Africa: Uganda exercises TRIPS flexibilities for pharmaceutical products
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Africa: Uganda exercises TRIPS flexibilities for pharmaceutical products

The Ugandan Patent Office has recently objected to the grant of patents for pharmaceutical inventions following notification of grant by the African Regional Intellectual Property Organisation (ARIPO), where Uganda is a designated state. This objection is based on the national patent law of Uganda as it relates to the flexibilities regarding the application of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) to pharmaceutical products in least developed countries (LDCs).

The Harare Protocol was adopted in 1982. As a result of this, ARIPO is empowered to grant patents on behalf of its contracting states. Currently, there are 18 contracting states that may be designated in an ARIPO patent application. When filing an ARIPO application, an applicant is required to designate the member states where protection is required. The official fees payable, as well as renewal fees (which are also paid on pending ARIPO applications) are directly linked to the number of member states designated.

A patent granted by ARIPO has, in each designated state, the same effect as a patent granted under the applicable national law. Once the ARIPO office decides to grant a patent, each designated member country is notified of the decision and has a six month period in which to notify ARIPO that the patent will have no effect in its territory due to the invention not being patentable under the provisions of the Harare Protocol, or the national law of the member country because of the nature of the invention.

According to the Harare Protocol, claims related to medical indications or use must be drafted in one or more of the prescribed formats. The protocol makes it clear that claims directed to methods of medical treatment or diagnosis performed on the human or animal body are not permissible. However, the prescribed formats do allow for the patentability of substances or compositions for use in such methods, as well as so-called Swiss-type claims.

Recently, in response to a notification of a decision to grant issued by ARIPO, the Ugandan Patent Office has indicated that patents directed to pharmaceutical inventions are excluded from patent protection and will not be granted in Uganda based on Section 8(3)(f) of the Ugandan Industrial Property Act 2014, which reads:

"8(3) The following shall not be regarded as inventions and shall be excluded from patent protection-

(f) pharmaceutical products and test data until 1st January 2016 or such other period as may be granted to Uganda or least developed countries by the Council responsible for administering the Agreement on trade related aspects of intellectual property under the World Trade Organization."

The Council of the World Trade Organization, which administers the TRIPS Agreement, has agreed that LDCs have the option to exclude pharmaceutical products from patent protection and has extended the period to exercise this exclusion until 1 January 2033.

It is clear that Uganda is exercising its right to exclude patent protection for pharmaceutical products. It is thus recommended that Uganda is not designated in an ARIPO application concerning pharmaceutical products.

truluck-chyreene.jpg

Chyreene Truluck


Spoor & Fisher South Africa

11 Byls Bridge BoulevardBuilding No. 14Highveld Ext 73Centurion, Pretoria0157 South AfricaTel: +27 12 676 1272Fax: + 27 12 676 1100info@spoor.co.ukwww.spoor.com

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article