Uganda Christian University School of Law Intellectual Property I Course

Course Title	Intellectual Property I [Introduction to I.P and Industrial Property Law]
Course Code	BLAW4103	Credit Hours	75 (Seventy five) (Sixty teaching hours, fifteen hrs for research)
Contact Hours	9.30 am – 11.30 am (Tu & Thr) T.A Session: 6-7.00pm Saturdays	Core / Elective	Elective course

Course Description

This module offers an introduction into aspects of law and policy relating to Intellectual Property, but more particularly, Patents. Intellectual Property provides a vital, though not the only, means of protecting and regulating the use of intangible assets comprising knowledge and information. As these assets have assumed increasing commercial significance, issues associated with the further fostering of innovation; protection; exploitation and use of intellectual property, particularly patents in that regard, have come to the forefront of recent developments in the global economy. Other emerging areas related to Intellectual Property and the Patent system which are addressed include issues of biotechnology and traditional medicine.

Course objectives

This module has the following objectives:

To expose students to the development and contemporary significance of intellectual property in the context of international economic activity as seen in the perspective of Patent rights, Biotechnology and Traditional Medicine.
To enable students to appreciate the principles of Intellectual Property Law and Policy; and
To introduce students to the legal and regulatory problems associated with contemporary developments in technology and commercial practice (such as, patenting of biotechnological ‘inventions’, legal protection of software and databases, ‘parallel trade’ in goods, and enforcement of intellectual property rights as well as rights associated with Traditional medicine).

Required readings

This module is organized around reading materials prepared specifically by the module teachers. As such, there is no single recommended textbook for this module. However, the following materials, which are available in the UCU Library, provide some coverage of the main issues addressed in the module:

Texts:

Bainbridge (2010), Intellectual Property, 8th Edition.
Li Westerlund, (2001), Biotechnology Patents: Equivalency & Exclusions under the European & U.S. Patent Law
R. Cornish, Cases & Materials on Intellectual Property, 5th Edition.

Legislation, related material & Agreements:

The Industrial Property Act, 2013 and Patent Regulations S.I 216-1
The Swakopmund Protocol on the Protection of Traditional Knowledge and the Expressions of Folklore
The Paris Convention for the Protection of Industrial property, Article 5A [Available at WTO website – see link below]
TRIPS Agreement, special reference to articles 6, 7, 8, 27. 30 and 31 [Available at WTO website – see below]
Doha Declaration on the TRIPS Agreement and Public Health, 14^th November 2001 [Available at WTO website].
A number of other relevant material will be highlighted and referred to in the course of the Semester.

Note: Students may also find it helpful to begin by studying the WIPO Intellectual Property Handbook: Policy Law and Use, WIPO Publication No. 489(E) (WIPO, Geneva), which is freely available online at the WIPO website: http://www.wipo.org/news/en/index.html?wipo_content_frame=/news/en/documents.html.

Course Content

4.1 Course outline and Content Description

Part A: Introduction:

This provides a brief introduction to theoretical and practical aspects of Intellectual Property systems. It examines the following:

Nature of Intellectual property rights,
Cross-cutting themes,
Practical considerations,
Commercial Exploitation of I.P,
Framework for description of rights (Patents, Plant Variety Rights, Trademarks and Design Rights, Trade Secrets, Geographical Indications, Copyrights & Neighboring Rights, Traditional Knowledge and Folklore (T.C.Es) and other allied rights).

Part B: In a generalized perspective, this part uses case law, scholarly articles, International agreements and specific legislations to review the administration and developmental significance of Patent rights Biotechnology and Traditional Knowledge. The Patent system has played an important, yet controversial role in the international diffusion and exploitation of technology. This part of the module, therefore, examines structural and functional aspects of the national patent system alongside various forms of international collaboration in the field of patent law. Particular emphasis is placed on the historical development and contemporary significance of the Paris Convention for the Protection of Industrial Property, together with attempts at its reform. The Patent protection provisions of the TRIPS Agreement will also be examined in detail. This also includes case studies dealing with international patent protection, including protection for pharmaceutical products, international intellectual property protection of plant genetic resources, and the rights of indigenous people under Traditional Knowledge and Genetic Resources.

