Yesterday, the World Trade Organization (WTO), World Intellectual Property Organization (WIPO), and World Health Organization (WHO) jointly released a report on “Promoting Access to Medical Technologies and Innovation”.
This report examines the interplay between public health, trade and intellectual property, and how these policy domains affect medical innovation and access to medical technologies.
Read the full report here.
As we prepare to usher in a new year, a quick look back at 2012 is quite in order. Without further ado, here are the most read IPKenya stories during 2012:
January:
“Are we all lazy? The debate over innovation in Africa”
“The Fight Against Piracy: Open Source Software versus Microsoft”
February:
Makerere Lecturer Sues Bank of Uganda for 1 Billion Shillings in Copyright Infringement Suit
The ‘Africa IP Forum’: Doomed to Fail?
March:
Agility Logistics Case: Registration of Business Name vs Registration of Trademark
April:
Kenya’s New Copyright Tribunal Appointed
Landmark ruling on constitutionality of the Anti-Counterfeit Act
Moline vs. Mololine Trademark Battle
PS: Presiding Judge in the Moline case was determined unfit to continue in office by the Vetting of Judges and Magistrates Board in December 2012.
May:
Trademark case: Strategic Industries Limited v Strategic Industries Limited
Intellectual Property and Sports in Kenya: Copyright Protection of Image Rights?
June:
Copyright Infringement Case of the Year: Njeri Wangari aka KenyanPoet vs. Oxford University Press
The Challenge for Creative Commons in Kenya
Parliament Set to Pass Important Amendments to the Kenya Copyright Act
Kenya Welcomes Conclusion of WIPO Beijing Treaty for Audiovisual Performers
July:
“Sue, Baby, Sue!”: Miguna’s Peeling Back the Mask and the Digital Copyright Infringement Debate
Non-Existent Intellectual Property Financing: Blame it on the Banks or on the Innovators?
A Challenge for Law Schools in Kenya to Take IP Seriously
August:
The Launch of Strathmore University’s Center for IP and IT Law (CIPIT)
Uganda: Is it copyright infringement to use a politician’s speeches as ringtones?
Tobacco Plain Packaging Law: Intellectual Property Rights versus Human Rights in Kenya
The Newly-Appointed 2012-2015 Kenya Copyright Board of Directors
September:
Why Intellectual Property Law in Kenya Should Recognise Colour Trademarks
October:
A Tale of Two Conflicting Collective Management Organisations in Nigeria
A Look at Kenya’s Draft Bill on Protection of Traditional Knowledge and Expressions of Folklore
November:
Kenyan DJs Must Be Licensed for Commercial Use of Copyright and Related Rights in Music
The Tax Collection Technovation Tussle: A Test Case for Industrial Property in Kenya
December:
The Ghost of M-Pesa: Faulu Kenya Cries Intellectual Property Theft over Safaricom’s M-Shwari
A Comparative Perspective: Why Business Method Patents Cannot Be Too Quickly Dismissed
As 2012 comes to an end, IPKenya would like to thank all our readers, commenters and supporters. The blog had 28,000 views, there were 85 new posts this year and 22 blog subscriptions.
We look forward to 2013!
Summary:
In a judgment delivered on 23 August 2012 by Judge Griesel (Fortuin & Samela JJ concurring), the High Court of South Africa in the case of Voor-Groenberg Nursery CC and Another v Colors Fruit South Africa (Pty) Ltd [2012] has set an important precedent on the standard of proof of ownership of vegetative materials which are the object of intellectual property rights.
Legal Background
After Industrial Property and Copyright, Plant Breeders Rights is the third branch of intellectual property rights. This young branch of IP was born out of the UPOV Convention of 1961. UPOV stands for “Union internationale pour la protection des obtentions végétales”.
The Convention protects the variety of the plant not the plant itself therefore the subject matter of protection is the variety and not the whole plant. A variety is a new plant that is distinct from any other variety that is known to agriculture or published in any botanical literature. A variety is ‘known to agriculture’ if man has cultivated it. A variety is ‘known to botanical literature’ if it has not been recorded. Therefore any person who discovers a new plant variety that is wild, that man can use or domesticate, can apply to the competent authority for a Grant of a Plant Breeder’s Right.
The UPOV Convention 1961 was subsequently amended in 1978 and 1991. Kenya was the first country in Africa to domesticate the UPOV Convention. Kenya’s Seed and Plant Varieties Act Chapter 326 is modeled on UPOV 1961. South Africa’s Plant Breeders’ Rights Act 1976 is modeled on UPOV 1978.
Factual scenario in the case of Voor-Groenberg Nursery CC v Colors Fruit South Africa
Sheehan Genetics LLC (‘Sheehan Genetics’), a California-based company, developed ten different varieties of seedless grapes. Sheehan Genetics then entered into a licence agreement with a Spanish company, Antonio Munoz Y Cia SA (‘AMC’), in terms of which AMC was granted an exclusive licence to test and commercially develop all new plant material bred, acquired and developed by Sheehan Genetics. Later on,
Sheehan Genetics and AMC entered into a sub-licence agreement with Colors Fruit South Africa Pty Ltd. In terms of the sub-licence Colors was granted certain rights regarding the exploitation of the so-called “Sheehan varieties” in South Africa and Namibia.
