This Act may be cited as the Industrial Property Act, 2001.
There is established an institute to be known as the Kenya Industrial Property Institute which shall be a body corporate with perpetual succession and a common seal and shall be capable, in its corporate name, of—
suing and being sued;
taking, purchasing or otherwise acquiring, holding, charging or disposing of movable and immovable property;
borrowing and lending money; and
charging fees for services rendered by it;
entering into contracts;
doing or performing all such other things or acts necessary for the proper performance of its functions under this Act which may lawfully be done by a body corporate.
The Headquarters of the Institute shall be in Nairobi.
The functions of the Institute shall be to—
consider applications for and grant industrial property rights;
screen technology transfer agreements and licences;
provide to the public, industrial property information for technological and economic development; and
promote inventiveness and innovativeness in Kenya.
The Board shall have all powers necessary for the proper performance of its functions under this Act and in particular but without prejudice to the generality of the foregoing, the Board shall have power to—
control, supervise and administer the assets of the Institute in such manner as best promotes the purpose for which the Institute is established;
determine the provisions to be made for capital and recurrent expenditure and for reserves of the Institute;
receive any grants, gifts, donations or endowments on behalf of the Institute and make legitimate disbursements therefrom;
enter into association with other bodies or organizations within or outside Kenya as the Board may consider desirable or appropriate and in furtherance of the purpose for which the Institute is established;
open a banking account or banking accounts for the funds of the Institute; and
invest any funds of the Institute not immediately required for its purposes in the manner provided in section 20.
The conduct and regulation of the business and affairs of the Board shall be as provided in the affairs of the First Schedule.
Except as provided in the First Schedule, the Board may regulate its own procedure.
The Board may, by resolution either generally or in any particular case, delegate to any committee of the Board or to any member, officer, employee or agent of the Institute, the exercise of any of the powers or the performance of any of the functions or duties of the Board under this Act or under any other written law.
The common seal of the Institute shall be kept in such custody as the Board may direct and shall not be used except on the order of the Board.
The common seal of the Institute when affixed to a document and duly authenticated shall be judicially and officially noticed and unless and until the contrary is proved, any necessary order or authorisation by the Board under this section shall be presumed to have been duly given.
No matter or thing done by a member of the Board or any officer, employee or agent of the Institute shall, if the matter or thing is done bona fide for executing the functions, powers or duties of the Institute, render the member, officer, employee or agent or any person acting on his directions personally liable to any action, claim or demand whatsoever.
The provisions of section 14 shall not relieve the Institute of the liability to pay compensation or damages to any person for an injury to him, his property or any of his interests caused by the exercise of the powers conferred on the Board by this Act or by any other written law or by the failure, whether wholly or partially, of any works.
The financial year of the Institute shall be the period of twelve months ending on the thirtieth June in each year.
The Board shall cause to be kept all proper books, and records of accounts of the income, expenditure and assets of the Institute.
Within a period of four months from the end of each financial year, the Board shall submit to the Auditor-General (Corporations) or to an auditor appointed under this section, the accounts of the Institute together with—
a statement of the income and expenditure of the Institute during that year; and
a balance sheet of the Institute on the last day of that year.
The accounts of the Institute shall be audited and reported upon in accordance with sections 29, 30A of the Exchequer and Audit Act (Cap. 412), by the Auditor-General (Corporations), or by an auditor appointed by the Board with the approval of the Auditor-General (Corporations) given in accordance with section 29(2)(b) of the Exchequer and Audit Act.
The Board may invest any of the funds of the Institute in securities in which for the time being trustees may by law invest trust funds, or in any other securities which the Treasury may, from time to time, approve for that purpose.
The Board may, subject to the approval of the Treasury, place on deposit with such bank or banks as it may determine, any monies not immediately required for the purposes of the Institute.
An invention is new if it is not anticipated by prior art.
For the purposes of this Act, everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) or, by oral disclosure, use, exhibition or other non-written means shall be considered prior art: Provided that such disclosure occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof.
For the purpose of the evaluation of novelty, an application for the grant of a patent or a utility model certificate in Kenya shall be considered to have been comprised in the prior art as from the filing date of the application, or if priority is claimed, as from the date of its validly claimed priority, to the extent to which its content is available, or is later made available, to the public in accordance with this Act or in accordance with the Patent Co-operation Treaty.
For the purposes of subsection (2), a disclosure of the invention shall not be taken into consideration if it occurred not earlier than twelve months before the filing date or, where applicable, the priority date of the application and if it 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.
An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention, it would not have been obvious to a person skilled in the art to which the invention pertains on the date of the filing of the application or, if priority is claimed, on the priority date validly claimed in respect thereof.
An invention shall be considered industrially applicable if, according to its nature, it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services.
The following shall not be patentable—
plant varieties as provided for in the Seeds and Plant Varieties Act (Cap. 326), but not parts thereof or products of biotechnological processes; and
inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation.
Subject to this section, the right to a patent shall belong to the inventor.
If two or more persons have jointly made an invention the right to the patent shall belong to them jointly.
If and to the extent to which two or more persons have made the same invention independently of each other, the person whose application has the earliest filing date, or if priority is claimed, the earliest validly claimed priority date that leads to the grant of a patent shall have the right to the patent.
The right to a patent may be assigned or may be transferred by succession.
Sections 64 to 80 shall apply mutatis mutandis to contracts assigning the right to a patent.
