Introduction to Intellectual Property...Presentation to WORDCAMP KLA2019 By: BERNARD MUKASA, PARTNER 01.12.2019. Outline What is IP Categories of IP Analysis of specific aspects of

Introduction to Intellectual PropertyPresentation to WORDCAMP KLA2019

By: BERNARD MUKASA, PARTNER

01.12.2019

Outline

What is IP

Categories of IP

Analysis of specific aspects of the different categories of IP

Commercialization of IP

Q&A

2019/12/01 ORTUS AFRICA 2


What is Intellectual Property?


Definition IP - Intellectual property refers to creations of the mind: inventions;

literary and artistic works; and symbols, names and images used in

commerce.

IPR - Intellectual property rights are like any other property right. They

allow creators, or owners, of works to benefit from their own work or

investment in a creation. These rights are outlined in Article 27 of the

Universal Declaration of Human Rights, which provides for the right to

benefit from the protection of moral and material interests resulting from

authorship of scientific, literary or artistic productions2019/12/01 ORTUS AFRICA 5

Why promote & protect IP?

First, the progress and well-being of humanity rest on its

capacity to create and invent new works in the areas of

technology and culture.

Second, the legal protection of new creations encourages the

commitment of additional resources for further innovation.

Third, the promotion and protection of intellectual property

spurs economic growth, creates new jobs and industries, and

enhances the quality and enjoyment of life.


How does the average person benefit?

Intellectual property rights reward creativity and human

endeavour, which fuel the progress of humankind.


Categories of IP



Categories of IP



Definition

A word (or words), a design, or a combination of these used to distinguish the goods and services of one person or organization from those of others in the market place.

Protection of a trademark is secured by registration because:

• provides proof of ownership

• allows to flag infringement under the Trademarks Act

• prevents others from adopting a similar trade-mark

• allows licensing of the products and services2019/12/01 ORTUS AFRICA 12

Trademarks


Type of mark What is covered Duration

Trademark Word, symbol, name, slogan, device used to distinguish one’s goods from another’s

7 yrs then renewable every 10 years, as long as the mark remains in use

Service marks Similar to trademarks : are used to identify the services or intangible activities of a businessExample; Amazon, Shell, DTB etc

As above

Trademarks


Trademarks


Trademarks

Registration Procedures:

Search/Application

Formal & Substantive examination (Filing Date)

Publication Notice & Publication (60 days)

Opposition (if any)

Registration

Renewal


Trademarks

Key laws in Uganda include:

• Trademarks Act, No. 17 of 2010

• Trademarks Regulations, SI 58 of 2012

Nairobi Java House Ltd v Mandela Auto Spares Ltd (High Court ofUganda, at Kampala, Civil Appeal No. 13 of 2015)

“In any case my finding on the evidence is that the two marks are dissimilar and

likelihood of confusion is not supported by evidence and therefore the

conclusion of the registrar is not supported.”

A key point of contention was whether there could be a trademark on the use

of the word “Java” which Mandela Auto Spares had registered in Uganda.

However, the ruling by the court insisted that the word Java is commonly used

globally in reference to services offered by coffee shops.



Patents

A patent is an exclusive right granted for an invention – a

product or process that provides a new way of doing

something, or that offers a new technical solution to a

problem.

A patent provides patent owners with protection for their

inventions. Protection is granted for a limited period,

generally 20 years.


Patents

What can be patented?

A Product: a door lock

A Composition: A chemical composition in lubricants for door

locks

An Apparatus: a machine for making door locks

A Process: a method for making door locks

…or an improvement on any of these (90% of patents are

improvements of existing patents)


Patents

3 conditions:

• Novel/New: must be new, first in the world - no one can have already done or used it before. Consider the prior art.

• Inventive: must show ingenuity and must not be obvious to someone of average skill (skilled in the art) in the field of invention.

• Industrial Applicability/Useful: must be a useful solution to a problem in that field.




