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.