Kenya Industrial Property Tribunal Allows Pre-Grant Entitlement Actions in Patent Applications

Imagine the following scenario: X employs Y as an inventor. During his Y’s employment with X, Y comes up with technology surrounding fabric impregnation with insecticides. However, Y later leaves X’s employ and joins Z. Z files a patent in respect of the technology Y came up with while in X’s employ.

The facts of the above hypothetical case mirror closely those of Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd v.s Intelligent Insect Control S.A.R.L and Ole Skovmand as reported over on Afro-IP.

The Managing Director of KIPI who is also the Register of Patents in Kenya, referred this matter to the Industrial Property Tribunal for determination on two crucial issues arising from the case:

1. Should pre-grant entitlement proceedings in respect of patent applications be allowed in Kenya?
2. If such proceedings are to be recognised, in what circumstances should the Tribunal entertain them and what will be the procedure governing them?

John Syekei, who was representing Vestergaard Frandsen writes to Afro Leo on the outcome of this case at Industrial Property Tribunal as follows:

“In arriving at its decision, the Tribunal rightly considered the nature of patent filings in Kenya and their examination. As noted by the Tribunal, examination of patents is important but the question as to the legality of an applicant in filing a patent is one best suited for determination by the Tribunal and not a patent examiner.

…in Kenya, as is the case in many Commonwealth jurisdictions, the practice is that “the first to file” rule applies such that the person who files for a patent first normally obtains the rights to the patent upon grant as against the world and can enforce this limited monopoly. The mischief to be cured by a pre grant action would be to correct an anomaly where a patent application and related rights accrue to a person who lacks the legal rights to claim ownership yet maintains them until challenged via revocation, entitling such a person to enforce the rights as against third parties including the rightfully entitled party.

…the Tribunal held that a pre grant proceeding which primarily deals with the question of ownership should be canvassed within 2 months before the Tribunal prior to grant by an affected party and shall be undertaken by use of a form similar to the one used in post grant proceedings (referred to as Form PR/IPT) such as revocation actions albeit with changes to reflect the nature of the proceedings. A claimant in such actions is now mandated to file its pre-grant arguments in written form within 10 days of written notice to the Tribunal and submission of the aforementioned form. It must annex supporting affidavits and documents in its possession as indicated in its Form PR/IPT.”

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