Utility concept

DEFINITION

Utility model means any form, configuration or disposition of element of some appliance, utensil, tool, electrical and electronic circuitry, instrument, handicraft mechanism or other object or any part of the same allowing a better or different functioning, use, or manufacture of the subject matter or that gives some utility, advantage, environmental benefit, saving or technical effect not available in Kenya before and includes micro-organisms or other self-replicable material, products of genetic resources, herbal as well as nutritional formulations which give new effects.

Utility models are an exclusive right granted for an invention that allows the right holder to prevent others from commercially using the protected innovation, without his authorization in the geographical area for which the utility model was granted for a limited period of time. In its basic definition, it may vary from one country (where such protection is available) to another, a utility model is similar to an apartment.

Infact; utility models are sometimes referred to as ‘petty patents’ or “innovation patents”. The concept being that there are certain innovations that don’t need to be entirely new, it may be new in Kenya but not necessarily elsewhere, the newness need not be absolute and there need not be an inventive step, it must be useful.  

Kenya has both patents and utility models, Kenya Ceramic Jiko (KCJ) from the metal jiko upon realization of the need to conserve energy; the idea was that metal was making energy disappear but ceramic would conserve energy. 

In general, compared with patents, the requirements for utility models are less restrictive, both substantively and formally

Applicable Law

  • Industrial Property Act (IPA), 2001 (Republic of Kenya, 2001)
  • Regulations of 2002 (Republic of Kenya, 2002)

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.

UTILITY MODELS IN KENYA

Section 2 Industrial Property act of 2009 Cap 509  defines utility models as “which any form configuration or disposition of elements of some appliance,utensil,tool,electronical and electrical circutory instruments handicraft mechanism or other object or any part of the same allowing a better or different functioning, use or manufacture of the same subject matter or that gives some utilty,adavantage,environmental benefit, saving or technical effect not available in Kenya before and includes microorganisms or other self-replicable materials, products of genetic resources, herbal as well as nutritional formulations gives new effects

REGULATION BODY

Kenya Industrial Property Institute (KIPI)- This is the competent authority for accepting, examining, and granting utility model applications

REGISTRATION OF UTILITY MODELS IN KENYA

  1. Fill the Patent/utility model application form which is downloadable from the KIPI website on the section for Patent forms. It states the name, address, nationality and country of residence of the applicant,
    1. It states the name and address of the inventor
    1. It states the name and address of the agent where necessary.
    1. If there is more than one applicant, the request should set out, in addition to an address for each applicant, a single address at which all the applicants can be contacted.
    1. For each inventor, the request should be accompanied by an extra copy of the statement if there is more than one inventor
  2. Provide a Statement justifying applicants right to patent/ utility model certificate
  3. The application must include a proper disclosure of the advancement for which protection is sought
  4. Title of the invention – With regard to the title of the invention it should be checked to ascertain whether it is short and precise. The title must clearly and concisely state the technical designation of the invention and must exclude all fancy names.
  5. Description of the invention- It should be ascertained that it states the title of the invention; specifies the technical field to which the invention relates;  indicates the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention; and indicates how the invention is industrially applicable

The provisions of the Act relating to patents (except those expressly excluded by Section 81(1) and section 82) shall apply mutatis mutandis to utility models certificates or applications therefore as the case may be.

According to Section 82(1), an invention qualifies for a utility model certificate if it’s new and industrially applicable. A utility model certificate expires at the end of tenth year after the date of the grant and is not renewable any time before the grant or refusal of a patent on payment of the prescribed fee (and vice versa) in accordance with section 83 and 84 of the Act.

It’s also noteworthy that the creator of an industrial design or his successors in title has the exclusive right to   sell or cause to be sold for commercial or industrial purposes the goods in which the design is incorporated.

The Act of registration confers upon its registered owner the right to preclude third parties from perming any of the following in Kenya;

  1. Reproducing the industrial design in the manufacture of a product; or
  2. Importing, offering for sale, and selling a product reproducing the protected industrial design;
  3. Stocking of such product for the purpose of offering it for sale or selling it.

Special provisions relating to utility model certificates

An invention qualifies for a utility model certificate if it is new and industrially applicable.. Section 82 specifically pertains to examination, stating:

“Section 22, 24, 43, 44 and 60 shall not apply in the case of applications for utility model certificates.”7 Section 22 of the IPA states that an invention is patentable if it is new, involves an inventive step, is industrially applicable or is a new use, while section 24 provides a definition of inventive step.

These sections “shall not apply” to applications for UMCs because the requirement of inventive step conflicts with section 82(1), which provides that “[a]n invention qualifies for a utility model certificate if it is new and industrially applicable.”

