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).

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Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

tribunal judiciary kenya cms-image-000005230

As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

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Industrial Design Protection in Kenya: The Case of SafePak Plastic Bottle Manufacturing

Safepak Ltd Kenya Bottles Industrial Design

In the recent case of Safepak Limited v Power Plast Industries Limited [2014] eKLR, Safepak applied to the High Court for an interim injunction restraining Power Plast from infringing Safepak’s Industrial Design registered as number 646 by the Kenya Industrial Property Institute (KIPI). Power Plast opposed the application on the grounds that Safepak had failed to meet the threshold of injunctive relief by not putting up a prima facie case with a probability of success.

Havelock J. sitting in the High Court found in favour of Safepak and stated the following:

In my view, the Plaintiff [Safepak] is entitled to statutory protection as regards its bottle product. I do not consider that damages will in any way compensate the Plaintiff for any sales losses that it may incur as regards its bottle products, if a temporary injunction was put in place. In any event, any such damages would be impossible to ascertain. As a result and in the circumstances, I find that the Plaintiff is deserving of an interlocutory injunction at this stage. I find that it has made out a prima facie case with a probability of success in accordance with the principles expounded in the binding authority of Giella v Cassman Brown (1973) EA 358.

In making the above ruling, the High Court agreed that KIPI only dealt with matters of registration and had no jurisdiction over infringement. On the question of infringement, Havelock J. adopted the reasoning that if only small differences separated the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement. However this is not to say that a party is entitled to reproduce by way of small alterations and/or differences a particular design instigated and registered by a party. The subsequent design must possess some features to enable a person that it is completely and substantially different from the earlier design. The design and the rights conferred by registration is to prevent the manufacture and sales of the same bottles or similar bottles from the registered design. The emphasis there is on the visual image conveyed by the manufactured article.

Safepak Limited Registered Design No. 646 2011

An interesting argument made by Power Plast was that by commencing both opposition and infringement proceedings at KIPI and the High Court respectively, Safepak’s actions were monopolistic and amounted to unfair competition. Power Plast alleged that Safepak had successfully eliminated other plastic bottle manufacturers from the market by taking out similar suits in order to restrict entry thereto by other parties. The learned Havelock J. appears to dismiss this argument by expressing his doubts at paragraph 13 of the ruling. However, as a matter of interest, this blogger has prepared a comprehensive review of previous intellectual property (IP) disputes raised by Safepak brought against at least four different manufacturers of plastic bottles within Kenya.

The earliest reported IP matter involving Safepak is the case of Safepak Limited v Malplast Industries Limited [2007] eKLR. The fact of this case were similar to the Power Plast case above. Safepak applied to the High Court for prohibitive injunctive orders to restrain the Malplast from manufacturing and distributing bottles which Safepak claimed infringed its design registered as No. 385 on September 26, 2003. The court ruled in favour of Safepak and granted the injunctive orders sought. In its ruling, the learned court considered that Malplast was a late entrant in the market and that it’s bottle design was substantially similar to Safepak’s registered design.

Subsequently, there’s another reported matter involving Safepak and Malplast namely, In the matter of an opposition against the Industrial Design Application No. KE/D/2009/00940 decided on November 9, 2012. Safepak filed a notice of opposition against the registration of Industrial Design Application No. KE/ID/09/00940 entitled “Juice Bottle” in the name of Malplast. The KIPI Managing Director ruled that Malplast’s design lacked novelty in light of the existence of the prior art design application No. 539. The Managing Director noted that while industrial design law does not require that an industrial design be made up entirely of new features and, in fact that a design can be registrable even if it is composed of already existing features, in the present case, the features of Malplast’s design do not confer it with sufficient individual character to make it registrable. Safepak has subsequently enjoyed similar success in opposition proceedings against another plastics manufacturer, namely Dynaplas Limited as per In the matter of an opposition against the Industrial Design Application No.KE/ID/2010/001069.

