Genetic Engineering and The Law of Patents in Uganda

By Ivan Ojakol*

 
Abstract:

I will go about this essay in the following ways; I will start by defining what genetic engineering is, the purpose of patenting in this area and then will look at the patentability of the subject as far as intellectual property is concerned. I will state some of the genetic research tools and examples of patents that exist in this field and proceed to look at the criticisms and controversies entailed in the patentability of genetic engineering especially as far as morality is concerned. That will then lead me to my conclusion.

Essay:

Genetic engineering is basically concerned with tailoring the genes of an organism so that the newly modified organism will have desired characteristics. It is the direct human manipulation of an organism’s genetic material in a way that does not occur under natural conditions.

According to John R. Rudolph in A study of Issues Relating to the Patentability of Bio-Technological Subject Matter, It is part of a broader subject called bio-technology which can be defined as the synergistic union of biological life sciences and the technologically based industrial arts. They are more or less one and the same with genetic engineering.

This field, because of the gulf in development and scientific research in western countries vis-à-vis African ones is mainly active in the west. It is a research intensive industry requiring highly trained and dedicated scientists, expensive laboratories and manufacturing facilities. That is why all or most of the authorities on the subject originate from countries like the US, Canada and the United Kingdom and these have had a profound effect on other countries. 

Particular international agreements like the TRIPS (Trade Related Intellectual Property Rights) agreement, the European Union Directive on the Enforcement of Intellectual Property Rights, European Patent Convention 1973 and Paris Convention for the Protection of industrial Property (1883) are of great significance as far as this subject is concerned.

The purpose of patents in bio-technology and genetic engineering is to promote progress in science and technology. It holds the key to tomorrow’s medicine. Through bio-technology and genetic engineering, future doctors and medical people will have a plethora of weapons to fight against disease, injury and age.

Patents in this field stimulate innovation in bio-technology companies by encouraging the dedication of people, capital, and time to the search for a new drug. According to Beth and Zei in Patenting genes and genetic research tools: Good or bad for innovation, If the search is successful, those who have invested will obtain a substantial reward for taking the risk. This is in line with the justification for intellectual property rights which is that people should be entitled to the fruits of their labour or a reward for the sweat of their brow. 

The TRIPS Agreement under Article 70 (9) consolidates this position where it provides for the protection of pharmaceutical and agricultural chemical products, data submitted by the originator which secured such authorization and this stops a second application for authorization during the term of the exclusive marketing rights even if the “follower” generic company generates its own data.

The TRIPS agreement under Article 27.3(b), provides for the patentability of micro-organisms and essentially biological processes for production of plants and animals.

The European Union Directive on the Enforcement of Intellectual Property Rights under Article 4, provides for the patentability of inventions which concern microbiological or other technical process or product obtained by such a process. It further provides under Article 5 that an isolated element from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene may constitute a patentable invention.

In the first case that granted a patent as far as bio-technology and genetic engineering was concerned, Diamond v Chakrabarty 447 U.S 303 (1980) where an oil eating bacterium was found to be patentable; it was held that an invention is patentable because it is a “non-naturally occurring manufacture or composition of matter, a product of human ingenuity having a distinctive name, character and use.”

In Graham v John Deere Co. 383 US, at 12-17., Mr. Justice Douglas reminded that the inventions most benefiting mankind are those that “Push back the frontiers of chemistry, physics and the like.”

Patent offices in the west have for years granted patents over genetic material whether human or otherwise- whether a gene, DNA sequence, EST as long as they meet the tests of novelty, non-obviousness and utility or industrial application, they are patentable. 

Patents must fulfill the ultimate objective of encouraging the development of genetic technologies into products for the public good. Through that limited monopoly of 20 years, innovation is encouraged. Though it can also be argued on the other side that this limited monopoly granted to patent holders allows them to prevent others from independently investigating and offering new products. 

It is argued that when only one organization is able to provide a particular clinical service, it becomes more difficult to evaluate service or compare its quality with competing products. I will address this in detail later in the essay.

The requirements for registering bio-tech patents include;

Novelty:

The invention must be novel. Novel means new. Section 10 of The Industrial Properties Act, 2013 of Uganda states that an invention is new if it is not anticipated by prior art or where a person who is highly skilled in the relevant area could not derive the invention from a combination of prior disclosed art. 

In a nutshell, a patent will be barred if the invention was invented by another at least one year prior to the patent filing date or if the inventor or another had publically used or offered it for sale more than one year prior to the patent filing date. In Chiron Corp v Organon [1994] FSR 202, the inventive step lay in using the expression screening in an unconventional manner to identify a protein.

Non-obviousness or inventive step:

The Industrial Properties Act, 2013 (under section 11) of Uganda states that an invention is new if it is not anticipated by prior art relevant to the application claiming inventions it would not have been obvious to a person skilled in the art. 

