Industrial Property Act

This section provides definitions of terms used in the Act (for example "application", "Bureau", "compulsory licence", "Registrar", "patent", "Minister").

The Registrar designated under the Uganda Registration Services Bureau Act is the Registrar of Industrial Property; the Registrar must have an approved seal (or, until obtained, an approved stamp); impressions of the seal or stamp are judicially noticed; acts directed to the Registrar may be done by officers authorised by the Minister.

The Registrar must perform specified functions including receiving and granting industrial property applications; registering technology transfer agreements and licences; providing industrial property information; promoting inventiveness; performing other functions to carry out the Act; and liaising with relevant institutions.

The Registrar must keep two registers (applications received; rights granted). A person may inspect the registers during working hours and may obtain extracts if they pay the prescribed fee and comply with regulations.

Members, officers, employees or agents of the Registrar and persons acting on their directions are not personally liable for actions done bona fide while executing the functions of the Registrar.

The Registrar must pay compensation or damages to any person for injuries (to the person, property or interests) caused by performing Registrar functions or by failure of works.

An invention is regarded as having an inventive step if, considering relevant prior art, it would not have been obvious to a person skilled in the art on the filing date or the validly claimed priority date.

An invention is industrially applicable if it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services.

The provision lists categories of inventions that are not patentable, including plant varieties and inventions contrary to public order, morality, public health and safety, public policy, principles of humanity and environmental conservation.

Registrar may give directions restricting publication of patent application information if it might harm Uganda's security or public safety; the Registrar must notify the concerned Minister, who must consider and may direct continuation or revocation; failure to comply is an offence with fines or imprisonment.

A person resident in Uganda must not file or cause to be filed a patent application outside Uganda without written authority from the Registrar, subject to specified conditions and exceptions; contravention is an offence punishable by a fine not exceeding forty-eight currency points or imprisonment not exceeding two years, or both.

When a patent concerns a micro-organism that is not publicly available and cannot be described to enable the invention, disclosure is only regarded as made if a culture is deposited, available application information about the micro-organism is provided, and the depository institution and file number are stated; the information in subsection (1)(b) may be submitted within sixteen months after filing (or after the priority date if priority is claimed).

Defines “invention” as a solution to a specific problem in the field of technology.

An invention is patentable if it is new, involves an inventive step, and is industrially applicable.

An invention is new (novel) when it is not anticipated by prior art or cannot be derived by a person highly skilled in the field from prior disclosed art; prior art includes any public disclosure anywhere before the filing or claimed priority date.

The right to a patent belongs to the inventor; joint inventors hold it jointly; where independent inventors made the same invention, the person with the earliest filing (or valid priority) date that leads to grant has the right. The right may be assigned or transferred by succession.

If an applicant obtained the essential elements of another person's invention, the applicant must assign the application or the patent to that person unless authorised by them.

When an invention is made in execution of a commission or in employment, the patent belongs to the commissioner or employer unless a contrary contract exists; employees may be entitled to equitable remuneration in specified circumstances; the court fixes remuneration if parties do not agree.

Specifies naming of the inventor on patent filings and allocates rights to patent ownership and remuneration between employers and employees in various employment-related circumstances.

The party making an assignment must sign the contract assigning a patent or application.

Joint owners of a patent or patent application may each separately transfer their shares, exploit the patent, and stop others from exploiting it; however, they may only grant third-party permissions jointly.

Requires representation by a High Court of Uganda advocate for applicants resident or based outside Uganda; allows the applicant to withdraw the application before grant; permits the Registrar to require adaptation of foreign descriptions to local ordinary skill in the art.

An application must relate to only one invention or to a group of inventions linked as a single general inventive concept; regulations must set rules on unity of invention; a granted patent from a non‑compliant application is not by that fact alone grounds for invalidation or revocation.

Applicants may amend or divide a patent application, but amendments must not go beyond the original disclosure; divisional applications are entitled to a filing date and, where appropriate, the initial application's priority date.

