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/

Intellectual property and Patents in Uganda: The Agony and Entropy

By Nicholas Nanyumba

Terrell on The Law of Patents states that the grant of a patent for an invention is the grant to the patentee for a limited period a monopoly right in respect of that invention.

In simple terms, patents are given in the spirit of intellectual property rights. Intellectual property rights are the rights given to persons over the creations of their minds.

Any person may apply for a patent but a patent may only be granted to the inventor, or person entitled to the whole property in the invention by operation of law or prior agreement, or the successor in title to the inventor.

In Uganda, a patent is defined under Section 2 of The Industrial Property Act as the title granted to protect an invention. This definition, however is lacking in some aspects. A better definition is given in the WIPO handbook; a patent is a document issued upon application by a government officer (or regional office acting for several countries); which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorisation of the owner of the patent.

Patent rights a awarded on the justification as summed up by Aldous J in Chiron Corporation v Organon Teknika Ltd (no. 10) 1995 FSR 325 that,

1. The inventor is granted limited protection in return for the inventor’s agreement to disclose details of his invention and ultimately end up losing their property rights in it when the patent expires. This is sometime regarded as the inducement principle.
2. The inventor for the time, sweat and capital they put into their work, they should at least be given a limited but strong monopoly for this endeavour. This in turn will encourage more people to invent.
3. The inventor as an individual should have a right of property in his or her ideas which should be protected from being stolen by others.

Before someone is granted a patent in Uganda he or she has to first apply to the Registrar at the Uganda Registration Services Bureau as provided for under Section 21 of The Industrial Properties Act. The Bureau will then be tasked with finding out whether the invention is patentable or not.

For an invention to be patentable reference has to be made to the Industrial Property Act. The Act states that it must be new, be an inventive step forward and industrially applicable (Section 9). This is what is entailed under subject matter for grant of a patent;

Novelty or New as a criteria for grant of patent.

Novelty is defined in the s.10 (1) of the Industrial Property Act to mean an invention which is not anticipated by prior art or where a person who is highly skilled in the relevant art is not able to derive from a combination of prior disclosed art.

Prior art as understood from S.10(2) is all that information or anything made available to the public anywhere in the world by means of written disclosure including drawings, published patent applications and other illustrations or by oral disclosure, use, exhibition or other non-written means, where the disclosure occurred before the date validly claimed in respect of the application.

The application ought to disclose any prior art in that field and the right to priority is usually based on a national, regional or international application filed less than twelve months earlier.

Disclosure is a major prerequisite for the grant of a patent and should be total with nothing withheld otherwise it could make it hard for others to use that invention when the patent expires since at expiry the invention falls within the public domain.

The applicant for the patent is as per Grove J in Young V Rosenthal (1884) 1 RPC 29 at pg. 31 therefore “bound to describe it in his specification that any workman acquainted with the subject matter… would know how to make it,” this requirement also is envisaged in s.21 (5) and (6) and the holding back of information may lead to rejection of the application

Novelty is usually the undisputed condition of patentability. Novelty is hard to prove or establish but its absence can be easily proved. But it should be noted that in considering novelty, it is not permissible to combine separate items of prior art together.

The product must be a state of art. State of art may not necessarily mean the chemical composition of the product but goes to the core of the invention itself; the invention itself must be new as was held by Lord Hoffmann in Merrell Dow Pharmaceuticals Inc. v H N Norton & Co Ltd (1996) RPC 76. He stated that the invention is part of the state of the art if the information which has been disclosed enables the public to know the product under a description sufficient to work the invention. Therefore, in Merrell Dow, which based on a claim to an acid metabolite formed in the liver after administration of terfenadine which was itself the subject of an earlier patent, the acid metabolite was held to be anticipated not by prior use but because it was the inevitable result of carrying out the directions in the earlier terfenadine patent.

The test for novelty was set out by the court in General Tire Company v Firestone Tyre and Rubber Company Limited (1972) RPC 457, where court stated that in order to determine whether a patentee’s claim has been anticipated by an earlier publication, a comparison with the earlier publication is necessary and if the publication discloses the same device as the device which the patentee by his claim asserts he or she has invented then the patentee’s claim has been anticipated. However, a disclosure which is capable of being carried out in a manner which falls within the claim, but is also capable of being carried out in a different manner, does not anticipate the later claim.