A patent will not be granted if the differences between the subject matter sought to be protected and the prior art renders the subject matter as a whole obvious at the time the invention was made to a person having ordinary skill in the art. When determining obviousness, the law attempts to look through the lenses of a person skilled in the art of invention. 

For instance, although a new function or use for a known protein may not be obvious to everyone, but obvious to a trained biologist who is cognizant of all that had been reported in the literature about the particular protein, then the patent cannot be granted in such a case. So the fact that nucleic and amino acid sequencing are well known does not mean that novel sequences discovered using these standard procedures are “obvious” and thus unpatentable. The relevant inquiry is obvious in view of well-known structures.

Utility or industrial application:

Section 12 of The Industrial Properties Act states that

“An invention shall be industrially applicable if according to its nature, it can be made or used in any kind of industry including….medicine...”

The new process, machine or manufacture must be useful. The patent specification must provide at least one practical use for the invention. The United States Patents and Trademarks Office has set forth a three-pronged test; the utility must be “specific, substantial and credible”

For example, U.S patent no. 6 6,025,154 to human genome sciences claims polynucleotides encoding a human G-protein chemokine receptor designated as HDGNR10. The patent specification points out that compounds such as soluble form HDGNR10 which inhibit the activation of membrane bound HDGNR10 receptor may be employed to treat “allergy, atherogenesis, malignancy, histamine, anaphylaxis, among others.

Disclosure is paramount when registering a patent and is statutorily provided for. The European Union Directive on the Enforcement of Intellectual Property Rights under Article 5 (2), states that the industrial application of a sequenced or partial sequence of a gene must be disclosed in the patent application. In the case of Biogen v Medeva [1996] 3 IPR 438, it was held that claims 1 and 2 of the Biogen European Convention were invalid since the claims were drafted in very wide terms.

Written description:

The inventor must describe the invention in sufficient detail to demonstrate that, at the time the patent was filed, he or she was in full possession of the invention. In Regents of California v Eli Lilly& Co., the court invalidated a species claim to “human insulin c DNA,” where the only nucleic acid sequence specification described in the patent specification was obtained from a rat. Court held that an adequate written description of DNA…requires a precise definition such as by structure, formula, chemical name or physical properties.

Enablement:

This is meant to ensure that a person having ordinary skill in the art is will be able to make and use the invention after reading the patent specification. For some materials that are difficult to enable through a written description, a deposit of the materials in an appropriate repository is required. 

This position is in line with section 16 (1) (a) of the Industrial Properties Act, 2013 of Uganda that states that where an invention involves a micro-biological process, the invention shall only be regarded disclosed if a culture of the micro-organism has been deposited with a depository institution not later than the date of filing the application. 

For example, the necessary enablement for a novel SNP associated with Alzheimer’s-a team of researchers analyze the genomic DNA from a population of Alzheimer’s patients and discover that the DNA from many of these patients contains a novel SNP that is not present in genomic DNA from subjects that do not have Alzheimer’s and do not have a family history of it. 

What must be disclosed in the patent application to support these claims is that particular SNP as well as sequences that hybridize the SNP as per Patenting genes and Genetic Research Tools: Good or bad for innovation? By Beth E. Arnold and Eva Ogielska-Zei.

Best mode:

To satisfy the best-mode requirement, the inventor must disclose the optimal way to practice the invention, if such a way is in fact known at the time of filing.

Definiteness:

This requirement obliges the patent applicant to draft one or more claims particularly pointing out and distinctly claiming the subject matter that the applicant regards as his invention. A person skilled in the art ought to be able to decipher the boundaries of the claimed invention from the claim language. 

However, a number of claims are still being issued with the broader “comprising” language for example claims to nucleic acid sequences can in theory be broadly drafted to cover not only the particular nucleic acid but any nucleic acid that “comprises” it.

Some genetic research tools include; a wide range of laboratory assays, reagents and processes including informatics algorithms.

However, genetic engineering and bio-technology patents have raised a lot of dust and controversy over the years including questions of morality;

Further more, Source book on Intellectual Property Law by Peter j. Groves also state that scientists among them noble laureates are quoted suggesting that genetic research may pose a serious threat to the human race.

Concerns have been raised over the patentability of human genetic material, through public protests and international statements from politicians. For example, the June 2000 statement by French Minister Elizabeth Gulgou, that human genetic patents violate French ethical norms. This points to the politically charged nature of the gene-patenting debate.

Even international bodies have raised this concern like the 1997 UNESCO Declaration on the Human Genome and Human Rights states that the human genome in its natural state shall not give rise to financial gains.

The critics of bio-tech patents posit that the European Union Directive and TRIPS Agreement are designed to allow all categories of patents. They are neo-colonial instruments used by the west to impose their policies on Africa and the under developed world.

