Industrial Property Act, 2014
Act 3 of 2014
- Published in Uganda Gazette no. 12 on 28 February 2014
- Assented to on 6 January 2014
- Commencement date unknown
- [This is the version of this document from 28 February 2014.]
Part I – Preliminary
1. CommencementThis Act shall come into force on a date that the Minister may, by statutory instrument appoint; and the Minister may appoint different dates for different provisions.
2. InterpretationIn this Act, unless the context otherwise requires—"application" means an application under this Act for the grant of—(i)a patent;(ii)a certificate of utility model;(iii)registration of an industrial design; or(iv)a certificate of technovation;"ARIPO" means the African Regional Intellectual Property Organisation;"ARIPO Office" means the Secretariat managing the African Regional Intellectual Property Organisation (ARIPO), formerly known as Industrial Property Organisation, for the English-speaking Africa (ESARIPO) established by the Lusaka Agreement of 9th December 1976 as amended;"Bureau" means the Uganda Registration Services Bureau established by the Uganda Registration Services Bureau Act;"compulsory licence" means an authorization given by the competent authority to a person, firm or a private or state-owned or state-controlled entity, to exploit a patent, a utility model, a layout-design or an industrial design in Uganda without the approval of the rights owner;"concerned Minister" means the Minister to whose ministry the information in an application relates;"Court" means the High Court of Uganda;"cross-licence" means a licence to enable a person to use his or her own patent together with an earlier patent without which his or her own patent cannot be worked without infringing rights derived from the earlier patent;"currency point" has the meaning given to it in the Schedule;"designated office" means an office designated under section 34;"divisional application" has the meaning given to it by section 23;"elected office" means an office designated under section 34;"examiner" means an examiner of patents designated as examiner of patents under the Uganda Registration Services Bureau Act;"exclusive licence" means a licence contract that confers on the licensee and, where it is established expressly in it, on the persons authorised by the licensee, the right to exploit the licensed industrial property right to the exclusion of all other persons, including the rights owner;"foreign application" has the meaning given to it by section 25;"former Office" means the Patents Office existing immediately before the commencement of this Act;"Harere Protocol" means the Harere Protocol on Patents and Industrial Designs within the Framework of the African Regional Intellectual Property Organisation;"industrial design" has the meaning given to it in section 71;"industrial property rights" mean rights under patents, certificates of utility models and technovation and registration of industrial designs issued under this Act;"innovation" means utility models, technovation models, and industrial designs and any other non-patentable creations or improvements that may be taken as deserving specified intellectual property rights;"international bureau" means the International Bureau of the World Intellectual Property Organisation;"international classification" means the classification of patent for invention, inventors certificates, utility models and utility certificates known as the international patent classification" as established by the Strasbourg Agreement concerning the international patent classification of March 24th, 1971 as amended on September 28, 1979;"international classification" as regards industrial designs, means classification in accordance with the Locarno Agreement of October, 1968;"invention" means a new and useful art whether producing a physical effect or not, process, machine, manufacture or composition of matter which is not obvious, or a new and useful improvement of it which is not obvious, capable of being used or applied in trade or industry; and includes an alleged invention;"inventor" means the person who actually devises the invention as defined in section 8; and includes the legal representative of the inventor;"licence contract" means a contract or an agreement by which a person grants permission to use his or her industrial property rights, know-how, or other technical information or technical services;"licensee" means a person licensed under a contract which is registered or taken to be registered under this Act;"licensor" means a party to a licence contract who grants the permission under a contract registered or taken to be registered under this Act;"Minister" means the Minister responsible for justice;"National Council for Science and Technology" means the Council established by section 1 of the Uganda National Council for Science and Technology Act;"Paris Convention" means the Paris Convention for the Protection of Industrial Property, of 20th March, 1883, as revised;"patent" means the title granted to protect an invention;"Patent Cooperation Treaty" means the Patent Cooperation Treaty signed on June, 1970 the Regulations made made under the administrative instructions under that Treaty as revised, amended and modified;"priority date" means the date of the first application that serves as the basis for claiming the right of priority provided for in the Paris Convention;"priority user" has the meaning given to it in section 41;"receiving office" means an office designated under section 34;"register" means the register of industrial property rights under section 5;"registrar" means the officer designated as registrar of industrial property under the Uganda Registration Services Bureau Act and includes the deputies and assistants of that officer;"self-replicable matter" means any matter possessing the genetic material necessary to direct its own replication by way of a host organism or in any other indirect way;"surcharge" means a fee prescribed under this Act in respect of delayed payment;"utility model" means any form, configuration or disposition of element of some appliance, utensil, tool, electrical and electronic circuitry, instrument, handicraft mechanism or other object or any part of it allowing a better or different functioning, use, or manufacture of the subject matter or that gives some utility, advantage, environmental benefit, saving or technical effect not previously available in Uganda; and includes microorganisms or other self-replicable material, products of genetic resources and herbal as well as nutritional formulations which give new effects;"World Trade Organisation" means the World Trade organisation, established in 1995 by the Uruguay Round of multilateral trade negotiations under the auspices of GATT (General Agreement on Tariffs and Trade, based on a 1947 agreement).
