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Kenya has steadily developed its intellectual property (IP) framework, with patent law playing a pivotal role in fostering innovation and economic growth. As the country embraces digital transformation and seeks to establish itself as a regional tech hub, the importance of patent protection has become increasingly apparent. This article explores the current state of patent law in Kenya, highlighting its key features, challenges, and future prospects.

Legal Framework
Kenya’s patent regime is primarily governed by the Industrial Property Act, 2001 (revised in 2022), which is administered by the Kenya Industrial Property Institute (KIPI). KIPI oversees the registration, examination, and protection of patents, as well as utility models and industrial designs. Kenya is also a signatory to various international treaties, including:

• The Paris Convention for the Protection of Industrial Property
• The Patent Cooperation Treaty (PCT)
• The ARIPO Harare Protocol (administered by the African Regional Intellectual Property Organization).

These treaties allow Kenyan inventors to file for international protection and enable foreign inventors to secure patent rights in Kenya.
Patentability Criteria
To qualify for patent protection in Kenya, an invention must meet three key criteria:

• Novelty: The invention must be new and not previously disclosed to the public.
• Inventive Step: The invention must involve a step that is not obvious to someone with knowledge in the relevant field.
• Industrial Applicability: The invention must be capable of being used in some kind of industry.

Patents in Kenya are granted for a maximum of 20 years, subject to the payment of annual renewal fees. There is also provision for utility models (petty patents) that offer protection for less complex inventions for up to 10 years.
Challenges Facing Patent Law in Kenya
Despite the existence of a well-established legal framework, several challenges persist in Kenya’s patent regime:

• Lack of Awareness: Many inventors, particularly those in the informal sector, are not fully aware of patent protection or the process of filing for patents. This leads to missed opportunities for securing IP rights.
• High Costs: The cost of patent registration, including attorney fees, examination fees, and renewal costs, can be prohibitive for individual inventors and small businesses. This financial barrier discourages many from pursuing patent protection.
• Backlogs and Delays: KIPI has faced challenges in processing patent applications due to limited resources and staffing constraints. This has resulted in significant delays in granting patents, which can hinder the commercialization of inventions.
• Enforcement Issues: While Kenya’s legal framework is sound, enforcement of patent rights remains a significant challenge. Infringement cases can be difficult to prosecute, and the judicial system lacks specialized IP courts, leading to protracted litigation.
• Fragmented Research and Development (R&D): Kenya’s research institutions often operate in silos, and there is limited collaboration between academia, government, and industry. This hampers the commercialization of innovations and the growth of patentable inventions.

Recent Developments
In recent years, there has been a noticeable shift towards strengthening Kenya’s patent system:

• Automation and Digitalization: KIPI has begun implementing digital tools to streamline the patent application process. This is expected to reduce processing times and enhance accessibility.
• Public-Private Partnerships: Collaborations between the government, private sector, and academia have begun to promote innovation in key sectors such as agriculture, health, and clean energy. Initiatives like the Kenya National Innovation Agency (KENIA) are designed to bridge the gap between research and commercial application.
• Patent Examination Capacity: Training programs for KIPI’s examiners, supported by international partners such as WIPO and ARIPO, are helping to improve the quality and speed of patent examination.

Opportunities and Future Outlook

Kenya’s patent law framework is positioned to support the country’s ambitions to become a knowledge-based economy. The emerging opportunities lie in sectors such as:

• Tech and Innovation Hubs: With Nairobi often dubbed the “Silicon Savannah,” tech start-ups are increasingly seeking patent protection for software, fintech, and other digital innovations.
• Pharmaceutical Patents: As the global pharmaceutical industry grows, there is an opportunity for Kenya to develop its local pharmaceutical R&D capabilities and leverage patent protection to foster growth in this sector.
• Agricultural Innovations: Kenya’s reliance on agriculture presents an opportunity for innovations in agri-tech, with patents playing a crucial role in safeguarding these inventions.

