INTELLECTUAL

PROPERTY
By
Bamuhiga Patric
bampatric22@gmailcom
0772983659
• Objectives
• The Unit is intended to enable students understand:
• The laws relating to- patents, Trade Marks, Copyright, neighboring rights, packaging, trade
secrets
• registration of intellectual property rights locally and globally;
• Legislation
• Industrial Property Act
• Trademarks Act, Trademarks Rules
• ARIPO Protocol
• Copyright and Neighboring rights Act, Copyright and Neighboring Rights Regulations
• Trade Secrets Protection Act
• Geographical Indications Act
• Introduction
• Intellectual property is the intangible product of the mind, human intellectual ideas and the
way they are represented.
• Some examples of intellectual property include:
• inventions
• Publications and scholarly works
• Computer programs
• Works of art
• Music
• Trademarks and trade secrets
• In the world today, intellectual property is an asset which requires capital, technical and
intellectual input hence the need to protect it.
• Protection of Intellectual property promotes creativity, research and development and
technological advancement.
PATENTS.
• The relevant legislation is: the Industrial Property Act and Regulations
and the ARIPO Protocol.
• A patent is a right granted to an inventor to enjoy exclusive rights to
exploit his or her invention for a given period of time- S.2 of the
Industrial Property Act. The right granted, prohibits any other person
from making or selling the invention without the permission of the
patent owner.
• A patent is granted to the true and first inventor of a patentable
invention or to an assignee of the inventor.
• An invention is defined in S. 8 of the Act as a solution to a specific
technological problem and may relate to a product or process.
• For a patent to be granted, S.9 of the Act provides that the invention must be novel
(new), must have industrial application and involve an inventive step (not obvious to
a person skilled in the field of the invention).
• Novelty (S.10 of Act)
• The invention must not be anticipated by prior art.
• Anything made available to the public anywhere in the world by means of written
disclosure (drawings or illustration) or oral disclosure, use, exhibition and other non
written means if such disclosure is made available before the date of filing of the
application for a patent shall be considered prior art. In Marrell Dow Pharmaceuticals
Inc v. HN Norton & Co Ltd [1995] RPC 233, court held that patents exist today to
reward and encourage invention. They are not intended to make it possible to take
out of public use processes or products already available to the public.
• Exceptions (where prior disclosure may be disregarded)
• If it occurs within twelve months before the date of the filing of the
application, through an act of the applicant or his or her predecessor in
title.
• If it occurs within twelve months before the date of the filing of the
application, through an abuse committed to the applicant or his or her
predecessor in title.
• In Pall Corp V Commercial Hydraulics (Bedford) Ltd [1990] FSR 329, a
display of samples of the claimed product (hydrophilic microphorous
membranes) was made to potential customers for testing and
comparison with other membranes. The nature and construction of
the membrane was not disclosed and could not be determined from
visual inspection. Court held that the display did not to amount to a
disclosure before the date of application for the patent, because the
delivery of the samples was made in confidence to persons who knew
they were experimental and secret. This did not make the invention
available to the public and therefore did not prejudice the novelty of
the invention.
 • An old invention may be patentable if the claim is directed to a new use. Where the claims are
sufficiently different, the new use will not be considered part of the old invention.
• Inventive step (S.11 of Act)
• The invention should not be obvious to a person skilled in the field of the
invention at the date of filing of the application.
• Court has held that to determine whether the invention involves an inventive
step, what needs to be determined is whether the invention is obvious to
someone skilled in the art- with wide knowledge of the technology within
which the invention lies or to the notional worker- someone without inventive
ability but has knowledge common to the particular art. Whether an invention
is not obvious is a question of fact (British Acoustics Films Ltd V. Nettle field
Productions Ltd [1936] 53 RPC 221).
• NB: The person must be skilled in the technology where the invention
lies. In Richardson Vicks Patent (1997) RPC 888 a person skilled in the
art of obtaining regulatory approval for new drugs was not a person
skilled in the art of producing new combination drugs.