Part II – Administration
4. Functions of the registrar
5. Register of industrial property
6. Protection from personal liabilityNo matter or thing done by any member, officer, employee or agent of the registrar shall, if the matter or thing is done bona fide for executing the functions of his or her office, render the member, officer, employee or agent or any person acting on his or her directions personally liable for any action, claim or demand.
7. Liability of the registrar for damagesSection 6 shall not relieve the registrar of the liability to pay compensation or damages to any person for injury to him or her, his or her property or any of his or her interests caused by the performance of the functions conferred on the registry by this Act or by any other written law or by the failure, whether wholly or partially, of any works.
Part III – Patentability
8. Meaning of "invention"
9. Patentable inventionAn invention is patentable if it is new, involves an inventive step, and is industrially applicable.
11. Inventive stepAn invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the inventions, it would not have been obvious to a person skilled in the art to which the invention relates on the date of the filing of the application or, if priority is claimed on the date validly claimed in respect of the invention.
12. Industrial applicationAn invention shall be considered industrially applicable if, according to its nature, it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services.
13. Non-patentable inventionsThe following are not patentable—
14. Information prejudicial to security of Uganda or safety of the public
15. Restriction on applications abroad by residents of Uganda
16. Patents relating to micro-biological processes or products
Part IV – Right to inventions and naming of inventor
17. Right to a patent
18. Unauthorised application based on an invention of another personWhere an applicant has obtained the essential elements of the invention which is the subject of his or her application from the invention of another person, he or she shall, unless authorised by the person who has the right to the patent or who owns the patent, assign to that person the application or, where the patent has already been granted, the patent.
19. Inventions made in execution of commission or by employee
20. Naming of inventor
Part V – Application, grant and refusal of grant of patent
21. Application for a patent
22. Unity of inventions
23. Amendment and division of application
24. Right of priority
25. Information concerning corresponding foreign applications and grants
26. Payment of fees
27. Withdrawal of applicationThe applicant may withdraw the application at any time before the grant of a patent or before the notification of rejection of the application or before the refusal to grant a patent; but the applicant shall, if he or she does so, forfeit the prescribed fees paid by him or her.
28. Filing date and examination of application as to form
29. Publication of application.
30. International type search
31. Examination as to substance
32. Grant, registration, publication and post grant opposition of a patent
33. Appeals under Part VAn applicant who is aggrieved by a decision of the registrar may appeal within two months to the court against a decision by which the registrar—
Part VI – International applications
34. Further functions of the registry
35. Unsearched or unexamined international applications
36. Provisional protection of published international applications
37. Publication of international applicationsAn international application which is published under article 21 of the Patent Cooperation Treaty and in which Uganda is designated for a national patent shall be treated as published under section 29.
Part VII – Rights and obligations of the applicant or the owner of the invention
38. Rights of the owner
39. Obligations of the ownerThe applicant or the owner of an invention shall have the following obligations—
41. Right of a prior user
42. Scope of protectionThe scope of the protection afforded under this Part to a patent shall be determined by the terms of the claims but where they are inadequate, the description and drawings included in the patent may be used to interpret the claims.
43. Limitation of rights
44. Exception to exclusive rightsIt is not an infringement of a patent to use the patented invention without the authorization of the patent holder in any of the following circumstances—
45. Harere Protocol on patentsA patent, in respect of which Uganda is a designated state, granted by ARIPO by virtue of the Harere Protocol has the same effect in Uganda as a patent granted under this Act except where the registrar 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.
