ZAMBIAN OPEN UNIVERSITY

SCHOOL OF LAW

Name Mike Mwale

Student Number 21981799

Programme LLB

Course Intellectual Property Law

Course Code L441

Assignment no 2

Cell 0966092893

Lecturer Mr Nyirenda

Email mikemwale777@gmaile.com

Due Date 07/10/22

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 QUESTION

Chileshe and Misozi invent the same invention. Chileshe conceives of the invention on
December 1, 2010. He reduces to practice on December 24, 2010. Misozi independently
conceives the invention on 3rd January, 2011 and reduces to practice two days later. Misozi files
for a patent on March 30, 2011. Both Chileshe and Misozi have been reasonably diligent in their
efforts to practice and file for patent. Neither have published anything about their work. Using
decided cases, who do you think has priority to the invention between Misozi and Chileshe?

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 INTRODUCTION

Intellectual property is the branch is private law which deals with the protection of the creation
of the human creativity and intellect. This simply entails that if an individual comes up with
invention and legally protects it, another individual will not be able to use the same invention or
protect the similar invention until the period for protection elapses. There are mainly four types
of intellectual property; these are patents, copyrights, trademarks and industrial designs. In this
paper we shall put much attention to the patent, explaining what a patent is, period for protection
and whether an individual can protect a patent when another individual already protected a
similar patent. In advising Misozi and Chileshe other necessary requirements will be taken into
consideration.

PATENT DEFINED

A patent is the title granted to a person or an entity by the government to protect an invention in
field of technology. It should be noted that for a patent to be registered and protected it should be
new and not published.

WHAT IS A PATENT

Historically in Zambian history of patents in Zambia traces it’s origins from the United
Kingdom. Zambia being the former colony of the Great Britain, patents law was extended to
Zambia by virtue of section 2 of the English Law (Extent of Application) Act Chapter 11 of the
Laws of Zambia1.

A patent however is a document which is issued upon application by a patent office which
describes the invention and grants the patentee subject to the conditions attached to the patent,
full power, sol privilege and authority by himself, has agents and licenses during the term of the
patent to make use, exercise and vend the patent within Zambia, in such manner he deems fit, so
that he enjoys the profit and advantage accruing by reason of the invention during the term of the
patent. An invention maybe a product or a process, the Patent Act under section 2 defines an
invention as any new and useful art (whether producing a physical effect or not), process,
machine, manufacture or composition of matter which is not obvious or any new useful

1
Mpundu, G (2006), Intellectual property Law: Lusaka: UNZA Press

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improvements which is not obvious. It should be noted that an invention must be novelty 2.
PRIORITY DATE

Priority date, also known as effective date, is the date on which the patent application is lodged
at the patent office. In the case of a patent application under the Paris Convention, priority date is
the date on which the application in respect of the relevant invention was made or filed in that
Paris Convention country or is in terms of that country deemed to have been filed. The Patents
Act allows a priority date to be post-dated or antedated. However, no application shall be post-
dated later than six months from the date on which it was actually lodged. In case of an
application under the Paris Convention, the patent application shall not be post-dated to a date
later than the last date on which the application could have been made. The priority date is very
important in patent law. It is a date on which a patent application for invention is assessed
against other materials, such as competing claims for the same invention, publications or other
information that may affect the validity of the patent. Priority date, therefore, establishes the time
from which determination of the invention is made. Hence, no disclosure, publication or other
public activity can affect the validity of the patent if it happens after the relevant priority date.
Besides, priority date is relevant in terms of determining patent infringement. Furthermore,
priority date is important in that if two patent applications for basically the same invention are
received at the patent office, then the application with the earlier priority date is eligible for
patent protection. This is because under the patent law ‘first-to-file’ principle, the first
application destroys the novelty of the second.

PATENT APPLICATION PROCESS

where there are more than one patent applicants regarding the same invention, developed
independently by the inventors, priority for a patent grant will be given to the applicant who was
first to file the patent application. However, this is not the case under the USA patent law, which
applies the ‘first-to-invent’ principle3. Under the first-to-invent rule, the priority date, in case of
conflicting patent applications, is not the date of lodging the patent application at the patent
office, but is the date of the actual reduction to practice of the invention. If the inventor is
‘diligent’, that is, continually active in developing the invention, then the priority date can date

2
Patents Act No. 40 of 2016
3
Ibid

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back to the original conception, before the invention is reduced to practice4. In the case of Gibson
Zulu v Trade Kings Ltd5 where the plaintiff Gibson Zulu invented the process of making boom
detergent paste on behalf of the Trade Kings Ltd but he did not register it. The company
continued to use the formula/process without paying him loyalties. He sued the company for
infringement of his patent. The court held that the novelty was already destroyed thus it could
not be registered. Similarly in Simezha case where the plaintiff invented the formula for making
juice and told his friend about it. His friend proceeded and filed for patent, the court held that the
plaintiff could not patent his formula because the novelty had already been destroyed.