Further more, Lord Hoffmann in SmithKline Beecham Plc's (Paroxetine Methanesulfonate) Patent (2006) RPC 10 stated that “anticipation requires prior disclosure of subject-matter which, when performed, must necessarily infringe the patented invention” and a similar holding was echoed in General Tire Company V Firestone Tyre and Rubber Company Limited (already cited above) “a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee”

The earlier claim and that of the patentee (As seen in the SmithKline case above) ought to be construed as they would be at the respective dates by a person skilled in the art to which the two relate and must do this with regard to the state of knowledge in such art at the relevant date.

The construction of the document is a matter of law and therefore one for the courts to decide since the court is the expert of all experts. And in order to disclose anticipation in a document it must be compared to a single document and a cumulative disclosure from many documents cannot be taken into consideration as stated in Ammonia's Application, 49 RPC 409.This can only be done when an argument for non-obviousness is claimed. After the construction of the documents, the question whether the patentee’s claim is new is now a matter of fact.

In Glaverbel SA V British Coal Corporation (1995) RPC 255, it was stated that It is also not necessary for the prior art to be equal in practical utility or to disclose the same invention in all respects as the patent in suit.

From the above it can be noted that a claim lacks novelty if the specified combination of features has already been anticipated in a previous disclosure. For there to be anticipation, the House of Lords held in SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent (already cited above) that there needs to be two requirements viz, prior disclosure and enablement.

Enablement as discussed in the case above means that the ordinary skilled person must be able to perform the invention which satisfies the requirement of disclosure. The court emphasised the need to keep the aspects of disclosure and enablement distinct. This is in respect of the role of the person skilled in the art which is different.

In disclosure, the skilled person is taken to try to understand what the inventor meant and he uses his common knowledge to achieve this. Whereas under enablement the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work, and the question is not what the skilled person would think the disclosure meant, but rather whether he would be able to work the disclosed invention.

Inventive step,

Inventive step is defined in S.11 of the Industrial Property Act as an invention as compared to the prior art relevant to the application claiming the inventions which would not have been obvious to a person skilled in that art to which it relates at the time of filing of the application.

What is regarded as an inventive step may depend on the nature of someone’s invention. Case law has gone ahead to expound on what constitutes an inventive step. In Biogen Inc. v Medeva plc (1997) RPC 1, Lord Hoffmann at page 34, stated that whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge.

This may be the idea of using established techniques to do something which no one had previously thought of doing. In which case the inventive idea will be doing the new thing.

Sometimes it is the discovery a way of doing something which people had wanted to do but could not think how and the inventive idea would be the way of achieving this goal.

If someone comes up with a way of solving a particular problem that many people have a general idea of how they might achieve it but actually do not know how they may solve the particular problem, his inventive step will be that solution and not the goal itself or the general method of achieving it.

The rationale for this test is that protection should not be given to what is already known or anything that a person with ordinary skill can deduce as an obvious consequence thereof.

The question of obviousness is an objective one. The question is whether the invention would have been obvious to a skilled person in the art, and not whether it was or would have been obvious to the inventor or to some other particular worker. The aspect was considered by the court in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd (1985) RPC 59, it stated that “first the question of whether the alleged invention was obvious had to be answered objectively by reference to whether, at the material time (that is, immediately prior to the priority date), the allegedly inventive step or concept would have been obvious to a skilled addressee” and that “what has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it”

The court formulated a four-step approach to assessing obviousness which was reformulated clearly by Jacob J in Pozzoli SPA v BDMO SA (2007) EWCA Civ. 588 as:

1. (a) Identify the notional “person skilled in the art”

(b) Identify the relevant common general knowledge of that person;

2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

The purpose of the four step test is to ensure a reasoned, methodical and consistent analysis of obviousness as stated in DSM NV's Patent (2001) RPC 35

Industrial Applicability.

An invention is considered industrially applicable if by its nature it can be made or used in any kind of industry with the inclusion of agriculture, medicine, fishery and other services.

“Industry” as a word should be understood in its broad sense. It does not mean the use of a machine or manufacture of a product. In Chiron Corp v Murex Diagnostics Ltd & anor (1996) RPC 5353 (pg. 607) the Court of Appeal held that the requirement that the invention can be made or used "in any kind of industry" so as to be "capable of industrial application" carries the connotation of trade or manufacture in its widest sense and whether or not for profit and that industry does not exist in that sense to make or use that which is useless for any known purpose.

