Introduction to Patents
A patent is a legal right granted to an inventor, giving them exclusive rights to make, use, sell, or distribute their invention within a specified period. Invention is defined as a solution to a specific problem in the field of technology. The invention may be or may relate to a product or a process that provides a new way of doing something or offers a new technical solution to a problem in the field of technology. It protects inventors from unauthorized use of their inventions, encourages innovation by allowing inventors to commercialize their inventions, and contributes to society’s knowledge and technological progress.
Governing Law on Patents in Kenya
In Kenya, patents are governed by the Industrial Property Act, Chapter 509, administered by the Kenya Industrial Property Institute (KIPI). This Act sets the criteria for patent eligibility, details the application process, and provides guidelines for protecting and enforcing patent rights.
Types of Patents in Kenya
There are two main types of patent protection available in Kenya:
- Standard Patents: These fully protect inventions that meet stringent criteria. Standard patents are valid for up to 20 years from the filing date, contingent on annual renewal.
- Utility Models (Petty Patents): Utility models protect inventions that might not meet the strict inventiveness standards of standard patents but are still new and industrially applicable. These are valid for up to 10 years and are suitable for incremental innovations.
- Industrial Designs: It is the overall appearance of a product resulting from one or more visual features of its shape, configuration, pattern or ornamentation. These protect the ornamental design of a product, not its functional aspects. They are valid for 14 or 15 years
Eligibility Criteria for Patent Registration
For an invention to qualify for patent protection in Kenya, it must satisfy the following requirements:
- Novelty: The invention must be new, meaning it should not have been disclosed to the public before the application date.
- Inventive Step (Non-Obviousness): The invention must demonstrate a unique and inventive advancement that is not obvious to someone skilled in the relevant field.
- Industrial Applicability: The invention must have practical utility, meaning it can be produced or used in an industrial setting.
- Non-Exclusion: Certain types of inventions are excluded from patent protection in Kenya under Section 21(3) of the Act, including:
- Scientific theories and mathematical methods.
- Business and mental acts or playing games.
- Medical treatments and surgical methods for humans and animals.
- Plant varieties, animal breeds, and biological processes (except microbiological processes).
- Aesthetic creations such as art and literature.
Types of Inventions Eligible for Patents in Kenya
- Technology: Software, AI, computer processes.
- Healthcare: Medicines, medical devices, treatments.
- Biotech: Genetic engineering, gene therapies.
- Mechanics: Machinery, tools, manufacturing processes.
- Electronics: Circuits, communication tech, designs.
- Chemicals: New compounds, formulations, synthesis.
- Designs: Aesthetic designs for cars, appliances, etc.
- Green Tech: Renewable energy systems, eco-materials.
- Automotive: Vehicle designs, autonomous systems.
- Aerospace: Aircraft designs, propulsion tech.
- Consumer: Household items, wearables, packaging.
- Mechatronics: Robotics, automation technologies.
Step-by-Step Patent Registration Process in Kenya
1. Pre-Filing Preparations
- Conduct a Patent Search: Before applying, it’s advisable to conduct a patent search at KIPI or through online databases such as the World Intellectual Property Organization (WIPO) to identify similar patents. This search helps ensure novelty and reduces the risk of rejection.
- Prepare a Patent Specification Document: This document is central to the patent application and should include:
- Title of the Invention: A brief, descriptive title.
- Detailed Description: An extensive explanation of the invention, including its structure, functionality, and technical aspects.
- Claims: Statements that precisely define the aspects of the invention to be protected.
- Abstract: A concise summary of the invention’s purpose and technical details.
- Drawings (if any): Diagrams or illustrations that aid in understanding the invention’s functionality.
2. Filing the Patent Application
- Submission to KIPI: The application, including all required documents and fees, can be submitted to KIPI either in person or electronically via KIPI’s online platform. The application package includes:
- Completed Application Form (Form IP 3 for patents or IP 4 for utility models).
- Patent Specification Document: Description, claims, abstract, and drawings.