In the case of Nairobi IPT No. 36 of 2002, General Plastics Ltd, which was requesting the Industrial Property Tribunal (IPT) to revoke Safepak’s design, found additional evidence that Safepak’s design had been registered in other countries around the world. General Plastics therefore sought to adduce this new evidence on the grounds that the evidence would demonstrate that the industrial designs in dispute had been anticipated by prior art. This evidence according to General Plastics would influence the outcome of the case. Safepak opposed this move and argued that there had been inordinate delay in bring the evidence and that the matter was res judicata. According to Safepak, it would be an abuse of the Court process if fresh evidence was admitted since the application has been filed nine and a half years after revocation proceedings were filed. The IPT held that there was no res judicata issue arising in the case. The Tribunal allowed further evidence to be admitted and stated that the decision is in furtherance of the doctrine of natural justice. The IPT stated that the Applicant had sufficiently demonstrated that there was no intentional delay on their part and they took all necessary steps to file the motion immediately upon receiving the new piece of evidence. The IPT further affirmed its decision by stating the provisions of the constitution that require judicial authorities to administer justice without undue delay on account of technicalities.

Thereafter, in the case of Safepak Limited v General Plastics [2012] eKLR, Safepak filed an appeal in the High Court against the IPT’s ruling allowing General Plastics to file further evidence in the above matter which seeks the revocation of the registration of Safepak’s Industrial Design No. 186. The High Court granted Safepak’s application as General Plastics stood to suffer little or no damage or loss as a result of the stay being granted. In addition, General Plastics would continue to benefit by continuing to use its unregistered Industrial Property Design in competition against Safepak’s registered Design No. 186.

Returning to the Power Plast case above, many may recall that Havelock J. previously presided in another case involving Safepark namely: Safepak Limited v Asili Plastics Limited [2013] eKLR. In this case, Asili filed a Notice of Preliminary Objection stating that the High Court lacked the requisite jurisdiction to entertain Safepak’s infringement suit in light of sections 106, 113 (1) and 115 (1) of the Industrial Property Act. However, the learned court found that Safepak it could institute court proceedings under section 92 (3) of the Act against any person, in this case Asili Plastics, who infringes its industrial design being ID No. 646 and therefore the High Court has jurisdiction.

In sum, Safepak is no stranger to the world of IP enforcement and has enjoyed a successful track record of protecting its industrial designs. Safepak’s commercial monopoly lies in the shape, configuration and/or pattern of the bottles it has registered and these exclusive rights are enforceable by both the Industrial Property Tribunal and the High Court.

High Court Orders Stay of Tribunal’s Invalidation of Sanitam Sanitary Bin ARIPO Patent No. 773

Sanitary waste disposal bin. US 2593455 A. Images. Patent Drawing

In the recent case of Sanitam Services (E A) Ltd v Rentokil (K) Ltd & another (K) Ltd [2014] eKLR, the High Court has issued a stay order against the ruling of the Industrial Property Tribunal (IPT) delivered on 21st January 2014 which invalidated with costs on the higher-scale Sanitam’s Patent Number AP 773 registered with the African Regional Intellectual Property Organization (ARIPO) on 15th October 1999.

H.P.G Waweru, J ruled that Sanitam was entitled to the stay pending hearing and determination of its appeal in accordance with section 115 (1) of the Industrial Property Act, 2001 (IPA) which provides –

“(1) Any party to the proceedings before the Tribunal may appeal in accordance with the rules made under this Part from any order or decision of the Tribunal to the High Court..”

In making his ruling, the learned judge examined the effect of invalidation of Sanitam’s patent as provided in Section 104 of the IPA Act, which reads:

“104. Effect of revocation or invalidation

1)Any revoked or invalidated patent, utility model or industrial design or claim or part of a claim of a registered industrial design shall be regarded as null and void from the date of the grant of the patent or certificate of registration of the utility model or the industrial design.

2)As soon as the decision of the Tribunal is no longer subject to appeal, the Chairman of the Tribunal shall inform the Managing Director who shall register and publish it as soon as possible in the Kenya Gazette or in the Industrial Property Journal.”

