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Monday, 14 October 2013

The Common Law Rights: In Trademark Registration

Common law rights:
From an enforcement perspective, Uganda is a former British Colony and, as such, it recognizes that a person who has acquired a reputation in a mark in relation to goods or services may prevent others from misrepresenting that they are associated with the proprietor in a manner that is likely to cause confusion and deception and damage to the person with a reputation.

This right is expressly recognized by the Trade Marks Act which states that nothing in the Act shall be taken to affect a right of action against a person for passing off goods or services as the goods or services of another or the remedies in respect of the right of action.

Marking of goods:
The marking of goods is optional.

Patents
Law:
·                      Patents Act, Chapter 216 of 1993
·                      Patents (Amendment) Act of 2002
·                      Patent Regulations, 1993

Patent protection:
Patent protection is available via a national filing or via an ARIPO application designating Uganda. Uganda has implemented the Harare Protocol (which regulates patent filings in ARIPO) in its national law, thereby giving valid patent protection to applicants seeking to obtain a patent via an ARIPO application.

Uganda has also implemented in its national law, by way of the Patents (Amendment) Act, 2002 the necessary provisions to recognise international applications under the PCT and designating Uganda, and to deal with national phase PCT applications in Uganda. Therefore, Uganda can be designated in PCT international applications, and PCT national phase applications can be filed and processed in Uganda.

Patentable subject matter:
Inventions are patentable if they are new, involve an inventive step and are industrially applicable. An invention is new if it is not anticipated by prior art.
The following, even if they are inventions, are not patentable:
·         discoveries and scientific and mathematical theories
·         plant  or animal varieties or essentially biological processes for the production of plants or animals, other than biological (sic; microbiological intended) processes and the products of such processes
·         schemes, rules or methods for doing business, performing purely mental acts or playing games
·         methods for treatment of the human or animal body by surgery or therapy as well as diagnostic methods (this restriction shall not apply to products for use in any of these methods)
·         mere presentation of information.

·         Types of applications:
·         Application for a patent may be made by way of –
·         a non-convention application, where the effective date is the filing date of the application
·         a convention application, where the effective date would be the priority date of the first-filed application under the Paris Convention
·         a national phase application based on an international application under the PCT in which Uganda is designated
·         an ARIPO application designating Uganda
·         a divisional application, where the original application covers more than one invention
·         a utility certificate application, which (before refusal or grant) may be converted to a patent application.

Application:
Non-convention, convention and PCT national phase applications are filed with the office of the Registrar of Patents. Applications in terms of the Harare Protocol (ie ARIPO applications) can either be filed via the Uganda patent office, in which case they must be transmitted to the ARIPO office for processing. Alternatively, they can be filed at the ARIPO office in Harare. For more information on ARIPO, please refer to the chapter on ARIPO. Foreign applicants must have a local address for service.
Filing requirements:
·         full particulars of the applicant
·         power of attorney (simply signed)
·         assignment from the inventor, or a statement by the applicant justifying his right to the invention (simply signed)
·         specification (including claims, drawings and abstract), in English
·         certified copy of the priority document (if applicable).
Failure to file the priority document within three months from the filing date will lead to the loss of the priority claim.

Novelty:
Absolute novelty is required. An invention is new if it is not anticipated by prior art. Prior art is considered to include everything made available to the public anywhere in the world, by means of written disclosure, including drawings and illustrations, or by oral disclosure, use, exhibition or non-written means.

Convention priority:
An applicant who has filed a patent application in a convention country is entitled to claim priority from such earlier application, provided the application in Uganda is filed within 12 months from the earlier application.

Examination/procedure:
A Uganda application is subjected to formal examination, which takes place automatically. The Registrar may request the applicant to furnish details of corresponding applications in other countries, and may further request that copies of the search report, granted patent, final rejection, etc be furnished.  The Registrar may direct that substantive examination be conducted for particular applications according to the technical field of the invention. In that case, examination is carried out at the ARIPO Patent Office on behalf of the Uganda Registrar.

Duration and maintenance:
A patent has an initial term of 15 years, but may be extended by a further five year period on payment of renewal fees and proof that the invention is being worked in Uganda
Maintenance fees are calculated from the first anniversary of the filing date but become payable upon grant of a patent. Thereafter maintenance fees are due upon the anniversary of the filing date. A six months grace period is provided for payment of renewal fees, subject to payment of surcharges. If a renewal fee is not paid within this period, the patent lapses.

Amendments:
Amendments can be made prior to or even after grant, but any amendment may not go beyond the disclosure of the invention in the application as filed. 

Marking:
No requirement.

Working:
A compulsory licence may be granted in cases of non-working.

Utility model patents:
The Act provides for the granting of utility certificates in respect of inventions which are new and industrially applicable. It is not necessary for the inventions to involve an inventive step. A utility certificate expires, without a possibility of renewal, at the end of the seventh year after the date of filing.

At any time before the grant or refusal of a utility certificate, the application may be converted to a patent application. A patent application may likewise be converted to an application for a utility certificate.

Designs
Law:
·         United Kingdom Designs (Protection) Act, Chapter 218 of 1937

Design protection:
A United Kingdom design extends automatically to Uganda. Design protection is also available via an ARIPO application designating Uganda. However, Uganda has not implemented the Harare Protocol as far as industrial designs are concerned. Accordingly, it is not clear whether the rights derived from a design registered through ARIPO will be enforceable in Uganda.    

Registrable subject matter:
Designs as protectable in the UK.

Types of applications:
Design protection in Uganda can be obtained by:
·         a UK design registration which extends automatically to Uganda
·         an ARIPO application for the registration of a design, designating Uganda.

Application:
United Kingdom registered designs automatically extend to Uganda. As indicated above, application through ARIPO may also be possible inasmuch as Uganda has acceded to the Harare Protocol of ARIPO.

Duration and maintenance:
The UK design registration is effective in Uganda for as long as it endures in the UK. The duration of a design registration via ARIPO is 10 years (see the section on Design protection above).