The Registrar may request a certified copy of an earlier application and must accept the form and content of that certification.

At the Registrar's request, an applicant must furnish specified documents relating to corresponding foreign applications within sixty days; the applicant may submit comments on those documents.

The application is subject to payment of the prescribed fees; the Registrar may waive the whole or part of the fees in such manner and under such circumstances as may be prescribed.

An applicant may withdraw the application at any time before grant, before notification of rejection, or before refusal; if withdrawn, the applicant shall forfeit the prescribed fees paid.

The Registrar must accord a filing date when an application on receipt contains certain formal elements; if missing elements are found the Registrar must invite corrections or drawings and accord the filing date on receipt of those corrections or drawings; the Registrar must examine applications after allocating a filing date; interested parties may oppose within 90 days and the Registrar must publish opposition notices; applicants may file counter statements within 60 days and hearings may be granted.

The Registrar must publish a patent application after eighteen months from filing (or priority date) and the publication must include particulars in the regulations, the Gazette and a widely circulated newspaper.

The Registrar may direct an application to be the subject of an international type-search; when so directed the Registrar shall request the applicant to pay the prescribed fee and may request copies cited in the report; failure to pay or to furnish requested copies within prescribed time without lawful reason leads to rejection; the Registrar shall reject applications or claims found not to be inventions unless the applicant satisfies the Registrar otherwise.

Section gives the Registrar powers to direct and amend directions via Gazette, requires the Registrar to examine or cause examination of patent applications (when requested or in other specified cases), requires notification to applicants, allows applicants three years from filing to request examination, permits referral to examiners and mandates transmission of examiner reports and other notifications; the Registrar may refuse grant if conditions are not met.

The Registrar must publish granted patents in the Gazette, should decide on applications within two years of examination commencement when possible, may change patent drawings at an owner's request subject to disclosure limits, and any interested party may petition to reconsider a grant.

An applicant aggrieved by a Registrar's decision may appeal to the court within two months against specific Registrar decisions.

The registry must act as a receiving office for international patent applications filed by nationals or residents of Uganda, act as a designated or elected office when Uganda is so designated or elected, and the registry's functions under this Part must be performed in accordance with the Patent Cooperation Treaty and related instruments and domestic Act and regulations.

If an international preliminary examination or search report is incomplete or indicates defects, the Registrar may reject or consider withdrawing parts of the international application, applicants must satisfy the Registrar or amend/divide the application, and the Registrar may refuse to grant a patent unless requirements are met.

Relief against infringement may be sought for acts committed after the date of international publication (if published in English), or, where publication was not in English, where the applicant has transmitted an English translation to the infringer and only for acts committed by the infringer after receipt of that translation.

An international application published under article 21 of the Patent Cooperation Treaty that designates Uganda is to be treated as published under section 28.

The applicant or owner of an invention has exclusive rights to make, use, exercise and sell the invention and to prevent others from exploiting it without authorisation; owners may assign patents and conclude licence contracts.

The applicant or owner of an invention must perform specified obligations including disclosure of the invention (best mode), provide information on foreign applications, pay prescribed fees to the Registrar, work the invention in the country within prescribed time limits, and avoid undesirable provisions in licence or assignment contracts.

The owner of a patent is entitled to obtain an injunction, claim damages, and claim compensation against persons performing patent-restricted acts without authorisation under specified knowledge/notice conditions.

A person who, in good faith before the patent filing or priority date and within the patent territory, was using an invention or preparing seriously to use it for their enterprise (the "prior user") is entitled to continue using the invention.

The scope of protection for a patent is determined by the patent claims; if the claims are inadequate, the description and drawings may be used to interpret them.

Patent rights are limited: they only cover industrial or commercial acts (not scientific research), and do not apply to articles put on the market (including imports with owner consent), to temporary use on foreign aircraft/vehicles/vessels in Uganda, or to distinct mutants/variants deserving separate patents.

It is not an infringement of a patent to use a patented invention without the patent holder's authorisation in the specified circumstances.