Where the applicant has obtained the essential elements of the invention which is the subject of his application from the invention of another person, he shall, unless authorized by the person who has the right to the patent or who owns the patent, be obliged to assign to such person the application or, where the patent has already been granted, the patent.
Notwithstanding section 30 and in the absence of contractual provisions to the contrary, the right to a patent for an invention made in execution of a commission or of an employment contract shall belong to the person having commissioned the work or to the employer: Provided that where the invention is of exceptional importance the employee shall have a right to equitable remuneration taking into consideration his salary and the benefit derived by the employer from the said invention.
The provisions of subsection (1) shall apply where an employment contract does not require the employee to exercise any inventive activity but when the employee has made the invention by using data or means available to him during his employment.
In the circumstances provided for in subsection (2), the employee shall have a right to equitable remuneration taking into account his salary, the importance of the invention and any benefit derived from the invention by the employer.
In the absence of agreement between the parties, the remuneration shall be fixed by the Tribunal.
Inventions made without any relation to an employment or service contract and without the use of the employer’s resources, data, means, materials, installations or equipment shall belong solely to the employee or the person commissioned.
This section shall, where relevant, apply directly or indirectly to governmental and other organizations.
The inventor shall be named as such in the patent application and in the patent unless in a special written declaration addressed to the Managing Director he indicates that he wishes not to be named and any promise or undertaking by the inventor made to any person to the effect that he will make such declaration shall be without legal effect.
The application shall relate to one invention unity of only or to a group of inventions so linked as to form a single general inventive concept.
The regulations shall contain rules concerning compliance with the requirements of unity of invention under subsection (1).
The fact that a patent has been granted on an application that did not comply with the requirements of unity of invention shall not be a ground for the invalidation or revocation of the patent.
The application may contain a declaration claiming the priority as provided for in the Paris Convention of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or of any state party to the Paris Convention.
The Managing Director may, at any time after the expiration of three months from the filing of an application containing the declaration, require that the applicant furnish a copy of the earlier application, certified as correct by the Institute with which it was filed or, where the earlier application is an international application filed under the Patent Co-operation Treaty, by the International Bureau.
At the request of the Managing Director, the concerning applicant shall furnish him with the date and corresponding number of any application for a patent or other foreign applications title of protection filed by the applicant with a national industrial property office of another country or with a regional industrial property office (in this Act referred to as a “foreign application”), relating to the same invention as that claimed in the application filed with the Managing Director.
The applicant shall, at the request of the Managing Director, furnish him with the following documents relating to one of the foreign applications—
copies of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;
a copy of the patent or other title of protection granted on the foreign application; and
a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application.
The applicant shall, at the request of the Managing Director, furnish him with a copy of any decision revoking or invalidating the patent or any other title of protection granted by the applicant on the basis of the foreign application.
The applicant shall, at the request of the Managing Director, furnish him with copies of any communication received by the applicant concerning the results of any search or examination carried out in respect of any foreign application other than the one referred to in subsection (2).
The documents furnished under this section shall merely serve the purpose of facilitating the evaluation of novelty claimed in the application filed with the Managing Director or in the patent granted on the basis of that application.
The applicant shall have the right to submit comments on the documents furnished under this section.
The details of the requirements under this section shall be prescribed by the regulations.
The application shall be subject to the payment of the prescribed fees.
The Board may waive whole or part of the fees in the manner and in the circumstances as may be prescribed.
The applicant may withdraw the application at any time before the grant of a patent or the notification of rejection of the application or of refusal to grant a patent.
The Managing Director may instruct that any application found in order as to form be the subject of an international-type search.
When a direction under subsection (1) is made, the Managing Director shall invite the applicant to pay the prescribed fee; and if the applicant does not comply with the invitation, the application shall be rejected.
Upon receipt of the report on the international-type search, the Managing Director may request the applicant to furnish him with a copy of any document cited in the report and if without lawful reason, any copy is not furnished within the prescribed time limit, the application shall be rejected.
If it is apparent from the report on the international-type search or from the declaration on the non-establishment of the report, that the subject of the application or of any claim or claims is not an invention, the Managing Director shall reject the defective application or consider the defective claim or claims to be withdrawn, as the case may be, unless the applicant satisfies him that the subject of the application or claims constitutes an invention.
If it is apparent from the report on the international-type search or from the declaration on the non-establishment of the report, that—
the description, the claims or, where applicable, the drawings do not comply, in whole or in part, with the prescribed requirements to such an extent that no meaningful search could be carried out; or
the application does not comply, in whole or in part, with the requirements of unity of invention prescribed by section 35 and the rules pertaining thereto; or
the invention claimed in the application does not fulfil the requirements of novelty; the Managing Director shall reject the application unless the applicant either satisfies him that the requirements have been fulfilled or amends or divides the application so as to comply with the requirements.
The details of the requirements and the procedures under this section shall be prescribed by the regulations.
The Managing Director shall maintain a register in which all patents granted under this Act shall be recorded and numbered in the order of grant, and, in respect of each patent, where appropriate, its lapse for non-payment of annual fees and all transactions to be recorded by virtue of this Act.
Any person may, during working hours, inspect the register maintained under subsection (1) and may, subject to the payment of the prescribed fee and any regulations made under this section, obtain extracts therefrom.
The details concerning the register shall be prescribed by the regulations.
The applicant may appeal to the Tribunal against any decision by which the Managing Director accords a filing date, rejects the application, treats the application as if it had not been filed, considers any of the claims to be withdrawn or refuses to grant a patent.
