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/

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.

A look at the requirements for granting a patent and an analysis of which one is usually the least problematic.

By Ian Derrick Mutange

Section 2 Uganda’s Industrial Properties Act defines a Patent as the title granted to protect an invention.A patent gives the owner a monopoly in a particular territory, enabling them to exploit the invention exclusively for a period of up to 20 years.

David Bainbridge and Claire Howell In their book Intellectual Property Law, state that Although the inventor benefits from the patent in that he can work, sell or license it, society also benefits because not only is innovation encouraged but the invention will eventually fall into the public domain.

It should be noted that the grant of a monopoly is premised on the satisfaction of 3 requirements. Section 9 of the Industrial Properties Act, states that an invention is patentable if it is new, involves an inventive step, and is industrially applicable. From the said provision, the extractable requirements are novelty, inventive step and industrial application.

Before discussing the abovementioned requirements showing the most and least problematic to overcome in an application for a Patent, I shall address my mind to the question of what amounts to an invention. In the words of Lord Hoffman “logically one should first decide whether the claimed invention can properly be described as an invention at all. Only if this question receives an affirmative answer would it be necessary to go on to consider whether the invention satisfies the prescribed conditions for being ‘patentable’."  

Section 2 of the same Act also further states that an invention means 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;

In Biogen V Medeva Plc (1997) RPC1 cited in Bainbridge, Lord Hoffman usefully described the different forms of inventions. He stated that an invention is the addition of an idea to an already existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something, which no one had previously thought of doing. In that case, the inventive step will be doing the new thing. 

Sometimes, it is finding a way of doing something, which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem, which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution but not the goal itself or the general method of achieving it.

From the above as per Bainbridge, an invention could be a product (goal), a process (method of achieving the goal) or a solution to a problem. I now turn to discuss the requirements of Patentability showing the most and least problematic to overcome in an application for a Patent.

Novelty: Section 10(1) of the Industrial Properties Act, 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.

Section 10(2) of the same Act states that for purposes of this Act, prior art consists of everything 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 of filing of the application or, if priority is claimed, before the priority date validly claimed in respect of the application.

From the above provisions, it is clear that for one to claim a Patent in respect of an invention, it should not have been disclosed anywhere in the world. Disclosure to a person(s) in confidence does not defeat novelty as stated in Visx Inc V Nidek Co Ltd (1997) FSR 495.  Further more, Bainbridge at Pg. 419 states that, while disclosure even to a single person without any express or implied terms as to confidence is sufficient to defeat novelty. It is immaterial whether the person kept the said disclosure a secret as court noted in MMI Research Ltd V Cellxion Ltd (2009) EWHC 418.

One vital element under Novelty is the aspect of Anticipation. In the case of Synthon V SmithKline Beecham Plc (2006) RPC 323, it was stated that anticipation entails an enabling disclosure; such that a skilled person in the field can be able to work the invention. Lord Hoffman went on to confirm that despite the fact that enablement and disclosure are correlated in as regards anticipation, the two principles have separate rules that govern them.

In respect of disclosure, Lord Hoffman was of the view that prior art must disclose subject matter which if performed would necessarily result into an infringement on the Patent. In the Synthon case (above) it should be noted that patent infringement does not require awareness of the infringement. Lord Hoffman further stressed that prior disclosure should be construed as understood by the skilled person at the date of disclosure not at the date of subsequent patent.

In light of the issue of enablement, it should be looked at from the perspective of an ordinary skilled person not a world champion as per Jacob J in the Synthon case above. Once the disclosure has been made, the question whether an invention can be enabled is to be looked at as viewing whether the skilled person in the field can work the invention by carrying out trial and error experiments. The skilled person need not possess inventive faculties and need not be aware of the fact that he is working the said invention as stated in the Merrell case (above).

From the above therefore, it can be deduced that novelty applies quite strictly and is practically the most difficult to overcome. This is premised on the following:-

(a)            Under Novelty, the invention in question must not form part of the prior art. Prior art constitutes anything disclosed anywhere in the world (Section 10(2) of the Industrial Properties Act 2014. This provision implores Patentees to be diligent and ensure that their inventions do not form part of prior art in order to satisfy Novelty. This in practise is hard to overcome because one is compelled to conduct for lack of a better word a ‘world search’ to satisfy Novelty.

(b)           Section 10 further requires one to have an invention that is new i.e. absolute novelty. In Low Developed Countries like Uganda, this is a hard measure to overcome on the basis that “there is nothing new under the sun.” Therefore the idea of satisfying the fact that the invention does not form part of prior art is a complex one and is hard to overcome.

(c)            In respect of the issue of enablement, a skilled person in the field in question is bound to conduct trial and error experiments for purposes of working or enabling the invention (Synthon case). It is my opinion that the conduction of the said trial and error experiments is in practise, a problematic one owing to the fact that a lot of finances may be involved and the said process is rather speculative since its premised on trial and error.

