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Why can’t Uganda patent Covidex?
What you need to know:
Intellectual Property rights. Inventors in Uganda cannot obtain patent protection for their pharmaceutical inventions.
The commercial interests surrounding ownership of Covidex, a herbal remedy has pitted its maker Prof. Patrick Ogwang against his employer Prof Celestino Obua, the vice chancellor at Mbarara University of Science and Technology (MUST).
Covidex was cleared last month by the National Drug Authority (NDA) as a supportive treatment for Covid-19. Currrently, its being traded under Jena Herbal (U) Ltd, a business owned by Prof. Ogwang.
The ingenious academic is also sucked in a litany of battles over the intellectual property rights of Covidex. This includes a civil suit in the High Court by Mr George William Alenyo, a concerned lawyer.
In his defence last week, Prof Ogwang told court how Covidex was developed outside Mbarara University premises, and therefore, the herbal is not government property.
Prof. Ogwang’s case is not peculiar in the modern world that is increasingly becoming more innovative to society problems.
In South Africa, a similar case is in court involving the country’s telecom giant Vodacom, and a former employee, Mr Nkosana Makate who are entangled over rights of his short message service (SMS) invention, “Please call me.”
Mr Nkosana is demanding R10 billion (Shs2.4 trillion) in compensation for his invention.
Inventing something begins with an idea and research. You try new things. Some work, some don’t. However, there is no monopoly on good ideas. As you develop your idea into something tangible- whether that means building your business, or designing and creating a product to manufacture or sell; there is someone else who might be doing the same thing.
Protecting your creation gives you the ability to reap big from the benefits of your hard work. That is why you need Intellectual Property (IP) rights for the creation.
With the advent of Covid-19, innovations such as Covidex have reignited the debate around product rights, patents and the intellectual property.
Patents in Uganda are enforced by the Uganda Registration Services Bureau (URSB) under the Industrial Property Act 2014.
According to Mercy Kainobwisho, the Registrar General at URSB, patents protect new products, processes, machines, chemical compositions and improvements to any of these.
“An invention must be new, and industrially applicable to be granted a patent,” she says.
Patents give inventors exclusive rights to their inventions for a period of upto 20 years, which can give you a competitive advantage in the market.
Patent protection means an invention cannot be commercially made, used, distributed or sold without the patent owner’s consent.
Considering the requirement for novelty under Section 10 (4) of the Industrial Property Act, Dr Anthony Kakooza, an Intellectual Property lawyer, says one should seek for a patent within 12 months of coming up with an invention.
“Otherwise, it will no longer be considered as new or novel if 12 months go by after the establishment of the invention and no application has been sought for a patent,” Dr Kakooza says.
The rigour of patenting requires that one has to fulfill the three steps under the Industrial Property Act in Sections 10 to 12.
The sections stipulate that one has to go through with filing for a grant of patent at the National Intellectual Property office.
The application process should contain a request; a description of the invention; highlight of the patent claims; drawings of the invention – where applicable; and an abstract of the invention.
The application is examined by a patent examiner or other competent authority and a report on the invention is compiled. This should be done within three years from the filing date.
Upon notification of grant of patent, an applicant has to pay grant fees, and the granted patent is published in the gazette.
Kainobwisho, the URSB registrar reveals that more than 300 patents and patent applications have been filed on the National IP register.
However, the registrar mentions that, if an application for a patent is examined and does not meet the requirements, it can be registered as a utility model.
A customer buys Covidex from Pace Pharmacy in Ntinda, Kampala, recently after the National Drug Authority cleared it. PHOTO/Stephen Otage
Patents and the work place
Uganda’s history of innovation has left the country in a state of acute shortage of institutional Intellectual property policies in work places.
The bigger question on patents is: What happens when that invention is within the rights of your employer, or workmates? The legal minefields might become too many to skip.
But in an ideal situation, Paul Asiimwe, an Intellectual Property lawyer opines that its ideal that there is a clear intellectual property framework to govern any relationship between an innovator and their employer.
