REQUIREMENTS OF PATENT PROTECTION AND THE DISTINCTION FROM PLANT

VARIETY PROTECTION & TRADE SECRETS.

TABLE OF CONTENT
• Introduction.
i. what is a patent;
• significance of patent protection.
• validity of patents.
ii. Patentable invention;
iii. Requirement for patent protection;
a) Novelty;
b) Inventive step;
c) Industrial application;
iv. Patentable subject matter;
• registration of a patent;
• duration for patent protection;
v. What is a plant variety;
• Requirements for plant variety protection
• Registration of a plant variety
• Duration for plant variety protection
• Difference between a plant variety and a patent
vi. trade secrets;
• What is a trade secret
• Conditions for trade secret protection
• Difference between a trade secret and a patent. conclusion
LAW APPLICABLE
• National laws
• The Constitution of the Republic of Uganda, 1995 as amended.
• The Industrial Property Act Cap 224
• The Trade Secrets Protection Act
• The Plant Variety Protection Act
• The Industrial Property Regulations of 2017
• The Industrial Property (Fees) Regulations 2017
• The Plant Variety Protection Regulations 2019

International laws
Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”)

INTRODUCTION:
Patent law in Uganda is a crucial aspect of intellectual property protection, fostering innovation and
economic growth. As a developing country, Uganda has made significant strides in recognizing the
importance of patent protection, aligning with global standards and regional frameworks. This discussion
paper aims to delve into the patent law landscape in Uganda particularly examining its protection and
distinction from plant variety protection and trade secrets protection.Uganda's patent law system has its
roots in the British colonial legal system, with the first patent legislation enacted in 1958. Over the years,
the country has undergone significant reforms, including the enactment of the Patents Act Cap 216,
repealed in 2014 by the Industrial Property Act (Cap 224) laws of Uganda 2024, which harmonizes
Uganda's patent law with international treaties and regional instruments.
 The current patent law framework in Uganda, as already stated, is primarily governed by the Industrial
Property Act (Cap 224), plus regulations contained in the Industrial Property Regulations of 2017, the
Industrial Property (Fees) Regulations 2017. The Uganda Registration Services Bureau (URSB)
responsible for administering patent registrations. The Act and its regulations provide for:
a) Patentability criteria.
b) Application, registration procedures and protection.
c) Rights and obligations of patent holders.
d) Infringement, remedies and enforcement mechanisms.
WHAT IS A PATENT
A patent is defined under Section 2 Industrial Property Act Cap to mean a title granted to protect an
invention. It is a legal document granted by the government to an inventor to exclusively use the invention
for a period of 20 years on a condition that the inventor disclosed. Disclosure of the claimed invention
shall be considered sufficiently clear and complete if it provides information which is sufficient to allow
that invention to be made and used by a person with who has ordinary skill in the art on the filing date,
without undue experimentation Section 20(6). A patent is granted for any device, substance, method, or
process which is new, inventive or useful Muk policy .
SIGNIFICANCE OF PATENT PROTECTION
a) It is natural right to own property: Article 21 Constitution of Uganda, in 1995 as amended. provides that
every person in Uganda has a right to own property. Therefore, an inventor is entitled to own the property
right in his or her own invention.
b) It encourages research and innovation.
c) Induces the inventor to disclose his discoveries instead if keeping quiet or having it as a secret.
d) Provide a reward for the expense of developing the invention to a state at which they are
commercially viable.
e) Provides an inducement to invest capital in new lines of production which might not appear profitable if
many competing procedures embarked on them simultaneously (monopoly).
VALIDITY OF PATENTS
For an invention to qualify for patentability;
i. It must be a patentable invention.
An "invention" is defined under section 7 Industrial Property Act Cap to mean “a solution to a
specific problem in the field of technology”.
The case of Biogen Inc V Medeva [1997] RPC 1 (House of Lords) defined an invention as an addition of
an idea to the existing stock on knowledge. An invention may be, or may relate to, a product or a process
Section 6(2) Industrial Property Act Cap Process inventions are new ways of producing something old
while product inventions are new ways of producing something new, D. J. Bakibinga, Intellectual Property
Law in East Africa, 1edn., Law Africa Publishing, 2020
REQUIREMENT FOR PATENT PROTECTION
An invention is patentable if it is new, involves an inventive step, and is industrially applicable.Section 8,
Industrial Property Act
NOVELTY
(1) 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. Prior art was
defined to mean all previous existing data or information or material. [1975] RPC 457
In General Tire & Rubber co. V Tiresome Tyre & Rubber co. Ltd Section (1972) .The patent in
question was for a process for making a compound suitable for Tyre treads by mixing synthetic rubber
with oil and carbon black (a mixture commonly referred to as oil extended rubber). The plaintiffs
published the process in June, patented the same and it was rapidly taken into general industrial use.
International Synthetic Rubber Co, Ltd., one of the defendants argued that their product was not
substantially similar to the plaintiff’s patented design and the patent was invalid due to prior art. The
plaintiff commenced actions for infringement and a the counter claim for revocation were made on the
ground that the method had already been invented by the Austrian firm during World War II and was also
 the subject of a patent independently taken out in the USA by a company called Wilmington.
One of the issues in question was whether the invention claimed was anticipated by the cited documents.
Court held that the test for novelty is required to be established before a patent could be granted. The
invention is not new having regard to what was known or used before the priority date of the claim. To
determine whether a patentee’s claim has been anticipated by earlier publications, it is necessary to
compare the earlier publication with the patentee’s claim. If the earlier publications disclose the same
device as the device which the patentee by his claim so construed asserts that he has invented, the
patentee’s claim has been anticipated but not otherwise. In such cases, the patentee is not the true
inventor, not the first inventor of the device and his claimed invention is not new.
Further, to anticipate claims, the prior publications had to contain clear and un mistaken direction to do
what the patentee claimed to have invented.
Burden of proof: When the validity if a patent is attacked, the onus of proof lies as regards each allegation
on the party launching the attack.The rationale for novelty is to avoid granting of patents to inventions
which are already known to do so and contain the use of such information yet there is no return12.
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 13.
A disclosure of the invention shall not be taken into consideration if it occurred within twelve months
before the filing date or, where applicable, the priority date of the application and if it was by reason or in
consequence of—
(a) acts committed by the applicant or his or her predecessor in title; or
(b) an evident abuse committed by a third party in relation to the applicant or his or her predecessor in
title14. However, oral disclosure does not anticipate a patent if they are made in confidence In the case of
Visx v. Nidek Co. Ltd15. The patents concerned loser apparatus which was used to change the shape of the
cornea to correct myopes, hyperopia and astigmatism. The defendant counter claimed for the revocation of
the patent on the basis, inter-alia of a number of oral disclosures including one alleged to have
12
Ibid no 8 13 Section 9(3) 14 Section 9(4) 15 943 F. Supp. 1179 (N. D. Cal. 1996)