The court found that the implied effect of s104(2) was that an appeal to the High Court would act as a stay of registration and publication of the decision of the Tribunal in the Kenya Gazette or the Industrial Property Journal. Therefore all Sanitam needed to do was to inform the Chairman of the Tribunal that it had appealed against its order of 21st January 2014 and provide evidence of such appeal.

The court stated as follows:

“Upon a closer look at that wording of section 104(2), there cannot be any doubt that the intention of the legislature was that an appeal once duly lodged, and as long as it remains undisposed of, shall operate as a stay of the decision of the Tribunal, which decision may not be registered or published in the Kenya Gazette or the Industrial Property Journal pending disposal of the appeal.”

However the court allowed Sanitam’s application for a stay as it was necessitated by the fact that the wording of section 104(2) was not express enough and therefore Sanitam made the application ex abundante cautela i.e. out of abundance of caution.

Therefore the focus now shifts to the High Court who will review the decision of the IPT in Nairobi IPT Case No. 5 of 1999. In this matter, Rentokil Initial (K) Limited and Kentainers (K) Limited (the requesters) applied for revocation of the sanitary bin patent by Sanitam (the respondent) on two main grounds:-

1. The subject matter of the invention lacked novelty as it was anticipated by prior art and available for public use. In this regard, the requesters argued that the patent was a mere adaptaion or replica of products which were at the time of grant already in the market in Kenya and elsewhere in the world for a considerable number of years.

2. The subject matter of the invention was obvious and lacked an inventive step.

On its part, the respondent opposed the requesters’ application on the following grounds, as summarised by the IPT:

1. That ARIPO whose mandate extends to Kenya must have considered competing applications or oppositions before registration of the patent in issue.

2. That in spite of the requesters having been notified of the impending application before ARIPO, they did not take any action in opposition thereto and therefore should be stopped from taking the present action.

3. There are no valid grounds in law or in fact to support the present application for revocation.

According to the IPT, several issues arose for determination:

“i) What are the powers of the Tribunal in an application for revocation or infringement
ii) Whether the invalidity of the registration of a patent can be a defence to a claim for infringement
iii) When can the decision of registration of a patent be revoked
iv) What is the test of prior art and what geographical span is applicable”

With respect to (i), (ii) and (iii), we find it curious that the IPT would set out to determine issues that are already clearly provided in the law.

With respect to iv), the IPT stated as follows on the issue of prior art:

“The Applicant [requesters] in their quest to demonstrate that the patent is anticipated by prior art has exhibited other very similar design No. 2042739 in use as far back as 1994. The shape and design of the exhibit is remarkably similar if not the same as the Respondent’s registered patent. The design was demonstrated to be in existence well before the Respondent applied to register the patent.”

However we are puzzled that the IPT failed to conduct any comparison of the respondent’s claims against those of the prior art. In this connection, the IPT also seemed to suggest that the patent examiner ought to have been called by the Respondent to explain whether in light of design No. 2042739 the examiner would still consider the patent as new and not anticipated by prior art. This would be akin to a Magistrate being required to explain his/her decision at the High Court!

Nevertheless, the IPT maintained that it was incumbent upon the respondent to distinguish its patent from the design no. 2042739 and particularly demonstrate an inventive step and research done to rule out existence of prior art.

In this regard, the IPT observed as follows:

“The Respondent seems to argue that the examiner’s decision is what matters and that only an expert can determine the similarity or otherwise of the designs with regard to prior art… They have neither offered any evidence to demonstrate that an attempt was made to establish that the patent was not anticipated by prior art or made any submissions as ordered…The Respondent instead focused their energies and arguments on challenging the jurisdiction of the Tribunal to hear the matter by filing up to Five (5) applications in the High Court…which were duplications of the same prayers and suffered the similar fate of failure. It was in this diversionary trend that the Respondent probably failed to even file affidavit evidence or submissions in the very matter that mattered most to its patent namely these proceedings.”

