UPOV 1991 Enters into Force in Kenya: Farmers’ vs Plant Breeders’ Rights

Stephen Ndungu Karau Ambassador and Permanent Representative accession 1991 UPOV Convention Kenya Francis Gurry Director-General World Intellectual Property United Nations Geneva Switzerland 2016

H.E. Amb. Dr. Stephen Ndungu Karau, Ambassador and Permanent Representative deposits the instruments of accession to the 1991 Act of the UPOV Convention on behalf of the Republic of Kenya received by Dr. Francis Gurry Director-General World Intellectual Property Organization – April 11 2016 Geneva, Switzerland.

On May 11th 2016, the International Convention for the Protection of New Varieties of Plants (UPOV Convention) of December 2, 1961, as revised on March 19, 1991 entered into force in Kenya. As readers know, Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member on May 13th 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya Seed and Plant Varieties Act Cap 326.

Previously this blogger highlighted the recently adopted ARIPO Arusha Protocol and the draft SADC Protocol which are both modelled around UPOV 1991 standards. In this connection, the entering into force of UPOV 1991 in Kenya is a significant development for both plant breeders’ rights as well as farmers’ rights.

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ARIPO States Not Yet Ready for WIPO Budapest Treaty on Patents Involving Micro-organisms

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Recently, World Intellectual Property Organization (WIPO) in collaboration with the African Regional Intellectual Property Organization (ARIPO) held a seminar dubbed “Sub–regional seminar on the promotion and understanding of multilateral treaties in the field of patents: Paris Convention, Budapest Treaty and Patent Law Treaty (PLT)” hosted at the ARIPO Headquarters in Harare, Zimbabwe.

The focus of this blogpost is on the some of the issues arising around the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

As many may know, the Budapest Treaty was concluded in 1977 and has been open to States party to the Paris Convention for the Protection of Industrial Property (1883). As at March 15, 2014, 79 States were party to the Treaty. Interestingly, there are only three African countries that have signed the Treaty, namely Tunisia, Morocco and South Africa – none of whom are ARIPO member states.

As many may know, the Treaty was intended to aid in disclosure requirement under patent law where the invention involves a microorganism or the use of a microorganism. Such inventions relate primarily to the food and pharmaceutical fields. Since such disclosure is not possible in writing, it can only be effected by the deposit, with a specialized institution, of a sample of the microorganism.
It is in order to eliminate the need to deposit in each country in which protection is sought, that the Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations.

According to ARIPO’s press statement here, Director General Fernando dos Santos in his opening remarks “lamented the insignificant role that Africa is playing in global IP systems despite the fact that nearly every African state has enabling laws to facilitate its better placement in the global IP transactions and indicators.”
Dos Santos reportedly challenged member states to find their way into IP filings noting that according to the World Intellectual Property Indicators 2014, of the over 2 million patent lodgments made in 2013, Africa’s share was a mere 0.6% ─ with most of these 0.6% filings made in Africa emanating from the industrialized countries through the Patent Cooperation Treaty.

With that background in mind, this blogger suspects that most ARIPO member states
may not be ready to implement a Treaty such as the Budapest Treaty at present. Taking the Kenyan scenario for instance, local patent applications are very few and whilst Kenya may have no problem with the Treaty per se, it would be a cumbersome, expensive venture. For the foreseeable future, the real beneficiaries of the system under Budapest Treaty would be the developed countries since they remain ardent users of the patent system. Judging from the 3 countries that are signatories to the treaty, it is clear that capacity is a big impediment.

To highlight this issue of capacity, let us consider the “international depositary authority” provision under the Treaty. What the Treaty calls an “international depositary authority” is a scientific institution – typically a “culture collection” – which is capable of storing microorganisms. Such an institution acquires the status of “international depositary authority” through the furnishing by the contracting State in the territory of which it is located of assurances to the Director General of WIPO to the effect that the said institution complies and will continue to comply with certain requirements of the Treaty.

In this connection, it is important to note that there is no institution in Africa that has been recognised under the Treaty as a  “international depositary authority” whereas they are currently 42 such authorities in other countries worldwide including: seven in the United Kingdom, three in the Russian Federation, in the Republic of Korea, and in the United States of America, two each in Australia, China, India, Italy, Japan, Poland, and in Spain, and one each in Belgium, Bulgaria, Canada, Chile, the Czech Republic, Finland, France, Germany, Hungary, Latvia, the Netherlands and Slovakia.

