You have been involved in a number of legislative and policy reforms. What advice would you give IP professionals looking to effect change in their own jurisdictions?
When developing new laws and policies, it is important to engage industry actors whose products and services will be protected by those laws. Failure to secure this participation will limit the effectiveness of the laws in question. One example from Uganda is the challenge of bad-faith trademark applications. While the law provides a route to challenge them, the process is long and costly for most clients. Second, when laws are not passed with due consultation, they are liable to challenge. A case in point is Uganda’s Plant Variety Protection Act 2014, which farmers are challenging on the basis of inadequate consultation.
How has your membership of the Uganda Law Society, the East Africa Law Society, the Global Advertising Lawyers Alliance (GALA) and INTA helped your professional development and why is engagement with national and international IP associations important?
Professional bodies provide an important platform for broadening our network and the work that we do at the firm. Within GALA and INTA, there is an opportunity to share our experience and learn from colleagues in more sophisticated jurisdictions, particularly in areas of dispute resolution. Moreover, just as the products and services that we protect are transboundary, our work crosses national borders. It is therefore important to have international networks of trusted and competent IP agents through whom we can meet the needs of our local clients.
You represent local and international blue chip corporations in Uganda and the African Regional Intellectual Property Organisation region. How do client demands differ between domestic and overseas companies?
Domestic client demands are largely constrained by the lack of basic awareness of IP rights and their value to enterprises. Locally, we largely serve micro-enterprises and public research institutions. The key interest for most is to secure worldwide protection for their creations, be it through patents or trademarks. Unfortunately, when the timeframes, procedures and costs are broken down to them, there is significant disappointment. Foreign clients are more aware of IP rights but in some cases do not appreciate the local context. Many countries have publicly accessible IP data, which means that some applicants fail to understand why they must pay for a mandatory search before filing their trademarks in Uganda. Overseas companies tend to appreciate the relatively shorter time to prosecution for a trademark in Uganda, although the cost of prosecution, particularly on the side of publication, is still a challenge. This is partly because Uganda does not use the multi-class system, but also due to the cost of publications based on the length of goods or services specified in the application.
You have also acted as counsel for the likes of Comesa, WIPO, the Ministry of Trade, Tourism and Industry, and the Uganda National Council for Science and Technology. What skills or characteristics do these clients look for in a reliable, top-level IP attorney?
All clients need an IP attorney who is conversant in not only the essential subject of intellectual property but also the nuts and bolts that can make it a valuable asset to the owner. This requires a willingness to understand the mindset of solo inventors and SMEs and the business constraints that they face daily. It also requires an IP attorney who can propose approaches to the commercialisation of intellectual property in the unpredictable economic environment of developing countries, as well as the capacity to propose dispute resolution mechanisms that are pragmatic. Traditional models based on litigating each and every right have proved unsustainable at times and the use of mediation as a form of dispute resolution is growing.
Finally, if you could change one thing about the national or international IP system, what would it be and why?
The one thing that I would introduce in Uganda would be an IP tribunal to settle matters before they reach the High Court. The lack of expedited systems to resolve IP disputes is a significant impediment to the growth of intellectual property and the dispersal of IP assets to spur economic growth. At the international level, I would love to ease access to know-how or technology for small enterprises. Numerous technologies that have outlived their use in developed markets are unknown in poor economies, where they could still have a significant economic impact. At the international level, unlocking licensing models for SMEs would be a significant step forward.
Paul Asiimwe is the founder and managing partner of SIPI Law Associates. He graduated with an LLB from Makerere University in Kampala, Uganda in 1997 and an LLM in international economic law from Warwick University in Coventry, United Kingdom in 2003. He leads a team of four lawyers in a boutique IP practice that advises on all IP transactions from application to enforcement. His areas of expertise include trademark searches and filings, trademark oppositions and cancellations.
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