The opponents argue that the human experience cannot be commoditized. That gene-patenting is a gross violation of human life. That it is unethical and contrary to basic human rights as it creates unnecessary suffering in animals and is contrary to public order and morality. In Why bio-tech patents are patently Absurd-Scientific Briefing on TRIPS and related issues, The hit or miss technologies associated with many of the inventions are inherently hazardous to human life and bio-diversity.  

The European Patent Convention under Article 54 (2) stipulates that a method of treating the human body by surgery or therapy or of diagnosis practiced on the human or animal body is unpatentable. The TRIPS Agreement under Article 6 also excludes from patenting, commercial exploitation contrary to “ordre public or morality” such as human cloning, use of embryos for industrial or commercial purposes and modifications of animals causing substantial medical benefit.

The opponents of gene-patents contend that they all involve biological processes not under the control of scientists. That they cannot be regarded as innovations but expropriations from life. That they involve acts of plagiarism of indigenous knowledge. It has been labeled “bio-piracy”

Notwithstanding this strong opposition to the granting of gene-patents, the European Patents Office and other areas in the west continue to grant controversial patents. Mainly basing on the argument of economics, in other words, this is an impetus for private investment. Companies invest as much as $800m in research. 

The decision of the Canadian Court of Appeal in the Onco-mouse (1990) EPOR 4 and (1case is a good example of how public policy and morality are not considered. In that case, the patent application seeking a patent on a genetically modified mouse was first rejected, on appeal; the Court held that it is the legislature to decide the policy issue and not the patent office.

Some of the most controversial patents are;

Stem cells which can be isolated from embryos, fetuses, newborns and adults. The most controversial aspect of this is the therapeutic human cloning which involves using nuclear transplant cloning to create a human embryo. The UK became the first country in 2001 to approve of such procedure.

Patents of genes of plants. There are 229 patents on rice; the diet of the world’s poorest. This has affected farmers’ rights to create new varieties or to preserve existing ones. This has adverse effects on food security in Africa.

These patents have also jeopardized the entire health system of countries that depend on indigenous medicine. These patented drugs are even very expensive for poor countries to afford.

In conclusion, I posit and contend that despite the major short comings of gene-patenting, it should not be done away with; rather there is need for greater enforcement of the regulatory mechanisms so that humanity does not lose its soul to capitalism and commercialism.

Books and references for further reading

Statutes:

TRIPS Agreement

European Patents Convention, 1973.

European Union Directive on the Enforcement of Intellectual Property Rights.

Industrial Properties Act, 2013.

1997 UNESCO Declaration on the Human Genome and Human Rights.

Books:

Peter J. Groves; Source book on Intellectual Property Law; Cavendish Publishing Limited, 1997.

Others:

John R. Rudolph; A study of issues Relating to patentabilty of bio-technological subject matter. Gowling, Strathy & Henderson.

Timothy Caulfield, E. Richard Gold and Mildred K. Cho; patenting human genetic material: refocusing the debate

Dr. Mae-Wan Ho; Why Bio-tech Patents are Patently Absurd-Scientific Briefing on TRIPS and related issues. Institute of Science in society London House, 24 Old Gloucester St. London WCIN 3 AL, UK.

* Ivan Ojakol is the President of the Uganda Christian University Law Society.

Faking it: Isn't it time to rethink intellectual property in developing countries?

 By Isaac Rutenberg*

Is the western notion of IP right for poor countries? Should their entrepreneurs be expected to play in the same ballpark with giants such as Google? 

 
In Kenya, where I live and work, the patent office, which is among the most active of patent offices on the African continent, has issued a total of 589 patents since the office opened in 1991. Compare that with the 5,500 patents issued by the US patent office in a single week in July this year.

An even scarier statistic is that, of the 50 or so patents granted in Kenya each year, between zero and five (on average) are granted to local Kenyan organisations or individuals. The remaining patents are granted to foreign firms, most of which are pharmaceutical companies.

The minimal number of issued patents is not due to a lack of innovation or entrepreneurship in Kenya. These are both present in abundance and the type of innovation that I've seen is typically of a kind that would be suitable for patent protection. Instead, the lack of patents is due to a lack of patent expertise in the private sector, and a lack of funds available to hire expensive patent drafting services from firms in Europe, South Africa, or India.

Without access to proper patent drafting, it is difficult for the Kenyan patent office to find applications that are suitable for granting as patents, and the ability of local inventors to obtain patents is severely diminished. Subsequently, without patents, the ability of local inventors to attract foreign investment and partnerships, and to build companies that are based on intellectual property (IP) assets, are also severely diminished.

In patent-laden countries such as the US, Japan and blocs like the EU, it is common for patent lawyers to have science and law degrees. Patent lawyers with similar qualifications are found only in South Africa, in Africa. Accordingly, the skills needed to protect innovations via well-drafted patents are scarce, almost non-existent.

