In the recent case of Sanitam Services (E A) Ltd v Rentokil (K) Ltd & another (K) Ltd  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.