the prescribed fee.
2. The Registrar shall sign and set the seal of the Patent Office on the copies of the patent he issues, if it is intended that they be used abroad.

The following persons may work as patent agents:
a) Lawyers authorized to work in the Sudan under the Legal Profession Act, 1970, or any substitute act;
b) Chartered accountants authorized to work in the Sudan;
c) Nationals of the Sudan graduated from a Sudanese University or in possession of an equivalent degree;
d) Any Sudanese national with at least five years of experience, in the field of patents.

1. Any person entitled to work as a patent agent who wishs to work as such shall make an application for a license to the Registrar on Form No. 2, which is annexed to these Regulations, and shall include all necessary qualifications and documents, as well as the prescribed fee.
2. The licensing of patent agents shall be renewed annually during the month of January on payment of the prescribed fee.
3. The Registrar shall maintain a register in which he shall record the names of those entitled to work as patent agents in the Sudan, as indicated in Form No. 11 annexed to these Regulations.
4. Where an agent fails to pay the renewal fee within 30 days following notification in writing by registered letter, his name shall be cancelled from the Register; the date on which the registered letter is sent shall be considered as the beginning of the notification period.
5. The Ministry may withdraw the license of a patent agent or limit it, as he deems necessary, where doing so is in the public interest.

1. A patent applicant may request that he be delivered a certificate proving the fact that he filed his application in the Sudan, where he wishes to lodge an application for a patent abroad. The certificate shall contain an indication of the purpose for which it was granted and shall be accompanied by a copy of the patent application and its annexes. The application shall be made on Form No. 5, which is annexed to these Regulations, and the applicant shall pay the prescribed fee.

2. The Registrar shall issue the certificate on Form No. 8, in accordance with the provisions of paragraph (1).

The patentee may ask the Registrar to correct any written error in the patent application, the description, the patent, document or in any statement mentioned in the Patent Register. If the patentee is responsible for such an error, he shall pay the prescribed fee.

The Registrar shall request patent applicants or their agents to furnish the information relating to the contents of patents provided for in Section 19 (1) of the Act in Arabic or English for publication in the Official Gazette on payment of the prescribed fee.

The Registrar shall publish in the Official Gazette any assignment and transfer by succession of a patent application or of the patent itself, registered under Section 26(3) of the Act on payment of the prescribed fee.

The Registrar shall publish in the Official Gazette any decision of the Court granting a compulsory license in accordance with Section 44(4) of the Act on payment of the prescribed fee.

The Registrar shall publish in the Official Gazette the mention "Licenses of Right" under Section 45(1) of the Act on payment of the prescribed fee.

The Registrar shall publish in the Official Gazette any surrender of a patent registered under Section 46(3) of the Act on payment of the prescribed fee.

The Registrar shall publish in the Official Gazette the declaration of revocation or nullity of a patent issued by the Court under Section 47(1) of the Act, after entering it in the Register. The publication fee in the Official Gazette shall be paid by the beneficiary of the judgment.

Issued and signed on July 8, 1981.

THE ATTORNEY GENERAL
THE DEMOCRATIC REPUBLIC OF THE SUDAN
THE PATENTS ACT
(Act No. 58 of 1971)

(The purpose of this Act is to encourage inventiveness through adequate protection of inventions and technical know-how)

Be it Hereby Enacted by the Council of Ministers in Accordance with the Presidential Decree No.1 as follows:

This Act may be cited as "The Patents Act, 1971."

In this Act, unless the context otherwise requires:
a) "The Court" means the High Court;

b) "Minister" means the Attorney General;

c) "Patent Office" means the Office that the Minister shall establish to perform the functions assigned to it under this Act.

21. The patent shall confer upon its registered owner the right to preclude third
parties from the following acts:

(a) When the patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling, and using the product,
(ii) stocking such product for the purposes of offering for sale, selling, or using;

(b) When the patent has been granted in respect of a process:
(i) applying the process,
(ii) doing any of the acts referred to in (a) above in respect to a product obtained directly by means of the process.

