Kenya: patents in Africa – your questions answered
As Africa’s economic significance grows, so does the need for patent protection in the continent. Africa is sometimes seen as being challenging, partly because of the co-existence of national and regional registration systems. We will therefore be producing a series of country or region-specific patent law updates. This is the second in that series, and it deals with Kenya.
Kenya has a population of 48 million, a GDP of US$70 billion, and an economy that is the 72nd largest in the world. The country’s economy is diverse, encompassing, inter alia, agriculture, mining, tourism and financial services.Kenya is generally regarded as the East African hub for financial, communications and transport services.
The legislation dealing with patents is the Industrial Property Act, 2001, the Industrial Property Regulations, 2002 and the Industrial Property Tribunal Rules, 2002 . The country is a member of the Paris Convention, the World Intellectual Property Organisation (WIPO), the African Regional Intellectual Property Organisation (ARIPO), and the Patent Convention Treaty (PCT).
Inventors, joint inventors and successors-in-title can file patent applications, and Kenya has a first-to-file system. Inventions made by employees in the course of their employment belong to the employer, although the employee may be entitled to equitable remuneration in cases of inventions of exceptional importance. There are restrictions on applications filed abroad by Kenya residents in that written authority must be obtained before a person resident in Kenya may file an application for a patent outside Kenya.
Patents of invention are available, as are national phase PCT applications, ARIPO applications and ARIPO regional phase PCT applications. To be patentable an invention must be new, involve an inventive step, and be industrially applicable or a new use. An invention will involve an inventive step if, having regard to the prior art, it would not have been obvious to a person skilled in the art. The usual exclusions apply, including diagnostic, therapeutic and surgical methods for the treatment of humans and animals (although not products for use in such methods).
Absolute (worldwide) novelty is required. Novelty is not destroyed if the disclosure occurred within 12 months of the filing of the application or the priority date, and if it resulted from an act committed by the owner or a predecessor in title, or an abuse committed by a third party with regard to the applicant or a predecessor.
The patentee has the right to stop others from doing the following: making, importing, offering for sale, selling or using the patented product; stocking the product for the purpose of sale; and using the patented process. Acts done for scientific research rather than for industrial or commercial purposes are excluded from the owner’s exclusive rights, and there is provision for prior user rights. In legal proceedings the patentee can be granted an injunction, damages, or any other appropriate remedy. An exclusive licensee who has requested the patentee to sue for infringement can sue in its own name if the patentee fails to do so within a period of three months.
There are specific procedural requirements for non-PCT patents of invention and national phase PCT applications. When it comes to ARIPO and ARIPO regional phase PCT applications, the ARIPO procedures must be followed.
There is formal examination. International-type searches may be submitted, following which the Registry can request copies of documents reflected. The Kenyan Patent Office conducts substantive examination of all patent applications. There is no procedure for opposition, but there is provision for cancellation (revocation).
A patent lasts for 20 years from the filing date and renewal fees are due annually from the first anniversary of the filing date. Compulsory licensing can be granted by a court after the expiry of four years from the filing date or three years from grant (whichever is the later) on the basis that the patented invention is not being supplied on reasonable terms in Kenya.
In Kenya there is protection for utility models and technovations.