Intellectual Property Law

Intellectual Property Law

Kenya's 2010 Constitution (Article 40(5)) requires the government to protect and enforce Intellectual Property (IP) rights. Intellectual Property refers to legal protections for creations of the mind, which can influence business practices and innovation. In Kenya, as in other countries, Intellectual Property Law is intended to protect the rights of creators and support economic activities. At KAA, guidance is provided regarding key elements of Intellectual Property Law nationally, regionally and internationally.

This article below offers a brief guide on the three main IP registrable rights in Kenya.

1 Registration of a Patent

Kenya Industrial Property Institute (KIPI) is responsible for examining and granting patents in Kenya. KIPI operates under the Industrial Property Act 2001. However, it is also possible to obtain a patent through the African regional Intellectual Property Organization (ARIPO), which is a regional intergovernmental organization, based in Harare Zimbabwe and which is mandated to grant patents on behalf of its member states. In general, any device, substance, method or process can be patented. For a patent to be granted, the invention must satisfy three requirements, that is the invention must

• Be new, which means that the invention has not been publicly disclosed anywhere in the world;
• Involve an inventive step, that is the invention must not be obvious to someone with knowledge and experience in the technological field of the invention; and
• be industrially applicable, in that the invention must be capable of being used in industry

Application

• a request (Form IP 3) which is the prerequisite application form for patents
• a description - the description should disclose the invention and at least one mode for carrying out the invention in such full, clear, concise and exact terms.
• one or more claims - The claim or claims should define the matter for which protection is sought and should be clear and concise and fully supported by the description.

Filing

• the name of the applicant;
• a description; and
• a claim or claims.

If application does not, at the time of receipt, fulfill the above requirements, the applicant is invited to file the required correction. If, the applicant complies with the invitation, the application is accorded as filing date the date of receipt of the required correction, otherwise the application is treated as if it had not been filed.

Formal Examination.

A formal examination is carried out to check whether any of the following defects exist with respect to the application. The following are the key indicators used to disqualify a request;

• the request does not comply with the prescribed requirements.
• the description, the claims and, where applicable, the drawings do not comply with the prescribed physical requirements;
• the application does not contain an abstract;
• the relevant fees have not been paid as provided for in the regulations or the payment of such fees has been waived under that section.

Substantive examination

Where an application for a patent satisfies the formal requirements, the applicant is notified and is required to submit, within three years from the filing date of the application, a request on form IP 8 (Annex 2 ) for the examination of the application. Where no request is made within the three years, the application is deemed to be abandoned.

An examination of the application is carried out check out whether the invention in respect of which the application is made is patentable within the meaning of the industrial property act. The applicant may appeal to the Tribunal against any decision by which the Managing Director accords a filing date, rejects the application,

Publication of an application.

Once the examination has been approved the application for grant of a patent is published as soon as possible after the expiration of 18 months from the filing date or, where priority is claimed, the date of priority. Before the patent application is published, the applicant is invited to pay the publication fee.

Confidentiality of application before publication.

A patent application is kept confidential until the application is published. However the following may be provided to a third party upon request even before publication of the application.

• the application number;
• the name of the applicant;
• the filing date of the application;

The publication of the patent application is effected by publishing the particulars of the application in the Kenya Gazette or in the Industrial Property Journal.

Problems when applying for a patent

Many patent applications are not successful for one or more of the following reasons:

• The patent application does not describe the invention properly;
• The invention is not new because the applicant disclosed it to the public before applying for a patent.
• The invention is not new when compared with things that are already known. For example a similar invention may have been published in an earlier patent document; or
• The application is for something that is not patentable such as a principle, idea or concept rather than its practical adaptation.

2 Registration of a Patent

• Why register your Trade Mark?

It helps distinguish you products from that of other competitors. Registration of your Trade Mark gives you exclusive right to that mark, it is evidence that the mark is yours and it affords you legal rights against others who may want to infringe your right to that mark.

The process of registration also involves extensive searches to ensure that your mark does not resemble any existing Trademarks and as such helps you avoid being sued for infringing on other peoples Trademark.

• Requirements for registration of a Trademark in Kenya

The Kenya Industrial Property Institute (KIPI) is the body mandated with the registration of Trademarks. The process is as follows

Preliminary search

A search has to be conducted before applying for registration to find out if the Trade mark can be registered or not. Registration will be refused if the mark/ sign resembles another registered Trade mark. Though not mandatory it is important to conduct a search before proceeding with the registration process to avoid spending time and money on an application that will be refused. The relevant form is Form TM 27.

Application for registration of Trademark

You have conducted the Preliminary search and are satisfied that the mark can be registered. The next step will be to make an application for registration. This is done in form of Form TM 2 and TM 32.

For foreign companies to register their Trade marks in Kenya they have to appoint an agent in Kenya and as such they will in addition to Form TM 2 and TM 32 require Form TM 1 for appointment of agent.

Examination stage

At this stage the Registrar examines your application to ensure the correct documents have been filed and also your mark does not resemble any registered Trade mark. An examination report is then issued, the report will inform you whether your mark has been approved for registration or not. If it has been approved you will be required to pay the advertisement fee and registration fee.

Registration

This is the final stage in the registration process, if no opposition is raised upon advertisement, the application will be registered and the Registrar will issue a certificate of registration of Trademark.

Industrial Design

Industrial design is concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament. It must be understood that an industrial design DOES NOT protect the method of construction or the function of the article.

Conditions for registration

An industrial design is registrable if it is new. An industrial design is deemed to be new if it has not been disclosed to the public, anywhere in the world, by publication in tangible form or, in Kenya by use or in any other way, prior to the filing date.

It is good to note that a disclosure of the industrial design will not taken into consideration if it occurred not earlier than twelve months before the filing date or the disclosure was by reason or in consequence of:

• acts committed by the applicant or his predecessor in title; or
• an evident abuse committed by a third party in relation to the applicant or his predecessor in title.

Filing an application

The following documents are submitted during filing of an application

• A completed application form (form IP 27)
• Two identical specimens of the design (Models)
• drawings, photographs or other graphic representations of the article embodying the industrial design and an indication of the kind of products for which the industrial design is to be used
• the prescribed application fee
• Where the applicant is not the creator, the request must be accompanied by a statement justifying the applicant's right to the registration of the industrial design
• a power of attorney, where the applicant is represented by an agent;

The purpose of the representations is to present an accurate and complete picture of the design to be registered and to identify those features of the design which are novel and for which protection is sought. The representations, therefore, comprise two elements;

• A series of VIEWS OF THE ARTICLE and
• A STATEMENT OF NOVELTY

Duration of certificate of registration of an industrial design

The duration of protection conferred by a certificate of registration for an industrial design is 5 years from the date of filing of the application for registration. However the registration may be renewed for two further consecutive periods of five years upon payment of a renewal fee.

The fees for the renewal of registration of an industrial design must be paid within twelve months preceding expiration of the period of registration but a grace period of six months is allowed for the late payment of the renewal fees on payment of the surcharge.