• Industrial application (S.11 of Act)
• The invention should according to its nature, be technologically made
or used in any kind of industry- the patent should be something that
can be made industrially or relate to an industrial process.
• The patent should however not fall within the exclusions for
patentability under S. 8 of the Act.
• obligations of a patent holder (S. 39 of the Act):
• Duty to disclose the invention
• work the patentable invention within the country in the prescribed
time limit
• To pay the prescribed fees
• Rights of a patent owner (S. 38 of the Act)
• Exclusive right to make, use, vend and exercise the invention and
• to exclusively preclude any person from exploiting the patent without
permission of the patent owner.
• Enforcement of a patent (S. 40 of the Act)
• Where a third party infringes on the patent, a patent holder can
institute proceedings to challenge the infringement. The jurisdiction
lies with the High Court. The Court can grant the following reliefs:
• Damages
• Injunction
• Any other civil remedies
Difference between a patent and utility model
• A utility model is an intellectual property protection that is similar to a patent, but
with less stringent requirements for its grant.
• The Registrar can grant a utility certificate for a utility model, in accordance with S.
69 of the Act. The application procedure is the same as that for patents.
• A utility certificate can be granted for an invention if it is new and industrially
applicable (S. 68 of the Act). There is no requirement for the invention to have an
inventive step.
• S. 70 of the Act allows an applicant for a patent to convert the application to a
utility certificate and vice versa, at any time before the grant.
• The duration of a utility certificate is 10 years (S. 69 of Act) while the term for a
patent is 20 years (S. 46 of the Act)
Registration of a patent in Uganda (S. 21 of the Act)
• An application can relate to one invention or a group of inventions linked to form one single
general inventive concept. The registration of a patent takes the following steps:
• An application for a patent is made by the patent holder. The application should
describe/disclose the invention in order to enable a person skilled in the art to evaluate the
patent.
• Payment of prescribed fees for the application is done.
• Upon being satisfied, the Registrar will register the patent in the register of patents.
• The patent shall be published by the Registrar in the gazette.
• The patent holder will pay the prescribed annual maintenance fees to maintain the patent (S.
26 of the Act)
• In case a patent holder wants to renew the patent, he or she will make an application for
renewal and pay the prescribed fees.
Registration of foreign patents
• ARIPO registered patents:
• African Regional Industrial Property Organization (ARIPO) grants patents in
accordance with the ARIPO Protocol (which Uganda recognizes).
• Where a patent is granted by ARIPO, it shall have the same effect and enjoy
the same protection as a patent granted in Uganda except where the Registrar
writes to the ARIPO office that the patent shall have no effect in Uganda e.g.
where it falls within the exclusions for patentability under S. 8 of the Act.
• One can therefore apply to the ARIPO office in Harare or the Industrial
Property Office of a contracting state, for their patent to be registered by
ARIPO (see http://www.aripo.org for the detailed registration process)
Registration of a foreign patent that has not been granted by
ARIPO
• In case of an application for registration of a patent not granted by
ARIPO, the applicant for registration uses the procedure set out in the
Act to register the patent in Uganda.
• Where the applicant has made a foreign application or received a
foreign grant, the Registrar may call for such information relating to
the foreign application or grant in order to assist in the evaluation of
novelty and inventive step in respect to the application made in
Uganda.
TRADEMARKS .
• The relevant law is the Trademarks Act 2010 and the Trademarks Rules.
• A trademark is defined in S. 1 of the Act as a sign or mark or a combination
of signs or marks capable of being represented graphically and capable of
distinguishing goods or services of one undertaking from those of another
undertaking.
• A sign or mark is further defined as any word, symbol, slogan, logo, sound,
smell, colour, brand, label, name, signature, letter, numeral or any
combination of them.
• Trademarks are used in marketing of goods/services, to enable commercial
identity of one’s goods and safeguard against confusing one’s
goods/services with those of another person.
