PATENT PROTECTIONS (GRP M)

1. Ssanyu carol wagonza. 2021/AUG/LLB/B229180/DAY.

2.NAGGAYI CLAIRE 2021/AUG/LLB/B228930/DAY

3.SSEKABUZA ROBERT 2021/AUG/LLB/B228932/DAY.

4.ANYANGO JOYCE M. 2012/AUG/LLB/B22879/DAY

5.MUHWEZI BAKER. 2021/AUG/LLB/B228921/DAY

International protection of patents.

The protection of patents on an international scale is a crucial aspect of Intellectual Property
Rights (IPR) management. It should be noted that Uganda is a party to several international
conventions and agreements relating to patents. The following offer a general overview of how
patents are protected internationally based on commonly accepted principles in intellectual
property law.

Paris Convention for the Protection of Industrial Property: This is also known as the Paris
Convention1. This international treaty or convention was established in 1883 as a union
between the more developed industrialized countries, and has undergone periodic revisions, the
last being in Stockholm in 1967. Uganda is and became a signatory to the Paris Convention
on July 30, 1963. As a signatory to the convention, Uganda agreed to abide by its principles
and provisions aimed at promoting and protecting industrial property rights, including patents,
trademarks, and industrial designs. The Paris Convention provides a framework for the
protection of industrial property, including patents, trademarks, and industrial designs,
among member countries. It sets out principles such as national treatment and the right of
priority, allowing an applicant to claim priority based on an earlier application filed in
another member country. As at 3rd January 2005, there were 169 countries that were parties to
the Convention, including the vast majority of developed nations, most developing nations and
many of the former socialist countries2.

The basic principle is that the Paris Convention requires member states to accord national
treatment in respect to the rights of patents and other rights including trademarks as well as
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Intellectual Property 3rd Edition by S Ricketson
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http://www.wipo.int/treaties/en/paris/index.html>.
designs. That is, each Convention country is to grant the same rights to nationals of other
Convention countries as it grants to its own nationals in respect to Article 2(1) of the Paris
Convention. This is complemented by the principle of independence of protection per Article 4
of the Paris Convention. Under the principle of independence of protection, an inventor or
applicant can file a patent application in one member country without needing to wait for or rely
on the outcome of patent applications filed in other member countries. Each patent application
is considered on its own merits within the legal framework of the respective country.

No Requirement for Simultaneous Filing: The convention allows applicants to stagger their
patent filings across different countries based on their business strategies, market
considerations, or financial resources. There is no requirement for simultaneous filing of patent
applications in all member countries.

The convention grants a right of Priority: However, while allowing for independent filings,
the Paris Convention also grants the right of priority. This means that an applicant who files a
patent application in one member country can, within a specified time frame (usually 12
months), file subsequent applications for the same invention in other member countries and
claim the priority date of the initial application3. This helps applicants avoid losing their rights
due to delays in filing multiple applications.

Harmonization of Patent Rights: Despite the independence of protection, the Paris Convention
encourages member countries to provide consistent treatment of patent applications and patents
in terms of substantive patent law principles. However, the specifics of patent law, including
patentability criteria and procedures, may vary from one member country to another. Overall, the
principle of independence of protection ensures that patent applicants have flexibility in seeking
protection for their inventions internationally while maintaining the sovereignty of each member
country's patent system.

Other substantial requirements of the convention include the possibility of compulsory

licenses, and their subsequent forfeiture in the event that patents are not worked;

Patent Cooperation Treaty (PCT): The PCT, administered/governed by the World Intellectual
Property Organization (WIPO which has more than 150 nations as signatories also known as

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Reg 8.5(2) of the Patents Regulation 1991
PCT Contracting states), facilitates the filing of patent applications in multiple countries through
a centralized procedure. It streamlines the process of seeking patent protection in different
jurisdictions by allowing applicants to file a single international application that can later enter
the national or regional phase in designated countries. Therefore, the Patent Protection Procedure
(PCT) is an international Intellectual Property agreement that provides patent protection in
several countries through the filing of a single common application.

Filing patent applications under PCT implies securing legal protection for an invention under
patent law in more than 150 countries at once. Major global corporations, research institutes
and universities seek patent protection via PCT. It safeguards applicants against accidental
errors which are far more likely to occur if a separate application is filed in every country of
interest. The need for Patent Cooperation Treaty (PCT) was (is) to bring the world within
reach, removes major costs and provides users with additional time to consider their
various patent granting options, provides a strong basis to the user for patenting decisions,
and it is used effectively by the world’s major corporation, universities and research
institutions when they seek international patent protection. For instance, approximately
278,100 international patent applications were filed under WIPO’s Patent Corporation
Treaty (PCT) in 2022.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). 4TRIPS

is an international treaty administered by the World Trade Organization (WTO). It sets out
minimum standards for the protection of various forms of intellectual property, including patents,
trademarks, copyrights, and trade secrets, among WTO member countries.

