Intellectual Property Rights in Uganda

Treaties and Arrangements

WTO

TRIPS

Nairobi Treaty on the Protection of the Olympic Symbol

ARIPO (Banjul Protocol on Marks)

Paris Convention (Paris Union) Although Uganda is a member of the Paris Union, there is no provision in the legislation relating to international arrangements. As such, it should not be possible to claim convention priority. However, the registry is, in practice, accepting priority claims.

The Trademarks Regulations, 2012

• A sign or combination of signs, capable of distinguishing goods or services of one undertaking from those of other undertakings.
• Where a sign is not inherently capable of distinguishing the relevant goods or services, qualification for registration depends on distinctiveness acquired through use.
• A sign must be capable of graphical representation in order to be registered.

(b) the words “Red Cross” or “Geneva Cross” and representations of the Geneva and other crosses in red, or of the Swiss federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours;

(c) representations of the armorial ensigns of Uganda or any device so nearly resembling them as to be likely to lead to mistake, or of the national flag, or any words, letters, or devices likely to lead persons to think that the applicant has

Government patronage or authorization; and

(d) a representation of armorial bearings, insignia, a decoration or a flag of any state, administration, city, town, place, society, body corporate, institution or person.

The register is divided into Part A and Part B as per legislation.

an application for registration in prescribed form;

• a signed power of attorney or prescribed form of authorisation if applicant is a foreigner or elects to use an agent. The agent must be an advocate of the High Court of Uganda;
• at least 4 additional representations of the mark in prescribed from exactly corresponding to that affixed to the application form;
• proof of payment of prescribed fees;
• priority document (if applicable), with verified English translation

b) An application for preliminary advice as to the distinctiveness of the trademark is made to the registrar (optional).

c) An application for registration is filed upon payment of the prescribed fee.

d) The application is reviewed by the registrar to determine its inherent registrability and conflict with prior existing registrations/applications.

e) If accepted, the application is advertised in the official gazette for 60 (sixty) days. An opposition to the registration may be made within the prescribed time from the date of advertising.

f) If there is no opposition after the expiration of 60 days of advertisement, the trademark is entered in the register and a certificate of registration is issued upon payment of the prescribed fee.

• the trademark was registered without any bona fide intention to use the trademark and there has, in fact, been no bona fide use of the trade mark up to the date 1 month before the date of the application for cancellation.
• at least 1 month prior to the date of the application a continuous period of 3 years or more elapsed during which the trademark was registered and there was no bona fide use in relation to the goods or services of the owner.

The license agreement must provide for quality control by the licensor.

These rights must be registered. The assignee must make application to register his title.

Any document or instrument in respect of which no entry has been made in the register of trademarks will not be admitted in evidence in any court in proof of title to the trademark unless a court otherwise directs.

• The application may be filed directly with the ARIPO office or with the trademark office of a member state. If filed at a national trademark office, the application must be transmitted within one month of receipt to the ARIPO office.
• The application is examined as to formal requirements.
• If the application is compliant in that respect, the ARIPO office notifies each designated state.
• The application is subjected to substantive examination by each designated state. Before the expiration of 9 months from the date of the notification by the ARIPO office, each designated state may make a written communication to the ARIPO office refusing the application and giving reasons under national laws.
• Where the application has been accepted by any designated state, it is published in the Marks Journal as having been accepted by that state.
• Registration takes place 3 months after publication and upon payment of registration fees.
• A certificate of registration is issued to the applicant and the registration is published in the Marks Journal.

• Paris Convention for the Protection of Industrial Property
• World Intellectual Property Organisation
• The African Regional Intellectual Property Organization (ARIPO)
• Patent Cooperation Treaty (PCT)
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

• The Industrial Property Act, 2014
• The Industrial Property Regulations, 2017

• A patent
• A certificate of utility model
• Registration of an industrial design
• A certificate of technovation

Non-patentable subject matter: discoveries and 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 the treatment of humans or animals; mere presentation of information; plant or animal varieties or essentially biological processes for the production of plants or animals; plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and micro-biological processes; pharmaceutical products and test data until 1st January 2016 or such other period as may be granted to Uganda or least developed countries by the Council responsible for administering the TRIPS Agreement ; natural substances, whether purified, synthesized or otherwise isolated from nature; except the processes of isolating those natural substances from their original environment; and the human body and all its elements in whole or in part. Furthermore, the Minister may, in the public interest and for a period no greater than two years, designate as unpatentable inventions concerning certain kinds of products or processes for the manufacture of such products. 