Initially Kenya proposed to sign the Treaty and had identified two depositaries i.e Kenya Medical Research Institute (KEMRI) and Kenya Agricultural Research Institute (KARI) however the main challenge seemed to be a lack of capacity in proper handling of the samples and the means to maintain the cultures or strains to the required standards.
Not to mention the increased costs and logistics involved in the coordination between the IP office and the depositaries.

Therefore this blogger reckons that Kenya and other ARIPO member states need to focus more on growing Small and Medium Size Enterprises (SMEs) in terms of utility model applications and other connected areas of industrial property protection. Thereafter, as the innovation space grows, one expects that there would be greater demand and push from local inventors in Kenya and other ARIPO member states to join the Budapest Treaty so to enjoy it’s benefits.

A Tale of Two Danish Bio-Tech Firms, Protection of Genetic Resources and 2.3 Million Shillings in Royalties for Lake Bogoria Enzyme

Lake Bogoria Bio-Enzyme Royalties Kenya Baringo County 2014

The Baringo County has confirmed recent media reports that residents living around Lake Bogoria in Baringo County have received the sum of KES 2.3 Million in royalties from a Dutch bio-enzyme company. According to Baringo County news, this royalties deal comes after “successful negotiation between the Kenya Wildlife Service (KWS) and Novozyme – a foreign company that took an enzyme drawn from a Bacteria in Lake Bogoria hot springs about 15 years ago”. It is reported that the royalties will be partly used as bursaries for over 200 local students while part of the funds will be deployed to fund other development projects in the area. However, local civil society organisations have reportedly demanded full disclosure of all the money from the royalties deal.

This blogpost uses the recent news from Baringo County to examine the protection of genetic resources in Kenya, taking into account Kenya’s new domestic and international rights and obligations in this area.

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Access to Medicines in the Developing World: No to Evergreening in Novartis Case and No to Patent Linkage in Patricia Asero Case

As part of the World IP Day 2013 activities in Kenya, CIPIT will host a special intellectual property (IP) debate organised by the Aids Law Project (ALP) between students drawn from the local universities. The topic of this debate is: how the Novartis and Patricia Asero court decisions affect public health in developing countries. Although this blogger will not be able to attend the debate in person, what follows are a few ruminations on this debate topic.

The Supreme Court of India judgment in the Novartis case and the High Court of Kenya judgment in the Patricia Asero case seem to have one common consequence: making pharmaceutical companies very unhappy. Both these cases have placed the spotlight on the generic drugs industry. In the developing world, where few people can afford original patented medicines, many opt for generic versions of the same drugs that are sold for as little as 1/10th of the price of the original product. Therefore, what generics companies do essentially is to replicate drugs that are no longer protected by patents. This leaves the pharmaceutical companies with two main issues to deal with: Firstly how do they “extend” patent protection for their well-known drugs? Secondly how do they ensure strict IP enforcement in respect to their patented drugs? The first issue is illustrated in the Novartis case and the second issue appears in the Patricia Asero case.

Read the rest of this article over at the CIPIT Law Blog here.

PIIPA Pro-Bono Request for Assistance: Trademark Infringement of Solar Lighting Product in Kenya

PIIPA  PUBLIC INTEREST IP ADVISORS

Public Interest Intellectual Property Advisors (PIIPA) describes itself as a global nonprofit resource for public interest organizations in developing countries seeking expertise in intellectual property matters to promote health, agriculture, biodiversity, science, culture, and the environment. It’s partner organisations include WIPO, UNECA, WHO, World Bank, among others.

Now, PIIPA is requesting any and all pro-bono assistance from Kenyan IP practitioners to combat trademark infringement of a solar lantern currently being sold in Kenya. The company behind the original solar lantern is a social enterprise whose mission is to manufacture and distribute solar light and power products throughout the developing world. The company is a member of the Lighting Africa program sponsored by the International Finance Corporation and the World Bank.

After the company discovered there is a solar lantern being sold in Kenya that is infringing on its trademark, it is now appealing for IP assistance.

If you are able to provide pro bono assistance to the following request please contact PIIPA’s Pro Bono Coordinator Emilie van den Berkhof at emilieberkhof@piipa.org. “RE: Case 168-Trademark infringement in Kenya Off-grid lighting product”. Don’t forget to complete the volunteer form on the PIIPA website here.