[2022] KEIPT 872 (KLR)

Kibo Capital Group Limited & another v Safaricom PLC (Tribunal Case 96 of 2021) [2022] KEIPT 872 (KLR) (31 August 2022) (Judgment)

Neutral citation: [2022] KEIPT 872 (KLR)

Republic of Kenya

In the Industrial Property Tribunal

Tribunal Case 96 of 2021

Brown Kairaria, Chair, Pauline Muhanda & Frasia Wangari, Members

August 31, 2022

Between

Kibo Capital Group Limited

1st Applicant

Onyango Jasper

2nd Applicant

and

Safaricom PLC

Respondent

(IN THE MATTER OF REQUEST UNDER SECTION 106(1) OF THE ACT FOR INFRINGEMENT OF UTILITY MODEL NOs. 163, 168, 169 & 195)

Judgment

INTRODUCTION 1. This judgment is on two actions one for infringement and the other for revocation of Utility Models (UMs] No 169, 163, 168 and 195. UM 169, titled Biller Integration and Receipting Systems is registered in the name of Kibo Capital Group ltd [1st Requester] while the other three; UM No 163 [Universally Verifiable Electronic Receipt for Mobile Money Payments, UM 168[Sales Initiation Closure Notification Generator Engine], and UM NO.195 Universally Verifiable Electronic Slip are registered in the name of Onyango Jasper Ochieng [the 2nd Requester] who is the founder and Director of the 1st Requester].

The infringement Action 2. The infringement action by Kibo Capital Group ltd and Onyango Jasper Ochieng Jasper [Requesters] against Safaricom Plc. [the Respondent] was filed through a request dated 10th March 2021 in form IPT 16, brought under Section 106 of the Industrial Property Act 2001 [IPA] and Rule 20[1] of the Industrial Property Tribunal Rules 2002.

3. The Requesters seek against Respondent Safaricom Plc. a declaration of infringement of utility models 169, 163, 168 and 195 orders of permanent injunction, damages and costs. The product accused of infringing the subject utility models is the Respondent’s MPESA Bill Manager.

The Revocation Action 4. The revocation action by the Respondent Safaricom PLC [under S 103[1] of the Industrial Property Act [IPA] is contained in its Reply/counterstatement dated 8th April, 2021 and replicated in four separate requests for revocation of utility models 169, 163, 168 and 195 all dated 8th April 2021 and filed on 9th April 2021. The requests for revocation are in form IPT 14 as required by [Rule 16[1] Industrial Tribunal Rules [2002]. The revocation action is primarily predicated on among other grounds that the subject utility models were not new on the respective filing dates hence not novel due to existence of prior art with [US Patents, US20140358788,2015/0356549 AI and Japanese Patent 2013/182540 being cited as relevant prior art] and statutory subject matter exclusion or non - patentability.

Requesters’ Case 5. The Requesters’ case is contained in the request dated 10th March, 2021 and elaborated in the accompanying statement of facts signed by Onyango setting out the grounds and the facts in support of the Request. The evidence is in the statutory declarations sworn by the 2nd Requester on 24th April 2021 and 30th August, 2021.

6. Onyango [2nd Requester] is the founder and owner of Kibo Capital Group ltd [1st Requester]. Between them, they own the four utility models 169,163,168 and 195. All four utility models are claimed to have been infringed by the Respondent’s Mpesa Bill Manager, a product launched in Kenya on 26th January 2021 by Mr. Peter Ndegwa the Respondent’s CEO.

7. The launch occurred after the Requesters had held meetings and discussions with the respondent’s Boniface Mungania [Mpesa Head of Operations]] and Ms. Lilian Njuguna [Senior Products Manager] regarding partnering to provide a solution that allows Mpesa customers to generate receipts for Mpesa transactions.

8. The Mpesa Bill Manager is described in the statement of facts as the ‘the Respondent’s infringing Biller and Receipting solution’ and is accused of embodying substantially similar features as the Respondents biller and receipting solutions, performing substantially the same function in the same way and yielding substantially the same results. [see par.30 statement of facts].