been made on a train. The court observed that the burden of proof is on the person alleging prior
disclosure. The case failed as the defendant failed to show that they were not mad in confidence.
The availability of the invention does not have to be on a wide scale. The use of an invention in public in
one locality only is sufficient to anticipate a patent Bakibinga . In Windsurfing International Inc V
Tabur Marine Ltd [1985] RPC 59. A sailboard was used in public for a few weekends at a caravan site.
It was held that this effectively anticipated a later patent for the sailboard which was declared invalid for
lack of novelty.
Demonstration of an invention to secure investment prior to an application for a patent may jeopardize
securing a patent on ground of lack of novelty. However, if the demonstration is held in private and in
confidence, this may be saved.
In Pall Corp. V Commercial Hydraulics [1983] 2 All ER 858 (CA).a sample of claimed product was
sent to a potential customer for testing in the presence of other suppliers. This detailed of the product were
not revealed. Following the grant of a patent, it was challenged on the ground that it was available to the
public before priority date. It was held that delivery samples in confidence to persons who know that they
were experimental and secret did not make the invention available to the public for purposes of parent &
did not therefore prejudice the novelty of the invention. It is notable that secret experimental use
contributes disclosure to the public unless it was reasonably necessary by or with the consent of the
proprietor and took place within one year before the priority date,
In Prout v. British Gas Plc. [1991] 1 AC 565 (HL) it was held that a patent for anti-vandal mounting
bracket for a warming lamp which has been used experimentally to a location on a public highway
notorious for vandalism was valid. This is because anticipatory use had to be more than mere trials
in public and use of a finished invention was required. Thus, experimental use to test an invention does not
 destroy the invention’s novelty.
However, in Lux Traffic Controls Ltd V Pike Signals Ltd[1993] RPC 107 (CA)
It was held that an alleged claim in a patent where a prototype has been using in public was invalid
because one was made available in public. It was irrelevant where it is actually examined.

