In the wake of the COVID-19 pandemic and in response to the presidential guidelines issued on the 18th of March 2020, the Chief Justice of Uganda, Hon Justice Bart Katureebe, issued a Circular CJ/C.7 in respect to the Judiciary; the effect of this circular was to suspend some functions of the courts of Judicature. In tandem, the Ministry of Justice issued guidelines to bodies which it oversees such as the Uganda Registration Services Bureau (URSB) the body tasked with the registration of Intellectual property rights (IP). All these are efforts put in place to minimize the spread of what has now become a global pandemic. There is no denying that COVID-19 has greatly affected all areas of our lives, and the intellectual property arena is no different.
The world of intellectual property has not been spared either. The domestic and international IP organizations for which Uganda is a member such as the World Intellectual Property Organization (WIPO) and the Africa Regional Intellectual Property Organization (ARIPO) have all been impacted by this global pandemic. As a result, IP rights registration, enforcement and litigation means have been impacted.
Intellectual property, especially in the primary stages, is hinged on registration and abiding by the set timelines
both for registration, renewal and expiry of the given rights. In the circumstances, the intellectual property office should be compelled to extend the dates for the various timelines, for example, expiry of trademarks and the requirement for renewal of the same1. This cannot be effectively done since we do not have an active online
office for Intellectual Property; furthermore, registration of the several IP rights requires gazetting in the National Gazzate2 which only has a physical office and no online presence. Therefore gazetting in the circumstances would be a challenge given the social distancing guidelines and transport restrictions imposed by the government in the fight against COVID-19.
Besides, registration of intellectual property rights requires a search of the register in particular for trademarks3; this at the moment is not possible since the trademark office does not have an online register for which any interested party can carry out a search on. Additionally, extensions related to patent applications and reexamination proceedings and additional inquiries with the patent office cannot be done or proceed at the moment. Various deadlines related to patents, trademarks and other industrial related Intellectual Property right challenges as required by law also remain. For example, the invitation by the registrar to furnish missing drawings or make corrections under Section 28 (2) or (3) of the Act is supposed to be made within fourteen days after the invitation4 is made the same cannot be done effectively due to limited access.
The Intellectual property office in the circumstances is compelled to include an extension to deadlines related to the registration, expiry, renewal and prosecution of patents, trademarks, copyrights and other intellectual property rights. However, suffice to note that the intellectual property office has not specified to what rights and areas these extensions would apply to or put any in place as of yet.
The enforcement of intellectual property rights becomes the other major challenge as Counterfeiters and unscrupulous people could take advantage of the pandemic to infringe on intellectual property rights since the enforcers of the same are not fully operational. Enforcement of intellectual property rights in Uganda is done “manually” by the enforcement police that sits at URSB Headquarters however the same cannot effectively carry out its duties due to the nature of the pandemic. Therefore, owners of the various intellectual property rights have no way of effectively enforcing the same and in essence, stand the risk of financial loss due to the infringement and suffering a huge toll on their goodwill.
As indicated below, intellectual property offices throughout the world have implemented their own versions of deadline extensions as a major and front line solution to the pandemic.
1. The World Intellectual Property Organization (WIPO) is continuing operations under the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, the Lisbon System for the International Registration of Geographical Indications as well as administering other intellectual property (IP) and related systems. WIPO has activated its business continuity protocol and moved to an almost entirely virtual work presence, with only a small pool of personnel retaining access to the Geneva, Switzerland headquarters. This is in line with public health authorities’ guidance to curb the further spread of COVID-19.5
2.The European Intellectual Property Office (EUIPO) has issued an extension of May 1, 2020, that would have otherwise expired between March 9 and April 30 of this year, including office action deadlines. The European Patent Office (EPO) announced that time limits expiring on or after March 15, 2020, are extended until April 17 of this year. Furthermore, the office postponed all in-person examination and opposition oral proceedings scheduled before April 30, 2020, until further notice, providing video conference as a possible alternative.
3. The UK Intellectual Property Office (UKIPO) has designated days on or after March 24 as “interrupted days,” where any deadlines for patents, trademarks, and designs are extended until the office notifies parties of the end of the interrupted days period.
Allow me to advance some solutions in light of the issues raised earlier. It is in my opinion that the intellectual property office should start and effectively run an online office for most of the services such as submission of documents, searches, gazetting and retrieval of notices. I also advocate for timely extensions of deadlines in times of a pandemic or any other circumstance which would impact on the enjoyment of intellectual property rights. In respect to litigious matters such as complaints to the registrar in instances of infringement, contested trademarks, the IP office should create an online office and also deliver rulings online to avoid delays and subsequently impacting competition.
It’s no doubt that the COVID-19 pandemic has disrupted the world order and in particular the intellectual property world, however, as a country we need to figure out a way to ensure continuity of service delivery in these circumstances to avoid stalling business and exposing owners of the various intellectual property rights to infringement and missing deadlines as spelt out by statute.
Millions of people toil in the shadow of the law we make, and much of their livelihood is made possible by the existence of intellectual property rights. Therefore, in circumstances like these, we need to craft a way to ensure continuity of the enforcement, registration and utilization of IP rights in our country.