Ugandans are coming up with new or better ways to do things. However, few know how to go about protecting their innovations or inventions. How do you ensure your innovation or invention is protected? Where do you go, when and what can be protected? These are some of the questions that remain un-answered to many innovators or inventors in Uganda.
James Lubwama is an examiner with Uganda Registration Services Bureau (URSB) and his role is to ensure innovators and inventors are guided on the best way to protect their inventions. He joined URSB in 2012 and since then, he has witnessed a series of changes at the registration body of the Ugandan government.
One of the things that confuse innovators are the different levels of protection. The most known is patenting and therefore it is no surprise that almost all innovators that approach URSB request for a patent there and then.
However, one needs to note that they can only be granted a level of protection that suits them best. This is also done with advise by the examiners. And one should also note that not everything can be patented or protected as you'll find out.
According to URSB, a patent is an exclusive right granted by the government for an invention, which is either a product or process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The exclusive rights help inventors to prevent others from taking advantage of their ideas and inventions.
There are levels of protection. If you come up with a completely new product, a completely new solution to an existing problem, you qualify for a patent. However, if you just make an improvement of something that's existing, yes you've made an improvement but that will only qualify you for a utility model - James Lubwama.
A Utility Model, just like a patent, also provides exclusive rights to inventors and innovators for their new products and processes. The requirements for granting a Utility Model are less stringent compared to those of patent protection.
For the Utility Model, the requirement of a product or process having an inventive step is not considered. Utility Model protection is for shorter period of time normally 10 years.
Take an example of Mugarura Samuel, a Makerere University student, who made teargas less toxic. He was granted a Utility certificate in recognition of his innovation. A Utility certificate maybe referred to as "a lesser Patent".
Similarly, the innovator of MAP Alarm system doesn't qualify for a patent, but instead a utility certificate. Reason being, he is not the first to invent an alarm but just making an improvement.
According to James, until the Industrial Property Act of 201, URSB was not in position to examine patents and utility models.
Initially, we were using the patents ACT of of 2013 that hadn't made provision for local examination. It stated explicitly that examination of utility models or patents had to be done by ARIPO. We realized that was a challenge. Because a utility model could be a simple improvement. Because of that, we now have The Industrial Property Act of 2014. This empowers URSB to examine utility models locally. If that gentleman (of MAP Alarm systems) applied today, in 30 days he'll have his certificate - James Lubwama
An industrial design is the aesthetic aspect of a useful object. Industrial designs protect the appearance of a useful object. An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color. For example; a mineral water bottle, a pattern or a cloth like a Kitengé, the shape of a car etc.
According to James, URSB is currently reviewing the fees for the various levels of protection. However, for anyone filing an application now, they'll have to consider the old costings.
It would cost one 180,000/- for a patent application and 300,000/- for the certificate once it has been granted. The innovator would then be required to part with a maintenance fee of 48,000/- for the first year and an additional 12,000/- for each subsequent year. These fees are for a patent to cover Uganda.
However for those interested in filing their patents with the regional office - African Regional Intellectual Property Organization (ARIPO), they'd have to part with $150 for application and an additional $75 for each country you'd like it to cover.
In case an innovation qualifies as a utility model, it'd cost one UGx. 60,000 for filing the application and UGx. 100,000 for the certificate. This is UGx. 160,000 in total. However, one would have to pay an annual maintenance fee of UGx. 18,000 for the first year and UGx. 4,000 for the subsequent years. Again, these are for the Ugandan office.
All forms of protection provide protection for a limited period of time. Normally, a patent takes up-to 20 years. While a utility certificate takes 10 years. During this period, everyone else - except the innovator is prevented from exploiting the invention.
It takes at least 2 years from when one files for their patent up-to when it is granted and only 30 days for one to be granted a utility certificate. According too James, patents take that period of time mostly because of the human resource capacity.
However, the period seems to be fair given that in India, it takes an average of 2 years for one to get granted a patent and slightly more for the US office.
It is a common saying that "a patent or any form of protection for an innovation or invention is only as good as the person who drafts it". What this statement means is that one needs to be an expert at filing for patents or any form of protection for them to draft an exhaustive application.
Otherwise, an unskilled applicant will end up underselling their innovation or over-declaring the coverage of their innovation. Both scenarios aren't good for an innovator. In the first scenario, the innovator leaves loopholes that could be exploited by competition while in the second scenario, the innovator stands a disadvantage of their application being denied.