Conversion of patent applications to applications for utility model certificates, and vice versa.

At any time before the grant or refusal of a patent an applicant for a patent may, upon payment of the prescribed fees, convert his application into an application for a utility model certificate, which shall be accorded the filing date of the initial application.

At any time before the grant or refusal of a utility model certificate, an applicant for a utility model certificate may, upon payment of the prescribed fees, convert his application into a patent application, which will be accorded the filing date of the initial application.

An application may not be converted more than once in either case.

The provisions for patents apply with respect to Utility models as though they referred to utility model certificates instead of to patents.

REQUIREMENTS FOR REGISTRABILTY OF UTILITY MODELS

Subject Matter for Utility Model

The subject matter for utility model is Part XII of the Industrial Property Act, 2001. Section 82(1) of the Act states that an invention qualifies for a utility model if it is new and industrially applicable. Like patent utility model invention is fundamental in utility model.

The Act has not specified which types of inventions are not considered as subject matter for utility model. However, this distinction is necessary so that the inventor knows where his invention falls.

Most countries with utility models laws require that the innovation be new. However, many utility model offices do not conduct substantives examination and merely grant the utility model after checking at utility models applications comply with formalities.

Some countries exclude particular subject matters from utility models protection. For example methods, plants and animals are normally barred from utility model protection.

1. Inventions eligible for utility model protection

Inventions (except processes) with new technical features may be eligible for utility model protection. Utility model protection is granted for technical inventions which are new, involve an inventive step and are susceptible of industrial application

2. Novelty

Section 82(1)[44] requires that utility model must be new. This means that it must not be in the public domain before through any written description or publication.

Nevertheless, it is not express whether oral disclosures would destroy novelty utility model, nor does public use outside Kenya. Description or use within six months preceding the date relevant for the priority of the application is not taken into consideration if it is based on the conception of the applicant or their predecessor in title (period of grace).

3. Inventive Step

The subject matter of a utility model does not involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.  This is to make utility model invention friendly and affordable to the local inventors.

Utility model can be obvious to any ordinary skilled person in the art; it need not be more than a handicraft skill to get a grant. Patents require an inventive step from the inventor.

4. Industrial application

The invention is considered susceptible of industrial application if its subject matter can be made or used in any kind of industry, including agriculture.

5. Unity of invention

For each invention, a separate application must be filed; in the case of lack of unity, several applications are required. Where two or more inventions are so linked as to form a single general inventive concept, they may be claimed in a single application.

6. Scope of examination

Prior to registration, the utility model section examines only if a technical invention having unity has been submitted and if the requirements in accordance (absolute requirements for protection) are met.

The requirements set forth in (relative requirements) are examined only in the case of litigation (nullity or infringement proceedings). Consequently, a utility model will be registered even in the absence of one or several of the requirements however, no IP right arises, but only a fictitious title from which no rights may be derived at any time.

This insecurity about whether the relative requirements are met can be avoided ‒ if it has not been removed by the applicants’ own searches ‒ by means of a search carried out on request, which will help the applicant to assess the state of the art thus ascertained.

EXCEPTIONS.

Most countries that protect utility models do not have laws that protect invention models that involve methods and processes. These mostly include the following;

The following in particular cannot be protected as utility models:

  • Discoveries, scientific theories and mathematical methods;
  • Aesthetic creations; works of fine art, not patentable e.g. patterns in kikoi.
  • Schemes, rules and methods for performing mental acts (e.g. building plans, dress patterns, teaching methods), for playing games or for doing business (e.g. rules, accounting systems) and programs for computers;
  • Presentations of information (e.g. tables, forms, typographical arrangements);
  • Constructions contrary to the laws of nature (e.g. a machine supposed to operate without energy supply – perpetuum mobile);
  • Inventions relating to processes (e.g. to manufacture or use);
  • Inventions the exploitation of which would be contrary to public order or morality;
  • Biotechnological inventions.
  • Plant and animal varieties.

Duration of protection

10years

NB: From 1994 until 2014, patent and UMC applications in Kenya were subjected to formalities and substantive examinations. However, in 2014, KIPI ceased substantive examinations of utility model certificate applications.

From a review of ownership and processing times for granted utility model applications, it is noted that most are almost exclusively filed by local entities; they do not appear to be operating to incentivise substantial amounts of innovation by businesses in Kenya; and cessation of substantive examination of applications has resulted in the grant of many applications that had stalled during such examination.

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Silvana
Silvana
Silvana & Associates Advocates is a premier medium-sized law firm established in 2014 and based in the Metropolitan City of Nairobi. We offer Corporate and Commercial Law services.