INVENTIVE STEP
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.Section 10, Industrial Property Act
In the case of KSR Intern. Co. v. Teleflex Inc KSR Intern. Co. v. Teleflex Inc. (S.Ct. 2007) the Supreme
Court refined the analysis for obviousness, indicating that a common-sense approach can be used when
combining references to show obviousness. Prior to this case, courts used the "teaching, suggestion, or
motivation" test, under which a patent claim is only proved obvious if "some motivation or suggestion to
combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge
of a person having ordinary skill in the art. This TSM test is no longer a requirement to show obviousness
In the case of Lufthansa Technik AG V Astronic Advanced Electronic Systems GmbH, [2008]
EWHC 166 (Pat) the issue raised was whether the claim in the patent involved an inventive step? Court
held that when considering the issue of obviousness, the following approach can be used for guidance of
court in identifying; (a)The notional skilled person. (b)The relevant common general knowledge of that
patent.(c)The inventive concept of a claim (the true construction of the claim). Court listed the features of
a notional skilled person to include; He must have the common knowledge of a person with his skill, He
shares common prejudices or conservation which prevails in the art concerned He is incapable of a
scintilla of invention. Court further defined a skilled person as a person to whom the claims in the patent
were addressed and that would be a person with a practical interest in the subject matter of the claim in the
patent and with practical knowledge and experience of the kind of word in which the invention was
intended to be used.
General Tire & Rubber Co. v. Firestone Tyre & Rubber Co.24 The Invention should not be obvious to
any skilled person in the art. The word obvious was defined as a common sense, clear and strong word
which means very plain.
The proper test for obviousness is whether you think there is a reasonable chance of getting a useful result
from what you learn from the prior art. Public knowledge (all knowledge available to the public must be
carefully distinguished from common general knowledge which is not what the skilled man is presumed to
know.

INDUSTRIAL APPLICATION
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 25.
To determine industrial application,
● Can the public use it & benefit
● Can more copies be used or produced out of your work
● Can the invention be used in some kind of industry
● Can the public be satisfied
In General Tire & Rubber co. V Firestone Tyre & Rubber Co.26 Court held that the new arrangement
resulted into an improvement which causes demand for an apparatus made in accordance with the patent
in regard to commercial success, it was contended that the vastly increased use of synthetic rubber for tires
was due to the adoption of oil extended rubber.
24
[1975] FSR 273 ,25 Section 11, ibid ,26 Ibid 24

ii PATENTABLE SUBJECT MATTER

 In order for an invention to be eligible for patent protection, the applicant must make sure that the
invention falls within the scope of patentable subject matter.
The general rule is that patent protection shall be available for invention in all fields of technology.
However, there are exemptions (examples of technology which may be excluded from the scope)
Section 7(3)27 provides for the different works that shall not be regarded as inventions and shall be
excluded from patent protection;
a) Discoveries, scientific theories and mathematical methods;
b) Schemes, rules or methods for doing business, performing purely mental acts or playing
c) games;
d) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
e) Mere presentation of information;
f) Plants and animals other than micro-organisms, and essentially biological processes for the production of
plants or animals other than non-biological and micro-biological processes;
g) Pharmaceutical products and test data until 1st January 2016 or such other period as may be granted to
Uganda or least developed countries by the Council responsible for administering the Agreement on trade
related aspects of intellectual property under the World Trade Organization;
h) Natural substances, whether purified, synthesized or otherwise isolated from nature; except the processes
of isolating those natural substances from their original environment; and
i) The human body and all its elements in whole or in part.
Further, Section 1228 provides for non- patentable subject matter to include;
(a) plant varieties as provided for in the law providing for the protection of plant varieties;
(b) inventions contrary to public order, morality, public health and safety, public policy,
principles of humanity and environmental conservation
27
Ibid 28 ibid.
In this unanimous 2012 decision of Mayo collaborative Services V Prometheus Laboratories29, the U.S.
Supreme Court determined that a medical testing patent was unpatentable as no statutory subject matter
under Section 101 of the Patents Act. The Court then recited the well- settled rule that laws of nature, like
natural phenomena and abstract ideas, are not patentable. Nonetheless, the Court acknowledged that while
laws of nature are not patentable, claims that contain a law of nature can be patentable as long as the claim
applies the law of nature. The court was guided by two principles: that it is important that the claim does
not preempt the entire use of the natural law, and that the additional elements added to the claim beyond
the natural law must be significant in that they cannot merely involve steps that are well-understood,
routine, and conventional. In this case, the Court found that the claim preempted the law of nature
REGISTRATION OF A PATENT
Patent registration can be performed at three different levels that is national, regional and international
(through the Patent Cooperation Treaty (PCT) System). Patents are territorial in nature, which means that
patent rights are granted and enforceable within the geographical boundaries of the country or region
where they are registered.
National wise, registration takes place at national IP offices and protection is obtained only in the territory
where the patent is registered
In Uganda, a person who wishes to register his or her application should do so through an application to
the registrar30. Registrar means the officer designated as registrar of industrial property under URSB Act
and includes the deputies and assistants of that officer31.
1. Submit the filled patent application form.
The application shall be in form 2 of the second schedule of the Industrial property regulations 32. Where
the applicant’s ordinary residence or principal place of business is outside Uganda, the applicant shall be
represented by an advocate of the High Court of Uganda33.
2. Attach the patent documents
29
Inc132 S.CT. 1289 (2012) 30 Section 20 IPA 31 Section 1 IPA 32 Regulation 6(1) 33 Section 21(2)
 Section 20 provides that an application for a patent shall shall contain;
a) A request;
The request shall state the name and prescribed data concerning, the applicant, the inventor and the agent,
if any, and the title of the invention and where the applicant is not the inventor the request shall be
accompanied by a statement justifying the applicant’s right to the patent 34.
The appointment of an agent shall be indicated by the designation of the agent in the request or by
furnishing a power of attorney signed by the applicant and, where subsection (2) applies, the agent shall be
designated in the request35.
b) A description of the invention;
The description shall36;
i. Disclose the invention and all practicable modes, including specification of the best mode, of carrying out
the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of
the application, in full, clear, concise and exact terms as to enable a person who has ordinary skills in the
art to make use of and to evaluate the claimed invention; and
ii. Include any drawings and relevant deposits as in the case of micro-organisms and self- replicable material
which are essential for the understanding of the invention.
iii. contain a clear identification of the origin of genetic or biological resources collected in the territory of
Uganda and that were directly or indirectly used in the making of the claimed invention as well as of any
element of traditional knowledge associated or not with those resources and that was directly or indirectly
used in the making of the claimed invention without the prior informed consent of its individual or
collective creators37.
Regulation 6(3) further provides that the description shall;
i. specify the technical field to which the invention relates;
ii. indicate the background art which, as far as it is known to the applicant, can be regarded as useful for
the understanding, searching and examination of the invention and cite the documents reflecting such art
iii. indicate how the invention is industrially applicable.
34
Section 20(3) ,35 Section 20(4) ,36 Section 20(5) ,37 20(8)

