TerraLex Cross Border Patent Guide

The Industrial Property Act, 2014 - The Industrial Property Act, 2014, is the primary legislation governing patents and other aspects of industrial property in Uganda. It establishes a comprehensive legal framework for protecting intellectual property rights, covering patentability criteria, utility models, and enforcement mechanisms. Before the Act's enactment, patents were regulated under the Patents Act and the United Kingdom Designs Protection Act. The Act is administered by the Uganda Registration Services Bureau (URSB), which oversees patent registration and enforcement.

The Industrial Property Regulations - These regulations complement the Industrial Property Act by providing detailed procedural guidelines for its implementation. They address various aspects, including patent application processes, examination, registration, prescribed fees, obligations, infringement, and offences.

Judicial Precedents - As a common law country, Uganda relies on judicial precedents—legal principles or rules established in previous court decisions. These precedents are binding or persuasive in subsequent cases with similar facts or issues and form the foundation of the doctrine of stare decisis. This approach ensures consistency and predictability in interpreting and applying patent law.

Regional and International Treaties and Agreements Uganda is a signatory to several treaties and agreements that significantly influence its patent law. These include:

• The Lusaka Agreement: Establishing the African Regional Intellectual Property Organization (ARIPO).
• The Harare and Banjul Protocols: Administered by ARIPO, these protocols allow ARIPO to grant patents and register utility models and industrial designs on behalf of member states.
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): As a member of the World Trade Organization (WTO), Uganda aligns its patent laws with TRIPS requirements.
• The Common Market for Eastern and Southern Africa (COMESA): Facilitating regional cooperation on intellectual property matters.

Applicants can file patents internationally under the Patent Cooperation Treaty (PCT) or regionally through ARIPO by designating Uganda.

The Industrial Property Act, 2014: Inventions Made During Employment

The Act provides a framework for handling ownership and rights to inventions made during employment:

• Ownership: The employer or the person commissioning the work typically owns the invention unless it qualifies as being of "exceptional importance."

• Equitable Remuneration: If the invention is deemed exceptionally important, the employee is entitled to equitable remuneration, which considers their salary and the benefits the employer gains from the invention.

• Inventions using Employer’s Resources: Inventions created using the employer's resources, such as data, materials, or equipment, belong to the employer, even if inventiveness is not part of the employee’s defined role.

• Independent Inventions: Inventions made without using the employer's resources or data and outside the scope of employment belong solely to the employee or the person commissioning the invention.

This framework seeks to balance employer rights with incentives for employees to innovate.

An inventor (or successor in title) or an assignee of an invention can apply to register a patent; and it is protected under the Industrial Property Act, 2014 if it meets the following criteria:

1. Novelty: - the invention must be new and not in the public domain. Novelty ensures that the invention is not part of the prior art i.e, information made available to the public before the application date.
2. Inventive Step: - the invention must involve an inventive step that is not obvious to a person skilled in the relevant field of technology i.e. the invention must represent a technical advancement or have a significant improvement over existing products or processes.
3. Industrial Applicability: - the invention must be capable of being made or used in some kind of industry, which includes agriculture, commerce, services, or manufacturing. It must have practical utility and not be merely theoretical.
4. Patentable Subject Matter: - the invention must fall within a category of subject matter that is eligible for patent protection – i.e. products and processes or methods for manufacturing or doing something and New uses of a known product.

Once granted, a patent provides the inventor with exclusive rights for 20 years, subject to payment of annual maintenance fees. During this period, the patent holder can control the use, manufacturing, sale, and distribution of the invention.

Certain inventions or subject matters are explicitly excluded from patent protection under the Industrial Property Act, including:

• Discoveries, scientific theories, and mathematical methods.
• Schemes, rules, or methods for doing business, performing purely mental acts, or playing games.
• Diagnostic, therapeutic, and surgical methods for treating humans or animals (although products used in these methods may be patentable).
• Plants, animals, and essentially biological processes for their production, except for microbiological processes and their products.
• Inventions contrary to public order, morality, or public health.

Software-related inventions are subject to specific limitations under Uganda’s Industrial Property Act, 2014. While the Act does not expressly exclude software from patentability, it adopts international principles that affect how software-based inventions are treated. Uganda’s approach is influenced by international treaties such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the African Regional Intellectual Property Organization (ARIPO) protocols. Under the Harare Protocol, applicants can seek regional protection for software-related inventions that meet a tightly regulated technical criteria.

The implication therefore is that inventors of software-related technologies should always emphasize the technical aspects and industrial application of the software rather than the program itself. If software is not patentable, other intellectual property protections, such as copyright or trade secrets, can safeguard the software’s underlying code or algorithms.