• A trademark shall be registered in respect of a particular class of goods or services,
determined by the Registrar. In practice, the Registrar uses the WIPO (World Intellectual
Property Organisation) classification of goods or services.
• Registration of a Trademark
• A trademark is registered either under Part A of the Register (the trademark is distinctive –
contains the company, individual or firm name represented in a special or particular manner,
the signature of the applicant, an invented word, words having no particular reference to
the character of the goods or services or any other distinctive mark) or under Part B of the
Register (capable of distinguishing goods with which the owner of the trademark is
connected in the course of trade from goods where no connection exists). A mark can also
be registered in both Part A and B of the Register. (Read S. 9 and 10 of Act)
• An application for registration of a trademark is made to the Registrar in the prescribed form
• The relevant fees are paid by the applicant
• Upon receipt of the application, the Registrar causes the
application to be published in the gazette for 60 days in order
to allow any person with an objection to lodge it with the
Registrar.
• If no objection is made, the Registrar will grant a certificate
of registration of the trade mark (S. 16 of the Act).
• Certification marks (S. 2 of the Geographical Indications Act)
• A certification mark is one adapted in relation to goods, to distinguish
in the course of trade, goods certified by a person in respect of origin,
material, mode of manufacture, quality, accuracy or other
characteristic from goods not certified.
• Read provisions of the Geographical Indications Act to understand the
difference between trademarks and certification marks.
• Restriction on registration S. 23 and 25 of the Act)
• The Register shall not register the following marks:
• A mark that are likely to deceive, would be contrary to the law, morality or of a
scandalous design
• A mark containing a word commonly used as a chemical compound or element
• A sign which consists exclusively of the shape resulting from the nature of the
goods themselves, a shape necessary to obtain a technical result of a shape
that gives substantial value to goods.
• Where a trademark is identical or resembling another trademark in respect of
the same goods, same description of goods or services or a description of
services which are associated with those goods or goods of that description.
Effect of registration of trademark (S. 34 of the Act)
• In case a trademark is not registered, a person cannot institute
proceedings to prevent or recover damages for infringement.
• Registration of a trademark in respect of goods or services gives the
owner of the trademark the exclusive right to use the trademark in
relation to the goods or services (S. 36 (1), 37 (1), S. 38 (1) and 39 (1)
of the Act).
Passing off.
• Passing off of goods or services by one person, as the goods and
services of another person. i.e. the person not being the owner of the
trademark uses a mark identical with the trademark so as to be likely
to deceive or cause confusion in the course of trade in relation to any
goods of the same description. In the case of East African Tobacco
Ltd V. The Colonial Tobacco Co. Ltd (1939) EACA 6, court stated that if
a manufacturer sells goods in a get up which so nearly resembles that
of another person so as to enable his goods to be sold as the goods of
another person, the manufacturer puts an instrument of fraud into
the shop keeper’s hands and the law will not allow it.
Remedies for breach (Part VIII and S. 79 of the Act)
• Criminal action can be pursued in respect of the offences created under
Part VIII of the Trademarks Act
• Civil action: A person whose rights have been infringed can commence
civil action in court to obtain remedies –injunction, damages or any
other remedy that Court may deem fit to grant.
Duration for registration of trademarks
• The initial registration of a trademark is valid for seven years and an
owner can subsequently apply to renew the registration for periods of
ten years.
COPYRIGHTS AND
NEIGHBOURING RIGHTS.
• The relevant law is the Copyright and Neighboring Rights Act 2010
and the Copyright and Neighboring Rights Regulations.
• Copyright: A copyright is protection granted to an author of works
that are original and reduced to material form by whatever methods.
The quality of works or purpose of the works is immaterial to the right
of protection (S. 4 of the Copyright and Neighboring Rights Act).
• An author is defined in S. 2 of the Act as a physical person making
work or a person or authority commissioning work or employing a
person making work in the course of employment.
• Neighboring rights: S.2 of the Act defines neighboring rights as rights
of performing artistes in their performances, producers, music
publishers and broadcasting companies in their programs.