A patent granted by ARIPO has the same effect in Uganda as a patent granted under this Act, except if the Registrar communicates to ARIPO a decision (in respect of the application and under the Protocol) that the ARIPO patent shall have no effect in Uganda.

A patent expires twenty years after the application's filing date.

The Registrar must publish patent lapses; an interested person may request restoration within six months after the grace period by paying the prescribed fee; the Registrar must restore if satisfied the non-payment was not intended and the fee is paid.

The licensee is entitled to perform the acts in section 37 with respect to the invention in Uganda and in any field of use, without time limitation; however, subject to subsection (1), the licensee may not authorize a third person to perform those acts.

Unless the licence contract says otherwise, the licensor may grant others permission (or exercise the rights themselves); but if the licence contract makes the licence exclusive the licensor may not permit third parties or exercise those acts, and the licensee is treated as an exclusive licensee.

If, before the licence contract expires, the patent application is withdrawn or rejected, or the patent is revoked or declared invalid, the court may, on the application of the aggrieved party, order repayment of royalties or return of consideration directly relating to that application or patent.

Licence contracts must be in writing and must be signed by the parties to the contract.

Licence contracts (including modifications) must be submitted to the Registrar for registration; any party may petition for registration; the Registrar must issue a receipt and must notify the petitioner before refusing, allowing parties to correct defects or submit observations within 45 days; the Registrar may refuse registration for specified non‑compliance and must state reasons; a licence contract is void if registration is refused.

The Registrar may refuse to register a licence contract if any clause in it imposes unjustified restrictions on the licensee that harm Uganda's economic interests; a long list of specific contract terms are identified as having that effect.

If the Registrar finds the licence contract may be registered, the Registrar must register the contract and issue a certificate of registration to the petitioner.

A petitioner aggrieved by the Registrar's decision may appeal to the court within two months after the Registrar's refusal; appeal grounds are limited to three specified categories.

A person may apply to the Minister for a licence to exploit a patent after specified time periods if the market is not being supplied on reasonable terms; however a non‑voluntary licence must not be granted if the patent owner convinces the Minister that lack of supply is justified.

If working a later patent would infringe an earlier patent, the owner of the later patent may request the Minister to grant a compulsory licence of the earlier patent to the extent necessary when the later invention is an important technical advance of considerable economic significance.

A compulsory licence will not be granted unless the applicant satisfies the Minister that they tried to obtain a contract licence on reasonable commercial terms and within a reasonable time, and offers a guarantee satisfactory to the Minister; the first requirement is waived for national emergency, extreme urgency, or anti-competitive practices, and the Registrar must notify the patent owner of any waiver as soon as reasonably possible.

The Minister must decide requests for compulsory licences and, if granting one, fix terms that form a contract; the Minister must ensure licences are limited in scope/duration, predominantly for regional supply, non-exclusive, prohibit sublicensing without patent owner consent, provide equitable remuneration, and (for semiconductor technology) be only for public non-commercial use or to remedy an anti-competitive practice. Representatives of the Registrar and the patent owner are entitled to appear and be heard at hearings.

A compulsory licence may be transferred only together with the part of the industrial undertaking or its goodwill where the invention is used, and such a transfer is not valid until the Minister's consent is obtained.

Section Cancellation of compulsory licence Section On the application of an interested party, the Minister may cancel a compulsory licence if— the licensee fails to comply with the terms of the licence; or the conditions which justify the

When the Minister grants, cancels or varies the term of a compulsory licence, the Minister must instruct the Registrar to record the grant, cancellation or variation in the register without payment of any fee.

The patent owner may ask the Registrar to enter that a licence is available as of right; the Registrar notifies the licensee, who may object within the prescribed time; absent valid objections the Registrar enters and publishes it; a person can require a non-exclusive licence (terms fixed by court if no agreement); annual fees after entry are halved; the owner may ask to cancel the entry by paying the balance and the Registrar shall cancel and publish the cancellation.