Non-patentable inventions: plant varieties as provided for in the Plant Variety Protection Act, 2014; and inventions contrary to public order, morality, public health and safety, public policy, principles of humanity and environmental conservation.

Disclosure of an invention is not considered where it occurred within 12 (twelve) months before the filing date or the priority date of the application or disclosure of the invention is a consequence of acts committed by the applicant or his predecessor in title, or of abuse committed by a third party in relation to the applicant or his predecessor in title.

• Request letter seeking patent protection. The request shall state the name and prescribed data concerning the applicant, the inventor and the agent, if any, and the title of the invention and where the applicant is not the inventor the request shall be accompanied by a statement justifying the applicant’s right to the patent.
• Completed patent application form.
• Patent specification. This is a document describing the invention and should include title, abstract, description, claims and drawings if any.
• Proof of payment of application and examination fees.
• Power of attorney for someone not residing or whose business is not in Uganda. This application must be made by an advocate of the High Court of Uganda.

• Submission of application for a patent together with the requisite filing documents at URSB.
• If filing requirements have been met, the application is assigned a filing date and a patent application number by the registrar. Where the filing requirements have not been met the applicant is required to file a correction or furnish missing drawings with 60 days from the date of the invitation to correct the application. The date of receipt of the required correction or missing drawings is taken to be the filing date of the application.

Note: Where it appears to the Registrar that a filed application contains information prejudicial to the security of Uganda or the public interest, he or she must notify the Minister and may give directions prohibiting/restricting the publication of that information or its communication to any specified person(s).

• Publication of the application in the Gazette and a newspaper of wide circulation after the expiration of 18 months the filing date or where priority is claimed, from the date of priority. A notice of opposition may be filed within 90 days after the publication.
• International-type search. The Registrar may subject an application which is compliant in form to an international-type search. The applicant must pay the prescribed fee failure of which results in rejection of the application. Within 30 days from receipt of a report on an international-type search, the Registrar must send a copy thereof to the applicant. The applicant must furnish the requested documents within 90 days after the date of request. Where the report establishes that the claim is not an invention, the application will be rejected or the defective claims will be withdrawn unless the applicant satisfies otherwise.
• Examination of the application as to substance. The Registrar may request that an application for a patent which relates to a specified file be examined to establish whether it meets patentability requirements.
• Notification of refusal or grant of a patent must be communicated to the applicant within 15 days after the decision is made.
• Upon notification of grant of a patent the applicant must pay grant fees.
• A certificate of grant of a patent is issued to the applicant.
• The granted patent is registered and must be published in the Gazette within 30 days after issuing of the application. A post-grant opposition may be filed within one calendar year of the published grant of the patent.

• A patent has a term of 20 years from the filing date of the application. Annual fees must be paid to maintain the application or the patent.

• A right to be granted the patent upon fulfilling the necessary requirements.
• A right to make, use, exercise and sell the invention exclusively
• A right to preclude any person from exploiting the patented invention without authorization.
• Rights to assign or transfer by succession the application for patent or the patent.
• A right to conclude licence contracts.

• Disclose the invention in a clear and complete manner, and in particular to indicate best mode for carrying out the invention
• Give information concerning corresponding foreign applications and grants including denials, revocations, invalidations, suspensions or lapses
• Pay prescribed fees
• Work the patented invention in the country within the time limit prescribed
• In connection with licence contracts and contracts assigning patents or patent applications, to refrain from making undesirable provisions i.e. clauses that impose unjustified restrictions on the licensee with the consequence that the contract taken as a whole is harmful to the economic interests of Uganda.

Duration: A utility model certificate is valid for 10 years after the date of grant of a utility model and is not renewable.

Duration: The registration of an industrial design is valid for 5 years after the date of registration. It may be renewed for two further consecutive periods of 5 years upon payment of the prescribed renewal fee.

An employee must file a written request for a technovation certificate from the enterprise. Where the requirements under the Act have been satisfied, the enterprise should within 3 months from the date of proposal issue a technovation certificate to the employee.

