NAME: TUMWINE BARNABAS
STUDENT ID: 001-311
MODULE: INTELLECTUAL PROPERTY 2 CAT 1
LECTURER: MR. KAYIMA MOSES
In Uganda, the process of obtaining a patent is governed by the Industrial Property Act Cap224
which outlines the legal and administrative steps required for inventors to secure exclusive rights
over their inventions. This essay analyses the legal requirements, procedural steps, and
documentation involved in patent application with a focus on Section 21 of the Act and
Regulations 6–21.
Patents are granted by national patent offices or regional intellectual property offices. In Africa,
ARIPO and OAPI, the two regional intellectual property offices, facilitate the registration of
patents. These organizations are described in more detail later in this guide. One of the benefits
of regional registration is fast-tracking of patent protection in multiple countries.
Legal Requirements for Patentability
A patent according to Section 11 of the Act is a title granted to an invention.
However, for the purposes of patentability an invention pursuant to section 7 of the act is defined
as a solution to a specific problem in the field of technology2.
Article 273 of the TRIPS agreement which provides for the patentable subject matter states that
an invention is patentable if it is new, involves an inventive step, and is industrially applicable.
This is reiterated in section 8 of the Industrial property act which requires an invention to be new,
involving an inventive step and is industrially applicable to be patentable in Uganda.
To be eligible for a patent in Uganda, an invention must meet three primary criteria: novelty,
inventive step, and industrial applicability.
1
Section 1 the Industrial Property Act Cap224
2
section 7 the Industrial Property Act Cap224
3
Article 27 of the TRIPS agreement
Novelty
According to Section 9 of the act, an invention is considered 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 includes all public disclosures, written or oral,
before the application filing date or priority date. 4 However, disclosures made within 12 months
before the filing date or priority date are excluded if they resulted from the applicant’s actions or
an evident abuse by a third party.5
Anticipation requires an enabling disclosure that allows a person skilled in the art to put the
invention into effect. Disclosure and enablement are separate concepts, as confirmed by the
House of Lords in Synthon BV v SmithKline Beecham plc. Lord Hoffmann emphasized that
prior art must disclose subject matter that would necessarily result in patent infringement if
performed, and that disclosure must be construed as understood by a skilled person at the time,
not in light of subsequent patents. Enablement is assessed from the perspective of an ordinary
skilled person, assuming they would carry out trial and error experiments to get the invention to
work. Furthermore, prior disclosure does not require awareness of infringement, as seen in
Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd, where the production of an acid
metabolite was inevitable, despite the patent author’s unawareness.
The disclosure must be enabling, meaning it allows a highly skilled person in the relevant field to
put the invention into effect. As Lord Hoffmann stated in Synthon v SmithKline Beecham plc
[2006] RPC 323, prior art must disclose subject matter that would necessarily result in an
infringement of the patent if performed. The court also held that if carrying out what is described
in the prior art would inevitably lead to the claimed product or process, then the invention is not
novel, as seen in Synthon where the skilled person would have tried other solvents to produce the
paroxetine methosulfate crystals within a reasonable time.
Disclosure to someone in confidence doesn’t invalidate a patent, but sharing it with someone
without an obligation of confidence, even if they keep it secret, destroys novelty. In the case of
4
Section 9(2) of the Industrial Property Act Cap 224
5
Section 9 (3) and (4) of the Industrial Property Act Cap 224
Folding Attic Stairs Ltd v The Loft Stairs Company Ltd, 6 a photographer and government
minister were invited to see a prototype folding loft stair in a factory without being bound by
confidentiality. The court held that there was no irrebuttable presumption that they had perceived
the information, given the circumstances, which made it unlikely they were interested in the
subject matter. This contrasts with a situation where a prototype is left in a public place, which
would be novelty-destroying without actual evidence that an interested person examined it to see
how it worked.
Inventive Step
As earlier stated, an invention is patentable of it is new involves an inventive step and is
industrially applicable.7 An invention involves an inventive step if, considering the relevant prior
art, it wouldn’t have been obvious to a skilled person in the field on the application filing date, or
the validly claimed priority date.8 According to Biogen Inc v Medeva plc [1997] RPC 1, an
inventive step can take various forms, such as applying established techniques to achieve a novel
goal, finding a new way to achieve a previously desired goal, or solving a specific problem that
stood in the way of achieving a broader goal.
To determine inventive step, the claimed invention’s obviousness to a “person skilled in the art”
is assessed.9 This hypothetical individual has average knowledge and proficiency in the relevant
field, with common general knowledge as of the international filing or priority date. An
invention is considered obvious if this person could create it by substituting, combining, or
modifying prior art elements.10
The Windsurfing test is a 4-step process to assess inventive step: (1) identify the skilled person’s
relevant knowledge, (2) determine the inventive concept, (3) identify differences between prior
art and the inventive concept, and (4) decide if those differences would be obvious to the skilled
person, without knowing the alleged invention.
6
[2009] EWHC 1221
7
Section 8 of the Industrial Property Act Cap 224
8
Section 10 of the Industrial Property Act Cap 224
9
PCT International Search and Preliminary Examination Guidelines
10
Ibid
The assessment of non-obviousness is crucial in distinguishing between genuine inventions and
mere modifications of existing ideas.
Industrial Applicability
An invention is industrially applicable if it can be made or used in any kind of industry,
including agriculture, medicine, and services. This requirement ensures that patented inventions
have practical uses and can contribute to economic development. In the case of Bishwanath
Prasad Radhey Shyam v Hindustan Metal Industries AIR 1982 SC 1444, the Supreme Court
of India revoked a patent for lacking utility, emphasizing that a patentable invention must be
useful. The case involved a device for manufacturing utensils, which was deemed not
sufficiently useful to warrant a patent. The court’s decision established that utility is a necessary
condition for patentability, alongside novelty and inventive step.