The registrar may, before granting the patent, require the description in a foreign patent application to be
adapted to the ordinary skill in the art of the citizens of Uganda so as to ensure technology
dissemination38.
One or more claims;
The scope of the protection afforded to a patent shall be determined by the terms of the claims but where
they are inadequate, the description and drawings included in the patent may be used to interpret the
claims39. The general rule is that an application shall not include more than one claim. However an
application may include two or more independent claims if each independent claim relates to a single
product or a single process. And where more than one claim is included in the application, the claims shall
be numbered consecutively.
● Where an application contains more than ten claims, the applicant shall pay for each claim beyond the ten
as if it is contained in a separate application
● The claim shall set out the technical features that are necessary to define the subject matter of the
invention that are part of the prior art.
● A technical feature set out in a claim shall not rely on a reference to the description or drawings but a
reference to a feature may be included if the intelligibility of the claim may be increased by doing so.
● A claim shall not include a drawing but may include chemical or mathematical formulae.

An application may include a claim stating the essential technical features of an invention with one or
more following claims setting out particular embodiments of the invention.
(a) the claims setting out particular embodiments of the invention shall include a reference to the claim
stating the essential technical features of the invention;
 (b) the claims setting out particular embodiments of the invention shall state the features that it is desired
that those claims protect; and
38
20(10) 39 Section 41 Industrial property Act

(c) the claims shall be grouped together to the extent possible and in the most appropriate way.

One or more drawings, where necessary;

The drawings shall comply with the following40—

(a) the lines of the drawings shall be black, durable, uniformly thick and well-defined;

(b) the drawings, including their scale and the distinctness of their lines, shall be such that all details can
be distinguished without difficulty when the drawings are reproduced photographically at two thirds their
actual size;
(c) where the scale is given on a drawing, it shall be given graphically;

(d) cross sections shall be indicated by hatching that does not impede the clear reading of the reference
signs and reading lines;
(e) where the drawings show a feature mentioned in the description, that feature shall be denoted in the
drawings by a reference sign and that reference sign shall be used throughout the application to denote that
feature.

An abstract
The abstract shall only serve the purpose of providing technical information; and it shall not be taken into
account when interpreting the scope of the protection sought41.

3. Payment of a prescribed fees and attach proof of payment

Section 26(1) provides that the patent application shall be subject to payment of the prescribed fees.
Further, Regulation 6(2) of the regulations provides that every application shall be accompanied by the
prescribed fee.
The fees payable are provided for under the Industrial property (fees) regulations of 2017.