TRIPS ensures international protection of patents in several ways which among others include:

Minimum Standards: TRIPS under Article 27(1) establishes minimum standards for the
protection of patents, requiring member countries to provide patent protection for inventions
in all fields of technology, without discrimination as to the place of invention, the field of
technology, or whether products are imported or locally produced.

Duration of Protection: TRIPS under Article 33 sets a minimum term of patent protection of
20 years from the filing date of the patent application, ensuring that inventors have exclusive

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Came into effect on 1ST January, 1995.
rights to their inventions for a specified period, which encourages investment in research and
development.

Subject Matter of Patents: TRIPS under Article 27(1) clearly states that patents must/shall be
available for any inventions, whether products or processes, in all fields of technology,
provided that they are new, involve an inventive step, and are capable of industrial
application. This broad scope ensures that a wide range of inventions can be protected under the
patent system.

Enforcement of Patents: TRIPS requires member countries to establish effective and equitable
procedures for the enforcement of patent rights, including the right to seek injunctions and
damages for patent infringement. This ensures that patent holders can enforce their rights against
unauthorized use of their inventions. This is because Article 28 of the TRIPS confers the holder
of a patent with exclusive right to prevent third parties without the consent of the owner from the
acts of making, using, offering for sale, selling or importing

Non-Discrimination and National Treatment: TRIPS prohibits discrimination against foreign

patent holders and requires member countries to provide national treatment, treating foreign
patent holders the same as domestic patent holders in terms of patent protection and
enforcement. This is in respect to paragraph 4 of Article 65

Dispute Settlement Mechanism: TRIPS provides a dispute settlement mechanism within the
WTO framework, allowing member countries to resolve disputes related to the
interpretation and implementation of the agreement, including disputes concerning patent
protection. Overall, TRIPS ensures international protection of patents by establishing
harmonized standards for patent protection, ensuring a minimum level of protection for inventors
in all WTO member countries, and providing mechanisms for enforcement and dispute
resolution.

World Intellectual Property Organization (WIPO). 5It is a specialized agency of the United
Nations responsible for promoting the protection of intellectual property (IP) rights
worldwide. WIPO's main objectives include fostering creativity and innovation, promoting the

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1967
protection of intellectual property rights, and facilitating the international exchange of IP-related
information and knowledge.

WIPO ensures international protection of patents and other forms of intellectual property through
various activities and services:

Development of International Treaties and Standards: WIPO develops and administers

international treaties and agreements, such as the Patent Cooperation Treaty (PCT) and the Paris
Convention for the Protection of Industrial Property, which establish minimum standards for the
protection of patents and other forms of intellectual property rights. These treaties provide a
framework for harmonizing intellectual property laws and regulations among member countries.

Administration of Patent Systems: WIPO administers international patent systems such as the
Patent Cooperation Treaty (PCT) and the Hague System for the International Registration of
Industrial Designs. These systems facilitate the filing and processing of patent applications on an
international scale, allowing applicants to seek patent protection in multiple countries through a
single application process.

Capacity Building and Technical Assistance: WIPO provides technical assistance, capacity-
building programs, and training workshops to help developing countries strengthen their
intellectual property systems and infrastructure. This includes training for patent examiners,
assistance in drafting patent laws and regulations, and support for the establishment of patent
offices and IP institutions.

Dispute Resolution and Mediation: WIPO provides services for the resolution of intellectual
property disputes, including mediation, arbitration, and alternative dispute resolution
mechanisms. These services help parties resolve disputes related to patents and other forms of
intellectual property in a timely and cost-effective manner.

Global IP Databases and Information Services: WIPO maintains global databases and
information services that provide access to patent documents, patent statistics, and other IP-
related information. These resources enable inventors, researchers, and policymakers to access
and utilize IP-related information for research, innovation, and policy development.
REGIONAL PATENT PROTECTIONS.

Regional patent protection refers to the legal rights granted to inventors or creators within a
specific geographic region to exclude others from making, using, selling, or importing their
invention without permission. This protection is typically granted through patent laws and
regulations established by regional patent offices or organizations, such as the European Patent
Office (EPO) for Europe or the United States Patent and Trademark Office (USPTO) for the
United States. Regional patent protection allows inventors to enforce their rights within the
designated region, providing a framework for innovation and investment.

African Regional Intellectual Property Organization (ARIPO),this is formerly

ESARIPO ,created as a result of a diplomatic conference held in Zambia in 17966. ARIPO is a
member of the PARIS CONVENTION,and it is possible to file an independent patent
application claiming convention priority .