The Act defines what an invention to mean a solution to a specific problem in the field of technology; and an invention may be, or may relate to, a product or a process. Expressly, AI is not provided for and the closest mention to AI under the Act is mathematical methods which are excluded from protectable subject matter.

A detailed examination of AI inventions can be conducted at the ARIPO to evaluate technical aspects, practical applications, and contributions to a specific field.

All applications are filed with the Uganda Intellectual Property Office which is a sub-office under the Uganda Registration Services Bureau. It is a 4-stage process that involves the application, filing, examination, and certification.

Step 1

• Submit a filled patent application form
• Attach a patent document having a title, abstract, description, claims and drawings. This should specify the technical field to which the invention relates; 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; and indicate how the invention is industrially applicable.
• Attach proof of payment.

Step 2 The application is filed with Uganda Registration Services Bureau and is allocated it a filing date and a patent application number.

Step 3 An application found to be in order is subjected to substantive examination to determine if the claimed invention fulfils all requirements for patentability.

Step 4 Applicant is notified on grant/refusal of a patent. The applicant is then requested to pay the grant fees and thereafter issued a Certificate of Grant of a patent.

An invention is patentable only if it meets the following criteria:

1. Novelty: - the invention must be new and not in the public domain. Novelty ensures that the invention is not part of the prior art i.e, information made available to the public before the application date.
2. Inventive Step: - the invention must involve an inventive step that is not obvious to a person skilled in the relevant field of technology i.e. the invention must represent a technical advancement or have a significant improvement over existing products or processes.
3. Industrial Applicability: - the invention must be capable of being made or used in some kind of industry, which includes agriculture, commerce, services, or manufacturing. It must have practical utility and not be merely theoretical.

The patent owner has legal ownership of the patent, which grants exclusive rights, preventing others from making, using, or selling the patented product or using the patented process. Under Uganda’s Industrial Property Act, patent owners are granted the following rights:

1. Exclusive Exploitation: Control over making, using, selling, distributing, or offering the patented invention.
2. Licensing: The right to authorize others to use the patent under agreed terms.
3. Assignment or Transfer: Ownership can be sold or transferred to another party.
4. Infringement Remedies: Legal action can be taken against unauthorized use, including injunctions and compensation for damages.
5. Importation Control: Rights to control the import of products incorporating the invention.
6. Public Recognition: Ensures the inventor's contribution is disclosed and recognized.
7. Patents last for 20 years, subject to annual maintenance, after which the invention enters the public domain.

The duration of patent registration in Uganda typically involves several stages and can take 2 to 3 years to complete, depending on the complexity of the application and the efficiency of the processes at the Uganda Registration Services Bureau (URSB) and the Africa Regional Intellectual Property Organisation (ARIPO).

Uganda does not grant an SPC (Special Protection Certificate).

In Uganda, the first-to-file rule means that the patent is granted to the first person who files a valid application for the invention with the Uganda Registration Services Bureau (URSB). Ownership disputes are resolved based on a case-by-case basis and applicable legal principles for instance in determining matters of commissioned works and employee assigned instructions.

It is possible for a patent to be jointly owned and the co-owners have equal rights and protections subject to any contractual rights between the joint owners.

Under Uganda’s Industrial Property Act, 2014, patent owners have several remedies available to protect their rights and address infringement. The objectives include protection of the patent owner’s exclusive rights, deter future infringement and to provide adequate compensation for losses suffered due to unauthorized use of the patent.:

1. Injunctions

• Temporary Injunction: The court can grant a temporary injunction to immediately halt infringing activities while the case is being resolved, provided the patent owner shows prima facie evidence of ownership.

• Permanent Injunction: A permanent injunction can be issued once the court rules in favor of the patent owner, prohibiting the infringer from continuing their activities.

2. Damages The infringer may be required to compensate the patent owner for financial losses caused by the unauthorized use of the patent. Damages are calculated based on factors such as lost profits, market share, or other measurable harm.

3. Account of Profits The court may order the infringer to pay the patent owner the profits they earned from the infringement. This remedy focuses on depriving the infringer of unjust enrichment.

4. Delivery or Destruction of Infringing Goods The court may direct the infringer to either surrender or destroy all infringing products or materials used in the infringement.

5. Criminal Sanctions In cases involving counterfeiting or willful infringement, criminal penalties may apply. These can include fines, imprisonment, or both, depending on the severity of the violation.

6. Declaratory Judgments A court may issue a declaratory judgment affirming the patent owner’s rights and confirming that infringement has occurred.

7. Costs of Litigation The infringer may be ordered to reimburse the patent owner for legal expenses incurred in pursuing the infringement case.

Opposition Proceedings - Before Grant: Any person can oppose a patent application within six months of publication but before the patent is granted.