9. The Requesters accuse the Respondent of feigning the need for a partnership through the discussions to become aware of material facts of the utility models and thereafter launching the MPESA Bill Manager incorporating the features of the four utility models without the Requesters’ consent or authorization. This accusation appears to ignore the fact that one of the requirements for protection under patents and utility models is the requirement of full disclosure of the invention and the best way of working it in the application for registration. Thus, anything protected under patent or utility model would be in the public domain and it would not be information that a party would obtain by stealth. It is possible of course that an applicant for patent or utility model registration may leave some matter undisclosed in the patent application but the such matter would then not enjoy protection under patent or utility model but rather as a trade secret the protection and enforcement of which is not within the jurisdiction of this Tribunal.

10. The ownership of the Utility Models is by registration at the Kenya Industrial Property Institute [KIPI] on diverse dates. Though the Utility models are stated to be umbrella protections that cover technical inventions and processes. [Par 29], the registrations are not joint but the product of four separate individual applications for registration of the utility model.

11. Kibo is a registered proprietor of UM 169 titled Biller Integration and Receipting system and holds a certificate of registration of Utility model issued by Kenya Industrial Property Institute on 26th September, 2017 pursuant to an application for registration number KE/u/2016/682, having a filing date of 02/09/2016. [OJO1; while Onyango is registered as proprietor of UM 163 [Universally Verifiable Electronic Receipt for Mobile Money Payments, UM 168 [Sales Initiation Closure Notification and Recording Engine, UM 195 [Universally Verifiable Banking slip.

12. The registration certificates are exhibited as OJO 2[163] issued on 25th September, 2017 following application NO.KE/U/2016/669 with a filing date of 18/07/2016, OJ03 [195] issued on 31st October 2017 following application no. Ke/U/2017/837 with a filing date of 03/08/2017 and OJO4 [168] issued on 26th September, 2017 following application Nu. KE/U/2017/831 with a filing date of 20/07/2017.

13. The four Utility Models numbers 163, 168, 169 and 195 are collectively referred to as the invention at paragraph 6 in the statement of facts but UM 169 is also separately referred to as the invention[at par 9] and described as a receipting solution that avails Universally Verifiable electronic receipts for both Mobile Money payments and banking deposits, issues instant branded receipts, provides customers with electronic records, assists in daily reconciliation of customers pay bill transactions and gives tamper-proof records that are not prone to manipulation, among other things.

14. The Requesters state that they have; publicized the invention, acquired goodwill over a period of four years, commercialized it to various entities and are apprehensive that the respondent will continue using the invention and exploiting its commercial viability to their detriment unless restrained from doing so by an order of injunction. The Requesters then pray that the Respondent be stopped from using the protected invention and interfering with the utility model the continued use of which they allege will cause irreparable loss and damage as their clients have requested for 100% waiver of agreed charges in the wake of the launch of the Respondent’s bill Manager which is being offered for free but no evidence of the alleged request for waiver was tendered.

Respondent’s Reply/Counterstatement and Counterclaim 15. The Respondent opposes the Requesters infringement claim in a reply/counterstatement dated 8th April 2021. In addition to denying that the MPESA bill manager infringes utility models 169, 163, 168 and 195 and seeking the dismissal of the infringement action with costs, the counterstatement includes a request for invalidation/revocation of the subject utility models under section 103[1] of the Act on grounds that each of the four was not new as at the respective filing date, was anticipated by the prior art, relate to business methods which are expressly excluded subject matter from patentability under section 21[3] b of the Act and ambiguity or lack of clarity in the claims as to the scope of protection sought, contrary to section 34[5] and 6 of the Act.

16. The Respondent further assert; that the Requesters have not identified the specific technical features protected in the claims of each of the utility models which define the monopoly protected under each certificate of registration and alleged to have been utilized by the Respondent’s M-PESA Bill Manager Platform. It is further contended that the assertion that the respondent’s MPESA Bill Manager platform has utilized the technical features in the respective claims of the utility Models is vague, generalized, unsupported by the facts, unfounded and lacking merits. Further, it is contended that the technical features incorporated in the MPESA Bill manager are not identical, substantially similar, borrowed or derived from the technical features and methods falling within the scope described and set out in the claims of the respective utility models.