For the purposes of this Part—
means an international application filed in accordance with the Patent Co-operation Treaty and the Regulations established thereunder;
, “designated Office”, “elected Office”, “international publication”, “international search report”, “international preliminary examination report”, and the words “to designate” and “to elect” have the meanings respectively assigned to them in the Patent Co-operation Treaty.
The Institute shall act as a receiving Office where an international application is filed with it by a national or a resident of Kenya.
The Institute shall act as a designated Office or an elected Office in the case of any international application in which Kenya is designated or elected for a national patent.
The functions of the Institute under this Part shall be performed in accordance with the provisions of the Patent Co-operation Treaty, the regulations made there under and the administrative instructions issued under the said regulations and with the provisions of this Act and the regulations pertaining thereto: Provided that in case of conflict, the provisions of the Patent Co-operation Treaty, the regulations and the administrative instructions issued hereunder shall apply.
Where an international search report is not established or relates to only one or some of the claims of the international application, the Managing Director shall reject the international application or consider withdrawn claim or claims not covered by the report, as the case may be, except to the extent that the applicant satisfies him that the non-establishment of the report in whole or in part was not justified.
Where the international search report relates to only one or some of the claims due to the applicant’s refusal to pay additional fees, those parts of the international application which consequently have not been searched shall be considered withdrawn unless the applicant divides out from the application as provided for in section 36(2) the parts concerned or satisfies the Managing Director that the invitation to pay the additional fees was not justified.
Where an international preliminary examination report with respect to an international application has been communicated to the Managing Director the following paragraphs shall apply—
where, in the case of lack of compliance with the requirements of unity of invention, the international preliminary examination report indicates that the international preliminary examination was carried out on restricted claims, or was carried out on the main invention only, those parts of the international application indicated as not having been the subject of international preliminary examination shall be considered withdrawn unless the applicant divides out from the application as provided for in section 36(2) the parts concerned or satisfies the Managing Director that the invitation of the international preliminary examining authority was not justified; and
where the international preliminary examination report states, with respect to the entire international application or one or some of its claims only, the opinion that a defect under Article 34(4)(a) of the Patent Co-operation Treaty exists under the international application or the claim or claims, as the case may be, shall be considered withdrawn unless the applicant satisfies the Managing Director that the defects do not exist.
The Managing Director may refuse to grant a patent upon the application if it is apparent from an international search report or an international preliminary examination report that an invention claimed in an international application does not fulfil the requirements of novelty, unless the applicant either satisfies him that the requirements have been fulfilled or amends the claims in such a way that fulfils the requirements.
Relief against infringement may be sought in respect of acts committed before the grant of the patent but after the date of international publication under the Patent Co-operation Treaty, where the said international publication was effected in English.
If the international publication was effected in a language other than English, subsection (1) shall apply where the applicant had transmitted an English translation of the international publication to the infringer and only in respect of acts committed by the latter after he had received such translation.
Publication under Article 21 of the Patent Co-operation Treaty, an international application in which Kenya is designated for a national patent shall be treated as publication in terms of the provisions of section 42.
The owner of a patent shall have the right—
to obtain an injunction to restrain the performance or the likely performance, by any person without his authorization, of any of the acts referred to in section 54; and
to claim damages from any person who, having knowledge of the patent, performed any of the acts referred to in section 54, without the owner’s authorization;
to claim compensation from any person who, without his authorization, performed any of the inventions, claimed in the published application, as if a patent had been granted for that invention: Provided that the said person, at the time of the performance of the act, had—
actual knowledge that the invention that he was using was the subject matter of a published application; or
received written notice that the invention that he was using was the subject matter of a published application, such application being identified in the said notice by its serial number.
Notwithstanding the provisions of section 54, a prior user patent shall have no effect against any person (hereinafter referred to as “the prior user”) who, in good faith, for the purposes of his enterprise or business, before the filing date or, where priority is claimed, the priority date of the application on which the patent is granted, and within the territory where the patent produces its effect, was using the invention or was making effective and serious preparations for such use; any such person shall have the right, for the purposes of his enterprise or business, to continue such use or to use the invention as envisaged in such preparations.
The right of the prior user may only be transferred or devolve together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made.
The scope of the protection shall be determined by the terms of the claims but the description and the drawings included in the patent may be used to interpret the claims.
A patent shall expire at the end of twenty years from the filing date of the application.
In order to maintain the application or the patent, an annual fee shall be paid in advance to the Institute which shall fall due on the eve of each anniversary of the date of filing of the application or the patent, and shall be paid in the manner prescribed.
A grace period of six months shall be granted for the payment of the annual fee upon payment of such surcharge as may be prescribed from time to time.
If an annual fee is not paid in accordance with this section, the application shall be deemed to have been withdrawn or the patent shall lapse and respective invention shall cease to be protected.
The Managing Director shall forthwith publish the lapse of any patent under subsection (3).
Within six months from the expiration of the grace period referred to in subsection (2), any interested person may, upon payment of the prescribed fee, request the Institute to restore an application that is deemed to have been withdrawn, or a patent that has lapsed, by virtue of subsection (3).
Upon a request under subsection (5), the Managing Director shall if satisfied that the failure to pay the annual fee was not intended, subject to the payment of the annual fee, make an order restoring the application or the patent, as the case may be.
Where a patent is restored, no proceedings shall be brought in respect of the patent—
with respect to any acts performed after the lapse of the patent and before the date of the order for restoration; or
with respect to any acts performed after the date of the order of restoration in relation to articles imported into or manufactured in Kenya, after the lapse of the patent and before the date of the order for restoration.