Procedure:

• Under the Protocol, an applicant for the grant of a patent for an invention or the registration of an industrial design can, by filing only one application, designate any one of the Harare Protocol Contracting States in which that applicant wishes the invention or industrial design to be accorded protection.
• The Protocol requires the filing of the application to be made with the industrial property office of any one of the Contracting States (if the law of that states permits) or directly with the ARIPO Office.
• The application must identify the applicant, describe the subject matter of the application, designate the Contracting States for which protection is sought and must be accompanied by payment of prescribed fees.
• Where the application is filed with the industrial property office of a Contracting State, it must be transmitted to the ARIPO office within 1 month of receipt.
• The ARIPO Office, on receipt of the patent application, undertakes a substantive examination to ensure that the invention which is the object of the application is patentable (i.e., it is new, involves an inventive step and is capable of being applied in industry).
• When the application complies with the substantive requirements, copies thereof are sent to each designated Contracting State which may, within 6 months, indicate to the ARIPO Office that, according to grounds specified in the Protocol, should ARIPO grant the patent that grant will not have effect in its territory.
• For industrial design applications, only a formality examination is performed. If the application fulfills the formal requirements, the ARIPO Office registers the industrial design which has effect in the designated States. However, the same right to communicate to the ARIPO Office within 6 months that the registration may not have effect in the designated States concerned is reserved.

Note: The Administrative Council adopted amendments to the Harare Protocol and its Implementing Regulations to create a link between the Protocol and the WIPO-governed Patent Cooperation Treaty (PCT). This link commenced operation on July 1, 1994, and has the following effects:

1. any applicant filing a PCT application may designate ARIPO which in turn means a designation of all States party to both the Harare Protocol and the PCT;
2. the ARIPO Office acts as a receiving office under the PCT for such States; and
3. the ARIPO Office may be elected in any PCT application.

• ARIPO patents have a duration of 20 years from the filing date.
• A utility model has a duration of 10 years from the filing date.
• An industrial design has a duration of 10 years from the filing date.

Procedure:

• File an international application with a national or regional patent office or WIPO, complying with the PCT formality requirements. One set of fees should be paid.
• International Search: an “International Searching Authority” (ISA) (one of the world’s major patent offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether the invention is patentable, and establishes a written opinion on the invention’s potential patentability.
• International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of the international application is disclosed to the world.
• Supplementary International Search (optional): a second ISA identifies, at the applicant’s request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
• International Preliminary Examination (optional): one of the ISAs at the applicant’s request, carries out an additional patentability analysis, usually on an amended version of the application.
• National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of the initial application, from which priority is claimed, the applicant should start to pursue the grant of patents directly before the national (or regional) patent offices of the designated countries.

• Power of Attorney (can be late filed, within 3 months)
• Specification, claims and abstract in English (required on the day of filing)
• Formal drawings, if applicable (required on the day of filing)
• Relevant class(es) of the International Patent Classification (can be late filed, no set deadline)
• Assignment of Invention (can be late filed, no set deadline)
• Copy of Published International Application (required on the day of filing)
• Copy of International Search Report (can be late filed, no set deadline)
• Copy of International Preliminary Report on Patentability (can be late filed, no set deadline)

• Power of Attorney (simply signed) (can be late filed, within 2 months)
• Specification, claims and abstract in English (required on the day of filing)
• Formal drawings, if applicable (required on the day of filing)
• Relevant class(es) of the International Patent Classification (can be late filed, no set deadline)
• Assignment of Invention (can be late filed, no set deadline)
• Priority document with verified English translation (can be late filed within 3 and 6 months respectively)

• World Intellectual Property Organisation
• WTO
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

• The Copyright and Neighbouring Rights Act, 2006
• The Copyright and Neighbouring Rights Regulations, 2010

• Copyright rights
• Neighbouring rights

Copyrightable subject matter: Literary, scientific, artistic works and derivative works;

Non-copyrightable subject matter: Ideas, concepts, procedures, methods or things of a similar nature, public benefit works

• An application for registration in prescribed form
• Copies or records of the work
• Proof of payment of prescribed application fee

• Submission of application for registration to the Registrar of Copyright at URSB.
• Publishing of a notice of the application in the Gazette for 60 days. Fees for publication must be paid by the applicant.
• If no objection is made, the applicant is registered as the author or owner and a certificate of registration is issued to the applicant.

• Economic rights i.e. reproduction rights, publishing rights and authorization rights.
• Moral rights which allow the author to be associated with the works.

• The economic rights are protected during the life of the author and 50 years after the author’s death.
• Where the work is of joint authorship, the economic rights are protected during the life of the last surviving author and 50 years after the death of the last surviving author.
• Where the economic rights are owned by a corporation or other body, the protection is for 50 years from the date of the first publication of the work.
• In respect to audio-visual work, sound recording or broadcast, the economic rights are protected until the expiration of 50 years commencing from the date of making the work or from the date the work is made available to the public with the consent of the author.
• In the case of a computer program the economic rights of the author are protected for 50 years from the date of making the program available to the public.
• In the case of photographic work, the economic rights of the author are protected for 50 years from the date of making the work.
• The moral rights of an author exist in perpetuity whether the economic rights are still protected or not and that moral right is enforceable by the author or after death his or her successors.