Post-it ® note was patented by Art Fry from 3M


Copyright and Neighbouring Rights

Copyright laws grant authors, artists and other creators protection for their literaryand artistic creations, generally referred to as “works”.

A closely associated field is neighbouring rights “related rights” or rights related tocopyright that encompass rights similar or identical to those of copyright, althoughsometimes more limited and of shorter duration.

The beneficiaries of neighbouring rights are: performers (such as actors andmusicians) in their performances; producers of phonograms (for example, compactdiscs) in their sound recordings; and broadcasting organizations in their radio andtelevision programs.

Works covered by copyright include, but are not limited to: novels, poems, plays,reference works, newspapers, advertisements, computer programs, databases,software, films, musical compositions, choreography, paintings, drawings,photographs, sculpture, architecture, maps and technic.al drawings


Copyright and Neighbouring RightsCopyright law:

protects the expression of an idea. Not the idea itself.

provides economic incentive to the creator ensuring that he will be

reimbursed for his intellectual work

Term: Lifetime of author and the work falls into public domain after the

term of the copyright has expired usually 50 years after the death of the

author.

Protection is automatic with no formalities. However registration is

important for proof of authorship.2019/12/01 ORTUS AFRICA 26


Speeches & Commissioned Work

• Al Hajji Nasser N. Sebagala v. MTN & SMS Media H.C.C.S 283 of

2012

- Who was the copyright owner of the caller/ring tunes? “I

am the Minister without fort portal”, “I will put my behind . . ”

• Court: “It is the third-party who is the author of the recording of the

Plaintiff’s voice . . . it carried out the fixation of the Plaintiff’s voice in a

material form and was able to reproduce it and sell it to the Defendant.”

– Hon. Justice Christopher Madrama Izama.2019/12/01 ORTUS AFRICA 27


• Employer or other commissioned works:

Sikuku Agaitano v. Uganda Baati, HCCS No. 298 of 2012

Sec. 8 (1) CNRA – Where a person creates a work on commission byanother person or body, then in the absence of a contract to thecontrary, the copyright in respect of that work shall vest in theemployer or the person or body that commissioned the work.

Court: “The persons who created and did the video shooting or whoemployed the person who carried out the work of shooting the photosand video is/are the authors or author of the works.” - Per JusticeChris Madrama.



Sylvia Katende v. Bank of Uganda, HCCS No. 443 of 2010

• Plaintiff participated in a contest organized by KCC, won and wasduly paid. Sued defendant over eight years later claiming sculpturewas made without her knowledge and consent

• Court found that the Plaintiff was commissioned by KCC to do adesign for a sculpture. Meaning that the model design was made tothe order of KCC. The work the Plaintiff produced was a drawing ofthe sculpture and not the sculpture.

• Court further observed that the design and the sculpture are twodifferent works of art, albeit one is based on the other. A drawing isone form of artistic expression just as a sculpture is another form ofartistic expression. The sculpture can be described as a derivativework of art, derived from the drawing.



Image Rights

Asege Winnie v. Opportunity Bank (U) Ltd & Maad Ltd HCCS No. 756 of 2013

• Plaintiff sued defendant for breach of her constitutional right to privacy & unjust enrichment due to

unauthorized usage of her image in their marketing promotions.

• Court noted that Plaintiff did not refer at all to copyright (so Agaitano & Sebagala cases as to

authorship do not apply) but simply using her image without her consent.

• On 22nd April 2016, Court agreed with her on the claim and granted her damages

> 150 Million shillings.



• The Monkey selfie, who owns the CR?


Utility Model

A utility model is an exclusive right granted for an invention, which for alimited period of time allows the right holder to prevent others fromcommercially using the protected invention without the right holder’sauthorization.

A utility model is similar to a patent. In fact, utility models are sometimesreferred to as “petty patents” or “innovation patents” or “secondarypatents”

How do Utility Models Differ from Patents: The requirements foracquiring a utility model are less stringent than for patents. While therequirement of “novelty” is always to be met, that of “inventive step” or“non-obviousness” may be much lower or absent altogether. In practice,protection for utility models is often sought for innovations of a ratherincremental character which may not meet the patentability criteria.