The rights are set out in paragraph 5 of the judgment as follows:
” (a) an exclusive right (to the exclusion of both AMC and any third party) ‘to obtain from AMC … all the propagating samples of all new vegetative material bred and/or developed by Sheehan Genetics and received by AMC from time to time, so that Colors Fruit may (i) test, plant and cultivate them; (ii) obtain their products; and (iii) secure their statutory protection’ in the form of registration of plant breeders’ rights in the name of Sheehan Genetics within the defined territory (‘Planting and Cultivation Rights’); and
(b) a non-exclusive right to use the intellectual property rights of which Sheehan Genetics was the proprietor, to market and distribute the products in the agreed distribution territory (‘Marketing and Distribution Sub-Licence’).”
In terms of the sub-licence agreement, Colors was appointed as Sheehan Genetics’ South African agents in connection with matters relating to plant breeders’ rights, governed locally by the Plant Breeders’ Rights Act, 15 of 1976 (‘the Act’). To this end, Colors contracted the services of Voor-Groenberg, a local entity, to propagate and multiply the plant material obtained by it [Colors].
Things went south when AMC notified both Sheehan and Colors of its intention to terminate the licenses described above. Despite this notice of termination of the license, Colors took the view that it would not terminate any of its production or cultivation programs; and further that it would not surrender any of its rights in respect of the plant materials. Why? Well, Colors claimed it had acquired ownership of the Sheehan plant varieties! How? Colors made two separate arguments:
1. Colors argued that the sub-licence did not contain a reservation of ownership in favour of Sheehan Genetics or AMC. This fact, together with supply of the plant material to Colors, can lead only to the conclusion that the intention must have been for Colors to become owner.
2. Colors relied on the provisions of s 23(6) of the Plant Breeders’ Rights Act.
The High Court rightly dismissed Color’s ownership claim on both these grounds. The Court rightly dismisses Colors’ first argument at paragraphs 22, 23 and 24. However for purposes of this post, we shall focus on the second argument because it is directly pertinent to our discussion on intellectual property rights.
The point of departure is section 23 of the South African Plant Breeders’ Rights Act which states the holder of plant breeder’s right has certain exclusive rights in respect to the propagating material of the relevant variety; or harvested material, including plants, which was obtained through the unauthorized use of propagating material of the relevant variety. These include:
(a) production or reproduction (multiplication);
(b) conditioning for the purpose of propagation;
(c) sale or any other form of marketing;
(d) exporting;
(e) importing;
(f) stocking for any of the purposes referred to in paragraphs (a) to (e).
This section provides that any person exercising any of the above rights must have proof of prior authority from the rights holder in the form of a license.
It is clear from the above facts that Colors had obtained such a license however in the absence of any proof of assignment of rights from Sheehan, could Colors claim to be the holder of plant breeder’s rights in respect of the Sheehan variety? The answer is an emphatic ‘No’. Therefore Colors cunningly decided to rely on the exceptions provided in section 23(6) of the Plant Breeders’ Act to claim it had acquired the rights to use the plant varieties. This section provides that:
“a person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder’s right in respect of the variety if he or she—
(a) resells that propagating material;
(b) subject to the provisions of subsection (2), sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;
(c) uses or multiplies that propagating material in the development of a different variety;
(d) uses that propagating material for purposes of bona fide research;
(e) uses that propagating material for private or non-commercial purposes; or
(f) is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.”
To my mind, this section is akin to the exceptions and limitations provision in section 23 of the Copyright Act commonly known as the ‘fair dealing’ or ‘fair use’ provisions. However, in the case of copyright as is the case for plant breeders’ rights, such provisions can only be relied on as defences where there is an allegation of infringement of rights. The court makes a similar observations at paragraph 29:
“reading s 23(6) in context, it provides a defence – not a cause of action – to a limited class of persons, namely persons without a licence obtained under s 25 or 27, who are accused of infringing a plant breeder’s right. Like estoppel, therefore, s 23(6) is meant to be utilised as a shield, not as a sword.”
These exceptions are sometimes referred to as the “farmer’s privilege” as contemplated in UPOV 1978 and were part of a larger campaign to obtain international recognition of plant breeders’ rights which was finally realised in 1994 with article 27(3) (b) of the TRIPS Agreement.
Conclusion:
The High Court’s findings in this case are spot on in upholding the intellectual property rights of the plant breeder over any other competing interests. In the present case, the object of the plant breeder’s right is the plant variety including related propagating material and harvested material. One cannot claim ownership of the vegetative material of a particular plant variety if one is not recognised by law as the holder of the plant breeder’s right.
Parliament in it’s role as the watchdog of the Executive arm of Government has recently focussed its attention on claims that the Kenyan tax payer may have lost an estimated 3 billion shillings through shadowy deals on currency printing involving government officials and British firm De La Rue.
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
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:
The steps to be followed for grant of a patent in Kenya are as follows:
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
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:
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.
IP Kenya 