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Uganda cannot register patent rights in Covidex

Professor Patrick Engeu Ogwang, a Ugandan pharmacist, has claimed to have invented a treatment for COVID-19 named Covidex. Covidex is a 100% herbal medicine made using a combination of herbs containing antiviral properties that local communities in Uganda have traditionally used to treat viral infections such as measles and certain coughs. Professor Ogwang claims to have first used the medicine to successfully treat his colleagues at the peak of the first wave of the COVID-19 pandemic in Uganda in December 2020.

On 29 June 2021, the National Drug Authority (“NDA”), the statutory authority responsible for drug regulation in Uganda, approved Covidex as a supportive treatment for the management of viral infections including COVID-19, but not as a cure for the disease.

Professor Ogwang is the head of the pharmacy department at Pharm-Biotechnology and Traditional Medicine Centre (PHARMBIOTRAC) at Mbarara University of Science and Technology (“MUST”) which promotes the research and development of herbal and natural technologies.

MUST has asserted its IP rights to Covidex, stating that it was made under PHARMBIOTRAC. However, Professor Ogwang asserts that the invention was created at his private laboratory in Entebbe, which has now been approved by the NDA to manufacture Covidex.

While the battle for IP ownership in Covidex brews, the pertinent question to be answered is whether the IP rights in Covidex are eligible for IP protection in Uganda?

The prime form of IP protection for Covidex would be by patent, which protects the product and process by which a technological invention is developed. Unfortunately, under the Industrial Property Act, 2014, pharmaceutical inventions are not eligible for patent protection in Uganda. This provision was adopted on the basis of Article 66.1 of the Agreement on Trade Related Aspects of Intellectual Property (“TRIPS”) which removes the obligation on Least Developing Countries (“LDCs”) from granting and enforcing pharmaceutical patents in view of their economic, financial and administrative constraints. This provision has enabled LDCs to procure low cost generic medicines required for the treatment of diseases like HIV, as pharmaceutical companies are not able to assert their patent rights in LDCs.

As from the end of 2019, the Ugandan Patent Office has exercised its LDC rights under TRIPS to exclude pharmaceutical inventions from patent protection, and informed the African Regional Intellectual Property Organisation (ARIPO), of which it is a member country, that it is no longer granting such patents.  Although the Industrial Property Act had originally included such an exclusion, this was originally to end on 1 January 2016, but the period has been extended until 1 July 2034 at the meeting of the TRIPS council held on 29 June 2021.

While some may argue that LDCs have benefited from non-enforcement of pharmaceutical patents by large originator pharmaceutical manufacturers (and this is debatable), inventors in these countries are also constrained in their ability to obtain patent protection for their pharmaceutical inventions.

Although the inventor of Covidex could obtain patent protection outside of Uganda, including in other African LDCs that have not locally implemented Article 66.1, such as Nigeria or Sudan, in order to obtain benefit from these countries patent monopolies, this would require also setting up businesses in these territories, which can be an expensive and complex process.  Meanwhile, in his home-country, the inventor is exposed to the risk of competitors accessing his technology and being able to manufacture and sell his invention without the possibility of relying on his registered IP rights to prevent this.

It seems clear that avenues need to be created to enable local inventors to secure IP protection of their inventions in Uganda through grant of patents, in order to enable them benefit from their inventions and encourage further local innovation in medicines.

 

Phillip Karugaba
Head of ENSafrica Advocates | Uganda
pkarugaba@ENSafrica.com
+256 772 785 332

 

Dr Joanne van Harmelen
IP | Patent Attorney
jvanharmelen@ENSafrica.com
+27 82 770 5396

 

Tracy Kakongi
ENSafrica Advocates | Uganda | Associate
tkakongi@ENSafrica.com
+256 784 343 336