African Regional Intellectual Property Organization (ARIPO)has been following the depositions
of the Harare Protocol on Patents and Industrial Designs which has regulated the procedures and
substantive requirements for protection of it's members since adopted in 1982.7And the following
are the ways through which the ARIPO protects patents.

Unified Application Process: While the protocol does not specify individual articles, it
establishes a regional patent filing system that allows applicants to seek patent protection in
multiple ARIPO member states, including Uganda, through a single application.

Centralized Examination and harmonization standards: The patent application is first

submitted to an examination on filling,which aims to determine whether it meets the minimum
requirements for according a date of filling ,such as the designation of at least one contracting
state ,the information about the applicant , a description and one or more claims. As follows a
formal examination is performed,and when all the formal requirements are acknowledged to be
complied with ,the application is then submitted to substantive examination. In case the
application under consideration derives from an international application,the international search
report is considered and a supplementary ARIPO search is carried out before the issuance of the

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ARIPO , spoor and fisher 2004
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Patents in Africa: ARIPO v contracting states' laws by Marisol Cardoso 2021.
search report and the examination report. However inventions must comply with the
requirements of absolute novelty,incentive step, and industrial applicability8.

Regional Patent Rights: The system that ARIPO adopts is that everything is patentable unless
the designated state legislation stipulates otherwise. The regime confers on its member states the
power to refuse to acknowledge an ARIPO patent on the grounds that the invention is not
patentable in accordance with the Protocol and that patent cannot be granted under the national
law of that State because of the nature of the invention.

Consequently, the scope and content of the subject matter of ARIPO patent protection is
determined by the national law of the designated state. In the ARIPO system, the national patent
law is the final determinant of patentable subject matter, the duration of the patent, the
enforceability of patent rights and the effectiveness of the grant of an ARIPO patent.

If conflict arises between the ARIPO patent regime and national patent laws, the national patent
regime prevails. Thus the ARIPO patent system loosely regulates the national interests of its
member states. This reflects the level of interaction between the ARIPO patent regime and the
national patent systems. There are, however, potential areas of tension and conflicts could arise
upon the application of the regional and national patent regimes within the same jurisdiction.

Under Article 3 (9) of the Protocol, ARIPO patents are granted for inventions upon fulfilment of
three criteria of novelty, inventive step and industrial applicability. With respect to the novelty
criteria, absolute novelty is adopted. The ARIPO Protocol provides that “an invention is new if it
is not anticipated by Article 28 Further, “everything made available to the public anywhere in the
world by means of written disclosure shall be considered prior art.” The adoption of the absolute
novelty concept is incompatible with the economic needs and development goals of the ARIPO
States for several reasons.

African Regional Intellectual Property Organization (ARIPO) is made up of a Treaty and a

Protocol to the Treaty. The Treaty9 basically sets up the administrative organs and financial
obligations of its member states. It is constitutional in nature. It currently has 20 members and

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World Intellectual Property magazine 2022.
9
The agreement on the criteria of ARIPO adopted by diplomatic conference on the creation of an Industrial
Property organization of the Englis_speaking Africa at lusaka Zambia on Dec 12th 1986 and Nov 27,1996.
KIPI in Kenya , URSB in Uganda etc, are designated as official receiving offices for ARIPO
applications. The objectives of the Treaty are:

a) the promotion of the harmonisation and development of the industrial property laws, and
matters related thereto, appropriate to the needs of its members and of the region as whole;
b) the establishment of such common services or organs and development of the industrial
property activities affecting its members;
c) assisting its members in the development and acquisition of suitable technology; and
d) the evolution of a common view in industrial property matters.
The offices of ARIPO are in Harare, Zimbabwe where the established Patent Documentation and
Information Centre (PIDOC) provides members and potential member states with technological
information available from patent and patent-related documentation. The Protocol regulates
industrial property rights and each ARIPO member state is implicitly allowed to operate distinct
national patent regimes.

At present, there are three categories of patent regimes operating in the ARIPO member states.
The first category includes those countries such as Botswana, Lesotho and Swaziland which
confer automatic protection to patents registered in South Africa.

The second category includes countries which require that patents be granted in the United
Kingdom prior to their re-registration in these countries.

The third category of states is those that operate independent patent regimes.10These are
Kenya, Malawi, Sudan, Zambia and Zimbabwe.The ARIPO regime has three distinct features on
patentable subject matter. First, the regime has no concept of non-patentability. Second, it adopts
the absolute novelty criteria for patentability. Third, both the concept and criteria for patentability
are conditional upon national patent laws.

