Intellectual Property

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Intellectual Property

Our job is to protect your Intellectual Property rights.

The times, they are a-changing. The relentless technological, commercial and scientific advancements continue to produce Intellectual Property (IP) assets of substantial value. IP holders need the right legal counsel to guide them through the process of protection and enforcement of their rights. We are available to develop and manage IP portfolios to provide a competitive advantage in the marketplace.

We have a thriving and dedicated IP department that:

  • handles trademark and patent application procedures, declarations of use and renewal of the same, due diligence, licensing, franchising, merchandising agreements and anti-counterfeiting.
  • African Regional Intellectual Property Organisation (ARIPO) registrations. ARIPO is an inter-governmental organization that grants and administers Intellectual Property titles on behalf of its member states. These are nineteen in total at present: Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Nambia, Rwanda, Sao Tome and Principe, Sierra Leone, Somalia, Sudan, Swaziland, Uganda, United Republic of Tanzania, Zambia and Zimbabwe.
  • handles protection of trademarks, patents, industrial designs, copyrights and their neighbouring rights as well as layout designs. We advise the authors, owners of copyrights on the conceiving and publishing of original and derivative works, specifically literary works, industrial and graphical designs and computer software.
  • handles enforcement and defence of IP rights in matters involving violations, infringement and exploitation in Uganda for; patents, trademarks, trade secrets, copyrights, antitrust and unfair competition.
  • renders legal opinions on the strengths and weaknesses of a given mark or patent, establish a licensing strategy, negotiate license agreements and offers advice for the management of worldwide patent portfolios.
  • conducts IP due diligence in the context of myriad transactions.
  • negotiates and drafts contracts related to the development, protection and exploitation of valuable technology and IP assets such as software and technology development and license agreements.
  • handles legal issues related to data privacy, security and integrity for clients in different industries such as software, telecommunications, education, e-commerce.

We have clients in several industries including but not limited to: media and entertainment, food and beverage manufacturing, banking and financial services, healthcare and medical research and development, education and scientific research, energy and natural resources, transportation, and information and communications technology.

It is noteworthy that KATS successfully handled the first unfair competition and predatory pricing action in Uganda.

Our team has significant experience in advising companies and employees accused of misappropriating trade secrets or confidential information of other companies and former employees. We assist our clients to develop and implement hiring policies, due diligence checklists when engaging top employees from competitors, conduct audits of existing trade secrets (if at all) in a company’s IP portfolio to recognise potential vulnerabilities or risks.

With the advent of social media, we are on hand to ensure our clients are in the loop with this constantly evolving mode of transaction and communication and are adequately protected. We understand the rapidly changing landscape of privacy and the need for data security laws in every industry.  In this vein we are available to draft employee and corporate social media policies, advise on Intellectual Property issues related to social media platforms, give counsel on advertising and representations made online and on social media, counsel on data privacy in the social media age.

Our capacity to provide relevant and timely advice on these cutting-edge issues is due to our lawyers’ commitment to stay abreast of legal and technical trends.

The Firm’s Intellectual Property practice was lauded in the 2020 Edition of the ‘World Trademark Review’ as:

“One of Uganda’s biggest and best full-service firms, Katende Ssempebwa & Co maintains a dynamic and growing IP practice. Efficient in prosecution, hard-hitting in infringement cases and deft in transactional negotiations, the team has any brand covered whether they are looking to protect, enforce or monetise intangible assets.

Head of the practice Jane Akiteng, brings more than 20 years of experience to the table and is an ever-reliable IP guide. She has scored trademark litigation victories for several well-known international brands and is a cogent choice for anything contentious.”

Key Contacts

Jane F. Akiteng
Soogi K. Katende
Peninah Nakatudde
Senior Associate