Intellectual Property Rights

Property is anything that can be owned by a person. Originally property only applied to things which had a form or substance, for example a dress or a piece of land. Today however a person can own something that cannot be seen or touched e.g. computer software or music.

What is Intellectual Property

Intellectual property is something which results from the activities of a person’s mind- that is, something that comes into being because of the expression of someone’s thoughts.

Examples of intellectual property can be;

  1. A song
  2. A novel
  3. A painting
  4. A computer software among others
TYPES OF INTELLECTUAL PROPERTY RIGHTS

Because intellectual Property can vary so much, there are different types of protections (which are referred to as “rights”) that people who create intellectual property are entitled to.

Please click on the type intellectual process you are interested in knowing about how to protect and you shall be directed to the page discussing the intellectual property right it falls under.

  1. Logos (Trademark/ service mark), commercial names and designs
  2. Inventions (creating something that is new)
  3. Industrial designs
  4. Scientific discoveries
  5. Literary (written publications), artistic (paintings etc) and scientific works
  6. Performances of performing artists, producers of phonograms and broadcasters
COPYRIGHT
MEANING OF ORIGINALHOW LONG DOES PROTECTION LAST?WHAT IF I AM NOT THE AUTHOR BUT HELPED?HOW TO GET COPYRIGHT PROTECTIONHOW TO GET COPYRIGHT PROTECTION

Original work is that which has not been copied from another but has been created by the author. This does not mean however that the thought must be original, only that the work should not have been done before.

For example; if singer Bigsize told singer Smallsize about an idea for a song that he has and Bigsize does not record the song but instead Smallsize records and releases it, no matter how angry Bigsize becomes and how fair it may seem, Smallsize who actually recorded the song is the one who has a right in the intellectual property.

This means that in order for work to be considered original it must be reduced into material form and there must be no other work existing before it which is the same. Always remember ideas are not protected, only works are.

The time of protection varies depending on the nature of the work, however, general protection is for the life time of the author and fifty years after the death of the author.

Any person who is involved in the process of making a work, not being the author is referred to as an auxiliary and as such does not have the copyright protection in entirety- what such a person has, is referred to as neighbouring rights. other persons are called auxiliaries and include the following. Please click on one most relevant to the information you want.

Mugisha Robert, someone was supposed to pay him money

Once you have reduced your idea into material form then, how do you secure the protection of a copyright?

It is important to note that where there is a copyright, there are different types of protection, the nature of the protection varying in relation to the degree of participation a person has in relation to creating the works. For example, where Bigsize sings music, there may be back-up singers, a producer who reduces the music to material form, a promoter who ensures that people get to hear and the music, a distributer who sells the music etc.

  1. Producer (for example the producer of a song, or a movie or a television show)
  2. Performer (for example an actor/actress, a singer, a comedian)

Copyright protection is an automatic entitlement of any work which has been reduced to material form (if it is a book this means being written, if it is a song this means being recorded etc).

One thing that is unique to Copyright law, is that once work which qualifies for copyright protection is published, it is protected under the law. This means that one does not need to do anything formal in order to be copyright protected. The problem with not formerly registering your copyright however is that if it is infringed upon by another person, then you have got to prove you have got a copyright to the works which including proving that it was published before the infringement occurred and also that the other party used your works to create the infringing work.

HOW LONG COPYRIGHT PROTECTION LASTS

  • Procedure for getting copyright protection
  • Procedure for getting neighbouring rights protected
  • Documents for copyright protection

TRADEMARKS
INTRODUCITON TO TRADEMARKS

A trademark can simply be explained to mean a sign or mark or combination of signs or marks which can be represented graphically (this means they can be put down on paper) and capable of distinguish goods and services of one business from those of another.

The words “sign or mark” include any word, symbol, design, slogan, logo, sound, smell, colour, brand label, name, signature, letter, numeral or any combination of these which can be represented graphically

REGISTERED AND UNREGISTERED TRADEMARKSDIFFERENCE BETWEEN A TRADEMARK AND A SERVICE MARK PROCEDURE OF GETTING A TRADEMARKPROCEDURE FOR REGISTERING A TRADEMARK INCLUDESREGISTRATION IN PART A AND PART BCAN I SELL MY TRADEMARK TO SOMEONE ELSE?WHAT DO I DO IF SOMEONE IS INFRINGING MY TRADEMARK

By virtue of being defined as above, it means that you can have a trademark which is not registered. For example, if your business has got a logo that is not registered as its trademark- it is still a trademark. However, as you will go on to discover- it is best to always register your trademark as soon as possible, which we explain in more detail later.