In the absence of any provision to the contrary, in the licence contract, the licensee shall be entitled to do any of the acts referred to in section 54 in respect of the invention, without limitation as to time, in the whole of Kenya and in any field of use of the invention, utility model or industrial design.
In the absence of any provision to the contrary in the licence contract, the licensee may not grant to any third person to do any of the acts referred to in section 54.
In the absence of any provision to the contrary in the licence contract, the licensor may grant permission to any third person to do, or may himself do, any of the acts which constitute exercising the rights of ownership.
If the licence contract provides that such contract or the permission granted by it is exclusive, the licensor may neither grant permission to any third person to do any of the acts referred to in section 54 and covered by the licence contract, nor himself do any of those acts, and the licensee shall be considered an exclusive licensee for the purposes of this Act.
Where, before the expiration of the licence contract any of the following events occurs with respect to any application or patent referred to in that contract—
the application is withdrawn;
the application is finally rejected; or
the patent is finally revoked or declared invalid,
the Tribunal may make any order it deems reasonable under the circumstances for the repayment of the royalties, or the return of any consideration paid or given under the contract, directly relating to any such application or patent.
All licence contracts shall be in writing and shall be signed by the parties thereto.
All licence contracts, including modifications thereof, shall be submitted to the Institute for registration in the patent register.
A petition for registration under subsection (1) may be made by any party to the contract, and shall be accompanied by such documents and fees as may be prescribed.
The Managing Director shall issue to the applicant a receipt, which shall be proof of the fact of filing the petition and of the date on which it was filed and if no receipt is issued within fourteen days from the date of the petition, the petitioner may rely on other evidence to prove the fact and date.
Where—
section 67 or subsections (2) to (4) of this section, and the rules relating thereto, have not been complied with; or
the licence contract cannot be registered under section 69,
the Managing Director shall refuse to register the licence contract, stating the reasons for such refusal.
Before refusing to register the licence contract, the Managing Director shall notify the petitioner and allow the parties—
to submit the observations, if any;
to correct any defect in the petition; or
to amend any term, or to correct any defect, in the licence contract that has been declared by the Managing Director to be a term or defect precluding registration, within forty-five days from the date of the notification.
A licence contract shall be void if the registration has been refused by the Managing Director in accordance with the provisions of this Act.
The Managing Director may refuse to register a licence contract if he is of the opinion that any clause in a licence contract imposes unjustified restrictions on the licensee with the consequence that the contract, taken as a whole, is harmful to the economic interests of Kenya, and that the effect of any such term contained in the contract is—
to permit or require the importation of technology from outside Kenya when substantially similar or equivalent technology may be obtained on the same or more favourable conditions without importation from abroad;
to require payment of a price, royalty or other consideration which is disproportionate to the value of the technology to which the contract relates;
to require the licensee to acquire any materials from the licensor or from sources designated or approved by him, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
to prohibit the licensee from acquiring, or to restrict his acquisition of, any materials from any source, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
to prohibit the licensee from using, or to restrict his or her use of any materials which are not supplied by the licensor or by sources designated or approved by him, unless it is otherwise impossible, for all practical purposes, to ensure the quality of the products to be produced;
to require the licensee to sell products produced by him under the contract exclusively or principally to persons designated by the licensor;
to require the licensee to make available to the licensor, without appropriate consideration any improvements made by the licensee with respect to the technology to which the contract relates;
to limit the volume of the products produced by the licensee with the help of the technology to which the contract relates;
to restrict or prohibit the export of the products produced by the licensee;
to oblige the licensee to employ persons designated by the transferor not needed for the efficient transfer of the technology to which the contract relates, provided that, for persons so needed, the contract shall provide for training of persons to replace them within a reasonable period;
to impose restrictions on research or technological development carried out by the licensee to absorb or adapt the technology in connection with new products, processes or equipment;
to prohibit or restrict the use by the licensee of any technology other than the technology to which the contract relates;
to extend the coverage of the contract to technology not required for the use of the technology which is the main subject of the contract and to require consideration for such additional technology;
to fix prices for the sale or resale of the products produced by the licensee with the help of the technology to which the contract relates;
to exempt the licensor from any liability consequent upon any defect inherent in the technology to which the contract relates or restrict such liability;
to prohibit or restrict the use by the licensee, after the expiration of the contract, of the technology acquired as a result of the contract, subject, however, to any right of the licensor under the patent;
to require that disputes arising from the interpretation or performance of the contract be governed by a law other than the law of Kenya or that such disputes be brought before courts located in a country other than Kenya;
to establish the duration of the contract for a period which is unreasonably long in relation to the economic function of the contract, provided that any period which does not exceed the duration of the patent to which the contract relates shall not be regarded as unreasonably long;
to restrict the licensee from entering into sales, representation or manufacturing agreements relating to similar or competing technologies, when such restrictions are not needed for protecting the legitimate interests of the licensor, including, in particular, protecting the licensor’s industrial or intellectual property rights or ensuring that the licensee exercises his best efforts in respect of any manufacturing, distribution or promotional obligations;
to prevent the licensee from adapting the technology to local conditions or introducing innovations in it or change to alternative inputs, or which require the licensee to introduce unnecessary designs or specification changes, if the licensee makes adaptations on his own responsibility and without using the licensor’s name, trade or service marks or trade names, and except to the extent that this adaptation unsuitably affects those products, or the process for their manufacture, to be supplied by the licensor, his designates, or his other licensees, or to be used as a component or spare part in a product to be supplied to his customer;