Step-by-Step Procedure for Filing a Patent Application
1. Preparation of the Patent Application
Before submitting a patent application, inventors must ensure that their invention meets specific
criteria, that is, it must be novel, involve an inventive step, and have industrial applicability as
discussed above.
To ensure clarity, pursuant to Regulation 10, all application materials must be prepared to remain
legible when photocopied or reproduced. (2) Exceptions include graphic symbols, characters,
chemical, and mathematical formulas, which may be handwritten in dark, indelible ink. (3)
Terminology, signs, and symbols used throughout the application must conform to those
commonly accepted in the relevant field. (4) Measurements expressed in non-metric units must
also include their metric equivalents. (5) Each application must be accompanied by a statement
revealing any related foreign applications, including their status, if applicable, filed by the same
applicant.
2. Filing the Patent Application (Regulation 6)
The patent application is filed with the URSB, which is responsible for receiving and processing
all industrial property applications in Uganda.11 The application must include:
Application Form: Completed and signed by the applicant. The applicant can use the
form 2 in the schedule.
Description of the Invention: A detailed description of the invention, including
specification of the technical field, background art, and industrial applicability. 12
Claims: Claim Requirements as per Regulation 7
Define the invention: Claims must clearly outline the technical features of the
invention.
Prior art: Claims must define the subject matter of the invention that is part of the
prior art.
No drawings: Claims cannot include drawings, but may include chemical or
mathematical formulas.
Reference to description or drawings: Claims cannot rely on references to the
description or drawings, but may include references to increase intelligibility.
An application should not include more than one claim. Exception: Multiple
independent claims are allowed if each claim relates to a single product or
process.
When multiple claims are included, they must be numbered consecutively.
A main claim can outline the essential technical features, with subsequent claims
describing particular embodiments while embodiment claims must reference the
main claim, state the features to be protected, and be grouped together logically.
However, when an application contains more than ten claims, the applicant must
pay an additional fee for each excess claim, as if it were a separate application.
Abstract as per Regulation 9:
11
https://ursb.go.ug/patents/
12
Regulation 6(3)
The abstract shall include the title of the invention and provide a concise summary of the
disclosure.
The abstract must not include statements regarding the invention's merits, value, or
speculative uses. Drawings should not be included, but if drawings are part of the
application, the abstract should identify the one suggested for publication and reference
its symbols. Ideally, the abstract should be limited to 150 words, unless circumstances
make this impractical.
Priority Document: If priority is claimed based on an earlier application filed in another
country.
Important to note is that the application form must be accompanied by proof of payment of
prescribed fees.13 They can be paid in whole or part. 14 The fees payable are provided for under
the Industrial property (fees) regulations of 2017 and are Shs. 100,000.
3. Formal Examination as per Regulation 19
After filing, the application undergoes a formal examination to ensure compliance with the
administrative requirements of the Industrial Property Act.15 This includes verifying that all
necessary documents are submitted and that the application fees are paid. If additional
information or amendments are needed, you will be contacted. 16 Upon receiving the document,
the URSB assigns a filing date and a unique patent application number.
4. Substantive Examination as per Regulation 24
Following formal examination, a substantive examination is conducted to assess whether the
invention meets the patentability criteria. 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.17
13
Section 25(1) Regulation 6 (2)
14
ibid
15
Section 27 of the Act
16
Regulation 22(1) of the act
17
Section 30 of the act
When a patent application meets the requirements but pertains to a non-technical field, the
registrar notifies the applicant. The applicant must then request an examination within three
years of the filing date. If no request is made, the application is considered abandoned. Upon
receiving a request, an examination is conducted to assess the invention's patentability. An
examination fee of UGX 150,000 will be payable.
5. Publication of the application
In accordance with section 28 of the Act, the registrar shall publish the patent application as soon
as possible after 18 months from the filing date, or from the priority date if priority is claimed.
The published details, as outlined in Regulation 22, include the application number, applicant's
name and address, inventor's name and address, agent's name and address, filing date, priority
date and country, international patent classification symbol, title of the invention, abstract, and
international non-proprietary name of the product.
7. Notification of refusal to grant patent
The registrar must notify the applicant of a refusal to grant a patent within 15 days of making the
decision, and this notification must be in Form 11 as specified in the Schedule.
8. Notification and grant of Patent as per Regulations 26 and 27
If the invention is deemed patentable and all objections are resolved, the registrar must notify the
applicant of a grant of a patent within 15 days of making the decision, and this notification shall
be in Form 11 as specified in the Schedule.
9. Publication of grant of patent.
Once the patent is granted, within 30 days from the grant, the grant is published in the Gazette,
and the patent is registered in the Industrial Property Register maintained by the URSB.
10. Post-Grant Procedures
After the grant, the patent holder must comply with post-grant procedures, such as paying annual
maintenance fees to keep the patent in force. Failure to pay these fees can result in the patent
lapsing.18
BIBLIOGRAPHY
Statute
TRIPS Agreement on Trade-Related Aspects of Intellectual Property Rights
Industrial Property Act Cap224
The Industrial Property Regulations, 2017 (S.I. No. 12 of 2017)
Caselaw
Synthon BV v SmithKline Beecham plc.
Radhey Shyam v Hindustan Metal Industries AIR 1982 SC 1444
Biogen Inc v Medeva plc [1997] RPC 1
Synthon v SmithKline Beecham plc [2006] RPC 323
18
Regulation 36
