Challenges facing LDCs with regard to TRIPS implementation: The case of Uganda
The WTO TRIPS Agreement, which was concluded as part of the Uruguay Round in 1994, sets the international framework for the protection of intellectual property rights (IPRs). These include copyrights, patents, trademarks, industrial designs, plant varieties, and geographical indications among others. Uganda is a founding member of the WTO and is therefore expected to respect the rights and obligations of the TRIPS Agreement.
The Least Developed Countries (LDCs), including Uganda, were given a 10-year transition period from 1995 within which they were not required to implement the TRIPS Agreement other than Articles 3 on national treatment, 4 on most favored nation treatment, and 5 on multilateral agreements on acquisition or maintenance of protection. This means that once an LDC enacts intellectual property laws, any protection offered to one country has to be applied to all WTO members. This was in recognition of their economic, financial and administrative constraints and their need for flexibility to create a sound technological base. The transition period expired in 2005, but was extended by the TRIPS Council from January 1, 2006 to July 2013. The decision called on LDC Members to submit to the TRIPS Council before January 2008 their individual priority needs for technical and financial assistance. Under Article 66.2 of the TRIPS Agreement, developed countries are mandated to provide technical and financial assistance to LDCs to enable them implement the agreement.
Although a few LDCs, including Uganda, submitted their needs to the TRIPS Council, it was apparent that after seven and a half years of transitional period, they were still struggling to implement the TRIPS Agreement. This was mainly due to their limited technical and financial capacity to undertake legal reforms, weak institutions managing IP registration and limited knowledge about IP by the private sector and public agencies. Because of these challenges, the period was extended for another eight years and consequently will expire in 2021.
By accepting to improve the standards of protection of IPRs as provided for by the TRIPS Agreement, LDCs assume obligations in all areas of intellectual property, which pose financial and technical challenges. Prior to 2000, most of the IP laws in Uganda were dating back to the colonial era or the early sixties. Since 2005, Uganda has made great strides to put in place new intellectual property laws. However, there are still some implementation challenges. These include among others the following:
(i) Using IP for business and innovation
Intellectual property requires high levels of innovation and creativity. Despite considerable research from academic institutions, there has been limited commercialisation of these innovations. Linkages between the private sector and research institutions, which would have fostered the commercialisation of new innovations, are generally weak. As a result there have been limited commercial benefits from innovations.
Trademarks are the most common IPRs registered in Uganda. In 2007, 824 trademarks were registered compared to 85 patents. However, out of these, 565 trademarks (68 percent) and 83 patents (97 percent) were foreign owned. Even though the total number of trademarks increased in 2011, out of 1342 trademarks registered, nationals only owned 127, which represents less than 10 percent. Registration of trademarks is not enough to show the use of IPR by Ugandan companies. The data available reveal that there are low levels of renewals for local trademarks compared to foreign owned trademarks. This could mean that a lot of Ugandan business ventures cannot survive beyond the first two years.
(ii) IP policy, legal and regulatory reforms
In Uganda, there has been considerable progress in the process of updating laws and creating new ones. For example, the IP laws enacted since 2005 include the Copyright and Neighboring Rights Act (2006); Regulations 2010; the Trade Secrets Act (2009); the Trademark Act (2010); Regulations 2012; Geographical Indications (2013) and the Industrial Property Act (2012). The process of reviewing these laws was complex, expensive and often required technical and financial assistance. It consisted mainly in integrating TRIPS flexibilities into the revised laws. However having new laws alone may not be enough to help countries implement the TRIPS Agreement. They need to be complemented with measures to address the challenges that go with their enactment which include inadequate capacity to develop regulations, weak IP institutions, and weak enforcement among others. At the moment, some of these laws are yet to be fully implemented due to the absence of regulations such as the Industrial Property and Geographical Indications acts and of regulations guiding the operation of copyright collective management organisations.
IP is a cross-cutting issue and therefore complementary policies from other sectors have a bearing on the implementation process of the TRIPS Agreement. Notwithstanding this interdependence, an overarching national policy framework covering policy linkages between IP and other sectors such as public health, agriculture, environment, education, science and technology, culture and traditional knowledge, is still missing. Such a framework should have been developed first to guide the review process and the formulation of new laws. As a result of this omission, there are laws that may have to be reviewed such as the Copyright and Neighboring Rights Act, to ensure that they address the IP-related education concerns of the country such as the inclusion of compulsory licensing for educational materials. Studies were done to guide this process, and the World Intellectual Property Organization(WIPO) is to provide support to undertake the development of the policy.
Whereas the Ministry of Trade, Industry and Cooperatives has the overall responsibility for WTO matters including TRIPS implementation, the Uganda Registration Services Bureau (URSB)—an autonomous body under the Ministry of Justice and Constitutional Affairs— is responsible for the administration of all IP legislation, reforms and policies. The URSB is also the focal institution for WIPO. Additionally, the Ministry of Water and Environment and the National Environment Management Authority (NEMA) handle environmental negotiations at the multilateral level, which also involve elements of IP. The Ministry of Health spearheads negotiations in the health sector. A coordinated national approach informed by an overarching national policy could help to harmonise these individual positions and reduce the risk of friction at the national, regional and multilateral levels.
The regional dimension also causes challenges for Uganda when implementing the TRIPS Agreement. There seems to be a disconnect between the national and regional processes. A study carried out by SEATINI in 2012 on the Implementation of the WTO declaration on TRIPS and Public Health in EAC revealed that Uganda is not effectively using the TRIPS flexibility on pharmaceutical products. For example, patents have been granted for medicines including new anti retroviral drugs through the African Regional Intellectual Property Organisation despite the fact that as an LDC, Uganda is exempted from protecting patents on medicines until 2016. Legal challenges will arise and cause harm to local manufacturers of generic drugs.
(iv) Intellectual property rights administration
The URSB has a directorate that processes IP applications. Other divisions include business registration, civil registration (births, deaths and marriages) and liquidation. The IP division has eight technical staff including two examiners. The nature of work requires properly trained workers and a modern and efficient automated information system. There has been some improvement in the operation of this directorate with the automation of the trademark register and recruitment of patent examiners. However, the assessment of patent applications requires a high level of expertise, which may be well beyond the capacity of existing patent examiners. The budget has also increased from $160,000 in 2012-13 to $500,000 in 2014-15. Considering the amount of work and the complexity of the subject matter, there is a need to increase the number of staff and improve their technical capacity.
Since the URSB IP directorate partly depends on the revenue collected from the registration and licensing fees of IPRs, there is a danger that it fails to balance national and public interests with those of the right holders.
(v) IP enforcement
The enactment of IP laws come with challenges of enforcement. The establishment of an effective enforcement mechanism for IPRs is difficult and costly. Generally, there is a low awareness of IPRs in Uganda. The country still faces institutional challenges with its police, judicial system, collective management organisations, customs authorities and other border agencies. These imperfections coupled with an inadequate understanding and awareness of the available protection under the existing laws by the private sector render the IP enforcement mechanism ineffective. This ineffectiveness is exacerbated by delays in developing regulations for enacted IPRs.
There are different agencies that are involved in the enforcement of IP laws such as the Uganda Revenue Authority, the Uganda National Bureau of Standards, the commercial division of the High Court, the police as well as the private sector. These institutions require assistance to enable them support the enforcement of IPRs effectively.
There has been considerable progress in the implementation of the TRIPS Agreement in LDCs in general and Uganda in particular. However, this has come with extra obligations and responsibilities, which are beyond the existing capacities of LDCs. There is a need for the establishment of a funding mechanism which supports IP strategies as well as policies and institutions that will not only help LDCs like Uganda to be TRIPS compliant but also ensure that they can see actual development benefits from a functional IP system.
Author: Elizabeth Tamale - Assistant Commissioner in the Ministry of Trade, Industry and Cooperatives, Uganda. She has been involved in the TRIPS negotiations of the WTO.