22. (1) The scope of the protection conferred by the patent shall be determined by the terms of the claims.
(2) The description and the drawings included in the patent shall be used to interpret the claims.

23. (1) The rights under a patent shall only extend to acts done for industrial or commercial purposes.

(2) The rights under a patent shall not extend to acts in respect of the product covered by the patent after the product has been lawfully sold in the Democratic Republic of the Sudan; nevertheless, insofar as the patent also concerns a special application of the product, this application shall continue to be reserved to the registered owner of the patent.

24. Any person who, at the date of the filing of the patent application by another person, or at the date of priority claimed in respect of such validly application, was, in good faith, manufacturing the product or applying the
process, which is the subject of the invention, or had made serious preparations with a view to such manufacture or use, shall, despite the patent, have the right to continue such acts and, with respect to products obtained thereby, to perform the other acts referred to in Section 21. This right is beneficiary of the right.

25. (1) A patent shall expire at the end of the twentieth year from the date of the
filing of the application, subject to the payment of the annual fees as
prescribed in the Regulations.

(2) A period of grace of six months shall be granted for the payment of the annual fees upon payment of a surcharge as prescribed in the Regulations.

(3) The lapse of a patent for non-payment of fees shall be published in the Gazette by the Patent Office as soon as possible

26. (1) Patent applications and patents may be assigned or transferred by succession.

(2) The assignment of patent applications and patents shall be made in writing and shall require the signatures of the contracting parties.

(3) Assignments, or transfers by succession, of patent applications and patents shall be registered in the Patent Office on payment of a fee as prescribed in the Regulations

27. In the absence of any provision to the contrary between the parties, joint owners of a patent may, separately, transfer their parts, exploit the patented invention, and exercise the rights granted under Section 21, but may only jointly grant a license to a third party to exploit the patent.

34. (1) At any time after the expiration of a period of four years from the date of the filing of an application for a patent, or three years from the date of the grant of a patent, whichever period expires last, any person interested may, in accordance with the conditions specified in Section 44, apply for the grant of a compulsory license upon one or more of the following grounds;

(a) that the patented invention, capable of being worked within the Democratic Republic of the Sudan does not meet on reasonable terms the demand for the product;

(b) that the working of the patented invention within the Democratic Republic of the Sudan is being prevented or hindered by the importation of the patented Article;

(c) that the working of the patented invention within the Democratic Republic of the Sudan is being prevented or hindered by the importation of the patented Article;

(d) that, by reason of the refusal of the registered owner of the patent to grant licenses on reasonable terms, the establishment or development of industrial or commercial activities in the Democratic Republic of the Sudan is unfairly and substantially prejudiced.

(2) In all the above cases, a compulsory license shall not be granted if the owner of the patent proves that his actions in respect of the patented invention are legitimately justifiable in the circumstances. Importation shall not constitute a legitimate reason.

(3) The working of a patented invention under this Section means the manufacture of a patented Article, the application of a patented process, or the manufacture of a patented machine, by an effective and serious establishment existing within the Democratic Republic of the Sudan, and on a scale which is adequate and reasonable in the circumstances.

(4) A compulsory license shall permit the licensee to perform some or all the acts referred to in Section 21 with the exception of importation.

35. The Minister may, by order, provide that, for certain patented products or processes, or for certain categories of such products and processes, which are declared by that order of vital importance for the defense or the economy
of the Democratic Republic of the Sudan of for public health, compulsory licenses may be granted, in the conditions provided for in Section 34, even before the expiration of the period mentioned in subsection (1) of that Section and even for importation into the Democratic Republic of the Sudan.

36. (1) If an invention protected by a patent within the Democratic Republic of the Sudan cannot be worked without infringing rights deriving from a patent granted on a prior application or benefiting from an earlier priority, a compulsory license may, upon application, be granted under the conditions specified in Section 44 to the registered owner of the later patent, to the extent necessary for the working of his invention, insofar as such invention serves industrial purposes different from those of the invention forming the subject of the earlier patent, or constitutes noteworthy technical progress in relation to it.