Section allows the Minister to authorise use or revoke orders related to exploitation of patents, sets notice and communication requirements, requires unsuccessful licence negotiation before an application, and provides for equitable compensation determined by the Minister; aggrieved persons may appeal.

The Minister may claim proprietary interests in patents that fail to comply with section 20(6) and (7) regarding genetic resources and must notify the Registrar to assign at least twenty percent ownership to the ministry or a designated agency; the competent authority may, under specified serious non‑compliance and if holding total ownership, withdraw or abandon the application so the invention enters the public domain.

Certain patent provisions apply, with modifications, to utility model certificates and their applications; where patent and utility model rights conflict as in section 16(3) the patent provision is to be read as referring to a "utility model certificate"; and a utility model certificate is prima facie evidence that its holder is the registered owner with the Registrar.

An invention qualifies for a utility model certificate if it is new and industrially applicable; certain sections do not apply to utility model applications; a utility model certificate expires at the end of the tenth year after grant and is not renewable.

An applicant may convert a pending patent application into a utility model application (and vice versa) upon payment of the prescribed fee; the converted application keeps the initial filing date.

Defines “an industrial design” as the ornamental or aesthetic aspect of a useful article, including three-dimensional features such as shape, surface, patterns, line or colours, and excludes aspects that serve solely to obtain a technical result or leave no freedom as to arbitrary appearance features.

The creator of an industrial design (or their successor in title) has the exclusive right to sell, or cause to be sold, for commercial or industrial purposes the goods containing the design, subject to this Act and any other written law.

Section Registrable industrial designs Section An industrial design is registrable if it is new. An industrial design shall be taken to be new if it has not been disclosed to the public, anywhere in the world, by publication in tangible

A person seeking to register an industrial design must submit specified documents and fees to the Registrar; the applicant may request deferment of publication for up to twelve months, and the Registrar must register and publish the design if requirements are met.

A registered industrial design expires at the end of the fifth year after registration; it may be renewed twice for further five‑year periods on payment of the prescribed renewal fee; the renewal fee must be paid within twelve months before expiration, and a six‑month grace period for late payment is allowed on payment of a prescribed surcharge.

The owner or any other person entitled may apply to restore an industrial design if non-renewal was due to circumstances beyond the owner's control, by paying the prescribed renewal fee and surcharge within one year; the application (with proof and a statement of grounds) must be sent to the Registrar, who will examine the grounds and either restore or reject the registration; restored designs are published by the Registrar.

The Registrar must keep applications, drawings, photographs and specimens of registered industrial designs and communicate them on request; drawings and specimens are kept for eight years after expiry and may be examined on payment of the prescribed fee; after publication a person may obtain official copies on payment; applicants seeking priority may obtain official copies.

The Registrar must publish a reference to the registration of all industrial designs that includes specified details (number, filing date, any validly claimed priority, drawings/photographs/graphics and whether a specimen was deposited).

Registration of an industrial design gives the registered owner the right to stop third parties from reproducing, importing, selling or stocking products that reproduce the design for industrial or commercial purposes, and to bring court proceedings for infringement; ARIPO registrations have the same effect in Uganda unless the Registrar communicates otherwise.

Rights subsisting in an industrial design may be transferred in whole or in part.

This section defines key terms used in Part XIV, including “date of the proposal”, “employee”, “enterprise”, “technovation”, “technovation certificate”, and “technovator”.

An employee of the enterprise on the date of the proposal is entitled to a technovation certificate, subject to subsection (2).

Employees must file a written, signed request for a technovation certificate with the enterprise; the enterprise must assist with filing and must issue a receipt acknowledging filing and stating the filing date.

If the Part's requirements are met, the enterprise must issue a technovation certificate to the employee within three months of the proposal; the enterprise may refuse if it believes requirements are unmet and must notify the employee of the reasons within the same prescribed period.