Part VIII – Term of patent and annual fees
46. Term of patentA patent shall expire at the end of twenty years from the filing date of the application.
47. Annual fees
Part IX – Change in the ownership and joint ownership of application and patent
48. Change in ownership of application
49. Joint ownership of application and patent
Part X – Contractual licences
50. Rights of licensee
51. Right of licensor to grant further licences and use of the invention
52. Effect of patent not being granted, revoked or being invalidatedWhere, before the expiration of the licence contract any of the following events occurs with respect to any patent or application for a patent referred to in that licence contract—
53. Form of licence contractsAll licence contracts shall be in writing and shall be signed by the parties to the contract.
54. Petition for registration
55. Prohibited terms in a licence contract
56. Registration of the contract and issue of certificate
58. Compulsory licences for non-working and similar reasons
59. Compulsory licences based upon interdependence of patents
60. Preconditions for grant of compulsory licences
61. Grant and terms of compulsory licences
62. Transfer of compulsory licenceA compulsory licence may be transferred only with that part of the industrial undertaking or its goodwill, in which the relevant invention is used and the transfer shall not be valid until the consent of the Minister is obtained.
63. Cancellation of compulsory licence
64. Registration of grant, cancellation or variationWhere the Minister grants, cancels or varies the term of a compulsory licence, the Minister shall instruct the registrar to record the grant, cancellation or variation in the register without payment of any fee.
65. Licence as of right
Part XI – Exploitation of patented inventions by the Government or by third parties authorised by the Government
66. Exploitation of patented inventions by the Government or by third parties authorised by the Government
67. Transfer of patent in connection with illegally accessed genetic resources
Part XII – Utility models
68. Applicability of provisions relating to patents
69. Special provisions relating to utility model certificates
70. Conversion of patent applications to application for utility model certificates, and vice versa
Part XIII – Industrial designs
71. Definition of an industrial design
72. Right to industrial design; naming of creator
73. Registrable industrial designs
74. Application and examination
75. Duration and renewal of registration of an industrial design
76. Restoration of registration of industrial designs
77. Graphic representations, specimens and related matters
78. Publication of reference to registration of industrial designs
79. Rights conferred by registration of industrial designs and related matters
80. Transfer and assignment of industrial designs, licences
Part XIV – Technovations
81. DefinitionsFor the purposes of this Part—"date of the proposal" means the date on which an employee makes a request in accordance with section 83;"employee" and "enterprise" mean the employee and the enterprise referred to in the definition of "technovation", and where several enterprises are owned or operated by one person, all those enterprises shall be considered as one enterprise;"technovation" means a solution to a specific problem in the field of technology, proposed by an employee of an enterprise in Uganda for use by that enterprise, and which relates to the activities of the enterprise but which, on the date of the proposal, has not been used or actively considered for use by that enterprise;"technovation certificate" means the document issued by the enterprise in accordance with section 84;"technovator" means an employee to whom the enterprise has issued a technovation certificate
82. Right to technovation certificate
84. Issue or refusal of technovation certificate
85. Use of technovation
86. Remuneration of the technovatorWhere the enterprise uses the technovation or communicates it to a third person, the technovator is entitled to a remuneration, the amount and method of payment of which shall, in the absence of an applicable collective bargaining agreement, be fixed by mutual agreement between the technovator and the enterprise.
87. Derogation by contractA contractual provision that is less favourable to employees or technovators than the provisions of this Part is void.
Part XV – Surrender, revocation and invalidation
90. Revocation or invalidation
91. Effect of revocation or invalidation
Part XVI – Infringement
92. Acts constituting infringementSubject to sections 44, 49, 59, 60 and 68 any act specified in section 38 or 79 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorisation, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.
93. ReliefUpon the request of the owner of the patent or the registered utility model or an industrial design, the court shall grant, any of the following reliefs—
94. Declaration of non-infringement
95. Threat of infringement proceedings
96. Presumption of use of patented processFor the purposes of proceedings, in respect of the infringement of the rights of the owner of the patent, where the subject matter of the patent is a process for obtaining a product, the burden of establishing that an identical product was not made by the patented process shall be on the alleged infringer, if either of the following conditions is fulfilled—
97. Powers of court on appeal
98. Suspension of release by customs authorities
99. Expert witnessesThe court may, appoint any person with expert knowledge to assist the court in any case where it appears to the court that such knowledge is required for the proper determination of the case.
100. Legal proceedings by licensee
Part XVII – Special provisions on enforcement of patent rights
101. Special provisions on enforcement of patent rights
Part XVIII – Miscellaneous
102. Public noticesWhenever any matter is required to be published under this Act, it shall be published in the Gazette, and also as soon as practicable, be published in a newspaper of wide circulation in the relevant area.