Industrial Design

The visual features of shape, configuration, pattern or ornament (or any

combination of these features) applied to a finished article made by hand,

tool or machine.

Designs makes a product attractive and appealing; hence, they add to

the commercial value of a product and increase its marketability.

Design must be original

Can be two or three-dimensional

Made by features that appeal to the eye2019/12/01 ORTUS AFRICA 33

Plant Breeders Rights (PBR)

Special regime of IP for the protection of new plant varieties.

The key law is

• The Plant Variety Protection Act, No. 16 of 2014

A plant variety is protectable if it;

• has a 'breeder';

• is 'new';

• is 'distinct';

• is 'uniform'; and

• is 'stable'.2019/12/01 ORTUS AFRICA 34

Geographical Indications (GIs)Designation used on goods that have a specific geographical origin and

possess qualities or a reputation that are due to that location.

Geographical Indications: consists of the name of the place of origin of the goods link a product to a particular regionindicate qualities, attributes, reputation associated with geographic originsuggest connection to region’s inherent characteristics (e.g., soil, climate, terrior)may also imply production skills/processes associated with region.Law: Geographical Indications Act, 2013


Geographical Indications (GIs)


Trade Secrets

A trade secret is any formula, pattern, physical device, idea, process, or other information that provides the owner of the information with a competitive advantage in the marketplace.

Trade secrets include marketing plans, product formulas, financial forecasts, employee rosters, logs of sales calls, and similar types of proprietary information.

Trade secrets MUST BE safeguarded by stringent efforts to keep the information secret.


Traditional Knowledge

• Any knowledge originating from a local or traditional community that is

the result of intellectual activity and insight in a traditional context, including

know-how, skills, innovations, practices and learning, where the knowledge is

embodied in the traditional lifestyle of a community, or contained in the

codified knowledge systems passed on from one generation to another.


Traditional Knowledge


Other Categories of IP

Expressions of Folklore: Any forms, whether tangible or intangible, in which traditional culture and knowledge are expressed, appear or are manifested

Integrated Circuits/topographies: 3-D configuration of electronic circuits embodied in integrated-circuit products or layout designs. Used in many technologies, such as: Computers, Automobiles, Pacemakers, Industrial robots, Cameras, Spacecraft et al.


A case for commercialization



IP affects Corporate Value:

Intellectual property rights have grown as a key indicator of

corporate value.

Driven by the shift in the importance of intellectual property in the

valuation of products, services, and business, there is greater

demand for both invention and protection.

Intangible assets account today for nearly 80% of the corporate

value reflected in market capitalization on the S&P® 500 as opposed

to less than 20% in 1975


A case for Commercialization

WHY

Income & profits: creation of value. Increased revenues.

Develop culture of innovation

Attract resources & relationships – partnerships, licensing, jobs

Impact on entire eco-system (universities, social, economic

conditions)



Modes:

Internal Product Development

IP Assignment (permanent transfer or sale)

Knowledge transfer (licensing – exclusive or not?, JVs,

Franchising, startups & spin offs)



Richard Thoman, CEO of the $20 billion Xerox Corporation:

“My focus is intellectual property,” he declares. “I’m

convinced that the management of intellectual property is how

value add is going to be created at Xerox. And not just here,

either. Increasingly, companies that are good at managing

IP will win. The ones that aren’t will lose.”



Steps for Start ups:

1st IP Administration

Create it, protect it (applications, prosecutions and maintenance)

2nd IP Management

Create economic benefit, integrate into business strategy &

maximize value.

How: Value chain/modes



Documents

Introduction to Intellectual Property...Presentation to WORDCAMP KLA2019 By: BERNARD MUKASA, PARTNER 01.12.2019. Outline What is IP Categories of IP Analysis of specific aspects of