Patents

A patent is a form of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an enabling public disclosure of the invention.

In most countries, patent rights fall under private law and the patent holder must sue someone infringing the patent in order to enforce his or her rights.

Also, in some industries patents are an essential form of competitive advantage; in others they are irrelevant. Under the World Trade Organization‘s (WTO) TRIPS Agreement, patents should be available in WTO member states for any invention, in all fields of technology, provided they are new, involve an inventive step, and are capable of industrial application.

Nevertheless, there are variations on what is patentable subject matter from country to country, also among WTO member states. TRIPS also provides that the term of protection available should be a minimum of twenty years

APPLICATION OF PATENT IN KENYA

The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements.

Typically, however, a patent application must include one or more claims that define the scope of protection that is being sought. A patent may include many claims, each of which defines a specific property right.

These claims must meet various patentability requirements, which include novelty, usefulness, and non-obviousness.

Without the possibility of patent protection, many people might not take the risks or invest the time and money involved in devising and perfecting new products.

For example, our society would have benefited greatly were we to have protected products such as the kiondo and even certain vaccines for livestock diseases produced in Kenya.

Patents are more common in the scientific community. Owning a patent means you are the only brilliant mind on earth to have created what you created.

INVENTIONS

Invention means a solution to a specific problem in the field of technology. It is; a new and useful art (whether producing a physical effect or not), process, machine, manufacture or composition of matter which is not obvious, or any new and useful improvement thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged invention.

An invention may be, or may relate to, a product, or a process.

Statutory cost:

From Ksh100, 000 upwards. There is also an annual fee to be paid once it is granted.

Application Duration:

20 years 

Ownership duration:

20 years and renewable on expiration of the 20 years

Items eligible for patent registration

• Inventions in any field of Technology. In general any device, substance, method or process can be patented. Examples: Any new or improved product or process in the following main sections of technology: 
• Human Necessities: Agriculture, foodstuff, to personal or domestic articles, health and amusement.
• Performing operations and transporting: separating, mixing, shaping, printing and transporting.
• Chemistry and metallurgy.
• Textiles and paper. Fixed Construction: Building, earth moving mining.
• Mechanical engineering, lighting, heating, weapons, blasting including engines, pumps and engineering in general
• Physics: Instruments and nucleonic.
• Electricity

Exceptions

The following are not regarded as inventions and are excluded from patent protection: –

• Discoveries or findings that are products or processes of nature where mankind has not participated in their creation (including, plants and microorganisms).
• Scientific and mathematical methods and theories.
• Schemes e.g. investment, methods of bookkeeping or insurance schemes.
• Business methods e.g. credit or stock methods
• Rules for playing games (The games equipment may be patentable).
• Methods for treatment of human or animal body by surgery or therapy, as well as diagnostic methods; except products, in particular substances or compositions or apparatus for use in, any of those methods or;
• Public Health related methods of use or uses of any molecule or other substances whatsoever used for the prevention or treatment of any disease which the Minister responsible for matters relating to health may designate as a serious health hazard or as a life threatening disease.
• Mere presentation of information.
• Non Functional details of shape, configuration, pattern or ornamentation

Note, also that some inventions are not patentable under the Industrial Property Act. They are:
1. Plant varieties, but not parts thereof or products of biotechnological processes.

2. Inventions contrary to public order, morality, public health and safety, principles of humanity, and environmental conservation.

PROCESS OF PATENT REGISTRATION

Application

An application for the grant and registration of a Kenyan patent may be filed by the inventor or any other person to whom she has transferred the right.

It is on this basis that it is necessary when a legal entity is filing the application, the application be accompanied by a statement justifying the applicants right to a patent (S34 (3); R12 (8)).

Such statement shall be furnished on Form IP 4 or assignment documents. Patents offer inventors monopolies on their creations for specific periods, and thus provided incentives for research and development.

Requirements

1. Request (IP Form 3) sec. 34
   1. The request for grant is based on a provisional or a final specification denoted by marking the appropriate boxes on the form. The final specification is due within one year from the filing date and that the Institute will not process the application until the final specification is filed.
   1. 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. Title of the invention

With regard to the title of the invention it should be checked to ascertain whether it is short and precise, as required under section 34(3) of the Act. Form IP 3 must also contain the title of the invention.

The title must clearly and concisely state the technical designation of the invention and must exclude all fancy names.