One way to solve this problem is to train more people in Kenya and other countries in Africa in the skill of drafting and obtaining patents. I spend much of my time offering such skills-training but it is a long-term commitment (it can take a year or more) and with very little to show in the short term, there seems little incentive to acquire these skills.

It doesn't take long given the context before one starts asking some fundamental questions: is the western notion of patent rights the best system for Kenya? Could it be that a different system would do a better job of promoting innovation – which is ostensibly the raison d'être of the patent system? Is it reasonable to expect Kenyan entrepreneurs, businesses, and inventors to play in the same patent system with corporate giants such as Google, IBM, and Pfizer?

These are questions that not only apply to Kenya but also to much of the developing world. In a recent article Nagla Rizk, a prominent Egyptian IP scholar in the area of copyright, argued: "In developing countries poor people frequently find themselves in the dilemma of having to choose between the expensive original and the unlawful copy. It comes as no surprise that the less privileged would have stronger tendencies toward the illegal. Here, the need for novel business models that balance the needs of knowledge creators and users becomes evident, especially given the vast development of enabling technologies."

Most countries today (including Kenya) have so-called 'Trips-compliant' intellectual property laws. Trips – Trade-Related Aspects of Intellectual Property Rights – is a framework that applies to all World Trade Organisation member countries and compliance requires IP laws that largely resemble those of developed countries. So although there are minor variations from country to country, the IP laws of developing countries look (or will someday look) like those in the US or Europe. What this means is that there is very little opportunity for countries to tailor their IP laws to meet their individual needs, unless they wish to withdraw from the WTO.

It is often argued that the existence of IP laws incentivises innovation (as the monopolisation of knowledge or products create profits for those who own the IP rights) but considering the low number of patents in Kenya, the current high level of innovation cannot be attributed to incentives offered by the western-style patent regime that is in place.

Copycat businesses are a way of life here, and while they are fatal to some businesses, they are not always (or even usually) an insurmountable hurdle. Consider that M-Pesa, the most successful mobile money transfer system in the world and hugely profitable, must compete with at least three other nearly identical systems.

Despite the benefits of WTO membership and of safeguarding one's intellectual property, the fact is that on balance, the western patent model is not yet helpful to most Kenyan – or African – entrepreneurs. The day may come when this is no longer the case, and in the meantime there is no doubt that more Africans should be exploiting the existing system. Still, the dream is for the day when foreign investment in African-owned patent assets will exceed foreign aid.

*Isaac Rutenberg is director of the Centre for Intellectual Property and Information Technology Law, Strathmore Law School, Nairobi, Kenya. He tweets as @iruten

Employee Inventions: The Extent of Patent Protection of Employees in Uganda

By Innocent Owino*
 
Abstract

This simple article is an analysis of the extent of patent protection of employees under the current Ugandan law on patents. An overview is made on the UK statute laws on patent especially 1977 Patents Act that governs employee inventions and case law there under. Given that Patents is still a green sector in Uganda, the UK laws and cases are referred to in analyzing the provisions on employee inventions under the Industrial Properties Act 2014. The article aims at expounding the laws on employee inventions or patents, it practicability or practicability in Uganda by constantly referring to practical situations in the UK and the common law.

Keywords: Employee Inventions/patent, Patent protection, UK Patents Act 1977, Industrial Properties Act Uganda 2014

1) Introduction

“If people don't get paid for their inventions, that's not a good thing. In the case of many patents, there are people who aren't in a position to take them to the next level. If you don't enforce your rights, no one is going to enforce them for you.”-Nathan Myhrvold, former Chief Technology Officer at Microsoft, co-founder of Intellectual Ventures and the principal author of Modernist Cuisine.

Today all over the world a great number of Patent grant applications are by inventors who are employed in a given corporation or company.  Most of the employees that is; persons who work or worked under contract of employment make these inventions while employed under a contract of employment.

The question has always been “who owns the right to acquire a patent? Employer or employee and if it is employer who owns the patent is there any level of protection afforded to the devisor of the patent to benefit from his/her ideas?

2) Background (UK Patents Laws on Employee Inventors)
The general rule is that an employee invention belongs to the employee unless; the employee signed an agreement assigning the invention rights or was specifically hired for his/her invention skills or to create invention. Under such circumstance then the employer owns the invention and in the absence of an agreement fitting within the above mentioned, other means have been used to determine ownership by the employer.

Under section 39 of U K's Patent’s Act of 1977 an invention made by the employee shall be taken to belong to his/her employer. This situation nevertheless, might any case as already stated above be expressly covered by the contract of employment.  Various scholars most notably Bainbridge in the book Intellectual Property, have labored to lay down the two main circumstances an employer may claim such an invention as of right and they are a follows

1) Where an invention has been made during the course of employees normal duties as an employee or in the course of duties specifically assigned to  him/her provided that the invention can under reasonable circumstance be attributed to carrying out of those duties. 