17. The respondent further asserts that the M-PESA Bill Manager was developed internally in 2014/2015 and predates the filing dates of the utility models, the Bill Manager is an enhancement platform feature within the existing LIPA NA MPESA Product to address some functional limitations arising from the USSD interface, the features of Mpesa Bill manager are different from the claimed features of the subject utility models, the requester did not provide source code or any relevant documentation during the discussions with the Respondent’s officials.

Respondent’s Revocation Case 18. The Respondent challenges the validity of the registration of the subject utility models and seeks revocation on several grounds. First, it is contended that, the subject matters of the subject utility models relate to computer programs, and digital mobile applications thus beyond the scope of protection as utility models, secondly there is nothing new in the features described in the claims of the subject utility Models as at the respective filing dates, the descriptions of the utility models are not clear and concise contrary to the requirements of Section 34[5], are ambiguous and convoluted contrary to the requirements of section 34[6], and incapable of meaningful interpretation. Lastly that the subject utility models constitute business methods that are strictly excluded from protection as inventions under Section 21[3] of the IPA.

19. Ultimately the Respondent prays that the subject utility models be revoked and struck off the register, the infringement case be dismissed with costs as lacking merits and for being frivolous and the costs of the proceedings.

20. The separate Requests under section 103[1] are supported by statements of facts dated 8th April 2021. The grounds of challenge in the requests for revocation are in similar terms as those in the Reply/Counterstatement.

Requesters Opposition to The Revocation Action 21. The Requesters opposed the revocation action and filed a reply/counterstatement dated 24th April, 2021 in which they; dispute the Respondent’s contention that the subject utility models are not new/novel and assert that they were new and not anticipated by the prior art on the respective filing dates, deny that the innovations covered by the four utility models constitute a method of doing business, assert that the descriptions in the applications for registration of the utility models satisfy the requirements of section 34[5] as to sufficiency, clarity, and completeness of description, while the claims defining the subject matter and scope of protection are clear and unambiguous.

Evidence 22. The Requesters evidence in support of the infringement case and in opposition to the Revocation case is contained in the statutory declaration dated 24th May, 2021, the statutory declaration in reply dated 30th August, 2021 and a statutory declaration dated 24th August, 2021 all sworn by Onyango Jasper Ochieng [2nd Requester] and amplified orally at the trial of the actions.

23. The Respondent’s evidence in opposition to the infringement proceedings and in support of the revocation case is contained in the statutory declarations by Isaac Njoroge Kibere [a senior legal counsel, Financial Services, at Safaricom PLC the Respondent] sworn on 15th July 2021 and 8th July 2021 respectively.

Submissions 24. The Requesters filed written submissions on dated 19th January, 2022 while the Respondent filed written submissions on 21st February, 2022. On case law, the Requesters rely on the decision of this Tribunal in IPT Case NO. 79/2018 - Arfan Ali Sharif Vs Infinite Quest Marketing ltd attached to the Requesters submissions while the Respondent rely on the authorities contained in the bundle styled reading list and authorities dated 7th December, 2021 and filed on 8th December, 2021.

Issues for Determination 25. The Requesters have framed the issues they wish to be determined at paragraph 15 in the Requesters’ written submissions as follows;AWhether the evidence of the Respondent has been tested?B.Whether the Respondent infringed the Requesters’ Utility Models 195, 169, 168 and 163 respectively?C.Whether the subject matter covered by the Utility Models does fall within the scope of a utility model as defined by the Industrial Property Act NO.3 [2001] of the Laws of Kenya?D.Whether the Requester is the Bona fide inventor and owner of the subject matter covered by the utility modelsE.Whether the subject matter covered by utility models 195,169,168 and 163 respectively were ‘new ‘Or it was in the public domain as at the filing dates [ 3rd August 2017, 2nd September, 2016, 20th July 2017, and 18th July 2016] when the Respondent filed the applications for registration of the Utility Models at the Kenya Industrial Property Institute [KIPI]F.Whether the language employed and the manner in which the claims are drafted is purely descriptive convoluted, ambiguous, and lack sufficient clarity?

