According to David Bainbridge, patent law concerns new, industrially applicable inventions.

1 In Uganda
today, a patent is a title given to protect an invention.2 A patent is an exclusive right granted for an invention
which is a product or a process that provides in general a new way of doing something or offer a new technical
solution to the problem. In Case of Bishwanath Prasad Radhey Shyam V Hindustan Metal Industries,
(1979) 2 SCC 511 it has been held by the Supreme Court that, “the rationale of patent law is to encourage
scientific research, new technology and industrial progress.

The Industrial Property Act under section 9 gives the three major requirements for patentability that is;

 Novelty. (Section 10)

 Industrial application. (Section 11)
 Inventive step. (Section 12)

The Industrial Property Act demands that for something to get a patent, it must be an INVENTION. In
Hickton’s Patent Syndicate v Patents & Machine Improvements Co 3 court held that “Every invention to
support a patent must … either suggest a new way of making something or it may mean another way of
producing a new article altogether …”. In Genetech v Wellcome Trust (1989 RPC 147, the CA held that it
was an essential requirement, which must be satisfied before a patent can properly be granted, that the
applicant has made an invention. Under section 2 of the I.P Act, an invention means a new and useful art
whether producing a physical effect or an improvement which is not obvious, capable of being used or applied
in trade or industry. As per section 8 an “invention” means a solution to a specific problem in the field of
technology.

The invention must not lie within the items excluded under section 8(3) of the I.P Act. In Young V Rosenthal,4
a patent application for a mathematical formula was not granted on the grounds that it lay within the exclusions
for patentability as scientific or mathematical formulae are deemed to not be capable of being patented. In the
case of Onco Mouse case5, a patent was granted for the invention of an animal known as the Onco Mouse. In
granting the patent, the European Patent Office among others considered that the term “animal varieties” in
the European Patents Act did not cover the Onco Mouse. Furthermore, the office had to balance the demands
of morality with the need for further advancements in cancer research.

NOVELTY

An invention is patentable if it is new, the term novel means as new. Novelty is provided for under section 10
of the Industrial Property Act. An invention must not be anticipated by prior art or where a person who is
highly skilled in the relevant area could not derive the invention from a combination of prior disclosed art 6.
Section 10(2) of the I.P Act sustains this view. The section defines prior art as consisting of everything made
available to the public anywhere in the world by means of written disclosure or by oral disclosure where the
disclosure occurred before the filing date of the application or, if priority is claimed, before the priority date
validly claimed in respect of the application. The invention must not have already been made available to the
public. According to the case of Folding Attic Stairs Limited v The Loft Stairs Limited 7, disclosure to a
person in confidence does not invalidate a patent but disclosure to a single person in absence of an obligation
of confidence will destroy the novelty even if that person chooses to keep it secret 8. Novelty is destroyed if

1
Intellectual property by D. Bainbridge. 8 th edition at page 377
2
See section 2 of the Industrial property act
3
[1909] 26 RPC
4
(1884) 1 RPC 29
5
European Patent Application no. 85 304 490.7 (filed 24 th June 1985)
6
Section (10) (1) of the I.P Act.
7
[2009] EWHC 1221 (Pat).
8
Supra at page 419
the inventor is / can already be unequivocally understood by a person skilled in the art. The general rationale
has remained constant on development only deserves patent protection if it is new. Otherwise it would be
unfair for a patent holder to prevent others from using the technology.

INDUSTRIAL APPLICATION

Section 12 of the I.P Act provides that an invention shall be considered industrially applicable if, according
to its nature, it can be made or used in any kind of industry, including agriculture, medicine, fishery and other
services. In Lowell v Lewis9 Court found for Lewis and held that to warrant a patent, the invention must be
useful. Court defined usefulness as something that is capable of some beneficial use, in contradiction to what
is frivolous or worthless. According to court, usefulness did not mean better, it just meant different. Basically,
even if the patent was not as good as the other pumps on the market, it was still patentable. Court noted that it
is extremely hard to judge what is better, as an invention might be worse than most things, but better for one
specific thing.

The requirement that a patent must be capable of industrial application precludes discoveries and theories. 10
For an invention to be patentable it has to be something that can be worked industrially. In Lane Fox v
Kensington and Knightsbridge Electric Lighting Co (1892)11, Lindley LJ stated, ‘When Volta discovered
the effect of electric current from a battery on a frog’s leg he made a great discovery, but no patentable
invention’. What can be patented is the incorporation of that discovery into technology. Something more than
excluded matter is required to enable an invention to be patented – a technical contribution to the art. It is
the practical application of an idea or discovery which leads to patentability.