2) Where the employee at the time of the invention was such that he /she had a special obligation to further the interest of the employers undertaking.
It should be noted that ascertaining the meaning of “normal” course of duty of the employee has been narrowed by the court to avoid vague interpretation that may arise. In the case of LIFFE Administration and Management v Pavel Pinkava (2007) RPC 667  court stated that it was not acceptable to ascertain the meaning of “normal” by reference to some other standards such as “ordinary”, “day to day” or primary.

Where the invention cannot be deduced from the above two circumstances, it can then be said without fear of contradiction that the invention may as belong to the employee who reserves all the rights that accrues thereunder.
The above circumstances seem to have given more protection to the employee whose invention may by right be claimed by the employer under the guise that it was done during the normal course of the employee’s duties.

But the employer may still acquire a limited right to use the employees patent without paying. Courts have however, in various cases held that simply because an individual is employed does not necessarily grant the employer ownership of the patent. Each case presents different facts and must be judged basing on such as per Bainbridge.

This is because a patent is a form of personal property; it may be transferred, created or granted only in accordance with the law. The proprietor may offer to surrender it anytime to any person including his employer.

A Patent is always granted to the inventor or joint inventors, except where someone else has a better entitlement to it under the law. In most cases (especially in employment situations) the inventor may not be the proprietor/owner of a patent but in some the inventor would be the proprietor. It is trite law(under Section 39 of The Patents Act (UK), that the inventor will always be the deviser of the invention even without ownership or protection of any sort.

The law provides that the proprietor is the person to whom the patent has to be granted and where the proprietor is not the inventor, he/she has a right to be mentioned as being the inventor in any patent granted and in any published application. (Bainbridge)

Section 40 of the same Act above, provides for compensation of employees who are actual deviser ,whose invention is of outstanding importance to the employer and the patent has been registered.

3)  Uganda’s  Current Situation
In Uganda invention made by an employee is enshrined in the Industrial Properties Act 2014  under section 19. It provides that in the absence of a contract to the contrary, the right to a patent for an invention made in execution of a contract of employment belongs to the employer. However, the Act under Section 19(2), further states that, where the invention is of exceptional importance the employee has a right to equitable remuneration taking into consideration his or her salary and the benefit derived by the employer from the invention.

It should be noted with concern that section 19(1) of the Industrial Properties Act grants patent rights to employer in absence of a contract to the contrary  where a contract of employment does not require the employee to exercise any inventive activity but when the employee has made the invention by using data or means available to him or her during his or her employment(section 19(2). 

And where such an invention has been of special importance then the employee as of right is entitled to remuneration taking into consideration his or her salary and the benefit derived by the employer from the invention (section 19(2) (4).  This in plain terms despite being a right to an employee places the power to determine how special an invention is on the employee which may be detrimental to the employee in the long run despite court having a final say in the absence of an agreement (section 19(5)).

The law however provides that an invention made without any relation to an employment or contract of service and without the use of the employer’s resources, data, means, materials, installations or equipment belongs solely to the employee or the person commissioned as seen in Electrolux V Hudson and Others (1977).  

4) General Considerations on ownership of Employee patent
Issues of ownership rarely arise where the employee signed employment agreement or a pre-invention assignment or where one is employed to invent. If a person’s employment agreement contains a pre invention assignment then any invention made by the employee does not belong to him or her.

Also under the doctrine of employed to invent courts have held that “any one employed to make inventions, who succeeds during his term of service, in accomplishing that task is bound to assign to his employer any patent obtained.” These situations are not governed by Section 19 of Industrial Properties Act which is only concerned with situations where there are no agreements.

The protection accorded to employee under Industrial properties Act as already seen earlier is very minimal despite the rights of patent belonging to the inventor under Section 17 and Section 38 of the Industrial Properties Act 2014, which outlines the rights of the patent owner to be exclusive of others and free from interference. 

In some cases this protection  may mainly be offered to the lower level workers and not the directors as illustrated in the case Christopher S. French v Paul J Mason (1999) FSR 597 where court held that directors of a company may not have any right to protection or entitlement to patent. This is because they are high level employees whose nature of work is not clearly defined since they generally manage  all the affairs of the company.

It has also been argued that in the in the absence of a term or a condition in the contract does not prevent an employer being able to claim a patent for an invention devised by an employee. Courts will carefully consider the duties of the employee irrespective of the place where the invention took place. This was the case in Re Harris’s Patent 1(1985) where it was stated that it is necessary to decide what constitutes inventing. Normal duties or alternatively what duties lying outside that category that were ‘specifically assigned to him is also important in determining who owns the patent.