to impose acceptance of additional technology, future inventions and improvements, goods or services not wanted by the licensee;
to impose restrictions on territories, quantities, prices, customers or markets arising out of patent pool or cross-licensing agreements or other international technology transfer interchange arrangements which unduly limit access to new technological developments or which would result in an abusing domination of an industry or market with adverse effects on the licensee, except for those restrictions appropriate and ancillary to co-operative arrangements such as co-operative research arrangements;
to impose restrictions which regulate advertising or publicity by the licensee except where restriction of such publicity may be required to prevent injury to the licensor’s goodwill or reputation where the advertising or publicity makes reference to the licensor’s name, trade or service marks, trade names or other identifying items;
to impose confidentiality after the expiry of the licence agreement or to impose unreasonably long periods for secrecy following the commissioning of manufacturing facilities using the licensed technology, or to impose measures which limit technological learning and mastery, except those which relate to industrial property rights;
to impose requirements for payments even under conditions of force majeure;
to impose restrictions which prevent or hinder export by means of territorial or quantitative limitations or prior approval for export or export prices of products or increased rates of payments for exportable products resulting from the technology licensed;
to impose quality control methods or standards not needed by licensee, except to meet the requirement of a guarantee or when the product bears a trade mark, service mark or trade name of the licensor;
to allow the licensor to participate permanently in the management of the licensee’s business as a condition for obtaining the technology;
to restrict the licensee from taking measures that will enhance local technological capability and which are not prejudicial to the licensor’s industrial property rights;
to restrict the use of local expertise in management and consultancy or in any other positions;
to require payment of royalty for patents granted outside Kenya;
to apply dissimilar conditions to equivalent transactions with other trading parties, thereby placing the licensee at a competitive disadvantage; or
to make the contract subject to acceptance of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.
Where the Managing Director finds that the contract may be registered, he shall register the contract and issue a certificate of registration to the petitioner.
If the Managing Director fails—
to notify the petitioner of defects in the petition or of terms or defects precluding registration of the licence contract, within ninety days of the date of the petition; or
to notify the petitioner of his decision to refuse to register the licence contract, within ninety days of the date of notification referred to in paragraph (a),
the licence contract shall be deemed to have been registered and the Managing Director shall issue a certificate of registration to the petitioner.
The registration shall take effect—
if the petition was made within sixty days from the conclusion of the contract, on the date of the conclusion of the contract; and
in all other cases, on the date of the petition.
When the petition is corrected or the licence contract is amended under section 68(5), the petition shall be deemed to have been received on the date when the correction or amendment was made.
The registration and the certificate shall state—
the name of the parties to the contract and of the licensee if he is not a party;
the date of the petition;
the date of the registration; and
the registration number,
all of which shall be published in the Kenya Gazette or in the Industrial Property Journal.
The contents of the contract shall be confidential, unless both parties to the contract agree to permit access thereto by third parties and such access shall only be to the extent of the permission so granted.
An appeal against the decision of the Managing Director may be made to the Tribunal by the petitioner within two months of his refusal provided that the grounds of such an appeal shall be limited to the following—
that the decision of refusal contains no statement of the reasons for refusal;
that none of the reasons specified in the decision is a valid reason under this Act or that such reason was wrongly applied to the petitioner or to the licence contract; or
that the procedure applied by the Managing Director was irregular and prejudicial to the rights of the petitioner.
At any time after four years from the filing date of an application or three years from the grant of a patent, whichever period last expires, any person may apply to the Tribunal for a licence to exploit the patented invention on the grounds that a market for the patented invention is not being supplied on reasonable terms in Kenya.
Notwithstanding subsection (1), a non-voluntary licence shall not be granted if the owner of the patent satisfies the Tribunal that circumstances exist which justify the fact that the market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in Kenya.
Where a patented invention cannot be worked without infringing the rights derived from an earlier patent, the owner of the latter patent may request the Tribunal at any time for the grant of a compulsory licence with respect to the earlier patent to the extent necessary for the working of his invention, if the invention constitutes an important technical advance of considerable economic significance in relation to the invention claimed in the earlier patent.
The owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent.
The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
In this section, “earlier patent” or “first patent” means a patent granted on an earlier application or benefiting from an earlier validly claimed priority date, and “latter patent” or “second patent” shall be construed accordingly.
A compulsory licence shall not be granted unless for grant of the person requesting the licence—
satisfies the Tribunal that he has asked the owner of the patent for a contractual licence but has been unable to obtain the licence on reasonable commercial terms and within a reasonable time; and
offers guarantees satisfactory to the Tribunal to work the relevant invention sufficiently to remedy the deficiencies or to satisfy the requirements which gave rise to his request.
The requirement under subsection (1)(a) shall be waived in the case of a national emergency or other circumstances of extreme urgency, provided the owner of the patent shall be so notified as soon as is reasonably practicable.
In considering a request for a compulsory licence, the Tribunal shall decide whether a compulsory licence may be granted and shall then, if it decides in favour of the grant taking into account any terms agreed by the parties, proceed to fix the terms which shall be deemed to constitute a valid contract between the parties and shall be governed by the provisions of contractual licences.
In fixing the terms under subsection (1), the Tribunal shall ensure that the compulsory licence—
is limited, in scope and duration, to the purpose for which it was authorised, and in the case of semi-conductor technology, shall only be for public non-commercial use or to remedy a practice determined after a judicial or administrative process to be anti-competitive;
is limited predominantly for the supply of the domestic market;
does not entitle the licensee to grant further licences, without the consent of the owner of the patent;
is non-exclusive; and
provides for the payment to the owner of the patent of remuneration which is equitable with due regard to all the circumstances of the case, including the economic value of the licence.