Patents and Utility Models

Patent law- Background & Basic Principles.

Ref(s) (see citations above): Bainbridge; Cornish; for free access to British and Irish case law on I.P, see URL: http://www.bailii.org/uk/cases/UKIntelIP and http://www.bailii.org/ew/cases/EWHC/Patents )

Introduction:

Young v Rosenthal [1884] 1 RPC 29

Hickton’s Patent Syndicate v Patents & Machine Improvements Co. [1909] 26 RPC

Brief Historical Perspective:

Darcy v Allin [1602] Co Rep 84b

Lairdet’s Patent, [1773] 1 WPC 52

Justification for Patent Rights:

In Re: Patent Application by CFPH LLC [2005] EWHC 1589

Chiron Corporation v Organon Teknka Ltd [1995] FSR 325

Sec. 21(1) Industrial Property Act, 2013

Regln. 17, 18, 21, 22, Patent Regulations SI 216-1

Practical Considerations:

Priority date, Specifications and Claims:

Sec. 10 (2), Industrial Properties Act, 2013

Sanitam Services (E.A) Ltd v Rentokil (K) Ltd & Anor [2006] eKLR

Sanitam Services (E.A) Ltd v Rentokil (K) Ltd & Anor [2010] eKLR

In the matter of Abaco Machines (Australasia) Pty Ltd’s Application [2007] EWHC 347 (Pat)

Biogen Inc v Medeva Plc. [1997] RPC

AEA Technology PLC v. Peter Read [1999] UKIntelIP o03699

Glaverbel SA v British Coal Corp [1995] RPC 255

Sec. 21(1)(c) and (1)(e)Industrial Properties Act, 2013

Regn., 19, 21, 22 Patent Regulations SI 216-1

Requirements for patentability and ownership of patents:

Introduction & Basic Requirements:

Apex Creative Ltd & Anor v Kartasi Industries Ltd [2011] eKLR

Faulu Kenya Deposit Taking Microfinance Ltd v Safaricom Ltd [2012] eKLR

Hydra-Ject Services UK Ltd & Anor. V. Eric James (Patent) [2004] UKIntelIP 020604

Biogen Inc v Medeva plc [1995] RPC 25

Part III Industrial Properties Act, 2013. See Sections 8-10

Novelty:

Sec. 10(1) Industrial Properties Act, 2013

Windsurfing International Inc v Tabur Marine [1985] RPC 59

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457

Union Carbide Corp v BP Chemicals Ltd [1998] RPC 1

Lux Traffic Controls Ltd v Pike Signals Ltd [1993] RPC 107

Inventive step:

In Re: Patent Application by Cecil Lloyd Crawford [2005] EWHC 2417

British Leyland Motor Corporation Ltd v. Armstrong Patents Co. Ltd [1986] AC 577

Biogen Inc v Medeva plc [1997] RPC 1

Petra Fischer’s Application [1997] RPC 899

Molnlyke AB v Proctor Gamble (No. 5) [1994] RPC 49

Tests for inventive step:

Theresia M. Benker v. The Comptroller General of Patents [2011] EWHC 3604

Windsurfing International Inc v Tabur Marine [1985] RPC 59 at 73

Inventiveness/Non-Obviousness:

Sec. 11(1) Industrial Properties Act, 2013

BASF AG v. Smith Kline Beecham Plc [2002] EWHC 1373 (Patents)

Industrial application:

Sec. 12(1) Industrial Properties Act, 2013

Chiron Corp v Murex Diagnostics Ltd [1996] RPC 535

Chiron Corp. v Organon Teknika Ltd (No. 3) [1994] FSR 202

Hiller’s Application [1969] RPC 267

Exclusion from Patentability:

See: Section 8(3) Industrial Properties Act, 2013

A discovery, scientific theory or mathematical method

Citibank v Comptroller [2006] EWHC 1676

Chiron Corp. v Organon Teknika Ltd (No. 3) [1994] FSR 202

Genetech’s Patent [1987] RPC 553

Gales Application [1991] RPC 305

A scheme, rule or method for performing any mental act, playing a game or doing business, or a program for a computer

Autonomy Corporation Ltd v. The Comptroller General [2008] EWHC 1640

Re Gale’s Patent Application [1991] RPC 305

Fujitsu Ltd’s Application [1997] RPC 608

Mode of storage:

Genver’s Application [1970] RPC 91

Burrough’s Corporation (Perkin’s) Application [1974] RPC 147

Mental steps doctrine:

Raytheon Co’s Application [1993] RPC 427

Fujitsu Ltd’s Application [1997] RPC 608

Exclusions:

Sec. 13 of the Industrial Properties Act, 2013

Genetic Engineering

Onco-Mouse/Harvard [1990] EPOR 4 and [1990] EPOR 501

Ownership & Dealings in Patents

Proprietorship:

Sec. 38, 42, 43 & 46. Industrial Properties Act, 2013

Michael B. Fraser et al v. Oystertec Plc et al [2003] EWHC 2787

Goddin and Rennies Application [1996] RPC 141

Henry’s Brothers Ltd v The Ministry of Defense [1997] RPC 693

Employee inventors:

Charles Parsons v. Patent Letters [1898] AC 673

Eloctrolux Ltd v Hudson [1977] FSR 312

Greater Glasgow Health Board’s Application [1996] RPC 207

Dealing in patents:

Sec. 39, Industrial Properties Act, 2013

Baxter Int. Inc v Nederlands Produktielaboratium [1998] RPC 250

Coflexip Stena Offshore Ltd’s Patent [1997] 179

Insituform Technical Services Ltd v Inliner UK Plc [1992] RPC 83

Beecham Group Ltd. v. International Products Ltd. & Anor [1968] E.A 396

Compulsory license:

Sec. 43, 44, 58 Industrial Properties Act. 2013

Research Corporation’s (Carboplatin) Patent [1990] RPC 663

EC Commission v United Kingdom [1993] FSR 1

Richco Plastic Co’s Patent [1989] RPC 722

Terms of license as of right or compulsory license:

Sec. 50, Industrial Properties Act, 2013

British Technology Group v. Boehringer Mannheim Corporation [2000] EWHC Patents 148

Smith Kline & French Laboratories Ltd (Cimetidine) Patents [1990] RPC 203

American Cynamid Co’s (Fenbufen) Patent [1990] RPC

Use by the State:

Sec. 66, Industrial Properties Act 2013

Dory v Sheffield Health Authority [1991] FSR 221

Brittany Hayes: Innovation & Infringement: The Wright Brothers, Glenn H. Curtiss, and the Aviation Patent Wars

Industrial Designs/Utility Models:

Secs. 2, 68, 69, 70, 71, 72, 73, 75, 80 of Industrial Properties Act, 2013

Safepak Ltd v Power Plast Industries Ltd [2014] eKLR

Safepak Ltd v Asili Plastics Ltd [2013] eKLR

Patents – Infringement, Defenses and Remedies

Infringement:

Sec. 92, 93, 94, Industrial Properties Act, 2013

Hadley Industries Plc v. Metal Sections Ltd et al [1998] EWHC Patents 284

Adwest Engine Controls Ltd & Anor v. Tavismanor Ltd [1997] EWHC Patents 353

Pioneer Electronics Inc v Warner Manufacturing Europe GmbH [1995] RPC 487

Interpretation of claims:

Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367

Van der Lely NV v Bamfords [1963] RPC 61

Catnic components Ltd v Hill & Smith Ltd [1982] RPC 183

PLG Research Ltd v Avardon International Ltd [1995] FSR 116

Equivalence:

Rodi & Wienberger AG v Henry Showell Ltd [1969] RPC 365

Epilady patent [1991] RPC 597

Improver Corp v Raymond Industries Ltd [1991] FSR 223

Evidence:

Sanitam Services (EA) Ltd v Tamia Ltd & 16 Ors [2012] eKLR

Morris v London Iron & Steel Co. [1987] All ER 496

Imperial Chemical Industries v Montedison (UK) Ltd [1995] RPC 449

Defenses:

Sanitam Services Ltd v Bins (Nairobi) Services Ltd [2008] eKLR

Auchincloss v Agricultural & Veterinary Supplies Ltd [1997] RPC 649

Solar Thomson Engineering Co Ltd v Barton [1997] RPC

Microbeads AC v Vinburst Road Markings Ltd [1975] 1 All ER 529

Remedies:

Sec. 93, Industrial Properties Act, 2013

Crossley v The Derby Gas Light Co. [1834] 4 LT Ch. 25

Union Carbide Corp v BP Chemicals Ltd [1998] FSR 1

Genetics BV Smith Kline & French Laboratories Ltd [1997] RPC 801

Shelfer v City of London Electric Lighting Co. [1895] 1 Ch 287

American Cynamid Co v Ethicon Ltd [1975] AC 396

Assessment of damages:

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1975] 2 All ER 173

Gerber Garments Technology Inc v Lectra Systems Ltd [1995] RPC 383

South Australia Asset Management Corp v York Montague [1996] 3 WLR 87

Patent rights vis-à-vis Right to Health:

P.A.O & 2 Others v Attorney General [2012] eKLR

Extra Reading Materials:

– M. Boldrin & D. K. Levine: Open Source Software: Who needs Intellectual property? Jan. 2007, Vol. 57, Issue No. 1

– Case study on Turmeric: The Centre for scientific and Industrial Research of India filed a re-examination request with the US Patent and Trademark Office, seeking revocation of a 1994 patent issued to the University of Mississippi.

Weekly Schedule:

Week	Topic	Required Reading [including Industrial Properties Act, 2013]	Reading Assignments [see course outline – supra]
1	Course Introduction & Introductory aspects of Intellectual Property law.	D., Bainbridge: Intellectual Property law.	Bainbridge pp. 3 – 25
2	Patent law: Background, basic principles & practical aspects.	Bainbridge (pp. 377-388) Sec(s): 21, Regulations 17, 18, 19, 21, 22.	Cases on Introduction; historical perspective; and Justification for Patent Rights.
3	Requirements for Patentability & ownership of patents.	Bainbridge (pp. 412-470). Part III, Industrial Properties Act	Cases on priority date, specifications and claims; Requirements for patentability & ownership of patents.
4	Ownership: Dealing with Patents.	Bainbridge (pp. 473-490). Sections 10 – 12 of the Industrial Properties Act.	Cases on novelty; Inventive Step; Tests for Inventive step; Non-obviousness & Industrial application.
5	Exclusion from Patentability.	Sec.8 (3) of the Industrial Properties Act.	Cases on discovery & scientific methods; scheme or method, or computer program; mode of storage; mental steps doctrine.
6	Exclusions, Ownership & Dealing in Patents.	Sec. 13, 38, 39, 42, 43 & 46 of the Industrial Properties Act	Cases on Genetic Engineering; Proprietorship; Employee inventors, Dealing in patents.
7	Exclusions (Continued).	Sec. 43, 44, 50, 58 & 66 of the Industrial Properties Act	Cases on compulsory license; terms of license; use by the state.
8	Infringement.	Bainbridge (pp.492-524 and pp. 545-561). Sec. 2, 68, 69, 70, 71, 72, 73, 75, 80, 92, 93, 94 of the Act.	Cases on Industrial designs; patent infringement, & Interpretation of claims.
9	Infringement (Continued).	Bainbridge (pp. 492-524)	Cases on Doctrine of Equivalence; Evidence.
10	Infringement – Defenses & remedies.	Bainbridge (pp. 492-524) Sec. 93 of the Act.	Cases on Defenses and remedies.
11	Infringement – claim for damages; Right to Health issues. Slot for Guest Speaker.		Cases on assessment of damages; Patent rights vis-à-vis right to health.
12	Re-cap: Moot Court competition.		Revision of previous weeks.