From the above, the IPT went on to find that there was indeed evidence that the Respondent’s patent was anticipated by prior art in the form of Design No. 2042739 and that the Respondents failed to demonstrate otherwise.

Although the IPT’s ruling was hard to follow at times and wrought with numerous discussions of irrelevant considerations, the decision to revoke Sanitam sanitary bin patent AP773 is now being heard on appeal before the High Court and we shall update readers on the progress and outcome of the case. In the meantime, our review of the previous cases involving Sanitam’s patent is available here.

Patent Litigation in Kenya: Lessons from the Sanitam Services East Africa Cases

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UPDATE: The Star Newspaper has confirmed the invalidation of Sanitam’s patent no AP 773 in an article published here.

“The [matter] before us focuses on a branch of law which has scanty litigation and therefore minimal jurisprudential corpus in this country, but which has exploded on the world stage since the end of the 19th Century when the international community formed two international unions to promote it – Intellectual Property” – Court of Appeal in Sanitam Services East Africa Limited v Rentokil Limited 2006

IPKenya’s friend and the Chief Patent Examiner at KIPI informs us that the Industrial Property Tribunal has recently made a ruling revoking patent no AP 773 granted to Sanitam Services with respect to is sanitary bin. This brings to conclusion a long and arduous battle fought by Sanitam against several manufacturers since the late 90s to protect its sanitary bin invention.

This blogpost chronicles the various court cases brought by Sanitam both nationally and regionally to assert its patent rights. It is argued that Sanitam has made an enormous contribution to advancing intellectual property law jurisprudence and raising pertinent issues in the area of patent prosecution and litigation.

In 1997, Sanitam alleges that it designed and invented a foot-operated litter/sanitary disposal bin for use in the hygienic storage and disposal of sanitary towels, tampons, surgical dressings, serviettes and other waste material. One of the novel features of the sanitary bin invention claimed by Sanitam is that it has a flap opening to receive the waste and covering the contents inside so that whoever is operating it cannot see the contents inside even when using it and also the odour is minimized by the invention. This invention titled “Foot Operated Sanitary/Litter Bin” (ARIPO patent No AP 773) was granted and issued in October 1999 by the African Regional Intellectual Property Organisation (ARIPO).

In Sanitam Services (EA) Ltd v. Anipest Kenya Ltd & Anor Civil Case No. 1898 of 2000, the late Justice Peter John Smithson Hewett sitting in the High Court dismissed a suit filed by Sanitam seeking an injunction to prevent Anipest from carrying out any acts exclusively granted to an owner of a patent under section 36 of the Industrial Property Act of 1989 (now repealed). PJS Hewett’s ruling dated March 2001 is significant as it addresses a major shortcoming in the operationalisation of the repealed Industrial Property Act, namely the absence of the Industrial Property Tribunal over 10 years after the Act came into effect. More significantly, this ruling offers the first critical analysis of Sanitam’s novelty claims in the sanitary bin invention.

The learned judge, reviews the abstract of Sanitam’s abstract and states:

“Assuming as I do, that the ARIPO rules of patentability are the same as or very similar to those of Kenya, I return to the abstract to see what it tells me particularly about novelty.
“A foot operated litter/sanitary disposal bin comprising a container (1)[”:] nothing novel there;
“closeable by a cover (2)”: nothing novel there either:
a disposal lid(3)”-still nothing novel:
“at the top, with the disposal lid being displaceable by a foot operated pedal (4)”: still nothing novel:
“and a lift lever (5)…” nothing novel,
“to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container, waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
I only have to look at this matter prima facie. Are all these attributes prima facie novel. Prima facie they seem to be to me on evidence many many years old: certainly they do not seem to me to be prima facie novel-which is all I have to consider.”

This blogger submits that this finding by the learned judge paved the way for other litigants and manufacturers to question the validity of AP 773 which has now finally culminated in the revocation of the patent by the Industrial Property Tribunal.