26. The Respondent has framed issues for determination at paragraphs 3. 1 and 3. 2. in its submissions. The issues at paragraph 3. 1 relate to the infringement proceedings while those at paragraph 3. 2 concern the revocation proceedings as set out below; 3. 1Infringement ProceedingsThese are:3. 1.1Have the joint Requesters specified the features falling within the scope of claims of utility models which they allege have been infringed by the Respondent?3. 1.2Have the joint Requesters specified the features in the Respondent’s M-PESA Bill Manager that they allege infringe their Utility Models?3. 1.3Do the joint Requestors’ evidence in exhibits OJO 1-36 in the Statutory Declaration dated 24th May 2021 prove infringement?3. 1.4Is the Respondent’s defense of the prior user valid?

3. 2Revocation ProceedingsThese are:3. 2.1Does the subject matter of each of the Utility Models fall within the scope of matters registrable as Utility Models?3. 2.2Does the subject matter of each of the Utility Models Constitute Schemes, rules or methods of doing business?3. 2.3Does the description of each of the Utility Models disclose the invention in full, clear, concise and exact terms as required by section 34[5] of IPA?3. 2.4Do the claims for each of the Utility Models define their respective subject matters clearly, concisely and supported by the description as required by section 34 [6] IPA?

27. Most of the issues framed by the parties are common or variants of one another and speak to the two broad issues in the case. These are;A]whether the Respondent’s M-PESA Bill Manager infringes on the 1st Requester’s registered Utility Model 169- Biller Integration and receipting system, and the 2nd Requester’s Utility Models 163[Universally Verifiable Electronic Receipt for Mobile Money Payments], UM 168 [Sales Initiation, Closure Notification, Generator and Recording Engine] and UM NO. 195 [Universally Verifiable Electronic Banking Slip] andB]Whether Utility Models 169, 163, 168, and 195 should be revoked on the diverse grounds raised by the Respondent in the Counterclaim and the four separate Requests for revocation under S103 dated and filed on 8th April, 2021.

Analysis of the Law, The Evidence, And Determination 28. The only issue that is not common to the parties is issue [a] in the requestors’ list of issues. That issue does not arise from the pleadings but rather from the conduct of the proceedings. It is informed by the fact that the Respondent elected not to present Isaac Kibere Njoroge to give oral evidence in addition to the evidence contained in his statutory declaration dated 15th July 2021, hence the Requester’s complaint that the evidence has not been tested by way of cross-examination.

29. The Requesters urge the Tribunal to disregard that evidence as it was not tested through cross-examination. The Respondent’s response is that the Tribunal will have to consider the sworn evidence in the Respondent’s statutory declaration because the mode of presenting evidence before the Tribunal under Rule 24 of the Industrial Property Tribunal Rules 2002 is in the form of sworn statutory declarations. The Respondent was not obligated by the rules to tender oral evidence and it was up to the Requesters to apply to the Tribunal to have the Respondent’s witness availed for cross-examination.

30. The requesters did not apply to cross-examine the Respondent’s witness at the hearing held on 8th December 2021. Had they done so the Tribunal would have directed the Respondent’s witness to be availed for cross-examination under Rule 27 of the Industrial Procedure Rules which governs the conduct of proceedings before the Tribunal. Where material the Rule provides;Rule 27. ‘’The following apply with respect to a hearing before the Tribunal(a)at the hearing the Tribunal may allow oral evidence and shall allow the cross-examination of a person on his statutory declaration or affidavit.On the other hand, Rule 24 governs the way evidence is to be tendered by parties before the Tribunal. In particular Rule 24[9] expressly provides that ‘’evidence filed under this rule shall be filed with the Tribunal and shall be by way of a statutory declaration or affidavit.’’