Despite minimal protection under the Act , protection and ownership of patents or inventions by employees is afforded under section 19(6)  which states that an invention made without any relation to an employment or contract of service and without the use of the employer’s resources, data, means, materials, installations or equipment belongs solely to the employee or the person commissioned. 

This is also the same under section 37 of the 1977 Patent Act on UK, cases and common law, the mere fact the mere fact that the invention was made in the employer’s time, using employers resources, where the employer is knowledgeable about it  is necessarily conclusive that patent will be granted to the employer. 

In Mellor v Beardmore (1927), the court held that the mere existence of a contract of service in no way disqualifies a servant from taking out a patent in his own name and entirely for his own benefit – and that notwithstanding the fact that he has used his employer’s time and materials to aid him in completing his invention, either express or implied, to communicate the benefits of his invention to those who employ him.

An employee may is some special circumstances, with or without express or implied conditions use the resources of the employer to invent and own a patent. It does not matter whether the invention is related to his or her duties as long the relevant authorities are satisfies that the description of his or her duties does not involve invention or solving a given problem or is wide.

Section 37 of UK’s Patent Act was referred to while determining the right to a patent after grant in Greater Glasgow Health Board’s Application 31 to see whether an employed hospital doctor was entitled to be the proprietor of a patent for the invention of a spacing device for an ophthalmoscope. The doctor, a registrar, had a very wide job description which referred to research facilities of which the doctor was encouraged to avail himself for basic clinical research.

The contract did not, however, express this as a duty and the court held that his duty to treat patients did not extend to devising new ways of diagnosing and treating patients. The doctor was entitled to be the proprietor of the patent. He had made the invention in his own time, during a period when he was working over 80 hours a week (quoted by Bainbridge, Intellectual Property, 8th Ed.)

5)  Compensation
Where an employee successfully invents under a contract of employment and he/she is not a proprietor then the employee has a right to equitable remuneration taking into account his or her salary, the importance of the invention and any benefit derived from the invention by the employer under section 19(4) of the Industrial Properties Act 2014.

It is fair and just that where an employee does not own a patent he /she receive a fair share of the employers’ benefit as seen in Kelly V GE Health Care (2009) EWHC 181. This is intended to compensate the employee for the ideas of the mind that contributed towards the invention that has proved so important to the employer. Although Cases of compensation are not common however, the first reported case in which an application for employee compensation succeeded is Kelly v GE Health care (2009) EWHC 181.

In the same case Floyd J laid down the principles to follow while granting compensation among them being that the employee must be the actual deviser, the invention must be patented by the employer and it must be of an outstanding importance to the employer.

Conclusion

Basically, with the new legislation in place for Patents and limited jurisprudence in Uganda on protection of employee patent protection, the examination of the such in comparison with the UK, it is important to establish the extent of protection accorded to employee inventors.

The Industrial Properties Act 0f 2014 to a great extent grants substantial rights to employers over employee inventors in owning a patent. Employees are mainly protected in term of remunerations in form of compensation which can only be granted where the invention is of outstanding importance to the employer. This may be quite unfair where the employer is deriving benefits from the invention and courts construe less important. The law is therefore lacking in that aspect.


Materials for further reading.

Text
D. Bainbridge (2010), Intellectual Property, 8th Edition, Longman

W.R Cornish, Cases and Materials on Intellectual Property, 5th Edition

LexisNexis, Intellectual Property Primary Law Sourcebook, 2014 Edition 
Legislations

Industrial Properties Act 2014

Patents Act 1977 (UK)


* Innocent Owino is an LLB Candidate (UCU), where he is the Former Deputy Attorney General and Minister of Justice and Constitutional Affairs in the Students' Guild Government.

A Critical Understanding of the Concept of Priority Date in Accordance to Application of a Patent

By Joseph Lubega, LLB Candidate (UCU)

 

Intellectual property in a broader sense refers to creations of the mind, which among others include inventions, literary and artistic works, designs, and symbols, names and images used in commerce. However, in my own understanding. 

Intellectual Property (IP) is well thought-out a concept that describes the application of the mind to develop something new or original. This thus means that Intellectual property law is interested in protecting the product of human mind or product of creation.

Just as the law protects ownership of personal property and real estate, so too does it protect the exclusive control of intangible assets. The rationale of I.P laws is to give an incentive for people to develop creative works that benefit society, by ensuring they can profit from their works without fear of misappropriation by others. 

Hence Intellectual property rights are important since they protect the right of the owners of intellectual property to earn money from the created property, thus stimulating others to come up with intellectual property of their own.

Therefore, Intellecual property law is classified into different types of I.P rights which among others include Copyrights, Patent law, Trade Secrets and Trademarks with a copyright law as a law intended to protect and to reward original expressions embodied in tangible material or fixed form.

