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 2023

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.


Chyreene Truluck

Spoor & Fisher South Africa

11 Byls Bridge BoulevardBuilding No. 14Highveld Ext 73Centurion, Pretoria0157 South AfricaTel: +27 12 676 1272Fax: + 27 12 676

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making