Industry “includes all manufacturing, extracting and processing activities” (eli Lilly and Co. V Human Genome Sciences Inc. (2008) EWHC and the requirement of commerce as noted above is not a must because “…a product which is shown to be useful to cure a rare or orphan disease may be considered capable of industrial application even if it is not intended for use in any trade” (above case)

In conclusion, an invention ought to first be patentable under Ss. 8 and 13 of the Industrial Property Act, before a grant of the same is effected by the Registrar. Coupled with the prerequisites of novelty, inventive step and industrial applicability once satisfied, may the claim be granted. A sum total of the above is the subject matter for the grant of a patent.

BOOKS FOR FURTHER READING

1. The Industrial Property act, 2014
2. Peter J Groves, Sourcebook on Intellectual Property, cavendish publishing limited, great britain, 1997
3. David i Bainbridge, Intellectual Property, pitman publishing imprint, eighth edition, 2010.
4. Intellectual Property Office, manual of patent practice (mopp), october 2014.
5. Richard Miller, q.c, Guy Burkill, q.c, Colin Birss, q.c and Douglas Campbell; Terrell on the Law of Patents, seventeenth edition, sweet & maxwell, 2011.

The relevancy of the Industrial Properties Act in Uganda

By Namara Keith Kyaruzi

ABSTRACT

This paper looks into the relevancy of an intellectual Property law in Uganda with particular reference to the newly enacted Industrial Properties Act. It seeks to examine if indeed there is need for a law that regulates Intellectual property rights as guaranteed under the Act.

The Industrial Properties Act has largely been a unique phenomenon in Intellectual property law in the Country. This is because the existing patents Act of 1993 cannot be said to have been such a strong law on patents. Besides there had arisen no need to improve the law on industrial property to meet the developments in the intellectual property arena, especially for a third world country like Uganda. 

This text is therefore directed at investigating if there is need that has arisen for a new law on patents in Uganda and if that need is sufficient to warrant the enactment of the industrial properties Act repealing the patents Act and also the importance of this new law in a developing country like Uganda.

INTRODUCTION

Intellectual property law is that area of law which concerns legal rights associated with creative effort or commercial reputation and goodwill. (Bainbridge, 2010) Whereas industrial property law may mean law granting rights under patents, certificates of utility models and technovation and registration of industrial designs issued under the Industrial Properties Act. 

An invention can be defined as a new and useful art whether producing a physical effect or not, process, machine, manufacture or composition of matter which is not obvious, or a new and useful improvement of it which is not obvious, capable of being used or applied in trade or industry; and includes an alleged invention.

Uganda being a British colony obtained her very first patent law from the English as part of its colonial inheritance. It is from this that the patent Act came into force in 1993 after many changes that were made over the years in England. The aim of the patent system then and now is to encourage the development of technology by the local citizenry and to be able to put to use what has been patented. However, these aims remain to be said to have been achieved not only in Uganda but also in other developing countries. 

This is precisely because the laws that are made are being inspired by foreign existing laws presenting a lot of difficulty. The environment that the laws are made subject in foreign jurisdiction is certainly different from the situation in Uganda owing to the fact that these foreign jurisdictions are in most cases (if not in all cases) developed countries while the recipient country (Uganda) is a developing country.

While discussing the development and relevance of Industrial Property laws in Uganda, it is pertinent to also pay tribute to the TRIPS agreement and its influence on patent law in Uganda. Uganda’s membership with the World Trade Organisation made it subject to the minimum standards of patent law as suggested by the TRIPS agreement. This agreement’s suggested standard is what resulted into the current Industrial Properties Act.

The Industrial Property Act is part of a process to support private sector development, reform in commercial justice and to encourage private investment. Uganda was obligated to enact this law as a new engine of growth to enhance social and economic prosperity. To achieve this, Uganda has been part of many other international treaties. These include; World Intellectual Property Organization (WIPO), African Regional Intellectual Property Organization (ARIPO), the Paris Convention, Patent Cooperation Treaty, TRIPS-Agreement and to a certain level, Uganda has used the Nice Agreement on classification of goods and services. 