PUBLICATION

An application for a patent which has a date of filing and which has been accepted by the
Registrar must be published at the end of eighteen months calculated from the declared priority
date or where there is no declared priority date, from the date of filing. Once the application for a
patent has been published and advertised in the patent journal, the application form, the
specification and other essential documents filed shall be open to public inspection. It is
important to state that once the patent application is published and information regarding the
invention is available to the public, the invention becomes part of the ‘prior art’. Therefore,
where, for example, the application is subsequently withdrawn and the same applicant resubmits
it or a closely related one, the later application will fail because it will be anticipated by its own
prior art6. It is worth noting that the period between publication and sealing of a patent, the
applicant is entitled to privileges and rights as if a patent for the invention was sealed on the date
of the application of such notice. Certificate of registration is given to the owner of the invention
after a successfully registration7. Where an invention is already published or it is made available
to the public before registration, it will not qualify for a patent protection. Section 2 of the Patent
Act defines published as to make available to the public and without prejudice to the generality o
the foregoing provision, a document shall be deemed, for the purposes of this Act, to be punished
if it can be inspected as of right by members of the public, whether upon payment of a fee or
otherwise8. In Fomento v. Mentmore, it was held that an invention is novel if it has not been
4
Mpundu, G (2006), Intellectual property Law: Lusaka: UNZA Press
5
[1996] HCZ
6
Ibid
7
Ibid
8
Patents Act No. 40 of 2016

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anticipated. The test of whether or not the invention has been anticipated is whether or not it was
available publicly before the priority date9.

MISOZI AND CHILESHE

The position of the Law is that the first person to file for a patent will be given the priority.
Section 38 of the Patents Act where two or more persons, separately and independently, make
the same invention and each of them separately files an application for the grant of a patent, the
right to the patent for such invention shall belong to the person whose application has the earliest
filing date, or if priority is claimed, the earliest priority date10. Similarly section 41 of the Act
also provides that Subject to this Act, the priority date of an invention, to which an application
for the grant of a patent relates, shall be the date on which the application was first filed in the
convention country11. Therefore, it should be noted that unlike in UK where they practice the
“first to invent rule” where the first person to conceive an invention is given the priority. In
Zambia however, as started by the law, “first to file rule” is practiced. This means that if two or
more people come up with the same invention, the first person to file in for a patent will be grant
patent rights. In the case that we have been given, Chileshe was the first person to conceive an
invention and reduced into practiced but he did not apply for patents. Misozi on the other hand
without knowing that Chileshe conceived an idea, she came up with a similar invention and
reduced to practiced without any hesitation Misozi filed for a patent. This scenario that has been
given means that Misozi is the person who should be given priority she was the first person to
file for a patent. This is because under the patent law ‘first-to-file’ principle, the first application
destroys the novelty of the second application. In short, where there are more than one patent
applicants regarding the same invention, developed independently by the inventors, priority for a
patent grant will be given to the applicant who was first to file the patent application. However,
this is not the case under the USA patent law, which applies the ‘first-to-invent’ principle. Under
the first-to-invent rule, the priority date, in case of conflicting patent applications, is not the date
of lodging the patent application at the patent office, but is the date of the actual reduction to
practice of the invention12. If the inventor is ‘diligent’, that is, continually active in developing
the invention, then the priority date can date back to the original conception, before the invention
9
[1956] RPC 87
10
Patents Act No. 40 of 2016
11
Patents Act No. 40 of 2016
12
Mpundu, G (2006), Intellectual property Law: Lusaka: UNZA Press

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is reduced to practice13. From the facts that we have on record, the parties did not publish their
inventions that means Misozi will be granted the patent. To that effect Chileshe will not be able
to file for a patent because the novelty has already been destroyed by the Misozi’s parent.

Furthermore, an individual comes up with an invention and he shows another person who copy
and file for a patent application ad he is given the certificate of registration ad priority date. If the
original owner decides to register it, his efforts will futile because the novelty of an invention has
already been destroyed. Thus he can only challenge the patent by producing an original detailed
invention to prove that he is the original owner.

CONCLUSION

In conclusion, an invention is only protected when it is registered and a priority date given.
Where two individuals invent the same invention separately and independently, according to the
file to first rule which is provided in section 38 of the Patents Act the first person to file for a
Patent is given the priority date. As mentioned in the discussion above, after a successful
application, the applicant is given a certificate of registration with a priority date written on it
thus no one will be able to register a similar patent. The paper also rendered an advice to Misozi
and Chileshe who invented the same invention in different occasions. In this case Misozi will be
given priority to the patent because she was the first person to file in. however, if Chileshe
decide to claim that he is the original owner of the patent he will be charged for infringing patent
right for Misozi unless he provides a detailed write up to prove that he is the original owner.

13
Ibid

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BIBLIOGRAPHY

Mpundu, G (2006), Intellectual property Law: Lusaka: UNZA Press.

CASES

Fomento v. Mentmore [1956] RPC 87

Gibson Zulu v Trade Kings Ltd [1996] HCZ

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