However, for Kenya to fully realize its potential in the patent space, concerted efforts are needed to address the existing challenges. This will involve increasing public awareness of IP rights, investing in patent examination capacity, reducing costs, and ensuring more effective enforcement mechanisms.
Conclusion
Patent law in Kenya is at a critical juncture. While there is a robust legal framework in place, there are still several hurdles that need to be overcome for the country to harness the full potential of patents in driving innovation. As Kenya continues to modernize its IP infrastructure and foster a culture of innovation, the patent system will undoubtedly become a key driver of economic growth and development in the years to come.
*The information in this article does not constitute actionable legal advice. For further information, please contact us via email at info@lehmann.co.ke

Registered trademarks are increasingly becoming popular in Kenya as an effective tool to differentiate and protect brands.   The operative law is the Trade Marks Act, Chapter 506 Laws of Kenya (“the Act”). The first registration period is ten (10) years which can be indefinitely renewed for further periods of ten (10) years after the expiry of the first registration or of the last renewal. The Act describes a mark to include “a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.”

Why formally register a trademark?

• Trademarks distinguish goods (and services) from other similar products by differentiating them in the eyes and minds of the average consumer. They protect the goodwill and reputation of the respective business entities that own them.  They also prevent confusion, helping consumers identify the trademarked products or services as those belonging to a particular business entity that they would want to associate with.

• Registration of a trademark is direct evidence of exclusive ownership in Kenya and helps keep off potential infringers who would be attempting to ride on the goodwill of your mark. It enables you to enforce your rights and protect them more easily in case someone was to challenge them since the burden is on the challenger to prove any rights in a dispute.

• The process of registration with its thorough checks for conflicting trademarks ensures that you have a unique mark that does not resemble any other party’s mark and in so doing helps one avoid infringement of other parties’ rights. In a dispute, the burden is on the challenger of the registered trademark to prove ownership.  The use of an unregistered trademark can lead to a lengthy, expensive legal dispute over who has the right to use it.  A registered trademark is also an invaluable asset for business expansion especially so through licensing.

WHAT TYPES OF MARKS CAN BE REGISTERED IN KENYA

In order for a trademark (other than a certification mark) to be registrable in Kenya under the Act it must contain or consist of at least one of the following essential particulars:-

• The name of a company, individual or firm, represented in a special or particular manner;
• The signature of the applicant for registration or some predecessor in his business;
• An invented word or invented words;
• A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
• Any other distinctive mark.

There are marks that need special permission prior to registration such as those that may contain the colors of the national flag of the Republic of Kenya, and others that are not registrable such as those that may offend public policy.

METHODS OF TRADE/SERVICE MARK REGISTRATION IN KENYA

(1)       NATIONAL REGISTRATION: If you just want to register your Trademark in Kenya alone, it is sufficient to apply for a national registration at the local trademark office.

(2)       INTERNATIONAL REGISTRATION (MADRID SYSTEM): If you already have filed a trademark application or have a trademark registration in one or more countries of the Madrid Union (based on the Madrid Agreement and Madrid Protocol), you can obtain trademark protection in multiple countries by filing one single application.

PROCESS OF TRADE/SERVICE MARK REGISTRATION IN KENYA

(1)       A trademark application must be brought to the Trademark Office at the Kenya Industrial Property Institute (KIPI) by a local agent in the prescribed form.  A power of attorney is necessary.

(2)       An applicant will start by filling out a form that appoints the applicant’s trademark agent who then conducts a preliminary search for the availability of the mark for full registration.

(3)       The preliminary search is carried out to find out whether the trademark is registrable or not and whether a trademark that could be confused with the intended trademark exists.

(4)       Where the mark is found fit for registration after search, a full application for registration is made to the Registrar in the prescribed form accompanied by seven (7) representations of the mark. A single application may cover more than one class.  Classes are the Kenyan categories for goods and services as recognized by KIPI.  KIPI recognizes and uses the NICE Classification of Goods and Services as developed and published by the World Intellectual Property Organization (WIPO).

(5)       Disclaimer in trademark: A disclaimer is a statement indicating that a certain word or portion of a trademark is not protected separately and apart from the mark as a whole.  This means that it is possible to have in your trademark parts or words that are generic or commonly used in the trade for those products with the understanding that you have no monopoly over it/them and thus no right to bar others from using those words.  An example here would be “Dabilu Mineral Water”; the disclaimer would cover the words “mineral water”.  Having a disclaimer does not however mean that you can never use the disclaimed portion as part of your mark.

(7)       Once the mark is examined as to distinctiveness and approved/accepted, it will be published in the monthly Industrial Property Journal of KIPI (an online publication) for sixty (60) days to allow any interested party an opportunity to raise objections to the pending application prior to registration.

(8)       An opposition to the trademark application may be lodged within sixty (60) days from the date that the advertisement of the trademark application has been published.  The extension of the opposition period is possible at the discretion of the Registrar for a maximum of ninety (90) days.  If there is no opposition to the mark within the prescribed time, a Certificate of Registration is issued to the applicant, making the applicant the officially registered proprietor of the mark.