31. In the face of the clear provisions of the rules we are unable to disregard the evidence contained in the Respondent’s statutory declaration on the ground that it was not tested through cross-examination.

32. We now turn to the other issues framed by the parties. Issue b] in the Requesters list of issues can be taken together with the Respondent’s framed issue no. 3. 1.1, 3. 1.2, 3. 1.3 and 3. 1.4 as they all are on the broad question of whether the Respondent’s Bill Manager infringes on the claimed features of Utility Models 169, 163, 168 and 195.

33. To succeed in the infringement action each of the Requesters are required to demonstrate how the features of the Respondent’s M-PESA Bill Manager and the use of the Mpesa Bill manager encroach on the exclusive rights conferred by registration of the respective Utility Models. The boundaries of the exclusive rights are to be established with reference to the claims of each of the four utility models for by dint of section 57 as read with section 81[1] of the Act, the scope of protection is determined by the terms of the claims. So, what are the claims in the respective utility models and what aspects of the biller manager and in what manner is it alleged to infringe on the respective utility models. The Requesters did not set out the particulars of the claims of each of the utility models alleged to be infringed in the statement of facts accompanying the Request or the statutory declaration but has exhibited copies of the applications for registration from which the claims can be distilled.

34. The application by Kibo Capital in respect of UM169 is exhibited as OJO6 and was initially made as an application for grant of patent. There are two claims listed in the claims section of that application which readsCLAIMSI.The technical features that are necessary to define the subject matter of the invention but are part of the prior;- The receipts will be availed electronically with a clear population of the data breaking down the details of payments and how the same has been distributed.- The receipts also have a scannable coding that will be used by government agencies to authenticate the same.II.The Technical features that, in combination with the features referred to above, define that for which protection is sought.- The receipts will be tamper-proof file formats for purposes of dual control by the companies and also recipient consumers owing to the fact that they are held for audit and determination of fair tax by the government and authorized regulatory bodies. The bar code also makes it additionally unaltered’

35. The application in respect of UM163 [-Universally Verifiable Electronic Receipt for Mobile Money Payments] is exhibited as OJO5. The claims are at page 10 in that application and where the material read"CLAIMS1. The technical that are necessary to define the subject matter of the invention but that is part of the prior art; is A procedure performed by a computer program for providing a universally verifiable electronic receipt for a mobile money payment to a taxpayer and a payee. The process comprises: Receiving receipt parameters including primary receipt details including amounts, dates, payment reference and receipt end point details;2. A Claim as in claim 1 above where a computer program generates receipt verification parameters at mobile money system or system receiving mobile money transactions; the receipt verification parameters comprising any data that can be used to confirm that the electronic receipt exists and has not been modified;3. A Claim as in claim 1 and 2 above where computer program performs a transfer of electronic receipt to the receipt endpoints;4. A Claim as in claim 1,2 and 3 above where computer program performs verification of electronic receipt using current or future known verification channels to obtain the original receipt as issued by the receipt issuing agent.5. Receipts under this invention, strictly avail details of the individual transactions required by the concerned parties and will not include account balances or unrelated transactions as would be in previous deliveries under a short message service,6. Wherein the universally verifiable electronic receipt comprises additional reference details of the payment as may be recorded by the payer and or payee of the payment;7. Wherein the universally verifiable electronic receipt end point includes at least one of: email, mobile number identifier, universal resource locator address, an enterprise resource planning system, an expense tracking system, or a tax authority;8. Wherein the universally verifiable electronic receipt may carry advertising messages; they may carry promotional messages; they may include taxation information on the electronic receipt;9. Wherein the universally verifiable electronic receipt further, may advertising messages; they may carry promotional messages; they may contain company identifiers i.e registered marks for the entities being paid or receiving the payments, issuing the electronic receipts;10. Wherein the universally verifiable electronic receipt and receipt verification orders can be stored in a database for regulatory purposes where regulations and law require that be done.’’