The IP policy in the workplace must also work in tandem with the contractual obligations of the employee.
“It could be a sofware, product, and process. Such inventions and innovations should ideally be protected using the patent system. However, in the absence that patent system, the invention becomes an institutional property,” Asiimwe says.
Under the Industrial Property Act, subject to any specific contract that may have been entered into between the employer and the employee, the invention belongs to the employer.
Section 19 of the Industrial Property Act, stipulates that in the absence of any contract, or if a contract is not specific over an invention. The invention is owned by the employer.
However, Dr Kakooza notes that there are a number of other considerations that can turn the tide in favour of the employee, as stipulated under the law.
These include the employer’s neglect to file for a patent within 12 months. In some instances, the law requires that any invention developed beyond the working hours, and outside the institutional premises cannot be claimed by the employer.
The legal minefields could be many for an employee in case your invention has been commercialised.
However, Dr Kakooza advises that the first point of call is to look back at what the contract of employment stipulates.
However, the Industrial Property Act is also clear in providing that there should be equitable remuneration given to the employee by the employer out of any commercial proceeds in the utilisation of an invention.
Non- Disclosure Agreements
In some instances, Non-Disclosure Agreements (NDAs) or Confidentiality Agreements should be entered into at the very onset of owners of intellectual property discussing about their inventions with other stakeholders that may be interested in either purchasing or investing into an invention.
For instance, if a University or Research Institution has the technical capacity to come up with an invention, but lacks the financial muscle required to purchase necessary infrastructure.
There is a possibility of entering into venture capital agreement with an external donor or funding agency that would be convinced to buy into the purpose of such invention.
In all cases, Dr Kakooza shares that the intellectual property is more valuable than the tangible asset that is produced as a result of the research undertaken by the Institute. This is because patents are protected for 20 years, meaning the entity which owns the patent, can control and benefit financially from the utilisation of the patent for the next 20 years, more than the entity which is paid a one-off figure for generating the invention at the beginning.
Fate of pharmaceutical inventions
Uganda being a Least Developed Country (LDC), and member of the World Trade Organisation is exempted from implementing patents to any pharmaceutical inventions under the Industrial Property Act, 2014.
Ms Kainobwisho explains that this is based on the Trade Related Aspects of Intellectual Property (TRIPS) Agreement to which Uganda is a signatory under the World Trade Organisation.
The Agreement exempts LDCs from granting pharmaceutical patents to large pharmaceutical manufacturers to allow them access low cost medicines.
In return, pharmaceutical inventors in Uganda are also constrained to access patent protection from their country of origin.
On November 6 2015, the World Trade Organisation (WTO) Council extended the exemption for LDC WTO members to implement provisions of the TRIPS agreement related to pharmaceutical products.
The exemption will last for at least 17 years, until 2033, when Uganda will have the right enforce patent protection for pharmaceutical inventions.
Least Developed Countries (LDCs) were exempted from the obligation to implement the provisions until a country can graduate from the LDC category.
Kakooza, who is also a partner at Byenkya, Kihika & Co. Advocates, says all is not lost since Uganda has a fallback position to protect her pharmaceutical intellectual property rights through The African Regional Intellectual Property Organisation (ARIPO). ARIPO implements the Harare Protocol on Designs and Utility models. This protocol mandates ARIPO to grant pharmaceutical patents to any contracting states within Africa.
“If you cannot get a grant of patent within Uganda for your pharmaceutical product, you could probably apply straight to ARIPO and suggest countries within Africa where you can protect your patents,” he explains.
Kainobwisho, the URSB registrar general says, however, the submission process to obtain intellectual rights begins from the host country, before proceeding to ARIPO. ARIPO only grants pharmaceutical patents to African countries which have surpassed the LDC status. These contracting countries are only three; Botswana, Kenya and Namibia.
IP ownership battle
While the battle for IP ownership in Covidex brews, the pertinent question to be answered is whether the IP rights in Covidex are eligible for IP protection in Uganda.