A representative of the Institute and of the Government shall have the right to appear and be heard at the hearing of an application for a compulsory licence, before the Tribunal.
A compulsory licence may be transferred only with that part of the industrial undertaking or its goodwill, in which the relevant invention is used and no such transfer shall be valid until the consent of the Tribunal has been obtained.
Where the Tribunal grants, cancels or varies the terms of a compulsory licence, the Tribunal shall instruct the Managing Director, to record the grant, cancellation or variation in the register without payment of any fee.
The owner of a patent may request the Managing Director to make an entry in the register to the effect that licences under the patent are to be available as of right.
The request shall be notified by the Managing Director to the licensees under the patent.
Any licensee may, within the prescribed time limit, object to the entry requested, on the ground that the owner of the patent is, by the relevant licence contract, precluded from granting further licences.
Where the Managing Director receives no objection under subsection (3) or considers all objections made to be unfounded, he shall make the requested entry in the register and shall publish the entry.
Where a patent is the subject of an entry under this section, any person may require the owner of the patent to grant him a non-exclusive licence under the patent on terms which, in the absence of an agreement between the parties, shall be fixed by the Tribunal.
The amount of the annual fees with respect to a patent which is subject of an entry under this section, falling due after the date of the entry, shall be reduced by half.
The owner of the patent may at any time request the Managing Director to cancel an entry under this section and the Managing Director shall cancel the entry after payment of the balance of all annual fees which would have been payable if no entry had been made and the Managing Director shall publish the cancellation of any entries under this section.
Section 77(3) shall apply, mutatis mutandis, where the terms of licence granted under subsection (5) have been fixed by the Tribunal.
Subject to section 82, the provisions of Parts III, IV, V, VII, VIII, IX, X, XI, XV and XVI shall apply, mutatis mutandis, to utility model certificates or applications therefor, as the case may be.
Where the right to a patent conflicts with the right to a utility model certificate in the case referred to in section 30(3), the said provision shall apply as if the word “patent” were replaced by the words “utility model certificate”.
At any time before the grant or refusal of a patent an applicant for a patent may, upon payment of the prescribed fee, convert his application into an application for a utility model certificate, which shall be accorded the filing date of 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 fee, convert his application into a patent application, which shall be accorded the filing date of the initial application.
An application may not be converted under subsection (1) more than once.
Subject to the provisions of any other written law, the creator of an industrial design or his successors in title shall have the exclusive rights to sell or cause to be sold for commercial or industrial purposes the goods in which the design is incorporated, subject to the conditions of this Act.
Sections 30, 32 and 33 shall apply mutatis mutandis to the rights of the creator of an industrial design.
Subject to subsection (2), the duration of the registration of an industrial design shall expire at the end of the fifth year following the date of the application for registration.
The registration of a design may be renewed for two further consecutive periods of five years upon payment of a prescribed fee.
The fee for the renewal of registration of an industrial design shall be paid within twelve months preceding expiration of the period of registration but a grace period of six months shall be allowed for the late payment of the renewal fee on payment of the surcharge, as may be prescribed.
Where the protection granted to an industrial design has not been renewed due to circumstances beyond the control of the owner of the design, the latter or any other persons entitled may apply designs for its restoration on the payment of the prescribed renewal fee, as well as of the surcharge, within a period of one year from the date upon which renewal fee was due.
An application for restoration of registration of an industrial design, together with documents proving payment of the fees and surcharge mentioned in subsection (1), shall be sent to the Managing Director and shall contain a statement ofthe grounds on which the owner or the persons entitled consider therestoration justified.
The Managing Director shall examine the reasons referred to above and shall either restore the design or reject the application if he does not consider the grounds valid.
Restoration shall not entail prolongation of maximum duration of the industrial design.
Restored designs shall be published by the Managing Director in the prescribed form.
For the purpose of this Part—
“technovation” means a solution to a specific problem in the field of technology, proposed by an employee of an enterprise in Kenya for use by that enterprise, and which relates to the activities of the enterprise but which, on the date of the proposal, has not been used or actively considered for use by that enterprise;
“employee” and “enterprise” mean the employee and the enterprise referred to in paragraph (a), and where several enterprises are owned or operated by one person, all such enterprises shall be considered as one enterprise;
“date of the proposal” means the date on which the employee makes a request in accordance with section 96;
“technovation certificate” means the document issued by the enterprise in accordance with section 95;
“technovator” means an employee to whom the enterprise has issued a technovation certificate.
Subject to subsection (2), any employee of the enterprise on the date of the proposal shall be entitled to a technovation certificate as provided for in this Part.
Where the duties of an employee comprise the making and proposing of technovations, he shall not be entitled to a technovation certificate for any technovation which pertains to the field of activities for which he is employed, unless the degree of the creative contribution inherent in the technovation exceeds that which is normally required of an employee having the said duties.
Where employees severally request a technovation certificate for the same technovation, the employee who is the first to make the request shall be entitled to such certificate.
Where a request for technovation certificate is made jointly by two or more employees, the certificate shall be issued in their joint names.
A request for a technovation certificate signed by the employee shall be filed in writing with the enterprise and the enterprise shall assist the employee in filing the request and shall issue a receipt to him acknowledging that a request has been filed and indicating the date on which it has been filed.
Where the requirements of this Part are satisfied, the enterprise shall, within a period of three months from the date of the proposal, issue a technovation certificate to the employee.