This means therefore- that

  • If your product or service has got a design in its logo which is unique to it, that is its trademark;
  • if your product has got a special smell that distinguishes it from other products and you are able to write down exactly what that smell is, it is a trademark;
  • if you have any special sound that your product or service makes which distinguishes it from other products and are able to reduce that sound to its form on paper, it is a trademark;
  • if you have got any special symbol or design or even slogan which distinguishes your product or service from other products or services then it is a trademark.

A trademark protects goods (goods are things you can touch and see- for example bananas and pens are goods); a service mark protects services (for example, MTN, Airtel, Smart Telecom, UTL among others are service providers in the telecommunications industry) services are basically things that are of value but cannot be touched or physically seem, for example you cannot see airtime, but you load it on your phone.

WHAT IS REQUIRED FOR REGISTERING A TRADEMARK?

  1. the trademark or service mark must be distinctive in order to enable registration under Part A and capable of distinguishing goods and services to enable registration under Part B. This means that whatever you are trying to register should not be confusing from the public- that is, it must not mislead. If your proposed trademark looks like that of your competitor then it will be rejected.
  2. The trademark must not be descriptive- this means it must not be describing the nature or identity of your goods or services.
  3. The trademark must relate to particular goods or services. This means it must be classifiable

There are also trademarks which will not be registered. These include

Once you meet the requirements above, you can fill in the application form. You may use the guide we have provided to help you.

It is important to keep in mind that some trademarks will not be registered wholly or in part and they include trademarks that are;

  1. Likely to deceive customers, for example the mark AiPhone will not be registered since it may be confused with iPhone where dealing with phones,
  2. Contrary to the law, for example you cannot trademark marijuana product since sale of it is illegal
  3. Contrary to morality, for example a logo which is shaped like a sexual organ may be rejected
  4. Any scandalous design 
  1. Requesting a search of the trademark registry
  2. Inquiring for preliminary advice from the Registrar
  3. Filling in an application by the applicant
  4. Examination of the application by the registrar
  5. Publication of the application for 60 days in the official Government Gazette
  6. Certificate of registration is issued by the Registrar upon payment of the prescribed fee by the applicant.

There are two parts of the Trademarks Registry, and it is these two parts under which a person can register a Trademark

Granting someone else the right to utilise a trademark is called assignment. When you assign a trademark to someone else, you can also sell the goodwill of the business. What you need to do is to write a deed of assignment and register it with the Registrar.

Fortunately, we have got a guide of the transfer form and also a sample of the deed of assignment for you below.

In order to have remedies where your trademark is infringed, it MUST BE A REGISTERED TRADEMARK. If your trademark is not registered then you may not be entitled to these remedies.

Where your trademark is being infringed upon you have got remedies which include suing the infringing person for;

  1. Injunction, stopping the infringement
  2. Damages, for the losses you may have suffered due to their infringing on your trademark
  3. Compensation
  4. Account of profits- which is basically to disclose the profits that were made due to the infringement

 

PATENTS/ INDUSTRIAL PROPERTY
INTRODUCTION TO PATENTS

A patent can be said to be an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.

The patent owner has the exclusive right to prevent or stop others from commercially using or developing the patented invention. In other words, the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner’s consent.

WHAT IS REQUIRED FOR AN INVENTION TO BE PANTENTABLE?WHAT CANNOT BE PATENTED?HOW LONG DOES PATENT PROTECTION LAST?FORMS FOR GETTING THIS PROTECTEDIS A PATENT VALID IN EVERY COUNTRY?WHAT RIGHTS DOES A PATENT PROVIDE?PROCEDURE OF GETTING A PATENTHOW ARE PATENT RIGHTS ENFORCED?WHAT DO I DO IF SOMEONE IS INFRINGING MY PATENT?CAN I SELL MY PATENT TO SOMEONE ELSE?DIFFERENCE BETWEEN A PATENT AND A UTILITY MODEL

An invention is a solution to a specific problem in the field of technology. In order to be able to apply for a patent, the invention must fulfil certain requirements:

  1. Novelty, the invention must be something new and has not been done before.
  2. It must involve an inventive step, non-obvious.
  3. The invention must be industrially applicable, this is to say, it must be useful.