Apart from ARIPO documents like ,The Uganda National intellectual property policy and
strategy 2016, emphasizes trade in intangible goods as opposed toUganda National Export
Development Strategy(NED)2018_2019, 2020_2023 developed by Uganda in association with
organizations like Uganda Export promotion Board (UEPB) that emphasizes trade in tangible
products.
10
Celesous juma& JB ojwang , '' towards patents law protection in Kenya ''. The patent debate in African
development ACTS press Nairobi (1988).
It is important to note that SECTION 45 if the industrial property Act 2014 provides for the
HARARE PROTOCOL ON PATENTS,that a patent in respect of which Uganda is a
designated state ,granted by ARIPO by virtue of the Harare protocol has the same effect in
Uganda as a patent granted under this Act except where the registra communicates to ARIPO
in respect of the application of the patent , a decision in accordance with the provisions of the
protocol that if a patent is granted by ARIPO,that patent shall have no effect in Uganda
Further , when protecting a patent invention in Africa, the filling strategy must go beyond the
ease of choosing a regional office to secure protection in several territories at the same time,
especially in cases where the subject matter falls with the TRIPS flexibilities. Due to the
coexistence of national laws in the ARIPO member states ,ARIPO system may provide only for
procedural matters and leave substantive content of the rights largely to the laws of its member
states.11

Another example of a regional patent protection system is the Eurasian Patent Organization
(EAPO). The EAPO provides a unified system for obtaining patent protection in Eurasian
countries, primarily in the former Soviet Union region. It allows applicants to file a single patent
application that, if granted, provides protection in member states such as Russia, Belarus,
Kazakhstan, Kyrgyzstan, and Tajikistan. The EAPO conducts patent examinations and grants
Eurasian patents that are valid within its member states, offering a streamlined process for
obtaining patent protection across multiple countries in the Eurasian region.

The Eurasian Patent Convention (EAPC), which established the legal framework for the
Eurasian Patent Organization (EAPO), was adopted on September 9, 1994. The EAPC entered
into force on August 12, 1995. Since then, the EAPO has been responsible for granting Eurasian
patents and providing patent protection in its member states, primarily in the former Soviet
Union region.

The European Patent Office.

The European Patent Office offers protection of patents on regional level for the countries which
are members of the European Patent Organization. Such regional patent system enables filing of
a one patent application in one locality having a contemporaneous legal effect in several
countries. The European patent application maybe filed directly with the European Patent Office
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World Intellectual Property review 2012.
or with the state Intellectual Property Office. The European Patent application is published in the
official journal of the European Patent Office following the expiry of 18months from the priority
date. Such application is preceded by the formal examination of a patent application and if
possible, the state of the art search for novelty. The respective search report, if available is
published with the application. The substantive examination procedure is carried out upon the
applicant's request. When granted, the European Patent has identical effect on the territory of
countries indicated in the application. A decision on the patent grant have legal effects from the
date of patent grant publication in the European Patent Convention. Official journal and from
that date a 9month term is running in which oppositions maybe filled against the granted
European patent. The European Patent has legal effects after having met all the requirements for
its entry in the European Patent Register prescribed in the Patent Act. The European Patent
Office procedure and the respective fees is recommended to seek assistance of a professional
representative.

The European Patent Convention (EPC) provides a unified patent application and granting
procedure for European countries. It establishes the European Patent Office (EPO) and defines
the legal framework for obtaining patents that are effective in multiple European countries.
Article 52 of the EPC provides for patentable inventions which is to the effect that European
patents shall be granted for any inventions, in all fields of technology, provided that they are new,
involve an inventive step and are susceptible of industrial application. Article 6912 of the same
convention Provides for the interpretation of patents and their scope of protection which states
that the extent of the protection conferred by a European patent or European patent application
shall be determined by the claims. The protocol on interpretation of Article 69 EPC clarifies that
court should interpret the claims adopting an approach that combines a fair protection for the
patentee with a reasonable degree of certainty for third parties.

Utility Model as a regional patent protection. This is an exclusive right granted by the
government for an innovation/invention and term of protection is 10 years. Registration for a
utility model is simple and fast, and gives the holder the right to exclude others from exploiting
the protected innovation/invention. Utility Models provide protection for incremental
improvements to products and processes. Utility Model/Patent Holder have the right to decide

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European Patent Convention
who may or may not exploit the protected invention and permit/license the use of the invention
on mutually agreed terms or sell the invention outright.

REFERENCES:

Paris Convention for the Protection of Industrial Property 1884

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1995.

World Intellectual Property Organization (WIPO) 1967

Patent Cooperation Treaty (PCT) 1978

African Regional Intellectual Property Organization (ARIPO) Protocol on patent and

industrial property 1986