The enterprise may refuse to issue the certificate if it is of the opinion that the requirements of this Part have not been satisfied and shall notify the employee of the reasons therefor within the time limit prescribed in subsection (1).
Where the enterprise issues a technovation certificate, it shall, at the same time, notify the technovator, in writing, whether or not it intends to use the technovation.
Where the decision to make use of the technovation depends on testing the technovation in practice, the enterprise shall inform the technovator accordingly and may postpone the notification of its intention to use or not to use the technovation by not more than a year from the date of the proposal.
The technovator shall be obliged to assist the enterprise, to the best of his ability, in any testing, development or use of the technovation.
The enterprise shall be obliged to give adequate opportunity to the technovator to furnish the assistance referred to in subsection (3).
Once the technovation certificate has been issued, the technovator, shall not communicate his technovation to anyone other than the enterprise and shall not use it.
Where the enterprise declares that it does not intend to use the technovation or where the enterprise, having declared its intention to use the technovation, does not in fact start using it within six months from the issuance of the technovation certificate or the expiration of the time limit referred to in subsection (2), the technovator shall be exempted from the obligations referred to in subsections (3) and (4): Provided that the technovator shall have the right to communicate his technovation to others only to the extent that such communication does not entail the communication of any know how or other knowledge that has acquired as an employee.
Where the enterprise uses the technovation or communicates it to a third person, the technovator shall be entitled to a remuneration the amount and method of payment of which shall, in the absence of an applicable collective bargaining agreement, be fixed by mutual agreement between the technovator and the enterprise.
Any contractual provision which is less favourable to the employees or technovators than the provisions of this part shall be null and void.
Any dispute concerning the application of this part shall be submitted by any interested party to an arbitration board consisting of three members: one member appointed by the employee or technovator, one member appointed by the enterprise, and a chairman appointed by the two members. The arbitration board shall hear interested parties and thereafter deliver its ruling.
Where the parties fail to agree on the appointment of the chairman, he shall be appointed by the Resident Magistrate Court having jurisdiction in the place where the enterprise is located.
An aggrieved party may appeal against the decision of the arbitration board to the Tribunal.
A patent, utility model or industrial design registration certificate may be surrendered by its owner to the Institute.
The surrender may be limited to one or more claims of the patent or utility model or, in the case of industrial designs, one kind of product or class of products.
The surrender shall promptly be recorded in the register and published by the Managing Director and the surrender shall be effective only after it has been published.
If a licence has been recorded in the register, surrender shall only be registered upon the submission of a declaration by which the licensee consents to the surrender, unless the latter has expressly waived this right in the licence contract.
Any revoked or invalidated patent, utility model or industrial design or claim or part of a claim of a registered industrial design shall be regarded as null and void from the date of the grant of the patent or certificate of registration for the utility model or the industrial design.
As soon as the decision of the Tribunal is no longer subject to appeal, the Chairman of the Tribunal shall inform the Managing Director who shall register and publish it as soon as possible in the Kenya Gazette or in the Industrial Property Journal.
Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.
On the request of the owner of the patent or the registered utility model or industrial design, the Tribunal shall grant the following relief—
an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
damages; or
any other remedy provided for in law.
Subject to subsection (2), any person showing a legitimate interest may request the Tribunal to declare that the performance of any specific act does not infringe the patent or the registered utility model or industrial design and the owner and any licensee under the patent or the registered utility model or industrial design shall have the right to be a defendant in the proceedings.
No declaration under subsection (1) shall be made—
if the acts to which the request relates are already the subject of infringement proceedings; or
if the person making the request is unable to prove that he has previously demanded from the owner a written acknowledgement of the lawfulness of the acts referred to and that the owner has refused such demand or has failed to reply within fourteen days.
Any person threatened with infringement proceedings who can prove that the acts performed or to be performed by him do not constitute infringement of the patent or the registered utility model or industrial design may request the Tribunal to grant an injunction to prohibit such threats and to award damages for financial loss resulting from the threats.
The mere notification of the existence of the patent, or the registered utility model or industrial design registration shall not constitute a threat of infringement.
Any intentional infringement of the patent or the registered utility model or industrial design shall constitute an offence under this Act.
Such an offence shall be punishable with a fine of not less than ten thousand shillings, and not exceeding fifty thousand shillings, or with imprisonment for a term of not less than three years, and not more than five years, or with both.
For the purposes of proceedings, other than criminal proceedings, in respect of the infringement of the rights of the owner of the patent, where the subject matter of the patent is a process for obtaining a product, the burden of establishing that an identical product was not made by the patented process shall be on the alleged infringer, if either of the following conditions is fulfilled—
the product is new; or
a substantial likelihood exists that the identical product was made by the process and the owner of the patent has been unable, through reasonable efforts, to determine the process actually used.
Any exclusive licensee within the meaning of section 65(2) may, by registered letter, request the owner of the patent or the registered utility model or industrial design to institute legal proceedings for a specific relief with respect to any infringement specified by the licensee.
The licensee may, if the owner refuses or fails to institute the legal proceedings within three months from the request, after giving notice to the owner institute such proceedings in his own name; and the owner may join in the proceedings.
Even before the end of the three-month period referred to in subsection (2), the Tribunal may, on the request of the licensee, grant an appropriate injunction to prevent infringement or to prohibit its continuation, where the licensee shows that immediate action is necessary to avoid substantial damage.
Where under this Act provision is made for appeals from the decisions of the Managing Director, all such appeals shall be made to the Industrial Property Tribunal in accordance with the provisions of this Part.
