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:
- Industrial Property Act,2014
- The Paris Convention for the protection of industrial property, of 20th March, 1883
TEXT
BOOKS:
- D. Bainbridge (2010), Intellectual Property, 8th Edition.
- Colston, Principles on Intellectual Property
- Jon Holyoak, Intellectual Property Law
- W.R. Cornish, Cases & Materials on Intellectual Property, 5th Edition
CASES:
- Angella Katatumba v Anti-Corruption Coalition of Uganda Civil suit No.307 of 2011.
- Biogen inc v Medava Plc [1997] RPC 1
- PLG Research ltd v Ardon international ltd [1993] FSR 197,
- Re Abaco Machines (Australasia) Pty Ltd [2007] EWHC 347
- Windsurfing International Inc v Tabur Marine [1985] RPC 59
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