(2) If the two inventions serve the same industrial purpose, a compulsory license shall be granted only if a license is granted in respect of the later patent to the registered owner of the earlier patent, if he so requests.

37. Any person who applies for a compulsory license under Sections 34, 35 or 36 must furnish proof showing that he has previously approached the registered owner of the patent, by registered letter, requesting a contractual patent, by registered letter, requesting a contractual license, but has been unable to obtain such a license from him on reasonable terms and within a reasonable time.

38. In the cases provided for in Sections 34 and 35, a compulsory license shall
be granted only to an applicant offering the necessary guarantees to work the
invention sufficiently to remedy the deficiencies or to satisfy the
requirements which gave rise to the application for the compulsory license.

39. (1) Compulsory licenses shall be non-exclusive.
(2) The terms of a compulsory license, fixed in accordance with Section 44, may contain obligations and restrictions both for the licensee and for the registered owner of the patent.

40. A compulsory license shall only be granted subject to the payment of adequate royalties commensurate with the extent to which the invention is worked.

41. (1) A compulsory license may only be transferred with the undertaking of the licensee or with that portion of his undertaking which uses the patented invention. Any such transfer shall on invalidity require the authorization of the authority which granted the compulsory license.

(2) Sections 42 and 44 shall be applicable to the transfer of a compulsory license.

42. Every compulsory license shall, either at the request of the interested party or
following notification to the Patent Office provides for in subsection 44(4), be registered at the Patent Office without fee. The license shall have no effect as against third parties until such registration.

43. (1) Upon the request of the registered owner of the patent or of the licensee of the compulsory license, the terms of the license may be amended by the authority which granted it when new facts so justify, in particular when the registered owner of the patent grants contractual licenses on terms more favorable to the contractual licensees.

(2) At the request of the registered owner of the patent, the compulsory license may be canceled if the licensee does not comply with the prescribed terms of the license or if the conditions which justified the grant of the compulsory license have ceased to exist; in the latter case, a reasonable time shall be given to the licensee to cease working the invention it an immediate stoppage would cause serious damage to him.

(3) Sections 42 and 44 shall be applicable to the amendment and cancellation of compulsory licenses.

44. (1) Any application for a compulsory license shall be made to the Court.

(2) The Registrar of the Court shall invite, by registered letter, the applicant for the compulsory license and the registered owner of the patent to appear or to be represented before the Court within a reasonable time; the Court shall hear the party or parties or their representatives who have appeared. Before granting a compulsory license, the Court shall seek the advice of the Minister, who may delegate a representative to intervene at the hearing and to make any pertinent observations.

(3) The Court shall first decide whether a compulsory license may be granted. If it finds that it may be granted, it will give the parties reasonable time to agree on the terms. If there is no agreement between the parties when the time limit expires, the Court shall fix the terms, Section 40. The terms of a compulsory license, including those relating to royalties, shall be considered to constitute a valid contract between the parties.

(4) The decision of the Court granting a compulsory license shall be notified by the Registrar of the Court to each of the parties involved and to the Patent Office.

46. (1) A patent may be surrendered by its registered owner by written declaration addressed to the Patent Office.

(2) The surrender may be limited to one or more claims of the patent.

(3) The surrender shall be immediately registered and published by the Patent Office. Surrender shall be effective only after it has been registered.

(4) It a contractual license or a license of right is registered at the Patent Office, surrender of the patent shall only be registered upon the submission of declaration by which the registered licensee consents to the surrender.

47. (1) On the request of any person including any competent authority, the Court shall declare a patent null and void in the following circumstances:

(a) where the subject of the patent is not patentable within the terms of Sections 3 to 7;

(b) where the description of the invention or the claim or claims in the patent do not satisfy the requirements of Section 13;

(c) where, for the same invention, a patent has been granted in the Democratic Republic of the Sudan as the result of a prior application or of an application benefiting from an earlier priority.