After Grant - Post-grant opposition can be filed within one year of the patent’s issuance.

The Uganda Registration Services Bureau (URSB) may review and revoke patents if notified of invalidity concerns. The process of invalidation can also be undertaken by legal proceedings in the High Court to revoke the patent. The grounds for revocation include that the invention is not novel or inventive; the invention is not industrially applicable; the patent does not meet disclosure requirements and that the subject matter is excluded from patentability (e.g., discoveries, natural phenomena).

Questions on validity and infringement can be determined in the same proceedings before a High Court which has unlimited subject matter jurisdiction.

The High Court has jurisdiction to temporary reliefs and injunctions if a petitioner/applicant in proceedings can establish a prima facie case of infringement which causes irreparable loss to the petitioner. Such interim measures can be granted ex-parte but for a limited time and the tortfeasor shall be given notice to appear and respond to the claim under a formal injunction application.

In Uganda, patent infringement is primarily a civil matter. However, under certain circumstances, it may be treated as a criminal act when it involves deliberate or fraudulent actions, such as counterfeiting, willful Infringement or false claims (including fraudulent registrations). Sanctions include fines, imprisonment, and seizure and destruction of infringing goods.

In most common law jurisdictions, damages for patent infringement are calculated based on the pecuniary equivalent of the injury suffered by the patent owner. This means compensation aims to restore the patent owner to the financial position they would have been in if the infringement had not occurred.

Certain damages are relatively straightforward to quantify, such as losses from reduced sales of legitimate products or monetary gains directly attributable to the sale of infringing materials.

Personal Liability for Infringement - Individuals may incur personal liability if they:

• Directly engage in activities that infringe on a patent.
• Contribute to or facilitate infringement.
• Induce others to infringe on patent rights.

Liability may also extend to designated patent Registrars who engage in fraudulent conduct that affects patent rights. If such conduct causes loss to the patent owner, the Registrar may face sanctions or other legal consequences.

Yes, in Uganda, there is a time limit for bringing a patent right infringement claim. While the Industrial Property Act does not explicitly prescribe a limitation period for such claims, general principles of common law and the Limitation Act apply. Under the Limitation Act, civil claims, including intellectual property disputes, must generally be initiated within six years from the date the cause of action arises.

For patent infringement, the cause of action is deemed to arise when the infringing activity is discovered or reasonably should have been discovered. Patent holders are advised to act promptly upon becoming aware of an infringement to avoid missing this statutory window for enforcement.

In Uganda, legal costs are primarily determined on the basis of subject matter value, complexity of the case, the duration of litigation, and the legal representation involved on a case-by-case basis. The fees that may be awarded include attorney fees, court filing fees, expert witness fees, and other related expenses.

The duration of patent proceedings in Uganda can vary depending on the complexity of the application, the completeness of the submission, and the efficiency of the Uganda Registration Services Bureau (URSB). The entire process from filing to grant typically takes 2–3 years under normal circumstances but may be expedited or delayed depending on the specifics of the application and any disputes. Uganda’s reliance on ARIPO or PCT systems may accelerate timelines for international applications where examination reports from other jurisdictions are accepted.

The Industrial Property Act does not provide for any specific border seizure procedure by the customs authorities. However, an aggrieved party can take out ordinary legal proceedings and obtain seizure orders (also known as Anton pillar orders) for interim search and seizure orders against infringing material.

The Industrial Property Act, 2014 and its regulations is a recent development towards modernization of the patents law in Uganda. The legal reform was aimed at creating a robust and globally competitive intellectual property system by replacing outdated laws such as the Patents Act and the UK Designs Protection Act. The streamlined processes for registration and fees, overseen by the Uganda Registration Services Bureau (URSB) is a major milestone to integrate Uganda into global IP systems, providing local innovators with greater opportunities for patent protection beyond its borders.

The legal reform has fostered improvements in the implementation of internation and regional mechanisms such as ARIPO (African Regional Intellectual Property Organization) which allows applicants to file regional patent applications designating multiple member states, including Uganda, adherence to TRIPS Standards and facilitating the implementation of the Patent Cooperation Treaty (PCT) conducted through ARIPO to facilitate international patent filings and simplifying processes for inventors seeking protection in multiple jurisdictions.

The prediction is that Uganda's patent law will likely focus on stronger enforcement and adaptation to emerging technologies, including Artificial Intelligence (AI) and Environmental, Social, and Governance (ESG) components related to green technology and sustainability. This will ensure it remains relevant in a rapidly changing global landscape.

The country’s development agenda is anchored in the government-driven Vision 2040, which incorporates intellectual property (IP) rights, including patents, as part of its strategy to support innovation, protect IP rights, and foster economic growth. However, there is still limited awareness of the legal regime and the opportunities it presents.