about patents and innovation: Patents in Kenya

The reason I am looking at the Kenyan patent protection is twofold. The first reason is that one of my clients is interested in patent protection in various African coastal states. He asked my opinion on the quality of various African Nation's patent systems. Honestly, I had no clue. My client is especially interested in the possibilities of enforcement of patents. The second reason was a more personal one, I simply am very curious about the patent protection anywhere, and to see how my colleagues around the globe master their profession.

Kenyan Industrial Property Act 2001

After a quick inspection of the legal patent system in force in Kenya, the Kenyan Industrial Property Act of 2001, in my view some remarkable issues arise:

It appears that a non-usus or non-working automatic license is not incorporated in the legal framework, however any person may apply to the Tribunal for a compulsory license four years after the filing date or three years after the date of the grant of the patent, in order to exploit the patented invention on the grounds that a market for the patented invention is not being supplied on reasonable terms in Kenya. This means that patent trolls, by not working their inventions and by merely sitting on their Kenyan patents, could not potentially block technological progress in Kenya. This is a regime, very much unlike the USA practice.

Further, at the discretion of the Managing Director, there are 33 specified clauses on the basis of which a license may be exempted from registration. These are actually clauses, that are prohibited in the license contract meaning that such clauses would have to be deleted before a license contract is allowed to be registered. This appears to be a more licensee friendly regime, most provisions are instituted to protect domestic Kenyan licensees.

In the Kenyan Patent Act, The term "Technovation" is used for Kenyan resident employee inventions and provide for an employee benefit from commercialization of patented technology. Thus, in the spirit of German Patent law, there is a sort of an Arbeitnehmer-Erfinder-Gesetz in place. Contrary to the German system however, it is not specified on which basis, e.g. turn over based or profit based, the "Technovator" receives his remuneration.

Kenyan residents are obliged to file in Kenya first, much like the French patent system.

Kaplan & Stratton

Upon my request, I was invited at the office of Kaplan and Stratton, one of the leading law firms in Kenya, dealing with Intellectual Property. At the office in Nairobi, I was hosted and warmly welcomed by senior partner in the patent litigation field, Mr. Patrick Ikimire and senior partner in the trademark and design field, Mr. Peter Hime, who gave me a thorough insight in the intellectual property landscape of Kenya.

The office building of Kaplan and Stratton,

Williamson House, 4th Ngong Avenue, Nairobi

Mr. Ikimire explained in detail the actions to take in applying for an injunction. In Kenya, there are two main routes to stop patent infringement or actually two courts to turn to in case of a patent dispute. An injunction can be applied for either at the Industrial Cooperation Tribunal, which deals with industrial disputes or at the High Court, which is competent in judging all civil disputes. The advantages of the first route is that this court is more specialized in industrial matters, however the judges, at the moment, have not been officially installed in their positions, meaning that pending cases are temporarily suspended. On the other hand, in the High Court, the judges are in permanent duty and will deal with the case.

Thus it appears that in Kenya, forum shopping is possible, especially once the Industrial Tribunal members are again officially installed. For patent holders, this is good news, where the first forum does have the power to revoke and invalidate patents, the High Court has not.

An infringement procedure to the merits takes about 3 years, however an ex-parte injunction is available in about two weeks, where judges may request a security deposit for potential irreparable counter party damages.

The number of infringement cases that actually appear in front of a judge in Kenya appears to be so limited, that there were no statistics known of. In last twenty years according to Mr. Ikimire were most likely no infringement verdicts issued.

Activity of Kenya's Patent Agents in published patent filings in 2014 [5]

KIPI

Further in my search I requested an interview at the Kenyan Industrial Property Institute, the KIPI. Here I was hosted and kindly welcomed by Ag. Managing Director Mr. Sylvance Sange and Chief Patent Examiner Mr. David Njuguna. It was a pleasure to learn that both gentlemen, like myself started their IP careers as Patent Examiner!

The vision of the KIPI is clearly written on the entrance sign: Be a Leader in Promotion of Industrial Property for Wealth Creation. I couldn't agree more, creating wealth by promoting Industrial property. Universally applicable I would say!

Mr Njuguna explained that unlike the Dutch filing system, the KIPI has an substantive examination procedure in place, where a staff of 13 examiners work on an ever increasing number of applications.


The Road mark of the KIPI at Popo Road, off Mombasa Road South "C" Weights and Measures Complex

Further, he proudly presented me the filing figures of patents in Kenya and showed a fast growth of resident patent filings, where non resident patent filings remained more or less stable at relative modest numbers of about 1 to 8 filings a year.

last 15 years the number of applications by Kenyan residents increased 7 fold

The PCT National phase applications showed a more mixed image, where the 2013 and 2014 figures show a downturn in national phase entries. These numbers reflect the dip in international filings in 2009-2010 due to the global economical downturn. This effect of reduced PCT filings typically only resonates in the national phase some two and a half year later. Kenya applies for the PCT chapter I and chapter II national phase entries of international application a time limit of 30 months [2]. In view of the strong recovery in global PCT filing statistics, the number of PCT national phase applications in Kenya in 2015 are likely to show an increase of 20-25% [3].

The number of PCT applications show a dip, due to the 2009 economic downturn

Finally, from WIPO statistics, is shows that the number of PCT applications filed by Kenyan residents is rapidly increasing, from on average 1 application in the 1990ies to about 180 in 2013 [4].

Conclusions

When studying these statistics, it can only be concluded that both the residential Kenyan IP law firms and the KIPI have done an excellent job in promoting and progressing the domestic IP engine, which without any doubt is a strong booster of the nations wealth!

In Kenyan licensing practice, it is quite essential to consult a local patent attorney or residential legal specialist, there are too much national peculiarities in the legal framework with respect to licensing, that may affect a proper license agreement from being legally binding or from being registered.

For patent holders I can conclude that Kenyan patents are worth filing and pursuing!

Rest me to thank the above stated gentlemen for their open and sharing minds and welcoming hospitality and the tremendous efforts they have exerted in progressing the Intellectual Property Scope, of which proof is clearly shown in the statistics.

Thank you very much!

Hendrik de Lange
Dutch and European Patent Attorney