• Authorisation rights in respect to fixation, broadcasting, reproduction, distribution, commercial rental to the public of his or her performance and making it available by wire or wireless means.
• The right to enter into a contract for the use of his or her performance or fixation by another person.
• Moral rights
• A director’s rights:
  • Moral rights
• A producer’s rights:
  • Authorisation rights in respect to reproduction, distribution, commercial rental to the public of his or her sound recording or audio-visual fixation and making it available to the public by wire or wireless means.
• A broadcasting company’s rights:
  • Authorisation rights in respect to broadcasting, fixation, reproduction of fixation of its broadcasts.

A producer of programme carrying signals has the right to authorise further transmission of the signal in Uganda or from its territory.

• A performer’s rights are protected for 50 years from the date of the performance.
• A producer’s rights are protected for 50 years from the date of cutting the matrix.
• A broadcasting company’s rights are protected for 50 years from the date the first broadcast takes place.
• The rights of a producer of programme carrying signals exist for 50 years from the date of publication of the programme.

• Regulation of collecting societies.
• Provision for contracts relating to the exploitation of rights i.e. publishing contacts, public performance contracts and broadcasting contracts.

• ARIPO (Arusha Protocol for the Protection of New Varieties of Plants)

• The Plant Variety Protection Act, 2014. The Act applies to plant varieties and their derivatives, plant breeders, export of seeds of plant varieties.

• Application in prescribed form.
• Proof of compliance with the national variety testing and evaluating requirements prescribed in the regulations.
• Proof of payment of application fees.

• An application for breeders’ rights is filed with the Plant Variety Protection Office which is headed by a Registrar.
• The Registrar within 6 months presents the application to the Plant Variety Protection Committee which must make a decision within 6 months.
• The Registrar then informs the applicant of the Committee’s decision.
• If accepted, the application is published in the Gazette and in a newspaper of wide circulation. An objection to grant of rights may be lodged with the Registrar.
• After the lapse of 6 months from the publication date, the Committee must grant the rights upon satisfaction that there has been no objection filed; the plant variety is new, distinct, uniform and stable; consent has been sought in the case of a joint application; the rights have not been granted to another person and there is no prior application for those rights.
• The Registrar publishes the granted rights in the Gazette and a newspaper of wide circulation.

• Plant breeders’ rights have a term of 20 years in the case of annual crops and 25 years in the case of trees, vines and other perennials from the filing date of the application.

• Exclusive rights to sell and export or license other persons to sell and export plant varieties and reproductive material of plants of that variety.
• Exclusive rights to produce or license other persons to produce reproductive material of plants of variety for sale.
• Assignment, transmission and transfer rights.

Procedure:

• The application can be filed with either the ARIPO office or the national authority of a contracting state. If filed with the latter the application must be transmitted to the ARIPO office within 1 month of receipt.
• The application is examined as to novelty, distinctness, uniformity and stability.
• The applicant is notified by ARIPO on whether the application is accepted or not.

The term of protection may be extended for an additional 5 years by a notice in writing to the ARIPO Office in respect of specific genera and species.

• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which defines a trade secret as follows: information that is not generally known to the public, confers economic benefit on its holder because the information is not publicly known; and where the holder makes reasonable efforts to maintain its secrecy.

• The Trade Secrets Protection Act, 2009. The Act provides for the protection of confidential information used in commercial transactions.

• The information must be a secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
• The information must have commercial value because it is secret; and
• The information must have been subject to reasonable steps under the circumstances, by a person lawfully in control of the information, to keep it secret.

• Right of action where there is infringement. This only arises where the disclosure, acquisition or use of a trade secret is by improper means that are contrary to honest commercial practice like commercial espionage, physical force or unauthorized entry into a place of business, fraudulent misrepresentation to induce disclosure, deceit, breach of contract, etc. As such, honest means of disclosure or acquisition like reverse engineering alone, using public sources, independent invention or discovery, gift, purchase, or inheritance are permissible.Proceedings for the improper disclosure, acquisition or use of a trade secret must be commenced within two years from discovery of disclosure, acquisition or use.
• Right to assign, transfer or license