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:

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.