Member Article

The Industrial Property Bill that was passed on the 22nd August 2013 was accepted into Ugandan law on the 6th January 2014. This Bill brings about various changes in the law protecting inventions, creations and designs in Uganda, and is intended to support development in the private sector and promote private investment.

Uganda, being a member of the World Intellectual Property Organization (WIPO), a member of the African Regional Intellectual Property Organization (ARIPO); a signatory to the Paris Convention, the TRIPS agreement (Trade Related Aspects of Intellectual Property Rights), the Patent Co-Operation Treaty and a user of the Nice classification of goods and services, was obligated to expeditiously enact the Industrial Property Bill of 2009 into their law.

This Bill was drafted to attempt to bring about the following:

· The promotion of innovative and inventive activity within Uganda;

· The facilitation of the acquisition of technology through the regulation of intellectual property including patents, designs and utility models; and

· The establishment of the Registrar and definition of the powers and the functions of the Registrar, so as to ensure proper administration of patents;

· The increase of capacity and skills of examiners in the Ugandan Patent Office; and

· The establishment of a special institution for the development of Intellectual Property.

Some of the changes made include TRIPS agreement compliant provisions excluding pharmaceutical inventions from protection (section 8(3)(f)); patentability criteria relating to novelty assessment, patentability of new uses for known products and processes (Section 38), a replacement of the requirement of a best mode of carrying out an invention with the less stringent requirement that at least one mode is provided, the introduction of a “Bolar-type” in Section 44 that provides that it is not an act of infringement to carry out any acts including testing, using, making or selling a patented invention solely for the purposes reasonably related to the development and submission of information required under any law of Uganda or of another country which regulates the manufacture, construction, use or sale of any product and the removal of criminal sanctions against patent infringement.

Of specific importance is the exclusion of pharmaceutical products as inventions and their prohibition from patent protection until 1st January 2016. Pharmaceutical test data has also been excluded from patent protection until this date. However, this exclusion does not relate to local herbs / medicines which are differentiated from imported pharmaceuticals and protected under Traditional Knowledge and Expressions of Folklore in Uganda.  Of interest is that Section 28(13) and (14) of the IP Bill provides for an implementation of the “mailbox” provision under Article 70.8 of the TRIPS Agreement so that patent applications relating to pharmaceutical products can be filed prior to 1 January 2016, but will only be examined after 1 January 2016 as if such examination had taken place immediately after filing of the application.  The mailbox provisions are a cause for concern for generic suppliers in Uganda, as the products that they are able to market during the transition period may then be subject to patent protection once the transition period expires in 2016 and the patent is granted.

The burning question then is whether or not pharmaceutical product patents which have already been granted in Uganda may be enforced under the new law. At present it is unknown whether patents which have been granted or are currently pending (filed directly at the Ugandan patent office or as an ARIPO application) will be enforceable only after 1st January 2016 in Uganda, or not at all. This can only be fully ascertained once a written version of the Act and regulations has been released.