The Tribunal shall have powers to make any order for the purposes of securing the attendance of any person, the discovery or production of any document, or the investigation or punishment for any contempt of court, which the court has power to make.
Upon any appeal to the Tribunal under this Act, the Tribunal may—
confirm, set aside or vary the order or decision in question;
exercise any of the powers which could have been exercised by the Managing Director in the proceedings in connection with which the appeal is brought; or
make such orders as to costs as it may deem fit.
Any party to the proceedings before the Tribunal may appeal in accordance with the rules made under this Part from any order or decision of the Tribunal to the High Court.
Upon the hearing of an appeal under this section, the High Court may—
confirm, set aside or vary the order or decision in question;
remit the proceedings to the Tribunal with such instructions for further consideration, report, proceedings or evidence as the High Court may deem fit to give;
exercise any of the powers which could have been exercised by the Tribunal in proceedings in connection with which the appeal is brought; or
make such order as it may deem fit as to the costs of the appeal or of earlier proceedings in the matter before the Tribunal.
The chairman of the Tribunal may appoint any person with expert knowledge to act as an assessor in an advisory capacity in any case where it appears to the Tribunal that such knowledge is required for the proper determination of the case.
When any matter to be determined by the Managing Director under this Act appears to him to involve a point of law or to be of unusual importance or complexity, he may, after giving notice to the parties refer the matter to the Tribunal for a general direction and shall, thereafter in relation to such matter, act in accordance with the general direction of the Tribunal or any direction substituted thereafter on appeal to the High Court.
Where any matter has been referred to the Tribunal in terms of subsection (1), the Managing Director and the parties thereto shall be entitled to be heard by the Tribunal before any decision is made in such matter and may appear or be represented by an advocate.
The Industrial Property Act is repealed.
The transitional and saving provisions set out in the Second Schedule shall have effect upon the repeal of the Industrial Property Act.
No duty shall be chargeable under the Stamp Duty Act (Cap. 480) in respect of any instrument executed by, or on behalf of, or in favour of the Institute which, but for this section, the Institute would be liable to pay.
The chairman or a member of the Board other than an ex officio member shall, subject to the provisions of this Schedule, hold office for a period of three years, on such terms and conditions as may be specified in the instrument of appointment, but shall be eligible for re-appointment, subject to a maximum of three terms of office.
The chairman or a member other than an ex-officio member may—
at any time resign from office by notice in writing to the Minister;
be removed from office by the Minister if the member—
has been absent from three consecutive meetings of the Board without the permission of the Board;
is convicted of a criminal offence and sentenced to imprisonment for a term exceeding six months or to a fine exceeding ten thousand shillings;
is incapacitated by prolonged physical or mental illness for a period exceeding six months; or
is otherwise unable or unfit to discharge his functions.
The Board shall meet not less than four times in every financial year and not more than four months shall elapse between the date of one meeting and the date of the next meeting.
Notwithstanding subparagraph (1), the chairman may, and upon requisition in writing by at least five members shall, convene a special meeting of the Board at any time for the transaction of the business of the Board.
Unless three quarters of the total members of the Board otherwise agree, at least fourteen days’ written notice of every meeting of the Board shall be given to every member of the Board.
The quorum for the conduct of the business of the Board shall be seven members including the chairman or the person presiding.
The chairman shall preside at every meeting of the Board at which he is present but in his absence, the members present shall elect one of their number to preside, who shall, with respect to that meeting and the business transacted thereat, have all the powers of the chairman.
Unless a unanimous decision is reached, a decision on any matter before the Board shall be by a majority of the votes of the members present and voting and in the case of an equality of votes, the chairman or the person presiding shall have a casting vote.
Subject to such subparagraph (4), no proceedings of the Board shall be invalid by reason only of a vacancy among the members thereof.
Subject to the provisions of this Schedule, the Board may determine its own procedure and the procedure for any committee of the Board and for the attendance of other persons at its meetings and may make standing orders in respect thereof.
The Board may establish such committees as it may deem appropriate to perform such functions and responsibilities as it may determine.
The Board shall appoint the chairman of a committee established under subparagraph (1) from amongst its own members.
The Board may where it deems appropriate, co-opt any person to attend the deliberations of any of its committees.
If a member is directly or indirectly interested in any contract, proposed contract or other matter before the Board and is present at a meeting of the Board at which the contract, proposed contract or other matter is the subject of consideration, he shall, at the meeting and as soon as reasonably practicable after the commencement thereof, disclose the fact and shall not take part in the consideration or discussion of, or vote on, any questions with respect to the contract or other matter, or be counted in the quorum of the meeting during consideration of the matter.
A disclosure of interest made under this paragraph shall be recorded in the minutes of the meeting at which it is made.
A member of the Board who contravenes subparagraph (1) commits an offence and is liable to a fine of one hundred thousand shillings, or to imprisonment for a term of six months, or to both.
The affixing of the common seal of the Institute shall be authenticated by the signature of the chairman and the Managing Director and any document not required by law to be made under seal and all decisions of the Board may be authenticated by the signatures of the chairman and the Managing Director: Provided that the Board shall, in the absence of either the chairman or the Managing Director in any particular matter, nominate one member to authenticate the seal on behalf of either the chairman or the Managing Director.
Any contract or instrument which, if entered into or executed by a person not being a body corporate, would not require to be under seal, may be entered into or executed on behalf of the Board by any person generally or specially authorised by the Board for that purpose.