In Sanitam Services (EA) Ltd v Rentokil (K) Ltd & Anor Civil Suit No. 58 of 1999, Sanitam moved to the High Court orders of permanent injunction to restrain Rentokil Ltd and Kentainers Ltd from manufacturing, selling and distributing the sanitary bins which infringed on its patent. Rentokil and Kentainers contended that they were already manufacturing the product before the plaintiff had obtained a patent over the invention. Therefore they argued that Sanitam could not claim exclusive rights over the product.

In Justice Onyango Otieno’s ruling delivered in May 2002, the court dismissed the Sanitam’s suit holding that it failed to prove that it had obtained a patent over its foot operated sanitary bin. In addition, Sanitam was already distributing its product 2 years prior to the registration of the patent. Therefore Rentokil and Kentainers had not infringed Sanitam’s rights by creating a similar product and obtain a market for it.

This case is significant for at least three main reasons. First and foremost, the court upheld patents granted by ARIPO as valid and enforceable within Kenya pursuant to the latter’s obligations under the ARIPO Protocol.

Secondly, although the court made several obiter dicta remarks regarding the novelty of Sanitam’s bin invention, the court ultimately held that Courts of law must defer to the National Patent Office KIPI and the Regional Patent Office ARIPO on questions pertaining to the patentability of any invention in dispute. According to the court, KIPI and ARIPO are the bodies with the technical know-how to investigate the patentability or otherwise of inventions and that in the present case, one of the two had presumably investigated the invention and found it fit to grant a patent for it. Therefore whoever challenges the grant of any patent must do so before these institutions and not in court.

Finally, the court made an important finding on the burden of proof in matters relating to infringement of industrial property, particularly where the industrial property in question is unregistered. In the case of Sanitam, the court found that since there was no patent in existence at the time a similar bin to Sanitam’s was produced, Sanitam could not claim patent infringement.

In Sanitam Services (EA) Ltd v Rentokil (K) Ltd Civil Appeal No. 228 of 2004, Sanitam moved to the highest court in the land (at the time), the Court of Appeal, seeking for the Court to reverse the above decision of the lower court (High Court) in favour of Rentokil. Sanitam’s appeal against the High Court Decision was partially successful as the Court of Appeal granted Sanitam an injunction for the lifetime of the disputed patent AP 773 with effect from 16th December 1999. However the Court of Appeal did not award Sanitam any damages thereby concurring with the High Court’s determination that Sanitam had not discharged the onus of proof.

In 2008, ARIPO published an entry in its Journal to the effect that Sanitam’s patent AP 773 had lapsed for failure to pay annual fees. Soon thereafter, Sanitam brought an appeal against the decision of the ARIPO Patent Office removing its patent from the Register due to non-payment of annual maintenance fees. It was argued that maintenance fees were consistently late since the patent was granted in 1999. The ARIPO Appeal Board concluded that both parties were to blame for the delays in the payments; the Office had failed to send reminders, which it is required to do under the Harare Protocol. Therefore the Office was urged to strictly observe the provisions of the Protocol particularly those pertaining to time limits, information delivery and processing procedures.

Consequently, the Appeal Board ordered the patent be reinstated in respect of the designated states, including Kenya and Uganda.

In Sanitam Services (EA) Ltd v Bins Nairobi Services Ltd Civil Suit No. 597 of 2007, Sanitam successfully moved the High Court for orders of injunction against Bins restraining the latter from a host of acts alleged to be infringing on Sanitam’s patent AP 773.

The issue for determination by the court was found to be whether Sanitam had established a case to entitle the court to grant the orders of injunction sought. In making this finding, the court reaffirms the earlier position of the High Court in the Rentokil case that the court is not the right institution to question the patentability of any invention in dispute and is bound to respect a patent duly issued by KIPI and/or ARIPO.

Therefore with respect to Sanitam’s onus of proof, the court found that the latter had proved that it had a valid patent ARIPO Patent no. AP 773, which was infringed by Bins through the acts of offering for sale or hire of foot-operated sanitary bins without Sanitam’s authorisation.

