Kenya: Important amendments to IP law proposed - Part 1
On 10 April 2018, the Kenyan authorities published proposed legislation, the Statute Law (Miscellaneous Amendments) Bill, 2018 (the Bill), which provides for amendments to several laws, including the Industrial Property Act 2001 and the Anti-Counterfeiting Act 2008. Below is a summary of the proposed changes to the Industrial Property Act 2001.The proposed changes to the Anti-Counterfeiting Act 2008 are discussed here.
Amendments to the Industrial Property Act 2001
The Industrial Property Act governs patents, utility models and designs. The following amendments are proposed:
The Bill seeks to amend the Industrial Property Act to align the definitions in the Act with the Constitution.
A patent applicant must now disclose ‘the best mode’ for carrying out the invention. The description must disclose the invention and the best mode for carrying out the invention in full, clear, concise and exact terms so as to enable a person skilled in the art to make, use or evaluate the invention, and that description shall include any drawing and relevant deposits as in the case of microorganisms and self-replicable material which are essential for the understanding of the invention.
There is clarification in respect of patents, utility models and industrial designs filed under the ARIPO Harare Protocol. In particular, there is clarification on rights, surrender, revocation and infringement of patents, utility models and industrial designs granted under the ARIPO Harare Protocol.
As regards joint ownership, the Bill provides that third parties may only carry out certain acts with joint permission from joint owners.
There is a new definition of an industrial design – the term ‘industrial design’ means the overall appearance of a product resulting from one or more visual features of the shape, configuration, pattern or ornamentation of a product; and the term ‘product’ means anything that is made by hand, tool or machine. Design protection does not extend to anything in an industrial design which serves solely to obtain a technical result, or to methods or principles of manufacture or construction.
The novelty provisions for industrial designs have changed - an industrial design is new unless it is identical or substantially similar in overall impression to an industrial design that has been disclosed to the public anywhere in the world by publication or use prior to the filing date or, where applicable, the priority date of the application for registration.
The following are excluded from industrial design registrability - (a) industrial designs that are contrary to public order and morality; and (b) works of sculpture, architecture, painting, photography and any other creations that are purely of artistic nature.
There is provision that applications for registration of an industrial design together with any drawing, photograph, graphic representation or specimen shall be kept confidential until the application is published.