2018 Proposed Amendments to The Industrial Property Act

2018 Amendments to Industrial Property Act Kenya KIPI

The Statute Law (Miscellaneous Amendments) Bill, 2018 seeks to make various, wide-ranging amendments to the existing intellectual property (IP) law-related statutes. The Bill contains proposed amendments to the following pieces of legislation: The Industrial Property Act, 2001 (No. 3 of 2001), The Copyright Act, 2001 (No. 12 of 2001), The Anti-Counterfeit Act, 2008 (No. 13 of 2008) and The Protection of Traditional Knowledge and Cultural Expressions Act, 2016 (No. 33 of 2016). The Memorandum of Objects and Reasons for the Bill is signed by Hon. Aden Duale, Leader of Majority in the National Assembly and it is dated 29 March 2018. This blogpost will focus on the proposed changes to The Industrial Property Act (IPA).

Regarding the staff of Kenya Industrial Property Institute (KIPI), the Bill proposes that the power of the Managing Director (MD) to delegate powers should be limited to a Deputy MD or to a manager and not to ‘any officer’ as previously provided in the IPA. The use of gender-inclusive language referring to the MD is most welcome.

With regard to the patent application process at KIPI, the Bill proposes that applicants must disclose ‘the best mode’ for carrying out the invention as opposed to the current requirement to disclose ‘at least one mode for carrying out the invention.’ According to KIPI’s American counterpart, USPTO, this so-called ‘best mode requirement’ is a safeguard against the desire on the part of some to obtain patent protection without making a full disclosure as required by the statute. In this regard, the requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves (active concealment). It remains to be seen how KIPI will determine compliance with this best mode requirement and the impact of failure to disclose the best mode.

With regard to the definition of industrial designs (ID), the Bill proposes a new definition which is identical to that of ‘design’ in the Australia Designs Act. Similarly the Bill has introduced a definition of  ‘product’ adopted from the Australian law. In addition, the Bill proposes to expressly exclude methods/principles of manufacture or construction from protection as registrable ID. The reason for this exclusion may be that these methods refer to processes or operations by which shapes are produced as opposed to the shapes themselves; as such the subjects of patent law protection rather than design law.

Further, the Bill proposes to modify the novelty requirement for IDs by prescribing that the ID must not be ‘identical or substantially similar in overall impression’ to a design known in prior art. In addition, the Bill excludes from registrability as IDs any ‘works of sculpture, architecture, painting, photography and any other creations that are purely of artistic nature.’ This proposal means that works of artistic craftsmanship and articles of applied handicraft and industrial art which possess both artistic and ornamental aspects will be barred from ID protection. This outcome may have adverse effects on a number of creative and cultural industries whose products will be locked out of ID protection.

Finally, the Bill proposes to amend the provisions relating to the Industrial Property Tribunal (IPT). In particular, the qualifications for appointment of the Secretary to the IPT have been clearly set. In this regard, the Cabinet Secretary will be required
to appoint a person who has experience of not less than seven years in matters relating to industrial property being qualified and entitled to practise as an advocate in Kenya. This blogger submits that given the functions and role of the Secretary, this appointment ought to be done by the Judicial Service Commission and not the Cabinet Secretary.

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