(2) Where the provisions of the preceding superaction affect only part of the patent, nullity shall be declared in the form of a corresponding limitation of the claim of claims of the patent.

(3) The Court may require the registered owner of the patent to submit it for the purpose of examination.

(a) the list of publications or earlier patents which may have been referred to in connection with either a patent application filed for the same invention by the registered owner himself or his predecessor in title with the Patent Office of another country or any proceedings relating to the patent in question;

(b) the list of publications or patents mentioned in any report sent to the registered wonder of the patent or his predecessor in title by a governmental or intergovernmental search institute.

48. (1) A patent declared to be null and void shall be regarded as having been null and void from the date of its grant. Nevertheless, where licenses have been granted, nullity shall not entail the repayment of royalties by the licensee insofar as he has effectively profited from the license.

(2) When the declaration of nullity becomes final, the Registrar of the Court shall notify it to the Patent Office which shall enter it in the Register and publish it as soon as possible.

49. (1) A registered owner of a patent whose rights under Sections 21 and 22 are threatened with infringement, or are infringed, may institute legal proceedings designed to prevent the infringement or to prohibit its continuation.

(2) In the case of infringement of these rights, the registered owner of the patent may also claim damages and the application of any other sanctions provided for in the civil law, such as seizure and destruction of the infringing products or machinery used for the making of such products.

50. (1) Any intentional infringement of the rights of a registered owner of a patent under Sections 21 and 22 shall constitute an offense.

(2) Such offense shall be punishable by a fine not exceeding one thousand Pounds or by imprisonment not exceeding one year, or both. The maximum penalties shall be doubled in the event of recidivism, i.e. when, in the course of the five preceding years, the offender has been convicted of another infringement of a patent.

51. If a patent is in respect of a process for the manufacture of a new product,
the same product, manufactured by a third party, shall, in the absence of
proof to the contrary, be presumed to have been manufactured by that
process.

52. (1) Any licensee under a contractual or compulsory license, of a license of right, may, by registered letter, require the licensor to introduce the legal actions necessary to obtain civil or penal sanctions in respect of any infringement of the patent indicated by the licensee.

(2) If the licensor refuses or neglects to introduce the said legal actions within three months of the request, the licensee under the registered license may introduce them in his own name, without prejudice to the right of the licensor to intervene in such actions.

53. (1) Subject to any right conferred by patents in force and the provisions of subsection (2) of the present Section, any person may freely use manufacturing processes or knowledge concerning the use and application of industrial techniques.

(2) Nevertheless, provided that these processes and knowledge have not been published or made available to the public, they shall be protected against unlawful use, disclosure or communication by third parties, on condition that the person who has developed them has taken the necessary steps to preserve their secret character.

54. Any use, disclosure or communication, without the consent of the owner, of the processes and knowledge referred to in Section 53 (2) by any person who is aware of their secret character, or who could not fail to be aware of such character, shall be deemed to be unlawful, and Sections 49 and 50 shall be applicable in respect of those unlawful acts.

55. Any person who has developed, by his own means, manufacturing processes or knowledge concerning the use and application of industrial techniques and any person who has legally acquired those processes and knowledge, be entitled to use, disclose or communicate them to third parties.

56. (1) The processes and knowledge referred to in subsections (1) and (2) of Section 53 may be transferred and may form the subject of a license contract.

(2) Sections 26 (2), 28(2), 29, 30, 31 and 32 shall be applicable by analogy.

57. If an enterprise commits an infringement under this Act, any person acting as a member of the Administration Board, as Director General or Secretary, or any person having a similar activity or who appears to be the executor of such task in that enterprise on the date of the infringement, shall be considered to be an infringer unless he provides proof that the relevant infringement had not been committed with his best efforts to avoid the infringement within the limits of his competence under the given circumstances in effect.

58. The Minister may prescribe Regulations in order to perform the purposes of this Act, once the Minister of the Treasury and the Minister of Economy, Commerce and Supply have approved the prescribed fees.