40
Regulation 8 41 Section 20 (11, & 12)
However, the registrar may waive the whole or part of the fees in such manner and under such
circumstances as may be prescribed42.
The procedure for waiving of application fees is provided for under regulation 17 to include;

a) Apply to the registrar to waive fees payable using Form 8.

b) The registrar shall communicate the decision to the applicant within fifteen days.

c) The payment of any fees for which a waiver is sought shall be deferred pending the decision by the
registrar and any deferred fees that have not been waived by the registrar shall be paid within sixty days
after the date of that communication.
4. URSB receives the documents and accords the application a filing date and a patent
application no.
5. Formal examination

● Where the registrar finds that the application does not, at the time of receipt, fulfill the requirements he or
 she shall invite the applicant to file the required correction and shall accord as the filing date the date of
receipt of the required correction, but if no correction is made, the application shall be treated as if it had
not been filed43.And shall be entitled to only one correction of the application unless the registrar directs
otherwise44.
● Where the application refers to drawings which are not included in the application, the registrar shall
invite the applicant to furnish the missing drawings
● The applicant will be given 60 days to furnish the missing drawings or correct the application45.

42
Section 26(2) ,43 Section 27(2), 44 19(4) ,45 Re9 19 (2)

● Where the registrar determines that the applicant has not complied with an invitation and, treats the
application as if it had not been filed under section the registrar shall, within fourteen days after his
determination, inform the applicant of the registrar’s decision 46.
6. An application found to be in order shall be subjected to substantive examination to determine if
the claimed invention fulfill all requirements for Patentability47.
● The registrar may, by notice in the Gazette direct that an application for a patent which relates to a
specified field or specified technical fields shall be subject to an examination as to substance or amend any
direction issued.
● Where an application for a patent satisfies the requirements and the subject matter of the application does
not fall within a technical field the registrar shall notify the applicant and the applicant shall, within three
years from the filing date of the application, submit a request in the prescribed form for the examination of
the application
● Where no request is made within the prescribed period, the application shall be taken to be abandoned.
● Where a request is filed, the registrar shall cause an examination of the application to be made as to
whether the invention in respect of which the application is made is patentable and the application
complies with the requirements of the registrar may submit the application together with the relevant
documents to an examiner or other competent authority for examination as to the Patentability of the
claimed invention and the examiner or other competent authority shall submit a report of the findings of
the examinations to the registrar and the registrar shall submit a copy of it to the applicant.
7. The applicant is notified on grant or refusal of the patent
● A patent shall be granted and issued to the applicant in the prescribed form.

● The registrar shall, whenever possible, reach a decision on the application not later than two years from
the commencement of the examination

46
Reg 19(3), 47 Section 31 IPA

● The registrar shall, upon the request of the owner of the patent, make any change in the text of drawings of
the patent in order to limit the extent of the protection conferred by it, where the
● change would not result in the disclosure contained in the patent going beyond the disclosure contained in
the initial application on the basis of which the patent was granted
● The notification by the registrar of a grant of a patent shall be made within fifteen days after the decision
is made in Form 11 in the schedule to the regulations.48
8. Upon notification of the grant of the patent, the applicant is then required to pay grant fee and
there after the registrar shall issue a certificate of grant49.
9. The patent granted shall be registered and published by the registrar in the gazette
A patent granted under shall be registered, and shall, as soon as reasonably practicable, be published
by the registrar in the Gazette.50 Regulation 28 provides that within thirty days after issuing the patent, the
registrar shall publish the following particulars in respect of the patent
(b) the name and address of the owner of the patent; (c)the name and address of the inventor unless he or she
 has indicated that he wishes not to be named in the application under section 20 of the Act;
(c) the name and address of the agent, if any; (d)the filing date of the application; (e)if priority was claimed
and accepted, a statement of the priority, the priority date and the name of the state in which or for which
the earlier application was filed;
48
Reg. 26(1) & (2), 49 Reg 27 (1) &(2) 50 Section 32(2)
Challenging the grant
where the patent is granted, any interested party may petition the registrar to reconsider the grant of the
patent in the ground that the patent fails any requirement51 and may with in 12 months from the date
of the publication of the grant request court to revoke or invalidate the patent 52
Withdrawal of the application.
The applicant may, at any time before the grant of the patent, withdraw the application53. A
withdrawal of an application be in Form 9 of the regulations54.
Where there is more than one applicant, the application may only be withdrawn with the consent of all the
applicants55.
Where the application has been withdrawn without having being opened to public inspection, and;
(a) no priority rights have been claimed by virtue of that application; and
(b) no rights are outstanding in Uganda in connection with the application,
a subsequent application may be filed in Uganda in respect of the same invention 56 and the subsequent
application shall be regarded as the first application in Uganda in respect of that invention57.
Priority rights shall not be claimed on the withdrawn application after the lodging of the subsequent
application58.
51
Section 32(5), 52 Section 89 IPA ,53 20(13), 54 Reg 18(1), 55 Reg 1892), 56 20(14), 57 20(15), 58 20(16)

Unity of inventions
(1) The application shall relate to one invention only or to a group of inventions so linked as to form a
single general inventive concept.
(2) The regulations shall contain rules concerning compliance with the requirements of unity of invention
(3) The fact that a patent has been granted on an application that did not comply with the requirements of
unity of invention shall not be a ground for the invalidation or revocation of the patent.
Amendment of a patent.
The applicant may amend the application, but the amendment shall not go beyond the substance of the
disclosure made by the applicant in the initial application 59.
Division of a patent.
The applicant may divide the initial application into one or more applications, in this Act referred to in
this Act as "divisional applications" but each divisional application shall not go beyond the disclosure
made in the initial application. Each divisional application is entitled to a filing date and where
appropriate, the priority date of the initial application 60.