104. Corrections of errors and extension of time
105. Exercise of discretionary powersThe registrar shall give any party to a proceeding before an opportunity of being heard before exercising adversely to that party any discretionary power vested in him or her by this Act or the regulations.
106. Power of Minister to amend ScheduleThe Minister may with the approval of Cabinet by statutory instrument, amend the Schedule.
107. Exemption from stamp dutyNo duty shall be chargeable under the Stamps Act in respect of any instrument executed by, or on behalf of, or in favour of the registrar which, but for this section, the registrar would be liable to pay.
108. Consequential amendment of Cap. 210The Uganda Registration Services Bureau Act is amended in item 11 of the First Schedule, by substituting for the reference to the Patent Act the words "Industrial Property Act, 2009".
109. Repeal of Cap. 216 and Cap. 218, transitional and savings provisions
History of this document
28 February 2014 this version
Published in Uganda Gazette number 12
06 January 2014
Cited documents 3
Documents citing this one 54
- Asege Winnie v Opportunity Bank (U) Ltd & Anor (High Court Civil Suit No. 756 of 2013)  UGCommC 39 (2 May 2016)
- Uganda Government Gazette dated 2017-07-21 number 40
- Uganda Government Gazette dated 2017-08-25 number 46
- Uganda Government Gazette dated 2017-10-06 number 57
- Uganda Government Gazette dated 2017-11-17 number 64
- Uganda Government Gazette dated 2017-12-22 number 70
- Uganda Government Gazette dated 2018-03-23 number 15
- Uganda Government Gazette dated 2018-04-27 number 20
- Uganda Government Gazette dated 2018-05-11 number 22
- Uganda Government Gazette dated 2018-06-01 number 25
- Uganda Government Gazette dated 2018-06-29 number 33
- Uganda Government Gazette dated 2018-07-06 number 34
- Uganda Government Gazette dated 2018-07-17 number 36
- Uganda Government Gazette dated 2018-07-27 number 38
- Uganda Government Gazette dated 2018-08-17 number 43
- Uganda Government Gazette dated 2018-10-19 number 53
- Uganda Government Gazette dated 2018-10-26 number 54
- Uganda Government Gazette dated 2018-11-16 number 58
- Uganda Government Gazette dated 2018-12-28 number 67
- Uganda Government Gazette dated 2019-02-22 number 8
- Uganda Government Gazette dated 2019-03-22 number 12
- Uganda Government Gazette dated 2019-05-10 number 22
- Uganda Government Gazette dated 2019-05-24 number 24
- Uganda Government Gazette dated 2019-05-31 number 25
- Uganda Government Gazette dated 2019-06-21 number 29
- Uganda Government Gazette dated 2019-07-26 number 35
- Uganda Government Gazette dated 2019-08-16 number 40
- Uganda Government Gazette dated 2019-08-30 number 42
- Uganda Government Gazette dated 2019-10-25 number 55
- Uganda Government Gazette dated 2019-11-29 number 60
- Uganda Government Gazette dated 2019-12-06 number 61
- Uganda Government Gazette dated 2019-12-20 number 64
- Uganda Government Gazette dated 2020-02-28 number 13
- Uganda Government Gazette dated 2020-03-20 number 18
- Uganda Government Gazette dated 2020-03-27 number 20
- Uganda Government Gazette dated 2020-06-12 number 36
- Uganda Government Gazette dated 2020-06-19 number 37
- Uganda Government Gazette dated 2020-08-21 number 49
- Uganda Government Gazette dated 2020-08-28 number 50
- Uganda Government Gazette dated 2020-09-11 number 52
- Uganda Government Gazette dated 2020-11-20 number 75
- Uganda Government Gazette dated 2020-11-27 number 77
- Uganda Government Gazette dated 2021-01-22 number 7
- Uganda Government Gazette dated 2021-04-23 number 36
- Uganda Government Gazette dated 2021-06-28 number 53
- Uganda Government Gazette dated 2021-07-02 number 55
- Uganda Government Gazette dated 2021-07-16 number 57
- Uganda Government Gazette dated 2021-07-30 number 61
- Uganda Government Gazette dated 2021-08-27 number 65
- Uganda Government Gazette dated 2021-12-10 number 87
- Uganda Government Gazette dated 2021-12-17 number 90
- Uganda Government Gazette dated 2022-01-21 number 3
- Uganda Government Gazette dated 2022-01-28 number 4
- Uganda Government Gazette dated 2022-04-14 number 20