36. The claims of U M168- Sales initiation closure, notification, generator and recording engine –are set out in the application exhibited as OJO 7. They are as follows:PARA 2. ClaimsThe technical features that are necessary to define the subject matter of the invention but that ate part of the prior art;1. A procedure performed by a computer program that provides, initiation, closure, notification and recording of sales and services offered by different traders across the globe,2. A procedure as in claim 1 above where the computer program initiates, closes and generates a notification for records and verification parameters at the point of sale or system receiving sales, closure, notification and records processing requests; the sales verification parameters comprising of any data that can be used to confirm that the transactions were performed and have not been modified,3. A procedure as in claim 1 and 2 above where the engine will record a listing of services or goods offered or sold in any transaction being partaken;4. A procedure as in claim 1,2 and 3 above where the system will generate unique references for each transaction that will be verifiable back to the specific transaction in case of dispute or authentication call back.5. A Procedure as in claim 1, 2, 3 and 4 above where the records will have a scannable coding that will be used by government agencies to authenticate the transactions in cases of use where the public interest is involved.6. A procedure as in claim1, 2, 3, 4 and 5 above where the invention intends to make all kinds of sales and service transactions paperless as it provides all the records in a format that is both tamper-proof and universally verifiable. This involves all kinds of goods and services offered currently and in the future.7. A Procedure as in claim 6 the transactions records are availed digitally/paperless in the same format with full products and services listing to both the buyer and the seller of the goods and services.8. Universal verification and authentication of all transactions done under this invention will be within seconds anywhere in the globe with internet access.’’

37. As regards UM 195 – Universally Verifiable Electronic Banking Slip System the claims are contained in OJO8 and are as follows 2. CLAIMS

1. A Computer program that provides an electronic banking slip to depositors each time they make a deposit transaction at the bank physically or through alternative and or electronic banking channels, initiates and relays to a depositor an electronic banking slip, verification, keeping statements on the specific accounts and shall be availed in all form digital on the web interface, mobile transactions.2. A Program as in claim 1 above where a computer program initiates and relays to a depositor an electronic banking deposit slips unique to any such transactions performed by them for records. The records shall be for varied reasons including but not limited to audit, tax and proof of deposit into a financial institution, savings and cooperative society, utility company among many other institutions holding consumer or commercial accounts that receive funds and keep statements on the specific accounts.3. A program as in claim 1 and 2 above where verification parameters are created at the point of completion of the banking deposit transaction. The parameters comprising any data that can be used to confirm that the deposit transactions were performed and have not been modified;4. A Program as in claim 1,2,3 above where the computer program will generate unique references for each transaction that will be verifiable back to the specific transaction in case of dispute or authentication call back,5. A program as in claim 1,2,3 and 4 above where electronic banking deposit slips generated by the computer program will have a scannable coding that will be used by receiving institutions for authentication and or government agencies to authenticate the transactions in case of use where public interest is involved.6. A program as in claim 1,2,3,4 and 5 that intends to minimize the use of physical paper which from research shows are produced yet unnecessary. The electronic nature of delivery also guarantees the preservation of information for utilization many years down the line as opposed to the current norm where quality is dependent on printer strength, paper quality, handling and filing sophistication.7. The transaction records processed in 1, 2, 3, 4, 5 and 6 shall be availed electronically in different formats as may be tailored to suit specific banking/financial institutions meeting all regulatory requirements as specified in law,8. The transaction records processed in 1, 2, 3, 4, 5, 6 and 7 shall in most instances carry commercial advertisement and other information and announcement targeted to the users of services of this invention,9. The transaction record availed in claims 1, 2, 3, 4 and 5 shall be availed in all forms digital on the web interface, mobile applications, email, short message services and many other technologies under invention now and in the future. Where the short message service is used, a Uniform Resource Locator [URL] link shall form part of the body of the same. This link shall direct the user to access of the Universally Verifiable Electronic Banking Slip produced in the computer program.10. A Program as in claim 1, 2, 3, 4 and 5 above where the computer program offers capabilities for universal verification and authentication of all transactions be within seconds anywhere in the globe with internet access being an improvement from the current process that is highly restrictive and depends on the availability of certain officers with special access to the banking system’’