DURATION FOR PATENT PROTECTION

Patent protection is limited in time. Its duration varies depending on the applicable national legislation
The TRIPs Agreement61 provides that the term of protection available for a patent shall not end before the
expiration of a period of 20 years counted from the filing date. This was incorporated into the patent laws
of Uganda (the Industrial property Act) under Section 45.
In all events, when the patent term expires, generic competitors may enter the market62. Once the patent
expires, its protection ends and the invention in question is said to have entered public domain meaning
that the owner no longer holds exclusive rights to the invention and it
becomes available to commercial exploitation by others

59
22(1), 60 22(2) & (3), 61 Article 33, 62 Abott
UTILITY MODEL
It should be noted that any patent application that has failed as a result of the test of an inventive step can
be termed as a petty patent known as a Utility model
A utility model is an exclusive right granted for an invention, which allows its owner to prevent others
from commercially using the protected invention, without their authorization, for a limited period of
time63.
Section 6864 provides that an invention qualifies for a utility model certificate if it is new and industrially
applicable.
The term of protection of a utility model is limited in time per section 68(3)65 which provides that the
term of protection of a utility model as 10 years after the date of a utility model and it is not renewable.
What are the main differences between utility models and patents?

The requirements for acquiring a utility model are less stringent than those of patents. While the
requirement of novelty is always to be met, that of inventive step or non-obviousness is much lower.
Therefore, protection for utility models is often sought for inventions with a limited inventive step, which
may not meet the Patentability criteria.
The term of protection for utility models is shorter than for patents and varies from country to country, in
Uganda, the term is 10 years without the possibility of extension or renewal).
The fees for obtaining and maintaining utility models are generally lower.

Conversion of a patent application into a utility model

At any time before the grant or refusal of a patent, an application for a patent may, upon payment of the
prescribed fees covert his or her application into an application for a utility model Certification. A new
certificate shall be accorded the filing date of the initial application. However, an application may not be
converted more than twice.

PLANT VARIETY PROTECTION

63
European IP guide
64
Industrial Property Act
65
Ibid

We are leaving in the 21st century that requires more dedication, efforts, innovation and creation than ever
before. More mouths need to be fed from less available agricultural land. Breeding companies develop
varieties that can grow under challenging circumstances such as very dry or very wet conditions with
restriction to diseases in order to use fewer pesticides and meet the great demand.
This however requires carrying out intensive research and investment. To get a return on these
investments, the plant breeders’ right system was developed granting plant breeder exclusive rights to
produce, market, license the protected variety with limited rights to farmers to use and exchange.
What is a plant variety protection
The United Nations Convention on Biological Diversity, 1992 provides for the setting up of protection
regimes for plant varieties and recognition of the dependence of local communities on biological resources
and the roles that these communities play in the conservation and sustainable use of the resources
The obligation to provide protection to plant variety arises from the TRIPs Agreement. Article 27 which
provides that members may exclude from Patentability plants and animals other than microorganisms and
essentially biological process for the production of plants or animals. However, members shall provide for
the protection of plant varieties either by patent or by an effective sui generis system or by any
combination thereof.
This gives a lee way to member organizations to either protect plant variety by patent or by Sui- generis.
 Uganda adopted the Sui-generis system and plant variety protection is governed by the plant variety
protection Act Cap… and the plant variety regulations of 2016.
Section 12(a)66 provides that plant varieties as provided for in the law providing for the protection of
plant varieties are not patentable in Uganda. Further, Section 7(3)(e)67 excludes the plants and animals
other than micro-organisms, and essentially biological processes for the production of plants or animals
other than non-biological and micro-biological processes from being inventions.