(9)       The registration may be canceled if the trademark was registered without any bona fide intention to use the trademark, or if it has been no bona fide use of the trademark up to one (1) month before the date that the application for cancellation has been submitted.  The registration may also be canceled if there has been no bona fide use of the trademark for a continuous period of five (5) years and one (1) month until the date of application for cancellation.

(10)     Permitted use by a third party cannot be accepted by the proprietor unless the user has been recorded as a licensee.  In Kenya licensing is recognized and license agreements must be duly registered at KIPI.  The license agreement must be provided for quality control by the licensor.  The use of a registered trademark without the license of the registered proprietor constitutes infringement.  Assignments are also permitted and can be made with or without the goodwill of the business.  The requirements for assignment are:

1. A properly executed Deed of Assignment.
2. Power of attorney from the assignee.

WHO CAN FILE FOR A TRADE/SERVICE MARK

An individual, a company, or any lawful association can apply for a trademark provided they meet the requirements of the Act.

*The information in this blog does not constitute actionable legal advice. For further information, please contact us:

Lehmann Associates®

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ACK Garden House, Block D, 6^th Floor

1^st Ngong Avenue

P. O. Box 58021-00200

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TEL: +254 780 547 696

EMAIL: info@lehmann.co.ke

The Kenya Copyright Board (https://www.copyright.go.ke/) is conducting a survey to determine whether to form a new Collective Management Organization (CMO) for the publishing sector or to revive the Reprographic Society of Kenya (KOPIKEN). The deadline for public participation is Tuesday May 19, 2020. Follow this link to participate: https://buff.ly/3fOGFOf

The Ministry of Lands and Physical Planning of the Republic of Kenya recently published its intention to roll out a new property registration process. The simplified 3-step process is largely online and is set to take approximately 12 days. The process of land transfer and registration in Kenya is bound to be much easier and faster when this re-engineered process is operationalized.

THE KENYA INTELLECTUAL PROPERTY BILL, 2020 has been published and subjected to public participation before it goes further along the path towards becoming law. Among other things, the bill seeks to collapse the Kenya Industrial Property Institute (KIPI) which administers trademarks, patents and related matters, the Kenya Copyright Board (KECOBO) which administers copyright and related rights and the Anti-Counterfeit Authority (ACA) into one body – the Intellectual Property Office of Kenya. For streamlined and more direct public participation, the Strathmore University Center for Intellectual Property and Information Technology Law (CIPIT) has opened up its Jadili Platform for all who are interested in sharing comments in support of or against the bill. For a draft of the bill and to access the CIPIT Jadili platform, please follow the link: https://blog.cipit.org/2020/05/11/the-kenya-intellectual-property-bill-2020-an-open-public-participation-call/

March 20, 2020

CLIENT ALERT:

COVID-19 (CORONAVIRUS) PANDEMIC

BUSINESS CONTINUITY STATEMENT

Following the global coronavirus pandemic, our service delivery has been severely

affected. As we continue to observe the World Health Organization and Government of

Kenya directives on personal safety, we inform our clients as follows:

Office Functions and Meetings: Our offices shall remain closed until further

notice and our staff will continue to work from home. All scheduled in-person meetings

will be held via videoconferencing, phone and/or email. Only very essential in-person

meetings shall be held, and our team will reach out to clients individually for these.

Intellectual Property: At the time of this statement, registrations and related

filings are ongoing. We shall continue to prosecute these and update all clients

individually.

Conveyancing: All transactions are affected by the Government’s closure of all

land offices and registries. We shall advise further when their reopening is announced.

Business Registration Services and Companies Registry: All transactions

requiring physical attendance at the banking hall are affected by their closure by the

Government. Online-based transactions are continuing.

Immigration: All transactions are affected by the Government’s suspension of all

national and foreign national services. We urge all clients who risk falling out of status

during this period to contact us urgently.

Litigation: All transactions are affected by the scaling down of operations by the

Judiciary. We will counsel clients individually on their cases.

Contracts: Clients will need to look closely at the force majeure clauses of

various contracts. We shall counsel clients individually on their cases.

We commit to serve all clients as efficiently as possible within the prevailing

circumstances and to keep delays and interruptions at a bearable minimum. For further

information, please contact us through our pilot email info@lehmann.co.ke