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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ARIPO Roving Seminars 2015: Copyright and Industrial Property Rights in Kenya

ARIPO Roving Seminar 2015 Kenya Director-General Fernando Dos Santos ARIPO Chief Examiner Emmanuel Sackey KECOBO Director Marisella Ouma Victor Nzomo IP Kenya

As earlier advertised here, African Regional Intellectual Property Organization (ARIPO) successfully executed its on-going series of Region-wide “Roving Seminars” in Kenya with the first two days (Monday 16th and Tuesday 17th of March 2015) being devoted to copyright matters under the theme: “Copyright in the Digital Environment” and last two days (Thursday 19th and Friday 20th of March 2015) being devoted to industrial property matters under the theme: “Protection and Promotion of Patents, Trade Marks, Industrial Designs and Geographical Indications”.

In his opening remarks, ARIPO Director General Mr. Fernando Dos Santos brought to our attention the important role Kenya has played as a pioneer ARIPO member state. For those who may not know, when ARIPO was established, its first headquarters were hosted at the Attorney General’s Chambers (Sheria House) in Nairobi before later relocating to its present headquarters in Harare, Zimbabwe. Therefore the DG described coming to Kenya and visiting Sheria House as “coming home” since this was his first visit to Kenya since taking office as Director General in 2013.

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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.

Local Universities To Host Two Patent Drafting Training Courses in August

This August, IP enthusiasts, practitioners, professionals and students will have a choice of two separate patent drafting courses both taking place within Nairobi. The first option is a patent drafting and dispute resolution course organised by Kenyatta University (KU). The second option is a training course on drafting and prosecuting patent applications jointly organised by the Kenya Industrial Property Institute (KIPI) and Strathmore University (SU) Centre for IP and IT Law (CIPIT). Details of this SU course are available online at the CIPIT Law Blog here.

Here are some of the details IPKenya readers may need to decide whether to attend both courses, or one of the two courses or none of them.

1. Dates, Venues & Duration:

The KU course runs for five (5) consecutive days from 5th to 9th August 2013 at KU’s Conference Centre.
The SU course runs for four (4) consecutive days from 12th to 15th August 2013 at SU.

2. Charges:

The KU course costs Kshs 65,000.00 which includes lunch and teas but excludes accommodation and transport.
The SU course costs Kshs 50,000.00 which includes lunch, teas and training materials. However, participants who register and pay the fee by 2nd August 2013 will enjoy a special rate of Ksh. 45,000.00.

3. Resource Persons:

KU’s course will be facilitated by Eng. Pierre Fuller, MSc. B.Mech, B.Arch – A Patent Agent at Ropes & Gray LLP and Prof. Ethel Monda, PhD in Plant Pathology at KU.

SU’s course will be facilitated by Mr. David Njuguna, Chief Patent Examiner at KIPI and Dr. Isaac Rutenberg, PhD.,JD. at SU CIPIT.

IPKenya would like to encourage everyone to take advantage of this rare opportunity and atleast attend one of these training courses. Any feedback, comments and thoughts on the courses are most welcome via the comments box below or through email at ipkenyan@gmail.com.

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

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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:

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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

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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:

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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.