66
Industrial property Act
67
ibid

The Plant variety Protection Act provides for the protection of development of new plant varieties and
their protection as a means of enhancing breeders innovation and rewards through growing of plant
breeders rights and for other related matters
Plant variety means a plant grouping within a single botanical taxon of the lowest known rank, which
grouping, irrespective of whether the conditions for the grant of a breeders’ right are fully met, can be;
(a) defined by the expression of the characteristics resulting from a given genotype or combination of
genotype;
(b) distinguished from any other plant grouping by the expression of at least one of the said

characteristics; and considered as a unit with regard to its similarity for being propagated
unchanged.
Requirements for plant variety protection New varieties
(1) A variety shall be taken to be new if, at the time of filing of the application for a breeders’ right,
propagating, or harvested material of the variety has not been sold or disposed of to others by or with the
consent of the breeder, for purposes of commercial exploitation of the variety
(a) in Uganda earlier than one year before the filing date; and

(b) in any country other than Uganda in which the application has been filed earlier than four years,
(c) in the case of trees or vines, earlier than six years before that date.

(2) A variety existing at the commencement of this Act and created within the previous four years shall
be taken to satisfy the condition of novelty defined in subsection (1) even where the sale or disposal to
others described in that subsection took place earlier than the time limits defined in that subsection.
Stable variety

A variety shall be taken to be stable if its relevant characteristics remain unchanged after repeated
propagation or, in the case of a particular cycle of propagation, at the end of each cycle.
Uniform variety

A variety shall be taken to be uniform if it has characteristics that are consistent from plant to plant
Distinct variety

(1) A variety shall be taken to be distinct if it is clearly distinguishable from any other variety whose
existence is a matter of common knowledge at the time of filing of the application.
(2) The filing of an application for granting of a breeders’ right or for entering of another variety in an
official register of varieties, in any country, shall be taken to render that other variety a matter of common
knowledge from the date of the application, if the application leads to the granting of a breeder’s right or
to the entering of the other variety in the official register of varieties
Registration of a plant variety Section 22 Filing of applications
 (1) The registrar shall receive an application filled in respect of plant breeders’ rights on being satisfied
that—
(a) the application is in the prescribed form;

(b) the prescribed application fees have been paid; and

(c) the national variety testing and evaluating requirements prescribed in the regulations made under this
Act have been complied with.
(2) Where the Registrar receives an application, the Registrar shall, within six months, present the
application to the Plant Variety Protection Committee.
(3) The application is examined to ensure compliance with requirements that is novelty, distinctiveness,
uniformity and stability. The committee shall meet to take a decision on the application within six months.

(4) The Registrar shall inform the applicant of the decision of the committee, stating the grounds, in case
of rejection. If the plant variety meets all requirements, it is registered, and rights are granted to the
breeder or applicant.
Duration for plant variety protection
Section 19 provide that plant breeders’ rights in respect of a plant variety shall subsist for;

(a) a period of twenty years in the case of annual crops; or

(b) a period of twenty-five years for trees, vines and other perennials commencing on the day of filing of
the application.
Difference between a plant variety protection and a patents
considering the discussions above, Patent protection and Plant variety protection can be
distinguished as provided in the table below.
(Table 1)

No. difference Plant variety Patent

1. Law applicable Plant variety protection Industrial Protect

Act Cap Act Cap 224

2. Subject matter of Plant variety (based on the Technical inventions

protection expression of the
characteristics as seen
form the genotype

3. Requirements for Distinctiveness Uniformity Novelty Inventive Step

protection Stability Novelty Industrial application
4. Duration 20 years for annual crops 20 years
25 years for trees & vines

5. Bodies responsible for Plant variety protection Registrar of patents

registration committee under the (URSB)
 ministry of agriculture,
animal industry and
fisheries.

6. Scope of protection Plant varieties

Derivatives of plant
varieties
Exports of seeds of plant
varieties

7. Exceptions to protection Patents not granted in

respect to plant
varieties.

TRADE SECRETS PROTECTION

At international level, protection of trade secrets is provided for by the World Trade Organisation (Article
39 of the TRIPS) agreement which requires protection of undisclosed information under the Paris
Convention, 1967 including:
- secret information
- information with commercial value because it is secret
- information subjected to reasonable steps by person lawfully in control of it to keep it secret Trade
secrets in Uganda are protected under the Trade Secrets Protection Act and defined68 to mean
information including but not limited to a formulae, pattern, compilation, program, method,
technique or process or information contained or embodied in a product, device or mechanism
which;
a) is or may be used in a trade or business,
b) is not generally known in that trade or business.
c) Has economic value form not been generally known
d) is the subject of efforts that are reasonable under the circumstances to maintain ts secrecy.