This leads us to another important IP right that is to say, patent law where a patent is defined as an exclusive right granted for an invention¹, which is a product or a process that provides, in general, a new way of doing something, or as per Section 8(1) of the Industrial Properties Act offers a new technical solution to a problem. This means that the state grants an exclusive right to the inventor to make, use, manufacture and market the invention provided the invention satisfies certain conditions stipulated in the law (Found in part III of the Industrial Properties Act).

Therefore, the exclusivity of the right implies that no else can make, use, manufacture or market the invention without the consent of the patent holder.

As a result, to get a patent, particular technical information about the invention must be disclosed to the public in a patent application, meaning patent protection is in exchange of public disclosure of the various specializations of the invention as was pointed out in PLG Research ltd v Ardon international ltd [1993] FSR 197, where court held that by publication the law means putting out in the public full description of the product in that any skilled person in that art can work or utilise the description.

Therefore in principle, the patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention, which in other words, means that upon patent protection the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner's consent, this can be related to derivative rights which arise where the owner or original owner gives another person permission to any other person as was expressed in Angella Katatumba v Anti-Corruption Coalition of Uganda (( Civil Suit No.307 0f 2011).

Patents are territorial rights that is to say that the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region. This protection is granted for a limited period, usually 20 years from the filing date of the application as it is referenced in Section 24(3) of The Industrial Properties Act.

This brings me to the question in issue, the concept of priority date which by virtue of Section 2 of the Industrial Property Act, 2014 to mean the date of the first application that serves as the basis for claiming the right of priority provided for in the Paris Convention. 

In simple terms, the inventor’s idea is protected within the first 12 months from the date of filing from any subsequent patent application for the same invention, in that, in case of such a dilemma he or she can claim this "priority right” as provided for under Section 24 of the Industrial Property Act, 2014. Therefore according to Bainbridge in Intellectual Property, priority date is the earliest date to which a patent application can claim priority.

For that reason, the significance of the priority date is the fact that it defines what materials or provisional specializations fall within the prior art to the patent application, thus, obtaining the earliest possible priority date can be important to the patentability of some inventions.

By provisional specialization the applicant is entitled to disclosing the essence of the nature of the invention.

What often happens is that many people always work at the same time to find solution(s) to a particular technical problem, which in most situations makes the patent application process a difficult course. However, the law seeks to protect only one of them through the grant of a patent and this explains the reason as to why most jurisdictions follow the so-called first-to-file-system in granting that patent to the one who filed the application first.

In accordance with the Ugandan industrial property Act, only the “first inventor” of the claimed invention is entitled to a patent for that invention. The “first inventor” is the person who either (1) reduced the invention to practice first or (2) reduced the invention to practice second but conceived of the invention first and exercised reasonable diligence in reducing the invention to practice from a time just prior to when the first person reduced the invention to practice.

This is in regards to an application filed with the Uganda Registration Services Bureau (URSB), operating under the supervision of the Ministry of Justice and Constitutional Affairs.

Therefore, when an inventor is seeking patent protection for the same invention in several countries, the principle of priority is very useful since you do not have to file your application in several countries at the same time. 

The Paris Convention for the Protection of Industrial Property provides that once you file an application in one country party to the Convention, you (under section 24(3) of the Industrial Properties Act, 2014) are entitled to claim priority for a period of twelve months and the filing date of that first application is considered the “priority date."

Therefore, when you apply for protection in other member countries (of the Paris Convention) during those twelve months, the filing date of your first application is considered to have “priority” over other applications filed after that date.

In such a case, you still succeed in being the first-to-file in other member countries, even if there are other applications filed before the filing date of your application in those countries.

The above rationale was the impetus of the Paris Convention which intended to avoid the unwanted loss of eligibility for patent protection through publication of patent applications and participation in international exhibitions in advance of filing national patent applications.

The above issue simply means the inventor will get the benefit of a filing date in a foreign jurisdiction or patent office for purposes of determining what is prior art, that is to say, it is the actual filing date of the first application (This was a decision of the Board of Appeal of the European Patent Office).

This explains the situation prior to the Convention, as those wanting protection for inventions in numerous countries needed to file patent applications in all such countries at once, and needed to do so prior to any publication or exhibition of the invention at a trade fair, in order to avoid the accidental loss of eligibility of patent protection in one or more of the countries.

Therefore, the law is seeking to safeguard the interest of a patent applicant in his endeavour to obtain international protection for his invention by easing the negative consequences of the principle of territoriality in patent law, though for a limited time.

Hence the fact that the law of patent is jurisdictional, was solved by the development of the concept of priority date where an inventor applying in Uganda will still have a benefit of 12 months period to apply for patent protection in other African countries through ARIPO office and the world at large through application to the WIPO office by claiming the priority of the earliest Ugandan patent application filed one year before.

This thus enables the inventor to be able to benefit from the date of filing of the Ugandan patent application in these other countries.