38. We find the claims of the respective utility models clear enough and not convoluted or ambiguous as contended by the Respondent. They relate to the generation of universally verifiable tamper-proof electronic receipts using a computer program, record keeping and reconciliation of accounts/payments in a digital environment. Computer programs are not protectable under patent or utility model as they do not fit in the definition of inventions under the Act. Issuance of receipts, record keeping and reconciliation of accounts are methods of doing business and would thus be outside the purview of patentable subject matter by dint of section 21[3] b of the Act but where a computer program produces a receipt that is tamper proof this would in our assessment qualify as an invention as it seeks to solve a particular problem of a technical nature albeit within a business environment.

39. Having set out the claims of the utility models we now turn to the features of the MPESA BILL MANAGER PLATFORM launched by the Respondent and alleged to be infringing the subject utility models. According to the Respondent’s exhibit NNK1 the MPESA BILL MANAGER was developed by adding additional features to the already existing MPESA paybill facility and sought to address the following challenges;a.Need for a user to remember paybill numbers for various service providers whenever one needs to make a paymentb.Need for a user to remember the account numbers of the various paybill numbers whenever one needs to make a payment.c.paybill service currently targets service providers. EBPP focuses on the service provider’s customersd.errors during payments resulting in a lot of inconveniences to the customere.errors due to handsets when account numbers needed require alphanumeric charactersf.Lack of capability for managing recurring payments

40. An MPESA Bill Payment Presentment platform accessible via USSD was then proposed as a solution to some or all these challenges. It was to be delivered in 3 phases as follows:1. The service should cover registration of customer’s billing accounts on the platform, set up of payment reminders, service provider enlisting on the service and push to map bills for the subscriber and automatic payment for registered bills on the platform,2. The service should cover integration to service providers providing functionality for customers to query bills due at any given time and give service providers functionality to push bills to customers for auto-registration3. The service will require integration to the Core API, offer recurring payments [standing orders] facility.

41. From the evidence on record the M-PESA Bill Manager enables businesses to send invoices, collect payments, issue e-receipts and do easy reconciliation on one platform [see OJO 16 in the Requester’s statutory declaration of Onyango Jasper Ochieng. It is said to empower both businesses and the Respondent’s customers to easily manage and keep track of payments, customers using the service instantly receive an SMS when new bill is generated or when it falls due, enabling customers to query pending bills at any given time. Schools will be able to customize the different type of fees such as tuition lunch and transport, send reminders to parents when payments are due, and Utility providers such as water, electricity and internet providers will be able to automatically bill their customers, allowing the bill to reflect in the customers ‘platform as pending bills that need payments.

42. We have compared the features of the M-PESA Bill Manager against the claims in the respective utility models and are satisfied that they differ significantly and are not as the requesters say substantially the same.

43. Furthermore there is evidence that the Respondent’s MPESA Bill Manager was internally developed in the period 2014/2015 well before the filing dates of the respective utility Models. See exhibit marked INK1 attached to Respondent’s statutory declaration sworn by Isaac Njoroge Kibere on 15th July 2021. This would in itself have been a complete defense to the infringement action under section 56[1] of the Act which states;‘’ Notwithstanding the provisions of section 54 a patent shall have no effect against any person [hereinafter referred to as prior user] who in good faith, for the purposes of his enterprise or business, before the filing date or where a priority date 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 purposes of his enterprise or business, to continue such use or to use the invention as envisaged in such preparations.’’.

44. The question of the validity of registration of the subject Utility models is also important in considering the infringement action. As the Tribunal stated in IPT Case NO. 94 OF 2020 at paragraph 27 what constitutes Infringement of a utility Model under the Act is defined under section 105 as ‘’the performance by a person other than the registered owner and without the owner’s authorization of any act specified in section 54 [in relation to the product or process falling within the scope of a validly granted certificate of registration.’’For clarity S105 reads ‘’ Subject to sections 21[3] e,58,61[6],72,73,80[1 C and 86 any act specified in Sections 54 or 92 and performed by a person other than the owner of the patent or 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.’’

