Legislative Implementation of Flexibilities - Uganda
| Title: | Sections 39 and 40 of the Patents Act of 15/10/1993 |
| Field of IP: | Patents |
| Type of flexibility: | Ex-officio IP office control of anti-competitive clauses in licensing agreements |
| Summary table: |  |
Provisions of Law
39. Prohibited terms in licence contracts.
(1) The registrar shall examine the contract to ascertain whether it contains terms which impose unjustified restrictions on the licensee and whether, as a consequence, the contract taken as a whole, is harmful to the economic interests of Uganda, and he or she may refuse to register the licence contract if after taking into consideration, in such examination, in particular, any term contained in the contract he or she is satisfied that the effect of that term would be-
(a) to permit or require the importation of technology from abroad when substantially similar or equivalent technology may be obtained on the same or more favourable conditions without importation from abroad;
(b) to require payment of a price, royalty or other consideration which is disproportionate to the value of the technology to which the contract relates;
(c) to require the licensee to acquire any materials from the licensor or from the sources designated or approved by him or her, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
(d) to prohibit the licensee from acquiring, or to restrict his or her acquisition of, any materials from any source, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
(e) to prohibit the licensee from using, or to restrict his or her use of, any materials which are not supplied by the licensor or by sources designated or approved by him or her, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
(f) to require the licensee to sell products produced by him or her under the contract exclusively or principally to persons designated by the licensor;
(g) to require the licensee to make available to the licensor without appropriate consideration any improvements made by the licensee with respect to the technology to which the contract relates;
(h) to limit the volume of the products produced by the licensee with the help of the technology to which the contract relates;
(i) to prohibit or restrict the export of the products produced by the licensee;
(j) to require the licensee to employ on a permanent basis persons designated by the licensor;
(k) to impose restrictions on research or technological development carried out by the licensee;
(l) to prohibit or restrict the use by the licensee of any technology other than the technology to which the contract relates;
(m) to extend the coverage of the contract to technology not required for the use of the main subject of the contract and to require consideration for such additional technology;
(n) to fix prices for the sale or resale of the products produced by the licensee with the help of the technology to which the contract relates;
(o) to exempt the licensor from any liability consequent upon any defect inherent in the technology to which the contract relates or to restrict the liability;
(p) to prohibit or restrict the use by the licensee, after the expiration of the contract, of technology acquired as a result of the contract, subject, however, to any right of the licensor under the patent;
(q) to require that disputes arising from the interpretation or performance of the contract be governed by a law other than the laws applicable in Uganda or that those disputes be brought before courts outside the territory of Uganda;
(r) to establish the duration of the contract for a period which is unreasonably long in relation to the economic function of the contract, so however that any period which does not exceed the duration of the patent to which the contract relates shall not be regarded as unreasonably long.
(2) Where the registrar is of the opinion that the contract contains one or more terms which impose unjustified restrictions on the licensee and that, as a consequence, the contract, taken as a whole, is harmful to the economic interests of Uganda, he or she shall notify the petitioners accordingly and invite them to modify the contract so that it does not contain any such term.
40. Registration and certificates.
(1) If the registrar finds the licence contract in order, he or she shall register the contract and issue a certificate of registration to the petitioners.
(2) The certificate of registration shall state;
(a) the names of the parties to the contract;
(b) the date of the petition;
(c) the date of registration; and
(d) the registration number.
(3) All the particulars specified in subsection (2)(a), (b) and (c) shall be published by the registrar in the Gazette.