INVENTIVE STEP

The guiding law is section 11 of the I.P Act. A clear justification for this requirement was elucidated by Court
of Appeal in PLG v Ardon International (1995), where court argued that the public should not be prevented
from doing what was an obvious extension from existing technical knowledge, if sufficiently interested. In
Williams v Nye it was stated that the presence of an inventive step is a question of fact to be decided in every
case. In Williams v Nye12, the plaintiff patented a machine for making sausages in which a mincing machine
and a filling machine, both of which were known, were combined. In rejecting the patent, Lindley LJ held, “I
do not think a patent can be granted for that considering that the object was perfectly well-known; that the
utility of the forcing nozzle was known; that the object of it had been attained before, and there is nothing
which amounts to what is understood by an invention.” the above invention amounted to an obvious invention.

The requirement for an inventive step is related to the requirement of novelty. If an invention has already been
disclosed it forms part of the prior art, and therefore (except in the special case of an earlier unpublished patent
application) the invention cannot involve an inventive step. The need for an inventive step goes further in that
invention must not be obvious to a person skilled in the art to which the invention relates. The word ‘obvious’
in the case of General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 was stated
not to have any special legal meaning and it has been said that it is not necessary to go beyond the dictionary
definition but to take it to mean ‘very plain’”13.

A skilled person is one having all the standard knowledge available in the field and having the standard
capabilities of routine work and experimentation allowing him to straight forward progress from what is

9
10
See section 8(3) of the I.P Act.
11
(1892) 9 RPC 413
12
(1890) 7 RPC 62 (CA)
13
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457
already known. In Techno graph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (at 355)14 Lord
Reid’s description of the notional skilled worker was as such; “...he must be a skilled technician who is well
acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to
have an unlimited capacity to assimilate the contents of ... scores of specifications but to be incapable of a
scintilla of invention.”

TEST FOR DETERMINING WHETHER THERE HAS BEEN AN INVENTIVE STEP

In Windsurfing International Inc v Tabur Marine (Great Britain) Ltd15, the Court of Appeal held that a
12-year-old boy, who built a sailboard and used it in public for a few weekends at a caravan site at Hayling
Island in Hampshire, had effectively anticipated a later patent for a sailboard which was declared invalid for
want of novelty (and also because it lacked an inventive step). The clearest modern test for determining the
presence of an inventive step is that made by the Court of Appeal in the above Windsurfing International16
case. The court set down a fourfold test:

 Identifying the inventive concept in the patent;

 Imputing to a normally skilled but imaginative addressee what was a common general knowledge in
the art at a priority date;
 Identifying the differences, if any, between the matter cited and the alleged invention;
 Deciding if those differences viewed without any knowledge would have constituted steps which
would have been obvious to the skilled addressee or whether an inventive step was necessary.

In PLG Research Ltd v Ardon International Ltd17 Millet LJ stated at page 313 that “The value of [the
Windsurfing] analysis is not that it alters the critical question; it remains the question posed by the Act. But it
enables the fact-finding tribunal to approach the question in a structured way.”

In Pozzoli SpA v BDMO SA,18 Jacob LJ suggested that the Windsurfing test would be better restated as
follows:

1. (a) Identify the notional ‘person skilled in the art’;

(b) Identify the relevant common general knowledge of that person;

2. Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’
and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute
steps which would have been obvious to the person skilled in the art or do they require a degree of
invention?

However, although the test is relatively easy to describe, it can be difficult to apply. In Virgin Atlantic
Airways Ltd v Premium Aircraft Interiors Group Ltd,19 Lewison J said (at para 271) that one reason for
this was that: “… at the third stage ... it is necessary to focus on the differences between the prior art and the
patent in suit; but at the immediately succeeding fourth stage it is necessary to erase all knowledge of the
alleged invention from the mind. That is not an easy task.”

14
[1972] RPC 346
15
[1985] RPC 59
16
Supra.
17
[1995] RPC 287
18
[2007] FSR 872.
19
[2009] EWHC 26 (Pat).
Another [reason] is that where the skilled addressee is (or is a team that includes) a designer, to approach the
prior art through the mind of an unimaginative designer is unreal. An unimaginative designer would soon be
out of a job20. In a nutshell, the purpose of the above paper was to draw out the main requirements for
patentability with specific focus on the requirement of Inventive step. As noted, the other requirements
include, Novelty and Industrial Application. However, bearing in mind that patent law is still maturing in the
Ugandan system, there are yet to be any reported cases concerning the interpretation of section 9 on what
amounts to a patentable invention.

Novelty Continuation.

In the leading case of Synthon BV v Smithkline Beecham plc, Lord Bingham said there are two
requirements for anticipation: prior disclosure and enablement.