68
Section 2 of the Trade Secrets Act.

The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to honest
commercial practices by others is regarded as unfair practice, and a violation of the trade secret
protection69.
Trade secrets do not confer “proprietary rights”, meaning that the holder of a trade secret does not have
exclusive rights over the information.
However, if the information is leaked by someone under the obligation to keep it confidential, such a
disclosure would constitute a breach of contract allowing remedies for the trade secret holder.
In the case of Translink Ltd v. Cotex Industries Tanzania Ltd., & 2 Ors Civil suit no. 0100 0f 2019
court held that the equitable doctrine of confidentiality implies that where information that is secret or
confidential in nature is given by one person to another, and the recipient is either expressly told by the
discloser, or ought to understand from the circumstances surrounding the communication that the discloser
 wishes the
recipient to keep the information confidential, then equity acts on the conscience of the recipient to
prevent them from making unauthorized use or disclosure of information.
Section 370 provides that a person has the right to prevent information lawfully within his or her control
from being disclosed to or acquired or used by others without his or her consent in a manner contrary to
honest commercial practice.
Trade secrets is some situations may be better options for protecting an invention. For instance, coca cola
elected to protect its coca cola formulae via trade secret rather than patent.
What is a non-disclosure agreement?

A non-disclosure agreement (NDA), also called a confidentiality agreement, is a legally binding contract
in which one party (the disclosing
party) agrees to give a second party (the receiving party) confidential information and the latter agrees
not to disclose this information under the conditions set by the contract. Depending on the number of
parties disclosing information, non

69
Article 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS
Agreement”)
70
Trade Secrets Protection Act

disclosure agreements may be “one-way” (also known as unilateral) with one party disclosing information
and one-party receiving information, or “two-way” (also known as bilateral or mutual) when each party
discloses confidential information to the other. Sometimes NDAs can be multilateral agreements, with
more than two parties involved.

Trade secret protection.

Trade secrets do not require administrative or procedural formalities in order to be protected. There are,
however, some conditions for the information to be considered and, hence, be protected as a trade secret.
Section 471 provides that the information protected under the Act must;
a) Be a secret in the sense that it is not as a body or in the precise configuration and assembly of its
components generally known among or readily accessible to persons with in the circles that normally deal
with the kind of information in question.
In Persy Lubega V MTN CS 165 of 2011, Mrs. Persy allege inter-alias that MTN had used her business
concept to develop mobile money and without compensating her. The High court in dismissing her claim
opined that the concept of mobile banking was not a new chapter as it had been tried in other parts of the
world and was thus not a trade secret.
b) Have a commercial value because it is secret
c) Have been subject to reasonable steps under the circumstances by a person lawfully in control of the
information to keep it secret.

Translink Ltd. v. Industries Ltd, Tanzania (CCIL) & 2 Ors72. Translink Limited, the plaintiff, has sued
three defendants for allegedly breaching a distribution agreement and infringing on its proprietary data
and trade secrets related to the White dent oral care products brand. Court found that the Plaintiff’s
evidence in regard to the confidential information, which they compiled over time, generally unknown,
and not readily accessible to persons within the circles that normally deal with the kind of information in
question, such as the defendants, was un controverted. Accordingly, Court found out that the defendants
obtained "trade secrets" from the Plaintiff

71
Ibid
72
Translink Ltd versus & Cotex Industries Ltd, Tanzania (CCIL) & 2 Ors Civil suit no. 0100 0f 2019
leading up to, and prior to the termination of the distributorship arrangement, and infringed on the
Plaintiff’s trade secrets, and or proprietary data.
Duration of protection

A trade secret can be protected for an unlimited period of time as far as the conditions for the information
to be considered as a trade secret are fulfilled.
Trade secrets are generally peculiar in nature and are not categorized as traditional IP rights since they are
usually a combination of business models and methods, however holders of trade secrets under the 2009
Act (Now Cap) enjoy similar rights to IP in cases of transfer and enforcement.
Difference between a trade secret and a patent.
(Table 2)

No. Difference Trade secret Patent

1. Disclosure requirement The invention must be kept as The invention must be
a secret disclosed to the public.

2. Protection Protected through non- Requires registration

disclosure agreement

3. Duration Lasts as long as secret is 20 years

maintained

4. Enforcement Infringement claims are brought

under state tort law or contract
law for NDA
breaches.

CONCLUSION
In conclusion, the patent law system in Uganda has undergone significant transformations, aligning with
international standards and regional frameworks. Despite progress, Uganda's patent law faces challenges,
including the limited awareness and utilization of patent protection among local innovators, capacity
constraints within the URSB and balancing patent rights with public interests, particularly in the
pharmaceutical sector and the difficulties of the requirements of patentability in Uganda’s socio-economic
situation73
While challenges persist, the country has made notable progress in recognizing the importance of patent
protection for innovation and economic growth. As Uganda continues to evolve its patent law framework,
it is essential to consider the implications of emerging technologies, particularly Artificial Intelligence
(AI), on the Intellectual Property (IP) system. Uganda's patent law system stands at a crossroads, poised to
embrace the opportunities and challenges presented by AI. By addressing these implications and adopting
a forward-thinking approach, Uganda can harness the potential of AI to drive innovation, economic
growth, and sustainable development.