In order for an invention to be eligible for patent protection, the applicant must ensure that the invention falls within the scope of patentable subject matter. The general rule is that patent protection shall be available for inventions in all fields of technology however, there are exceptions which includes the following:

  1. a) Discoveries of material or substances already existing in nature;
  2. b) Scientific theories or mathematics methods;
  3. c) Plants and animals other than microorganisms and essentially biological processes for the production of plants and animals , other than non – biological and micro biological processes;
  4. d) Schemes, rules or methods, such as those for doing business, performing purely mental acts or playing games;
  5. e) Methods of treatment for humans or animals, or diagnostic methods practiced on humans or animals (but not products for use in such methods);
  6. f) Mere presentation of information.
  7. g) Inventions the commercial exploitation of which would contravene public order or morality.

Patent protection is granted for a limited period, generally 20 years from the filing date of the application.

Patent protection is granted for a limited period, generally 20 years from the filing date of the application.

Patents are territorial rights. This means that it is only in the country you register a patent that it is protected. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

Therefore if you want your patent to be protected in another Country for example Kenya, you will need to register it in Uganda first, and then at the East African Intellectual Property offices

  1. Exclusive rights to exclude others from exploiting the patented invention unless authorised by the owner. Protection of patents is for 20 years.
  2. To institute legal action for infringement. Infringement of an exclusive right involves the unauthorised exploitation of the patented invention by a third party. The patent owner has the onus to enforce the rights infringed upon in courts of law.
  3.  To make, import, offer for sale, sell and use the product.
  4. To use the process and do any of the acts in (iii) above in respect to the product obtained directly by means of the process.
  5. To assign or transfer by succession the application for a patent or the patent.
  1. Filling of the patent application with the Registrar
  2. Formal and substantive examination of the application is carried out by the patent office upon payment of prescribed fees. A formal examination is done by the Registrar of patents and then forwarded to African Regional Industrial Property Organisation (ARIPO) for substantive examination.
  3. A certificate of grant and a copy of the granted patent are issued by the intellectual property office upon a finding that the application has a patentable subject matter, payment of the prescribed fees has been made and in addition no opposition to the application or that any opposition to the application has been unsuccessful.
  4. Publication of the patent granted in the Uganda gazette.

Patent rights are usually enforced in a court on the initiative of the right owner. In most systems a court of law has the authority to stop patent infringement. However the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

In order to establish infringement, the PATENT MUST BE REGISTRED and you must also prove the following:

  1. The infringement must have been done after the publication of the patent application, or issuance of the patent where no early publication occurred;
  2. The infringement must have been done in the country where the patent has been granted;
  3. The prohibited act must be in relation to a product or process falling within the scope of a claim of the patent.

Where your patent is being infringed upon you have got remedies which include suing the infringing person for;

  1. Injunction, stopping the infringement to prohibit the continuation of the infringement once infringement has started
  2. Damages, for the losses you may have suffered due to their infringing on your trademark
  3. Any other remedy provided for in law depending on the nature of the claim.

It is important to note that there are some exceptions to infringements. This applies if the acts are done:

  1. For scientific research;
  2. In respect of anything which have been put on the market in Uganda by the owner of the patent or with his or her express consent;
  3. Where the use of the patented product occurs in transit in the country;
  4. Where the patented product is used by third parties who have the special right to continue to make the product; and
  5. Where the patented product is used under an authorisation granted by the government on grounds of public interest.

A patent owner can grant permission to another individual/organization to make, use, sell etc. his/her patented invention. This is called licensing a. This takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time.

Similar to patents, utility models protect new technical inventions through granting a limited exclusive right to prevent others from commercially using protected inventions without the consent of the right holders. The requirements of novelty and industrial applicability also apply to utility models, sometimes referred to as petty patents. There are however some differences between the two. The requirements for acquiring utility models are less stringent than for patents. Protection for utility models is often sought for innovations of a rather incremental character which may not meet the patentability criteria. Furthermore, the term of protection for utility models is shorter than for patents, and varies from country to country (usually between 6 and 15 years). The registration process is often simpler and faster, sometimes taking six months or less. Fees for obtaining and maintaining utility models are cheaper.

TRADE SECRETS
Definition of a trade secretProcedure for getting this protectionDocuments
Content
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Below is the trademark application form for download.

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