In Rentokil Initial Kenya Ltd v Sanitam Services (EA) Ltd Civil Suit No. 702 of 2008, Sanitam successfully defended a suit filed by Rentokil seeking that the former be restrained from threatening, intimidating, harassing, embarassing and confusing Rentokil’s clients and customers over sanitary bins it provides.

Rentokil moved to the High Court after Sanitam wrote letters to the former’s clients warning them to stop using its sanitary bins, which Sanitam considered an infringement of its patent AP 773. Rentokil’s line of reasoning was that it had developed a new bin by changing certain features to distinguish it from Sanitam’s bin registered as AP 773. Therefore Rentokil claimed that by writing letters to its clients, Sanitam was seeking to enforce a patent over a completely different bin.

Sanitam’s defence was simply to focus on its granted patent and prove to the court that Rentokil’s bin was similar to its AP 773. To this end, Sanitam presented an expert report to substantiate that the two bins were similar and that the functionality of Rentokil’s bin was same as that covered under patent AP773.

It is argued that if Rentokil had focussed on Sanitam’s threatening letters rather the differences between its bins and Sanitam’s patent, Rentokil may have been successful with its application for injunction at the Industrial Property Tribunal under section 108 of the Industrial Property Act. This section reads:
“108. (1) Any person threatened with infringement proceedings who can prove that the acts performed or to be performed by him do not constitute infringement of the patent or the registered utility model or industrial design may request the Tribunal to grant an injunction to prohibit such threats and to award damages for financial loss resulting from the threats.”

All in all, this case is instructive to all litigants in industrial property matters to purse their matters with the Industrial Property Tribunal rather than with the High Court, in the first instance.

In Chemserve Cleaning Services Ltd v Sanitam Services EA Ltd [2009], the Industrial Property Tribunal ruled that it had no jurisdiction to hear applications to revoke patents granted by ARIPO. Sanitam challenged the Tribunal’s jurisdiction in a preliminary objection stating that section 59 of the Industrial Property Act only incorporates patents granted by ARIPO in relation to their effect in Kenya and that other issues such as revocation and not expressly contemplated in the section.

The section reads as follows:

“59. A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act except where the Managing Director communicates to ARIPO, in respect of the application thereof, a decision in accordance with the provisions of the Protocol that if a patent is granted by ARIPO, that patent shall have no effect in Kenya.”

Therefore the main issue between the parties was the meaning of the word “effect” in the above section. Sanitam successfully convinced the Tribunal that “effect” simply means “the powers conferred to a right holder by the patent in Kenya”, therefore the only matters the Tribunal can hear related to infringement and compulsory licensing.

This decision by the Industrial Property Tribunal was reversed by the High Court in an ex parte judicial review application heard and determined by Justice Musinga on December 1, 2010. Chemserve Cleaning Services Ltd obtained an order to compel the Tribunal to reinstate, hear and determine an application for revocation of ARIPO patent AP 773 filed by Chemserve in 2008.

In Sanitam Services (EA) Ltd v Tamia Ltd Petition No. 305 of 2012, Sanitam sought reliefs from the court to have Tamia prevented from violating its IP rights over the invention patent no. AP773, including the destruction of all infringing bins in Tamia’s possession. Justice Majanja’s ruling sheds crucial light on the state’s obligations under the Constitution with regards to intellectual property rights under Articles 11 and 40.

The learned judge rightly dismissed Sanitam’s petition with two well-reasoned findings: firstly, the petitioner had failed to demonstrate how the State (in this case, KIPI and/or the Industrial Property Tribunal) had failed to honour its obligations under the Constitution. Secondly, it was unnecessary for the petitioner to invoke Article 22 of the Constitution to enforce IP rights since these are “ordinary rights” that can be enforced through the legal mechanisms provided by statute law (in this case the Industrial Property Act).