In the following section, I will be examining the role of the Industrial properties Act laws in different sectors of; technology and industry, agriculture, trade, health among others.

The role of the Industrial Properties Act in technology and Industry.

The long title of the Industrial Properties Act (herein after referred to as IPA) states in part that the Act is to provide for the promotion of inventive and innovative activities, to facilitate the acquisition of technology through the grant and regulation of patents, utility models, industrial designs and technovations. This provision highlights the role that the law can play in encouraging technological developments. 

S.38 of the IPA is to the effect that the owner of a patent has exclusive rights of use over the patented product and no one else is allowed to use it without his authorisation. This protection given by an inventor is certainly an assurance of a monopoly for his innovation which works as an incentive to the inventor. It should be argued that with such a reward of monopoly, the inventor will be motivated in engaging in more research to come up with more inventions and perhaps better inventions. The absence of Industrial Property laws would lead to very absurd tendencies like infringements that could dispirit inventors. In Uganda, the IPA will boost confidence in technological research for institutes like Uganda Industrial Research Institute which aims at promoting and improving the level of technology in Uganda.  (Institute, 2014)

Furthermore, Patent laws are a form of contract between the inventor and the grantor. What the patent system does is to guarantee a limited term of protection in return for the inventor’s agreement to disclose details of his invention and, ultimately, to abandon his property right in it. This benefits society by stimulating investment and employment because details of the invention are added to the store of available knowledge. After the expiry of the patent, the knowledge is put to use in the technology world.

The role of Industrial Property Act in Agriculture;

S.12 of the IPA Act, is to the effect that an invention will be considered industrially applicable if it can be made or used in Agriculture. The implication of this provision is that, an invention that relates to agriculture will be protected by the Act. In Uganda, the presence of the National Agricultural Research Organisation (NARO) avails chances for agricultural innovations. NARO’s vision is “A farmer responsive research system that generates and disseminates problem-solving, profitable and environmentally sound technologies, knowledge and information on a sustainable basis.” 

The promotion of innovation can be inferred from the vision of the organisation. With the Industrial properties Act, NARO and other agricultural research centres can possibly develop a drought, insect, disease, and herbicide tolerant seed product that can justify the investments needed to develop a transgenic crop solution. The Industrial Properties Act therefore comes in to grant patent protection to such agricultural inventions in areas like plant variety protection. This will eventually lead to sustainable agricultural productivity, poverty eradication and economic development.  

The role of the Industrial properties Act in trade and commerce.

Technological knowledge, ideas, methods and techniques are quickly becoming society’s most important economic assets. The growth of knowledge as a tradable asset, which takes many forms in its creation, dissemination and movement across borders, is now an established feature of all economies (Curtis, 2012). This received recognition by the World Trade Organisation in the 1990s through one of its major components; the TRIPS agreement where countries agreed to certain intellectual property rights standards and obligation in any regional or bilateral trade agreements.

The aspect of patent rights as a means of attaining economic ends can be traced through the IPA. S 38 of the IPA precludes any commercial use of the patent by a third party not being the patent holder, such commercial use can be after the patent holder has assigned or licensed the patent under the IPA. This assigning or licensing can only be after the licensee has submitted a consideration for the patent; he/she cannot attain the patent (knowledge) at a free cost except if the patent holder wishes it (This rarely happens in practice). A patent is to be looked at as an investment and as a product that is being traded to acquire money. 

The fundamental question to ask however is if the desire to promote the economic self interest of the patent holder through grant of a monopoly overrides the desire to utilise the newly acquired knowledge in solving society needs and improving on human conditions. As to whether this is true for the former or the later; that is certainly a question for another day.

The role of Industrial properties Act in health

In the health sector, Intellectual property can provide stimulation for the development of new drugs and medicine (Organisation, 2014). Researchers will often want to be sure they can recoup their investment costs before they can engage in any serious research. In Uganda, research by the Joint Clinical Research Centre for an HIV vaccine has been partly inspired by the protection to be received from Intellectual Property rights.

However, it has been argued that the monopoly granted to a patent holder to recoup his profits results in unmanageable prices on the product, burrs the generic modifications of the said drugs and generally puts the medicine out of reach to those who need it. 