• Works eligible for copyright (S. 5 of the Act)
• Articles, books, pamphlets, lectures, addresses, sermons
• Dramatic, dramatic-musical and musical works
• Audio-visual works and sound recordings including
• cinematographic works
• Choreographic works and pantomimes
• Computer programs and electronic data banks
• Drawings, paintings, photography, typography, mosaic, architecture,
sculpture, engraving, lithography and tapestry
• Works of applied art, handicraft or produced by industrial scale and
works of all types of designing
• Illustrations, maps, sketches and three dimension works relative to
geography, topography, architecture or science
• Derivative work which by selection and arrangement constitutes
original work e.g. translations, adaptations of pre-existing works
Registration of Copyrights and neighboring rights
• Registration of these rights is not compulsory. A copyright or neighboring right
automatically vests in an author of works at the moment the works are
created, without registration.
• S. 43 of the Act however provides that an owner of a copyright or neighboring
right may register the right for the purpose of keeping evidence of ownership
of the right, identification of works and authors or maintaining a record of the
right.
• An assignee, licensee or transferee or a right may also register the right for
purposes of keeping evidence of the assignment, license or transfer,
maintaining a record of the right and publication of the assignment, license or
transfer.
Procedure for registration
• In order for the works to be registered, the works should be reduced to
material form.
• A copy of the works or contract of assignment, license or transfer
sought to be registered shall be deposited with the Registrar. S. 35 of
the Act requires a contract for exploitation of an author’s right to be in
writing and signed by the parties.
• Payment of the prescribed fees shall be done.
• Upon completion of registration, the Registrar shall issue a certificate of
registration.
Remedies for infringement of copyright and neighboring
rights
• In case of infringement, an aggrieved person can file a suit in the
Commercial Court for the following reliefs- injunction to stop
infringement and/or damages (S. 45 of the Act).
• A person may also commence criminal action for infringement of a
neighboring right in accordance with S. 48 of the Act.
TRADE SECRETS
• The relevant law is the Trade Secrets Protection Act.
• S. 2 of the Act defines a trade secret as information such as a formula,
pattern, compilation, program, method, technique or process or
information contained or embodied in a product, device or mechanism
which is:
• used in a trade or business
• not generally known in that trade or business
• has economic value from not being known
• Is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy.
• S. 3 of the Act provides for the right of a person to prevent disclosure of information
lawfully within his or her control from being disclosed, or acquired or used by others
without his or her consent in a manner contrary to honest commercial practice.
• Acts contrary to honest commercial practice include (Read S. 6 of the Act):
• Discovery of a person’s undisclosed information using physical force or unauthorised entry,
fraudulent misrepresentation, eves dropping, electronic listening, in breach of contract or
confidence, disclosure of undisclosed information obtained unlawfully among others.
• Acts not contrary to commercial practice include (Read S.7 of the Act)
• Obtaining information from a publicly available source e.g. library, government record,
product available on the market, obtaining information by inspection or analysis of a
commercially available product embodying undisclosed information, independent
invention or discovery, obtaining information by gift, purchase or inheritance from owner
among others.
• Conditions for protection (S. 4 of the Act)
• Information must be a secret i.e. not generally known or readily accessible
to persons that normally deal with the kind of information in question.
• Must have commercial value because it is secret.
• Must have been subject to reasonable steps under the circumstances by a
person lawfully in control of the information to keep it secret.
• A person entitled to the benefit of a trade secret may assign, transfer or
license the right to the trade secret wholly or partially (S. 9 of Act). The
rights of the assignee, transferee or licensee must be stated in a written
contract signed by the parties (S.10 of the Act).
Remedies for improper acquisition or use of a trade secret (S. 12 of the Act)
• Court may grant the following remedies:
• Injunction
• Damages
• Order an account of profits
• Make an adjustment order
• Order destruction or delivery of anything in which the trade secret was used
• NB. Proceedings for improper disclosure, acquisition or use of a trade secret
must be commenced within two years from the date of disclosure, acquisition or
use.