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Infringement of Patents

We have spoken a lot about intellectual property rights over the past few weeks but it would be unfair for us not to talk about how these rights can be infringed on especially with all the innovation and creation happening today.

Infringement is any act that interferes with the full enjoyment of the monopoly granted to the patentee or any activity that deprives the inventor, in whole or in part, directly or indirectly, of full enjoyment of the monopoly conferred by law. This is possible since a patent confers rights and obligations to patentees allowing its owner to exclude others from exploiting the patented invention. In this case, the owner is the only one allowed to exploit the invention as long as others are not given authorization, for example, by way of license to do so.

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“Respect for inventors is the key for success of a patent system”

Kalyan C. Kankanala, Fun IP, Fundamentals of Intellectual Property

The patent rights are granted according to both process and respect of product as per section 25 of the Patents Act. These rights include;

a) when the patent has been granted in respect of a product;

i. making, importing, offering for sale, selling, and using the product

ii. stocking the product to offer for sale, sell, or use the product;

b) when the patent has been granted in respect of a process—

i. using the process;

ii. do any of the acts referred to in paragraph (a) of this subsection in respect of a product obtained directly using the process.

Where a person other than the owner of a patent or a licensee does any of the acts in respect of the patented invention, that act shall constitute an infringement of the patent. Thus, where the owner of a patent or the licensee thinks that his or her patent has been or is about to be infringed, he or she may institute infringement proceedings in the High Court for the following reliefs;

(a) Damages

(b) An injunction to prevent infringement or continuing infringement of the patent

(c) Any other civil remedy.

Infringement of any patent involves consideration of two key aspects. The first is whether the article or process alleged to infringe falls within the scope of the monopoly granted by the patent. The second is whether the alleged infringer has done any act of the monopoly which is given by a patent to its proprietor. To prove infringement, it’s not enough to compare the defendant’s allegedly infringing product to the Plaintiff’s product which is representative of the patent. The only way to determine whether there is an infringement is to compare the allegedly infringing product to the patent, and, in particular, to the patent claims and this rotates on the construction of the claims.

An infringement is generally a question of fact and a matter of construction of the claims therefore the onus to prove these claims lies on the plaintiff. There are two approaches by which this is done. The first is the literal approach, in this case, all claim elements are considered to be essential to the invention, and thus, the absence of any claimed element results in a finding of no literal infringement. It is an ‘all elements’ test.

A second approach is a purposive approach, with this approach, the court does not ask “What the patentee said?” but rather, “What was the inventor trying to say?” or, better yet, “What would a skilled reader have understood the patent to mean?” In Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C. 183 (H.L.). Lord Diplock summarized the test as follows: “A patent specification should be given a purposive construction rather than a purely literal one”, where “purposive construction” means understanding language by what a reasonable person would understand the author to be using the words to mean.

The manufacture of any patented product during the term of a patent is considered an infringement of the patent regardless of the approach. Where a patent claims a product for a particular use, it does not matter where that product is to be used, or even whether it is ever used. Once the product is manufactured for that use, there is infringement. Therefore, any defendant must exercise discretion as they raise a defence against any claims of infringement. Regardless, in case you require an understanding of the rights you possess as a patentee and need avenues and ways to protect them, we can help. 

The Law of the Mind

Everyone has created or has a friend or a friend of a friend who has created or invented something. These inventions and creations would otherwise be referred to as intellectual property. 

Intellectual property (IP) refers to creations of the mind, these include; inventions; literary and artistic works; designs; symbols, names, and images used in commerce. The law awards these individuals rights, these rights give the creator an exclusive right over the use of his/her creation for a certain period.

Intellectual property rights are categorised into two areas;
i) Copyright and rights related to copyright 
ii) Industrial Property

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Intellectual Property is the oil of the 21st century.

Mark Getty

A. Copyright and rights related to copyright

If you have ever bought a book from a book store, the term copyright may not be new to you. It is usually embedded in the first leaflet of every literary work. However copyright is not limited to books alone, but any artistic work can be protected under copyright.

In simple terms, a copyright is a set of exclusive rights granted by a state to the creator of original work or their assignee for a limited period in exchange for public disclosure of the work. This right includes the right to copy, distribute and adapt the work. Copyright owners can license or permanently transfer or assign their exclusive rights to others. Copyright protects owners of rights in artistic works from those who may ‘copy.’

A created work is automatically protected by copyright as soon as it exists. However, there are conditions to this. The work must be original ( it must have been developed independently by its creator) and it must be expressed.

Once a piece of work is not original then there is no ground for it to be protected under copyright law. The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. but according to University of London Press Ltd Vs University Tutorial Press Ltd [1916] 2 Ch 601 UK, originality in copyright law does not require that the work be unique and novel but means that the author must have exercised some level of sufficient skill and labour.

Copyright protection in Uganda is governed by the Copyright and Neighbouring Rights Act, of 2006 and the Copyright and Neighbouring Rights Regulations of 2010.

Credit: Diala Law

B. Industrial property

The purpose of industrial property law is to protect inventions and industrial or commercial creative work.  Industrial property can be separated into two parts;
i) The first part is characterised as the protection of distinctive signs, in particular trademarks (which distinguish the goods or services of one undertaking from those of other undertakings) and geographical indications. A trademark identifies the brand owner of a particular product or service. 

The protection of such distinctive signs aims to stimulate and ensure fair competition and to protect consumers, by enabling them to make informed choices between various goods and services. The protection may last indefinitely, provided they sign in question continues to be distinctive. The perfect example of this can be the distinction between Pepsi and Cocacola.

ii) The second part of industrial property is protected primarily to stimulate innovation, design, and the creation of technology. In this category fall invention (protected by patents), industrial designs, and trade secrets. If you have ever been curious about the KFC chicken recipe, it would ideally fall under trade secrets in industrial property.

 A perfect example of this happened in 2013 when Century Bottling Company Limited (Coca-cola) filed a suit against Harris International, Riham Company over a trademark infringement. The dispute arose after Riham used a 500 ml Riham cola bottle shaped similar to Coca-Cola’s contour bottle, which is a registered trademark in Uganda. It was cited that the imitation would confuse the minds of consumers leading them to think that Riham is associated with coca-cola. The Coca-cola company, therefore, is the holder of the contour bottle shape. An imitation of it amounted to an infringement of their trademark. 

Credit: Mierespaza

So the question is what is your mind coming up with? What ideas or inventions have you dreamt up? And most especially how are you going to protect it?