It is on this ground that all innovators or inventors seeking protection are advised to first seek legal help. However, in reality, this seems not to be applicable in Uganda as most innovators are youths who are plagued with unemployment and thus unable to foot legal fees. Actually, some are not even in position to foot application fees.
You need to understand our innovation terrain. We can all agree that most of the people who are innovating are youths who don't even have the 60,000/- to apply. Lawyers are private people who are running a business. Just drafting can cost an innovator over 1,000,000 which could even be a minimum - James Lubwama.
The Bureau therefore extends an advisory role to these innovators and goes as far as helping them draft applications. The body is also ensuring capacity building to enable the IP office handle the growing number of applicants.
This came with the new act. Innovators or inventors who may not be in position to foot the necessary fees stand a chance of being granted patents or protection minus parting with a penny. But, the entire procedure and criteria is a bit subjective.
The law provides for wavers. The registrar general has the powers to exercise this. One needs to state reasons as to why they need a waver. Then, the decision is to be taken by the Registrar general - James Lubwama.
Although it is a bit subjective, one can only use logic to figure it out. For example, if an institution applies for a waver and a student, then a student is more likely to get this waver. Likewise, if a person looking to use an innovation for individual interests and another for to help a community, chances are the latter will be considered.
Area of coverage
This, too, remains subjective. However, James argues that a patent or any form of protection should only cover an area that makes both logical and business sense to the party applying. Therefore, one can apply for a patent in any country or region they desire.
However, it is advisable to apply for a patent in a country where one is expecting to expand operations or where they suspect their idea might be duplicated.
You don't just say i want protection in a certain country. There has to be a reason as to why you want the protection. Are you planning to expand or do you have a partner on that country that might run away with your idea? For example people apply for protection in China because someone might run away with their ideas - James Lubwama.
Different countries or regions have different requirements for one to file for protection. Therefore the costs might be out of reach. For example, filing for protection in a country like Cameroon - which is French speaking - will require you to translate everything.
Therefore you'll be required to get legal help. In case such protection won't result into business sense, then that's money going down the drain.
First to Invent Vs. First to File
In Uganda, the person who gets awarded protection is the one first to apply. This is attributed to the fact that it is not easy to establish who invented or innovated something first. This same mode is used by the US Intellectual Property governing body.
According to James, we are fairing as efficiently as other regional offices. He is however quick to point out that the landscape is not flat. For example, the Kenyan office is almost three times more equipped than the Ugandan office in terms of human resource.
We attend the same training as our counterparts from across the region and we are in constant touch - James Lubwama.
Though he declined to comment on the allocation of funding, his tone indicated that their counterparts are a little bit more funded. This he brought out by saying that Kenya is doing more outreaches compared to the Ugandan office.
It should also be noted that the Kenyan office has been doing examinations for over 30 years while the Ugandan just got permission 3 years ago. This therefore explains the difference in number of patents granted or filed.
There are also people who may not be in position to afford the services at the moment or whose ideas or products may not be able to be patented or protected. Yet they feel no one outside the team or company should get to know about what they are doing. For example, the bigger the team, the more likely that information on how something is done will leak.
In such a case, teams are encouraged to sign non-disclosure agreements. However good you maybe as friends, it is recommended that you sign this agreement before your company or startup starts bringing in any form of revenue.
Secondly, there are trade secrets. This applies to categories like herbalists. Someone may know of a plant that can help cure a certain disease. Such can not be patented but the advise is that one keeps it as a secret to themselves. As long as it works, people will keep buying the products.
Currently, URSB is doing a minimum of two outreaches per month. However, this was not the case a year ago where they were doing the same number in a year. They have had to deal with challenges regarding funds as well as human resource capacity. This of course not only slows the time it'd take for one to be granted a certificate but also the audience that URSB is able to reach.
However, things seem to be changing as they are actually planning for over four outreaches this month and also organizing awards for the very first time. With offices in Mbale, Mbarara, Gulu, Arua and four more in Kampala - they've tried to ensure they reach all through out the country.
URSB is already moving in the right direction with its regional outreaches. Just this week they launched the Intellectual Property Awards. However, more needs to be done in terms of efficiency and sensitization.