- Fees: Payment of the filing fee, as specified by KIPI, is required at this stage.
- International Applications (PCT): Kenya is a member of the Patent Cooperation Treaty (PCT), which enables international applications. Through PCT, applicants can file an application designating multiple countries, including Kenya. For PCT applications, entry into the Kenyan national phase must occur within 30 months from the earliest filing date or priority date.
3. Documents Required for National Phase Entry (for PCT Applications)
For PCT national phase applications, KIPI requires the following documents:
- Title of the invention.
- Priority data, including the earliest filing date.
- International publication number.
- Description, claims, abstract, and any drawings.
- International Search Report and opinion of the international examiner (if available).
- Power of attorney (Form IP 39) signed by an authorized representative.
- A statement justifying the applicant’s right to the patent.
4. Application Fees
- Fees: Vary depending on the type of patent (standard or utility model).
- Additional Fees: Fees apply for other aspects of the process, such as publication, substantive examination, and handling excess claims. Typical fees include:
- Application Fee
- Power of Attorney Fee
- Stamp Duty
- Additional Claims Fee: For claims beyond the 10th, a fee is applied per extra claim.
5. Examination of the Application
- Formality Examination: KIPI checks the application for compliance with formal requirements, ensuring that all necessary documents are included and correctly formatted. During this stage:
- KIPI may charge additional fees for claims beyond the standard limit.
- If deficiencies are identified, KIPI issues a formality examination report, and the applicant has 90 days (extendable by another 90 days) to address them.
- Substantive Examination: This examination assesses the invention’s novelty, inventive step, and industrial applicability. The substantive examination is not automatic; it must be specifically requested within five years of the filing date. Examination fees apply, and this request deadline is non-extendable.
6. Publication of the Application
- After passing formal and substantive examinations, KIPI publishes the patent application in the Kenya Industrial Property Journal 18 months from the filing date. The publication informs the public of the invention details and signals that the invention is in the final stages of patent approval.
7. Granting of the Patent
- Certificate of Grant: If the examination is successful, KIPI grants the patent, issuing a Certificate of Grant. The patent is valid for 20 years from the filing date for standard patents and up to 10 years for utility models.
- Grant and Publication Fees: Upon successful examination, the applicant pays fees for publication and grant issuance.
8. Maintenance and Annual Renewal Fees
- Annual Fees: After the grant, annual renewal fees must be paid on the filing anniversary to maintain the patent. These fees are prescribed by KIPI and must be paid using IP Form 16.
- Grace Period: A grace period of six months is granted for late payments, with a surcharge. If renewal fees are not paid, the patent will lapse.
9. Post-Grant Amendments and Correction of Errors
- Patent owners can request amendments to correct clerical errors or adjust claims. Amendments are subject to KIPI’s approval and an amendment fee.
- In cases where non-routine drafting or additional support is required (e.g., due to KIPI or third-party inquiries), additional professional fees may apply, charged on an hourly basis.
10. Enforcement of Patent Rights
- Infringement Protection: The patent owner holds exclusive rights to the invention, and unauthorized use by third parties constitutes infringement.
- Legal Recourse: Patent owners can file civil actions to enforce their rights, claim damages and seek an injunction against the infringer.
- Customs Enforcement: Patent owners may register with Kenyan Customs to prevent the import of infringing products.
Conclusion and Practical Tips
Registering a patent in Kenya is a detailed process that requires careful preparation and adherence to legal requirements. By following the steps outlined in this guide, inventors can protect their innovations and ensure they have exclusive rights to their creations.
- Consult a Patent Lawyer: Due to the technical complexity, consulting an intellectual property lawyer can enhance the application’s success. Firms like Njaga & Co Advocates provide comprehensive services from drafting to filing.
- Maintain Renewals: Ensuring timely payment of renewal fees is crucial to retaining patent rights.
- Consider PCT for Broader Protection: If international protection is necessary, file a PCT application to secure patents in multiple jurisdictions.