Hence any disclosure to the public as regards to the applicant’s invention on or after the filing date will not prejudice the inventor’s patent application in other countries outside Uganda’s territorial jurisdiction.(Afro-ip.blogspot.com) As a result, any publication concerning or explaining the inventor’s concept will not affect the novelty of the Applicant’s patent application in other countries by virtue of the claim of priority date.

This as a result, indicates the relationship between novelty and the right of priority, as the priority date is a significant concept that preserves the novelty of the invention within other countries notwithstanding any publication, exhibition or other act capable of destroying novelty of the invention during the priority period. This was further enshrined in Windsurfing International Inc v Tabur Marine (1985) RPC 59 where court noted that the importance of priority date is to protect the novelty of the invention from any other common general knowledge in the art in question.

Therefore, the priority date is important because it is the state of the art at that date that is considered when judging the invention for novelty. It is also relevant in terms of infringement in that persons who in good faith, before the priority date, either have done an act that would constitute infringement or have made effective and serious preparations (according to Bainbridge in Intellectual Property pg. 389).

The current law is a modification as before the signing of the 1883 Paris convention the practice was that when someone wanted to obtain patents in multiple countries he or she had to file separate applications in each of these countries. 

If the invention was going to be put on the market, it would no longer be patentable in most countries, and so translations and other administrative affairs would have to be done very quickly, however, this was quite a difficult situation as inventors ended up losing out on most of benefits from their inventions, hence the Paris convention was a forum to ease matters through the claim of right of priority, as the Paris Convention granted an inventor a priority right based on a patent application filed in one member country. 

 

If the inventor subsequently files/filed patent applications for the same invention in other member countries within one year after filing the first one, the later applications receive a fictional filing date (the "priority date") that is equal to the filing date of the first patent application. This gave the inventor a period of one year to prepare translations and to brush up specification and figures, and to decide in which countries he wants to file a patent application, this rationale was illustrated in the

However, it is important to note that for an applicant to claim the right of priority the applicant ought to make sure that the specifications illustrated in the original application ought to be similar with the specifications in all the other later applications as the consequence for failure to have the same descriptions would be severe, as was noted in the case of Biogen inc v Medava Plc (1997) RPC 1, where the house of lords upheld the decision of court of Appeal in declining the claim to the right of priority as the subsequent applications had different specializations from the original application.

Furthermore, the applicant is expected to claim his right to priority within the stipulated 12 months to avoid the consequences of striking out the applicant’s right. This was clearly elucidated in the case of Re Abaco Machines (Australasia) Pty Ltd (2007) EWHC 347 where an Australian company filed an application for a Vietnamese patent intending to file an application under the Patent Cooperation Treaty and following this in relation to the U.K, filed an application to the European Patent Convention. However due to an error, the required duration of 12 months was missed to file the PCT application, court noted the fact that the claim for right to priority was missed and thus was proper for the patent office to refuse the grant for a late declaration.

Therefore, in my humble opinion l believe the concept of right to priority was a significant creation of the Paris convention that was developed to protect majority of the inventors during patent application process which was quite a different situation prior to the development of the right of priority as was seen in the case of Microbeads AG v Vinhurst Road Markings [1975] 1 WLR 218 where a patent holder sued the defendant for patent infringement .However the defendant argued that by the time of the purchase of the goods, the applicant had not been granted the patent for the product hence was in breach of his quiet possession of ownership.

The above case indicates the risks inventors faced in regards to lose of their invention rights as the inventor would only benefit from any I.P right such as suing for patent infringement from the date of grant of the patent.

However, with the current development in the law, the inventor is now protected from such risks as the inventor can now claim patent infringement from the date of filing by virtue of his right of priority.

USEFUL REFERENCES

STATUTES:

1. Industrial Property Act,2014
2. The Paris Convention for the protection of industrial property, of 20^th March, 1883

TEXT BOOKS:

1. D. Bainbridge (2010), Intellectual Property, 8th Edition.
2. Colston, Principles on Intellectual Property
3. Jon Holyoak, Intellectual Property Law
4. W.R. Cornish, Cases & Materials on Intellectual Property, 5th Edition

CASES:

1. Angella Katatumba v Anti-Corruption Coalition of Uganda Civil suit No.307 of 2011.
2. Biogen inc v Medava Plc [1997] RPC 1
3. PLG Research ltd v Ardon international ltd [1993] FSR 197,
4. Re Abaco Machines (Australasia) Pty Ltd [2007] EWHC 347
5. Windsurfing International Inc v Tabur Marine [1985] RPC 59

WEBSITE LINKS/SITES:

1. http://www.wipo.int/about-ip/en/
2. http://www.ursb.go.ug/index.php?option=com_content&view=article&id=55&Itemid=2
3. http://afro-ip.blogspot.com/