Proposed Amendments to Intellectual Property Laws in Kenya

statute-law-miscellaneous-amendments-bill-no-2-of-2016-submission-memoranda

On 11th November, 2016, pursuant to Special Issue of Kenya Gazette Supplement No.185 (National Assembly Bills No. 45) the Attorney General published the Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016. It is recalled that this Bill is intended to “make minor amendments which do not merit the publication of separate Bills and consolidating them into one Bill”. The Bill proposes to amend several intellectual property (IP) laws including Industrial Property Act, 2001 (No. 3 of 2001), Copyright Act, 2001 (No. 12 of 2001) and Anti-Counterfeit Act, 2008 (No. 13 of 2008).

According to the Bill’s Memorandum of Objects and Reasons, these IP laws require amendments to achieve various objectives. With regard to the Industrial Property Act (IPA), the Bill states that it intends to align the membership of the Board of Kenya Industrial Property Institute (KIPI) with the Mwongozo Code of Governance and to make several other minor amendments affecting the handling of applications for registration of patents by the Board. The proposed amendments are also intended to provide for the publication of applications for utility model certificates in the Industrial Property Journal. With regard to the Copyright Act, the Bill intends to provide for structured compensation of performers and producers of sound recordings for private copying of works in line with international norms and practices. With regard to the Anti-Counterfeit Act, the Bill intends to clarify the establishment of the Anti-Counterfeit Agency (ACA) and to domicile the Agency in the Ministry of Trade.

We shall now delve into the substantive amendments in the various IP laws.

The Industrial Property Act

The proposed amendment to subsection (3) paragraph (b) of section 11 of IPA states that KIPI Managing Director will no longer be Secretary to KIPI Board of Directors. The proposed amendment to section 12 of the IPA creates a new office of the Corporation Secretary to be appointed by the Board. Read with the earlier proposed amendment to s. 11 of the IPA, it is clear that the Corporation Secretary will serve as Secretary on KIPI Board of Directors. There is also an amendment to s. 12 that allows the KIPI Managing Director (MD) to delegate to any officer any of the duties and functions conferred to the MD under the IPA. The proposed amendment to section 22 (on patentable inventions) deletes the words “or is a new use” which means that the new section would now read: “an invention is patentable if it is new, involves an inventive step and is industrially applicable.” The proposed amendment to section 28 removes from the definition of an application for a patent for invention a reference to an application for other protection of an invention as well as a reference to an application under the IPA, under the law of any country other than Kenya or under any international treaty or convention to which Kenya is a party. The proposed amendments to section 36 of the Act grant powers to the Cabinet Secretary to make regulations on amendment and division of patent applications.

It is proposed that section 41 be amended to remove the requirement for the KIPI MD to send a copy of the statement on the right to the patent to the inventor. In addition, it is proposed that non-compliance with a request of the KIPI MD under section 38 shall not form part of the formal examination. With regard to the publication of application, the proposed amendments to section 42 provide that KIPI MD may at the request of the patent applicant, publish the application before the expiry of the statutory period of eighteen months. In addition, the Cabinet Secretary would be empowered to make regulations regarding the publication of patent applications. The proposed amendments to section 44 subsections (1) to (6) are intended to streamline the substantive examination of patent applications. Notably, the prescribed period before a patent application shall be deemed to be abandoned would be extended from three years to five years. Curiously, the Bill attempts to subsection 2 of section 54 yet no such subsection exists in the IPA. With regard to utility models, the proposed amendment to section 82 is that an application for a UM certificate shall be published in the Industrial Property Journal upon compliance with the requirements of formal examination under s. 41.

Interestingly, it is proposed that subsection (2) of section 103 be amended to remove the right on an interested person to request the Industrial Property Tribunal to revoke or invalidate the patent, utility model or industrial design registration within a period of nine months from the date of the publication of the grant of a patent, utility model or industrial design. Interestingly, it is proposed that subsection (6) of section 113 be amended to state that the Cabinet Secretary be responsible for appointing a suitable legal officer to be secretary to the Industrial Property Tribunal.

The Copyright Act

Numerous sections of the Act have been amended to simply reflect the change of the Attorney General’s title from “Minister” to “Cabinet Secretary”. The only substantive amendment to the Act is proposed for section 30 on performers’ claim to a share of the ‘blank media’ levy. The Bill proposes that compensation for this private copying levy be collected by Kenya Copyright Board and distributed to the copyright collecting society registered in Kenya with respect to performers.

According to KECOBO Executive Director, the other proposed changes to the Copyright Act (previously discussed here) were withdrawn from the Bill and will be tabled in due course as a stand-alone Copyright Amendment Bill.

The Anti-Counterfeit Act

There are only two proposed amendments to the Act, both in section 6. Firstly the Bill intends to remove the introductory portion which states that the management of ACA shall vest in the Board. Secondly the Bill clarifies that the Principal Secretary in charge of Trade in the Ministry of Industry, Investment and Trade shall represent the Ministry on the ACA Board.

Finally, readers of this blog from the legal fraternity are invited to note that the Bill proposes an amendment to the Advocates Act which makes it an act of professional misconduct for an advocate in any area of law including IP to practice while failing to take out an annual practicing certificate.

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