Assignment explanations/Methodology

Teaching methods:

You are required to read ahead of every class meeting following the schedule in the course content for texts and cases. Lessons will be conducted using the Socratic Method. Students will be called upon at random to explain judicial decisions from cases on any topic that will be under discussion. Students are also advised to be up to date with the day to day events surrounding Intellectual Property law and policy as covered outside of the classroom environment, inclusive of media coverage.

Use of guest speakers: Guest Speakers will also be invited to share experiences in day to day handling of Copyright issues.

Moot Court Competition: In the latter part of the semester, students will be given an utopian problem question to address. Different students will then be selected to address the problem through a moot court competition, of which the class will be the Judge.

Assessment criteria

The assessment for the course will follow the following criteria:

Coursework which will consist of one take-home essay carrying 30% of the total exam mark. The take-home essay comprises of a research paper of not more than 2500 words. Students must submit their research topics to the Lecturer by the end of the first quarter of the semester (not later than 29^th September 2014) for approval. Following approval, the research paper will be undertaken from the 21^st of October 2014 and submitted on the 28^th of October 2014. The Lecturer reserves the right to reject a paper topic that he has not seen in advance, as well as to reject assessment of a research paper that is submitted beyond the given deadline.
Further assessment is based on class participation basing on advanced reading of cases and reference materials, as well as attendance.
The essay assignment should include a title page, an Introduction, a Conclusion and a List of References or Bibliography indicating the author, title of book or Publication, the publisher and the year it was published. References in the main body of the essay should be presented in accepted English academic style (for guidance, see Glanville Williams: Learning the Law).
Plagiarism or any form of cheating will be heavily penalized.
The final exam at the end of the semester will be open book and will consist of six questions out of which candidates will be required to answer three to be marked out of 70%.

Faith in teaching

Intellectual Property Rights are fully integrated in Biblical teaching. Various scriptures give an indication of God’s gift of Intellectual property and blessings of innovation towards man, as evidenced below:

Exodus 4:2 and Deuteronomy 28:12, illustrate God’s guidance and blessings towards man’s innovation.
Philippians 4: 13, shows that all of man-kind has the power and ability to create Intellectual Property.
Philippians 4: 19, shows that there is an abundance of Intellectual Property waiting to be realized through God’s gift of innovation.
Psalms 139: 14, shows that each and every creation is God’s unique Intellectual Property.

Selected Bibliography

There is substantial literature dealing with intellectual property law and policy within the realm of Patent law. Besides the aforementioned text material, the following is a selection of some of the relevant works:

Abbott, T. Cottier and F. Gurry (1999) The International Intellectual Property System: Commentary and Materials (Kluwer, London)
Blakeney (1996) Trade Related Aspects of Intellectual Property Rights: A concise guide to the TRIPS Agreement (Sweet & Maxwell)
R. Cornish (1999) Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 4^th Ed. (Sweet & Maxwell, London)
Drahos (1996) A Philosophy of Intellectual Property (Dartmouth, Aldershot)
Drahos (ed)(1999) Intellectual Property (Dartmouth, Aldershot)
Vivas-Eugui David, Bridging the Gap on Intellectual property and Genetic Resources in WIPO’s Intergovernmental Committee (IGC), International Centre for Trade and Sustainable Development, Issue Paper No. 34 (January 2012), ICTSD Programme on innovation, Technology and Intellectual Property, Switzerland.
Report of the Commission on Intellectual Property Rights: Integrating Intellectual Property Rights and Development Policy; London, September 2002 See: iprcommission.org/papers/pdfs/final_report/ciprfullfinal.pdf