In Chemserve Cleaning Services Ltd v Sanitam Services EA Ltd [2013], the Industrial Property Tribunal rejected Chemserve’s request for the invalidation of Sanitam’s patent no AP 773.
This case is significant as the Tribunal makes several findings on the time period and burden of proof requirements when requesting revocation of a patent.

With regard to the time period requirement to revoke a patent, the Tribunal held that the legislative intent behind section 103 was to prevent a situation where a party becomes aware of a patent, then “literally sits on the right to revoke it until a later date for commercial convenience in the form of damages and accounts for profits”. The Tribunal also noted that Chemserve had failed to file for an extension of time under Rule 33 at the time it filed the request for revocation.

Even if Chemserve had filed its request in a timely manner, the Tribunal held that it had failed to meet the burden of proof required to establish that the patent was invalid. Chemserve argued that the patent lacked novelty and inventive step and formed part of prior art however it chose not to produce any evidence other than the affidavit and statement by its General Manager!

We are back full circle to 2014, where a recent report indicates that the Industrial Property Tribunal in a ruling made on 21 January 2014 has revoked patent no. AP 773. This blogger will examine this ruling once it is made available to the public.

All in all, it is beyond dispute that the long list of Sanitam cases presented above have in one way or another shaped the landscape of intellectual property litigation in Kenya and in Africa.

Summary of the Industrial Property Act 2001

The main object of this Act is to provide for the promotion of inventive and innovative activities, to facilitate the acquisition of technology through the grant and regulation of patents, utility models, technovations and industrial designs. Section 3 of the Act establishes the Kenya Industrial Property Institute (KIPI).

KIPI is the main implementation and administration agency for industrial property in Kenya. It liaises with other national, regional and transnational intellectual property offices, patent offices and international organizations that are involved in industrial property protection. KIPI’s mandate includes: considering applications for and granting industrial property rights; screening technology transfer agreements and licences; providing to the public industrial property information for technological and economic development; and promoting inventiveness and innovativeness in Kenya.

The Act also establishes the Industrial Property Tribunal to deal with cases of infringement. Section 109 of the Act also criminalises infringement on others patents, registered utility models or industrial designs.

The application forms for patent, industrial design and utility model are available here.
The current fees payable to KIPI for patent, industrial design and utility model applications are available here.

 

Patents and Utility Models under the Industrial Property Act

hippo water roller afrigarnics limited isaiah esipisu

A patent is a legal document granted by a State that secures to the holder, for a limited period, the right to exclude others from making, using, selling, offering for sale, and importing the patented subject matter. Any new and useful process, product, composition of matter, or any improvement thereof, may be patented, if such invention meets these three requirements: (1) Novelty; (2) Inventive step i.e must not be obvious to a person of ordinary skills in that field of art, and (3) Industrial applicability.

The following are not patentable:

  • Discoveries or findings that are products or processes of nature, where mankind has not participated in their creations
  • Scientific theories and mathematical methods
  • Schemes, rules or methods of doing businesses or playing games or purely performing mental acts.
  • Methods of treatments of both human and animals by surgery or therapy as well as diagnostic methods practice thereto, except products for use thereof.
  • Inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation

 

The steps to be followed for grant of a patent in Kenya are as follows:

8 kosgei kipi 2010

NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.

Industrial Designs under the Industrial Property Act

9 kosgei kipi 2010

An industrial design refers to the ornamental or aesthetic features of a product.  In other words, it refers only to the appearance of a product and NOT the technical or functional aspects.

Any products of industry can be protected as an industrial design including: fashions, handicrafts, technical and medical instruments, watches, jewellery, household products, toys, furniture, electrical appliances, cars; architectural structures; textile designs; sports equipment; packaging; containers and “get–up” of products

The requirements for industrial design protection are: (1) Novelty;  (2) Originality i.e. independently created; and (3) Design must have “individual character” – when overall impression is evaluated against others.

The registration process for an industrial design in Kenya is as follows:

10 kosgei kipi 2010

NB: Please note that the fees indicated in the diagram above may not be up-to-date, consult the link in the box above for the current fees.