A new draft law on the protection of Intellectual Property has proposed a raft of changes to address the current gaps identified in the protection of these assets which are the result of human intellectual creative activity.

The bill is currently with a parliamentary committee for scrutiny prior to being voted into law. The virtual Plenary Sitting of the Chamber of Deputies adopted its relevance on June 24, 2021.

According to the World Intellectual Property Organisation (WIPO), intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

The current problem

Here are some of the major specific changes made to the existing law on intellectual property.

1. Autonomous body for intellectual property

The current law entrusts administration of IP with the multiple bodies; the Ministry of Trade and Industry, the ministry in-charge of copyrights and cultural matters and intellectual property organ [under the Rwanda Development Board].

The existing law creates overlapping duties and responsibilities for different organs and government agencies, hence hinders the effective administration of intellectual property as there was no clear demarcation of each institution’s responsibilities.

In view of this situation, this draft law is proposing that the daily management of intellectual property rights and related matters be entrusted to a standalone Intellectual Property Office to be established by a legal instrument.

2. Application for patent with a provisional specification

In this draft law, a new idea has been introduced regarding the application for patent with a provisional specification to the competent authority, whereby an applicant provisionally discloses an inventive concept, filed mainly to secure a priority date when the inventor needs more time to work out the details of his invention and to perfect it.

This has been included in the draft to protect invention projects in the case that their owners do not have the required means to immediately finalise their inventions in order to apply for final patent certificate.

3. Protection of traditional knowledge and cultural expression

Currently, there is no sufficient protection for traditional knowledge and cultural expression under the Intellectual Property system. This bill is proposing the IP protection for traditional knowledge during examination of applications related to industrial property, as well copyright protection to cultural expressions.

4. Protection of pharmaceutical products

Concerning the protection of pharmaceutical products, the existing IP law as amended to date provides that pharmaceutical products are excluded from patent protection.

This position has been taken for Rwanda to comply with flexibilities offered by the World Trade Organisation’s agreement on trade related aspects of intellectual property rights (TRIPs) towards least developed countries, especially regarding ensuring access to affordable medicines for the most vulnerable.

There has been recent interest in attracting investors to set up local manufacturing facilities and to create an environment that would enable more local manufacturing of pharmaceuticals and especially essential medicines [in Rwanda].

Moreover, recent policy discussions have highlighted the need to create an enabling intellectual property environment for investments, enabling for Rwanda as a least developed country to continue gaining from the flexibilities offered by the agreement on trade-related aspects of intellectual property rights and also protection of pharmaceutical products.

To resolve the issue, the draft law is proposing that pharmaceutical products be included in patent protection, except those that will be determined by the Order of Minister in charge of Health as pharmaceutical products to be excluded from patent protection.

5. Publication in the official gazette of application of patents and all other forms of industrial properties

In the current law, the publication for patent and other industrial properties application is not provided, except for trademark which is published within a short period of 30 days.

To address the issue of the registration of application to the wrong owner since the public are not aware of the application of such invention, this draft law is proposing the publication of application of registration of all industrial properties in the official gazette within a period of nine months to enable someone who is pretending to be the owner of invention, to use available remedies, that is opposition before the competent authority.

A Ministerial Order shall determine patents of invention not subjected to publication due to the fact of their nature and uses i.e. inventions relating to the national defence and security.

6. Pre-grant administrative opposition procedures for patents and all forms of industrial properties

Whilst, the current law provides for opposition of granting invention certificate only for a trademark, this article provides for an interested person to oppose the granting of the patent and all other forms of industrial properties to the competent authority.

The underlying principle for this opposition is to provide the public mechanisms to challenge and revoke the validity of a patent where closer scrutiny reveals that the patentability criteria may not be met without recourse to the court proceedings, which can be lengthy and expensive.

7.Maintenance of layout-design registration

The draft law provides for the maintenance of registered layout-designs by paying maintenance fee to the competent authority. The payment is made five years from the date of first exploitation, or from the filing date whichever is earlier. No provision of maintenance of layout design is in the current law.

8. Ownership of a photographic work

The current law is silent on the ownership of photographic works. This draft law provides for a creator of a photographic work as the original owner of the economic rights.

However, another person becomes the original owner of the economic rights, upon payment of a consideration and by means of a written agreement, unless the agreement provides otherwise.

9. Licences for use of orphan works

The current law is silent on the protection of orphan work. The article provides for a person wishing to use an orphan work to apply for a license to the competent authority, provided that the applicant has made reasonable efforts to locate the owner of the orphan work and that the owner cannot be located.

MPs said that IP law should ensure that the rightful owners benefit from their works and those who seek to exploit them through fraudulent ways be held accountable.

MP Théoneste Safari Begumisa said that the enforcement of the current law was not effective, suggesting that people who have been violating intellectual property have been let off.

"How are the people who violate the works of others punished, and what is the severity of the penalties,” he asked.

10. Tougher penalties

In line with deterring infringement on intellectual property rights, the bill has proposed some tougher penalties.

For instance, it provides that any person who commits an offence of stealing or using by fraudulent manner a formula of invention in any industrial activity, is liable, upon conviction, to a term of imprisonment of not less than three years but not exceeding five years, and a fine of not less than Rwf2 million, but not exceeding three Rwf3 million or one of these penalties only.

In the current law, the convict was only liable to a fine of not less than Rwf2 million, but not more than Rwf3 million.

Any person convicted of the fraudulent use of the name of the author or his or her distinctive sign on a literary, artistic or scientific work is liable to a term of imprisonment of not less than three years but not exceeding five years and a fine of not less than Rwf7 million but not exceeding Rwf10 million.

The offender is only liable to the same fine in the current law.