In relation to prior disclosure, Lord Bingham said it “… must be construed as it was understood by the skilled
person at the date of disclosure”. Further, he held, following the decision in General Tire Ltd v Firestone
Tyre Ltd, that any claimed anticipatory materials are to be consider separately i.e. there cannot be any
‘mosaicing’ by combining different earlier publications to show anticipation; to illustrate this point, he
echoing the well-known phrase from General Tire, Lord Bingham that: The prior inventor must be clearly
shown to have planted his flag at the precise destination before the patentee”.

In defining enablement, he said that it “… means that the ordinary skilled person would have been able to
perform the invention which satisfied the requirement of disclosure”.

The notional person skilled in the art does not need to be one person but could be a team with combined
knowledge. Lord Bingham, in defining a person ‘skilled in the art’, expressed his approval of L.J. Buckley’s
definition in Valensi v British Radio Corporation Ltd: “He is not a person of exceptional skill and
knowledge, that is he is not expected to exercise any invention not any prolonged research, inquiry or
experiment. He must, however, be prepared to display a reasonable degree of skill and common knowledge
of the art in making trials and to correct obvious errors in the specification if a means of correcting them can
readily be found”.

The wide test for state of the art is arguably onerous on a patent applicant. As Aldous, J. highlighted in Lux
Traffic Controls v Pike Signals Ltd: “It is settled law that there is no need to prove that anybody actually
saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book
will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read
the book and whether or not it was situated in a dark and dusty corner of the library”.

On one hand, this policy can be harsh on an inventor who has, independently of the public disclosure,
‘invented’ a product, a process, information about either or anything else capable of being patented in that
s/he will be denied a patent for his/her invention. However, conversely, it would be equally harsh on a patent
owner if a subsequent inventor were to be granted a patent for an invention relating to disclosure that is already
in the public domain, because of the difficulty of proving if or to what extent that disclosure ‘enabled’ the
subsequent invention. The law of patents has to apply a ‘strict liability’ type test because the alternative would
be to enter the realm of uncertainty. In any event, a ‘duplicate’ patent is not in the nature of a patent because
of the requirement of ‘novelty’. Therefore, given the competing arguments in relation to the onerousness of
the disclosure requirement, it is submitted that the balance of the law is correct in this regard.

20
D. Bainbridge supra at page 444
Defenses to Infringement

Prior use and commencement of infringement (Section 41)

If a person uses an invention in a way that makes it public before the priority date of a patent for it, his
anticipation will render the patent invalid. The infringer has a defense against infringement, should he continue
to use the invention after the patent’s rights take effects. The defense is also open to people who have not
provided material for attacking the patent’s validity, prior users whose activities have n ot made the invention
available to the public.

Invalidity of the Patent

In proceedings for infringement it is proper for the alleged infringer to counterclaim and contend that the
patent is invalid for want of satisfaction of any of the essential requisites. (See Novelty, inventive step,
industrial application and Interpretation of specification.) Sec. 91 on Invalidation and revocation of a claimed
patent by court.

Delay and Acquiescence.

The question may sometimes arise whether the patentee in effect consents either by standing by in silence or
by some positive misstatement to the defendant; delay, acquiescence and estoppels.

Haltine v. Steward Hughes [1951] FSR 171; the defense only applies where the prior acts are carried out in
the UK and only where the acts are carried out on good faith (commercial purposes may be inconsistent with
good faith)

Defense only available where defendant had done the acts out of or made some serious and effective
preparation before the priority date infringing if it was carried out after the grant of a patent. The said acts
must be so advanced as to be about to result into the infringing act being done. Lubrizor Corp v. Esso
Petroleum [1998] RPC 727 defense allows prior user to continue to do the same act after the grant. It being
a personal defense, the continued use must be by the same person. The fence is only available to a person who
commits an act wholly different in nature. Hadley Industries V. Metal Sections where prior use was in
relation to a process. The defense available in relation to acts relating to products of the process after grant.

Experimental and Medical use

Under TRIPS Agreement Articles 27(b) and (c) relate to experiments and medical uses respectively. In some
respects, these articles are the most interesting “non-commercial” uses. Article 27(b) permits acts “done for
experimental purposes relating to the subject-matter of the patented invention”. In Monsanto v Stauffer
Chemical Co, it was held by the English Court of Appeal that this part of the test was not limited in the same
way as Article 27(a) to noncommercial purposes. The court held that for defense to apply, the experiment
must be for the purpose of finding out something new about the patented invention.

Co- Ownership (Section 49)

Licensing (Section 50)

Bolar exemption
What is important to consider here is the Bolar exemption, named after a case of the Court of Appeals for the
Federal Circuit in the US, and the legislation subsequently passed to overturn it. It concerns the use of a
patented invention for the purpose of complying with regulatory processes. The Bolar provision is a defense
for patent infringement wherein a patented invention (that is due to expire in the next three years) can be
exploited by a third party solely for research and development purposes and to obtain the required regulatory
approvals, while the patent is still valid.