This argument however cannot be maintained amidst the mechanisms that have been put in place to circumvent the monopoly granted. Mechanisms like; voluntary licensing, compulsory licensing, bulk purchasing and corporate donations have been effective measures to relax the patent standard requirements. In addition to that, in a recent study (Attaran, 2014) it has been established that geographic patent coverage does not appear to correlate with antiretroviral treatment access in Africa, areas covered by patent law still access drugs like ARVs, instead, the areas that are not covered by patent law have had little access to drugs, suggesting that patents and patent laws are not a major barrier to treatment access in and of themselves.

Despite the importance of patent law as demonstrated in the discussion above, it cannot go without argument that to some extent, Patent law has been an unknown and rare field that has been neglected for some time for that same reason. In the next text, I will discuss to what extent patent law has been misguided and irrelevant in Uganda.

Since the start of Intellectual property law in the early 1760s, Uganda had largely remained without patent law until the inception of the Patents Act of 1993. This is not for any strange reason but one particularly, the law was/is irrelevant to the situation in Uganda. The level of research, innovation and invention was/is still so low to require a fully fledged Act on Intellectual Property rights.

Level of industrialisation in Uganda

Industrialisation in Uganda only took route in the 1940s under British colonial rule, the industries then were only meant to export primary products. Processing industries only emerged after the 1945 Owen Falls dam power project which supplied Hydro electric power to the industries. Even then, these industries were meant to prepare coffee and cotton for export. This slow rate of industrial growth was further stalled in the Idi Amin regime where the industrial infrastructure was disorganised and there was virtually no presence of heavy industries.

(The evolution of industries in Uganda, 2013) The rate has only fairly improved in the country; however, any significant number of patents is yet to be registered with the Uganda Registration Service Bureau.  This argument is to illustrate that the industries that exist at the moment have no capacity to influence the need for Intellectual property law and as such, the Intellectual property law is a luxury. The level of industrialisation is small and the rate of industrialisation is slow.

The cost of patent registration

The process of registering a patent is too expensive, complex and also extensive. In most cases, it requires an applicant to get a sponsor to aid in financing the entire process to the end. That being the fact, many Ugandans would find the process unmanageable, besides, looking for a sponsor will wedge in more undercutting issues like co-ownership, licensing or even assigning the rights off which is undesirable to any patent applicant. 

In many cases in Uganda, the so called sponsors tend to cheat inventors of their inventions taking advantage of the prevailing ignorance about intellectual property rights and obtaining their innovations illegally. In other words, an average Ugandan will fill bothered by the registration of a patent, there seems to be no morale to patent anything.

CONCLUSION

It can conclusively be argued that the Industrial properties law is a desired occurrence in Uganda, the relevance of the Industrial properties Act cannot be disputed especially with the current shift of priorities by the Ugandan government to science, research, and industry. The presence of government backed research under several organisations like NARO, JCRC, UIRI and science & technology universities around the country has a lot to tell about the need for an Industrial Properties law. The law will not only encourage innovation but will also promote investment and eventually lead to economic growth. 

The Industrial properties Act acts as a precursor of a new era in Uganda, an era that has traversed a sluggish history of industrialisation to what exists currently as a rapid growing industrial sector. It is now that innovations have started cropping up across the country in Universities, research institutes and in the private sector. The increasing need to support these innovations by providing incentives and assurance to the inventors about their inventions through grants of Intellectual property rights can be well satisfied by the new Industrial Properties Act. 

Relevant books and Journals for further reading

Attaran, A. (2014, October 24th). Do patents for Antiretroviral drugs constrain access to treatment in Africa.

Beinbridge, D. I. (2010). Intellectual Property. Edinburgh: Pearson Education Limitted.

Curtis, J. M. (2012). Intellectual Property rights and Intellectual trade: An overview, Centre for intellectual governance Innovation.

Institute, U. I. (2014, October 24th). Kampala, Central.

Organisation, W. H. (2014). Trade, foreign policy, diplomacy and health. New York.

The evolution of industries in Uganda. (2013). Learning to compete conference: Industraial Development and policy in Africa. Helsinki, Finland.

 Edgar Tabaro, “Copyright Law Reform in Uganda: Addressing International Standards at the Expense of Domestic Objectives,” ACODE Policy Briefing Paper No. 10, 2005: