Is COVIDEX Patentable?
“A drowning man will catch a straw”; a saying that literally depicts the life of an ordinary Ugandan adversely affected by the second wave of Covid19, worse still under the arm of a fragile health system now at its knees. As to give meaning to the saying, hopeful Ugandans have developed concoctions not backed by clinical study from weeds, marijuana in hope of fighting off the resurgent virus.
The same optimism seems to have triggered Prof Patrick Engeu Ogwang’s cognition; the man believed to be the brains behind COVIDEX . He is an associate professor and Head of the Pharmacy department at Pharm-Bio technology and Traditional Medicine center at Mbarara University of Science and Technology.
At first, even though its emergence spread like wild fire, the 100% herbal medicine was not met with much attention until it was approved by the Uganda National drug authority as supportive treatment in management of Covid19 symptoms. Its approval has stirred up demand cum notices of intention to sue and litigation against the distinguished professor under claims that he is exclusively exploiting an invention for which he has no patent.
Although there is no reliable information from the patent office under URSB to suggest that either Prof Ogwang or MUST has formally claimed patent for COVIDEX, the two parties have been at loggerheads and continue to make patent claims without legal basis; the latest suggests that Prof Ogwang’s legal representatives have written to MUST advising the same to desist from interfering with COVIDEX or risk being sued for infringement of patent.
As the battle for patent ownership over COVIDEX ensues, my views are not concerned with ownership but rather whether COVIDEX is an invention that would warrant patent protection. The standard for starters is that every patent stems from an invention but not every invention is Patentable. This is the import of sections 8, 9, 13 read together, under the Industrial property Act 2014, which is the governing law on patents in Uganda.
I will now attempt to clear up the paradox surrounding the topical COVIDEX patent claims made by the parties. The terminologies patent and invention, though they complement each other should not be used interchangeably to mean one and the same; an invention simply means a solution to a specific problem in the field of Technology and it may relate to a product or process while a patent means the title granted to protect an invention. These are defined under sections 8(1) and 2 of the Industrial Property Act, 2014 respectively.
For an invention to be granted patent, it must meet the patentability test of Novelty, inventive step and industrial application as envisaged under section 9 of the Industrial property Act. Thus in normal circumstances COVIDEX meets the criteria of patentability but because it is a pharmaceutical product, it is exempted from patent protection.
The Industrial property Act, 2014 under section 8(3) (f) dictates that pharmaceutical products like COVIDEX and test data are disregarded as inventions and excluded from patent protection until 1st January 2016 or such other period as maybe granted to Uganda by the council responsible for administering the TRIPS Agreement under WTO.
The rationale behind this exclusion from Patentability is rooted in the TRIPS Agreement to which Uganda is a member and it is to the effect that low developing countries (LDCs) like Uganda suffer economic, financial, administrative constraints with no viable technological base to create, protect and enforce pharmaceutical product patents.
The Agreement on trade related aspects of intellectual property (TRIPS) entails special treatment provisions for LDCs for example, under Article 65 and 66 read together, LDCs are under no obligation to adopt all the agreements’ provisions. The rationale as envisaged in article 66(1) is that LDCs have financial, economic and administrative constraints that would impede them from fulfilling all obligations under the agreement like developing, protecting and enforcing pharmaceutical product patents so they are given time periods of not less than 10 years in order to transition from LDCs to DCs.
By now, you realize that the exclusion codified under Uganda’s legal regime runs up to 2016 which renders the exclusion redundant but guess what; a decision was reached by the council responsible for TRIPS at WTO on 6th November 2015 to extend the transition period to 2033. This means Uganda would have to wait up to that period to make COVIDEX a patent or declare transition from LDC to DC which decision Uganda is not ready to take anytime soon.
If COVIDEX is not patentable, how should it be protected? Under what legal basis should ownership claims be made? These are indeed thought provoking questions to ponder about.
Semagire Peter is a lawyer, currently pursuing his diploma in legal practice at LDC and Volunteers as a Researcher at Chapter Four Uganda.