• 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

Reception of documents

All documents relating to patents are received at the front office of the patent registry and the date of receipt is stamped upon receipt of the documents. The documents should be in English but do not have to meet any particular requirements as to form or presentation.

The date of receipt should be applied, upon capturing the receipt of any application, the computer system generates the application number automatically. The application is then forwarded to the accounts section for reception of the applicable fees.

From the accounts section the application is taken back to the front office for data capture. The application is then forwarded to the registry where a physical file is opened and the file is assigned to an examiner in the relevant field.

Requirements considered and examined

The examiner is to determine whether the application meets the requirements for according the filing date. These requirements are prescribed under section 41 of the Act as the name of the applicant, description, claims and drawings where necessary.

Corrections or amendments

If the application does not fulfil the requirements, the examiner is required to invite the applicant, within 14 days from the date of the examination, to submit the required correction.

The invitation should indicate that the applicant has 60 days to comply. If the 4 applicant does not comply, the examiner treats the application as if it had not been filed, the examiner should, within fourteen days, inform the applicant in writing.

Filing date upon meeting requirements

Where an application meets the requirements, the receiving date becomes the filing date and the same must be so communicated to the applicant in writing.

General requirements

The application should meet the following general requirements;

1) That the application is in triplicate.

2) That each of the following is numbered as a separate series, using Arabic numerals with the numbers centred at the top of the sheets but not in the top margin — a) the request; b) the description, claims and abstract; and c) the drawings.

3) That every fifth line of the description and the claims is numbered with the number appearing to the left of the line but not in the margin.

4) That all parts of the application are prepared so that they are legible when they are photocopied or otherwise reproduced.

5) That the form of appointment of agent is filed (form IP 39) and the fee is paid.

6) That there is statement justifying applicant’s right to patent if the applicant is not the inventor (form IP 4).

Request for substantive examination

After the application meets all formal requirements, the examiner should invite the applicant to request for substantive examination by filing form IP8 upon payment of the prescribed fee.

A search is done to discover the prior art relevant for the purpose of determining whether and if so to what extent, the invention to which the application relates is new and involves an inventive step pursuant to sections 22, 23 and 24 of the Act.

Publication of the patent application (Sec. 42)

The purpose of the publication is to inform the public of the pending patent application before the Institute. The patent application should be published after the expiration of eighteen months from the filing date or, where priority is claimed, the date of priority.

In case of patent applications claiming priority, the term of eighteen months is construed from the original filing date and in the case of patent applications with two or more priority claims, the period is construed from the earliest priority dates.

Before the application is published the applicant should be invited to pay the publication fee. The Industrial Property Journal should be published monthly at the end of each calendar month.

The technical preparation for the publication of the IP Journal is considered terminated on or before the 20th day of every month. Therefore, for any matter that has to appear in the Journal in a particular month, the payment should be received by the Institute before the termination of the technical preparation

PATENT FEES

1. Fee for a request for written authority under s. 28(1) of the Act 1,000
2. Fee for a request for certificate that person has right to inspect files 1,000
3. Fee for application for a patent, with a provisional specification 1,000 or with a final specification 3,000
4. Fee for filing a final specification 3,000
5. Fee for a request for amendment or division of an application 2,000
6. Fee for request for amendment of application to change name, address or other contact information 1,000
7. Fee for a request for extension of time 1,000
8. Fee for publication of patent application (see Regulation 25) 3,000
9. Fee for a request for a substantive examination 5,000
10. Fee for grant of a patent (see Regulation 29) 3,000
11. Fee for a request for a certified copy 2,000
12. Fee for a request for an uncertified copy 500
13. Transmittal fee (see Regulation 31) 5,000 250
14. Fee for request to have an international application treated as an application under the Act (refused application) 3,000
15. Fee for request to have an international application treated as an application under the Act (entry into national phase) 3,000
16. Fee for request to have a regional application treated as an application under the Act (refused application) 3,000

LEGAL FRAMEWORK AND REGULATION

Kenya Industrial Property Institute is the regulatory body for patents in Kenya.

• Trademarks Act
• Industrial Property Act 2001
• IP Regulations 2002
• Statute Law (Miscellaneous Amendments) Act no.11 of 2017
• Treaty establishing the African Regional Industrial Property Organization (ARIPO) in WIPO, Industrial Property, December 1989