Inventive Step; Section 11 also states that an invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the inventions, it would not have been obvious to a person skilled in the art to which the invention relates on the date of the filing of the application or, if priority is claimed on the date validly claimed in respect of the invention.

The key issue under the requirement of inventive step is the concept of obviousness. This has no special meaning assigned to it and the plain dictionary meaning is invoked as court noted in General Tire & Rubber Co Ltd V Firestone Tyre & Anor (1972) RPC 437. The question of whether an invention is obvious is one of fact and depends on the circumstances of the case in question in Lux Traffic V Pike (1993) RPC 107 ChD. The term ‘obvious’ relates to that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something that does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. The key point to note under obviousness is that where an invention is not obvious to a skilled person and an inventive person, it must involve an inventive step as noted in Intalite int’l V Cellular Ceilings Ltd No.2 (1987) ROC 537.

Obviousness is judged by looking at the invention as a whole and considering the state of art at the relevant time. Where the claimed invention is compared in its entirety with the previous state of the art, a mosaic approach as stated in Technograph Printed Circuits Ltd V Mills & Rockley (Electronics) (1972) RPC 346 is applied to assessing inventive step, that is, it is examined whether it would be obvious to the person skilled in the art to combine various elements of pre-existing technique in order to arrive at the result for which the patent is claimed.

Another paramount consideration under the requirement of Inventive step is the skilled person in the field in question. In Technograph Printed Circuits Ltd V Mills & Rockley(Electronics) Pill J had this to say about a skilled person.. a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of . . . scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a ‘mosaic’ out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.

Thus the skilled person in question need not possess inventive faculties and need not be a world champion (synthon case above). He should rather be well informed in light of the field in which the invention applies. When considering the requirement of inventive step, the test laid out by the court in Windsurfing V tabur Marine (1985) RPC 59 is a paramount consideration and failure to apply the same was in one case seen as a ground for appeal. The said test is;

1.      Identify the inventive concept embodied in the patent in suit.190

2.      The court then assumes the mantle of the normally skilled but     unimaginative addressee in the art at the priority date, imputing to him what was, at that date, common general knowledge in the art in question.

3.      Identify what, if any, differences exist between the matter cited as being ‘known and used’ and the alleged invention.

4.      The court then asks itself the question whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.

In PLG Research Ltd V Ardon Int’l Ltd (1995) RPC 287 Millet J stated that the value of the [the Windsurfing] analysis is not that it alters the critical question; it remains the question posed by the Act. But it enables the fact-finding tribunal to approach the question in a structured way. In essence, the said test was formulated as a structural approach to be used while determining the question of whether or not an inventive step exists.

                              

The said test was subject to amendment in Pozzoli SPA V BDMO SA (2007) FSR 872 Jacob J stated the test as follows:-

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 a degree of invention?

From the above therefore, it can be seen that requirement of inventive step requires one to show that upon having regard to the prior art, their invention is not obvious to a person skilled in the art. The requirement for inventive step proves to be a difficult one to overcome as shown:-

The test requires that the skilled person in the art need be versed with all the relevant common knowledge

in relation to the field in question. This in my opinion is a hard position to overcome in practise. It may be hard to get a skilled person with a vast knowledge in relation to the art in question as required by the law. Although at the same time it is not an impossibility.

 The person skilled in the art ought to have read all the relevant literature in respect of the invention in question (Technographic case above). This in practise is problematic to overcome, as it requires a lot of time and resources for one to actually internalize all the relevant literature pertinent to the invention in question.

Industrial Applicability: Section 12 of the Act, states that an invention shall be considered industrially applicable if, according to its nature, it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services. In effect, an invention lacking a practical application is unlikely to be patentable. If it has one, then it will probably pass the industrial applicability test.

In Eli Lilly & Co v Human Genome Sciences Inc (2008) EWHC 1903, Kichen J stated that:

It includes all manufacturing, extracting and processing activities of enterprises that are carried out continuously, independently and for commercial gain. . However, it need not necessarily be conducted for profit. . And 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 at all. Conversely, the requirement will not be satisfied if what is described is merely an interesting research result that might yield a yet to be identified industrial application.

The requirement of industrial applicability seems to be the least problematic to overcome because what need be showed is that the invention in question has a use. There are no hard and fast rules in relation to the requirement of industrial applicability as opposed to novelty and inventive step.

In conclusion, it is clear from the above that the most problematic requirement to overcome in practise is Novelty and the least problematic is industrial applicability. However it is vital to note that all the requirements are of paramount importance in an application for a Patent and all of them need be satisfied to their requisite practical degrees for a Patent to be granted.