When an enterprise issues a technovation certificate it must notify the technovator in writing whether it intends to use the technovation; the technovator must assist the enterprise in testing and use; the technovator must not disclose or use the technovation except with the enterprise; limited exemptions and a right to communicate non-know‑how are provided.

If an enterprise uses or communicates a technovation to a third person, the technovator is entitled to remuneration; the amount and method of payment must be fixed by mutual agreement between the technovator and the enterprise if there is no applicable collective bargaining agreement.

A contractual provision that is less favourable to employees or technovators than the provisions of this Part is void.

Disputes about this Part must be submitted by any interested party to a three-member arbitration board; members are appointed by the complainant, the party complained against, and the two members jointly appoint a chairperson, with the chief magistrate’s court empowered to appoint a chairperson if the parties cannot agree.

The owner of a patent, utility model or industrial design registration certificate may surrender it to the Registrar; surrender is recorded and published by the Registrar and only effective after publication; surrender can be limited; surrender where a licence is recorded requires the licensee's declaration of consent unless the licence waives consent.

The court must revoke or invalidate patent, utility model or industrial design registrations on specified grounds and sets procedural requirements for applications, counter-statements, service, and publication.

A revoked or invalidated patent, utility model, or registered industrial design (or claims) is treated as having ceased to have effect from its grant; when the court's decision is no longer subject to appeal the court must inform the Registrar, who must immediately register it and publish it in the Gazette.

Performing an act listed in section 37 or 78, in relation to a product or process covered by a valid patent or certificate, by someone who is not the owner and without the owner’s authorisation shall constitute an infringement (subject to sections 43, 48, 58, 59 and 67).

The court must, on request by the owner of a patent, registered utility model or industrial design, grant reliefs such as injunctions, damages, or other remedies provided by law.

Any person with a legitimate interest may ask the court to declare that performing a specific act does not infringe a patent, utility model, or industrial design; the owner and any licensee have the right to be defendants in those proceedings.

A person threatened with infringement proceedings who can prove their acts do not infringe may ask the court for an injunction to stop the threat and for damages for financial loss.

In patent-infringement proceedings where the patent covers a process for obtaining a product, the alleged infringer must prove that the identical product was not made by the patented process when certain conditions are met.

On appeal to the court under this Act, the court may confirm, set aside or vary the order or decision, exercise powers the Registrar could have exercised in the related proceedings, and make orders as to costs.

A rights owner who reasonably suspects importation of pirated goods may apply to the court to suspend release of those goods; if they start the procedure they must provide evidence of prima facie infringement and a detailed description of the goods.

The court may appoint a person with expert knowledge to assist when such knowledge is required for proper determination of the case.

An exclusive licensee may request the owner to start legal proceedings for infringements; if the owner does not act the licensee may notify the Registrar and, after three months and giving notice to the owner, bring the proceedings in the licensee’s own name; the owner may join; the court may, on the licensee's request and before that three‑month period ends, grant an injunction if immediate action is needed to avoid substantial damage.

The section sets out enforcement remedies for patent rights: courts may refuse injunctions in certain cases; courts may grant injunctions and damages on request by a patent owner or licensee (after specified conditions); customs authorities may take border measures and notify rights owners who have ten days to respond; provisional measures to preserve evidence may be ordered before grant.

Matters required to be published under this Act must be published in the Gazette and, as soon as practicable, in a newspaper of wide circulation in the relevant area.

The Minister may make regulations; those regulations may prescribe penalties including a fine up to forty-eight currency points, imprisonment up to two years, additional penalties for continuing offences, and forfeiture of items used in the contravention.

The Registrar may correct clerical or transcription errors and may extend time for acts or proceedings on written request; substantive errors can only be modified by the court under due process.

The Registrar must give any party to a proceeding an opportunity to be heard before exercising any discretionary power adversely affecting that party.

The Minister may amend the Schedule to this Act by statutory instrument with the approval of Cabinet.

The Registrar is exempt from stamp duty on instruments executed by, on behalf of, or in favour of the Registrar.