45. It is clear from the use of the expression within the scope of a validly granted patent or certificate of registration in section 105 that it is not enough for the owner of the grant of patent or certificate of registration to wave the certificate to prove infringement. The Requesters must show that the respondent has performed any of the acts reserved to the exclusive performance of the registered right holder under section 54 of the Act without the right holder’s authority.

46. Furthermore for such acts to qualify to be infringing they must be shown to fall within the scope of validly granted patent or certificate of registration. The use of the word Validly in reference to the grant or certificate of registration implies that if the grant is found by the Tribunal not to have been validly granted or issued then the Respondent’s conduct would not be found to be infringing as only what is validly registered is protected under the Act. This, in turn, means that the owner of the certificate of registration like in the instant case must successfully ward off the challenge on the validity of registration of the utility Model mounted by the respondent for if he fails to do so the infringement action would fail and his registration revoked.

47. The Scope of what is validly registered in Utility models just as in patent grants is established in reference to the claims. But to be validly registered the utility model must pass the statutory requirements for registration. Utility Model certificates are issued in respect of inventions that do not meet the stringent requirements of patentability and the provisions of the Act relating to patents in Parts III, IV, VII, VIII, IX, X, XI, XV and XVI apply mutatis mutandis to Utility Model Certificates or applications. This is subject to special provisions relating to utility models under S.82 of the Act.

48. That Section provides as follows;82 [1]An invention qualifies for a utility Model Certificate if it is new and industrially applicable.(2)Sections 22, 24, 43, 44 and 60 shall not apply in the case of applications for utility model certificates.(3)Any Utility Model certificate shall expire at the end of the tenth year after the date of the grant of a utility model and shall not be renewable.

49. Of note is that sections 21 and 23 of the Act are not excluded from application in the examination of applications for registration of inventions as utility models. Section 21[1] of the Act defines the term ‘invention’ as used in the Act as, [a solution to a specific problem in the field of Technology], and under section 21[2] an invention may relate to a product or a process while section 21[3] sets out matters that shall not be regarded as inventions and are excluded from patent protection.S21 [3] [b]Expressly provides;The following shall not be regarded as inventions and shall be excluded from patent protectionb.Schemes rules or methods of doing business performing purely mental acts or playing games

50. The Respondent has challenged the validity of the subject utility models on among other grounds that it was not new at the time that the respective applications for registration were filed, secondly that they relate to methods for doing business via computer programs which are excluded from protection as inventions under section 21[3] b. As to lack of newness, the Respondent has cited US Patent 20140358788 titled Method FOR RECEIVING AN ELECTRONIC RECEIPT OF AN ELECTRONIC PAYMENT TRANSACTION INTO A MOBILE DEVIC, US PATENT 2015/0356549 AI-ELECTRONIC RECEIPT SYSTEM and Japanese patent NO. 2013 /182540 - Electronic Receipt Issuing system all of which predate the filing dates of the subject utility model. US patents US2014/O358788, US 2015/O356549 AI and Japanese Patent 2013/182540 whose patent application documents are exhibited as INK1 in the Respondent’s statutory declaration by Isaac Njoroge Kibere sworn on 8th July 2021. We find that these patents constitute relevant prior art in so far as the issuance of electronic receipts that are verifiable is concerned. The only aspect that we do not find common with the current utility models is the claim of being tamper-proof. As this claim appears to go beyond the claims in the earlier patents, we do not consider it appropriate to revoke the subject utility models on this ground.

51. It is trite that methods of doing business carried through computer programs are not patentable in our jurisdiction. The subject utility models to a large measure relate to methods of doing business through computer programs and do not relate to electrical or electronic circuitry as contended by the Requestors. But as earlier stated in this judgment the claim that the receipts issued by the Requester is tamper proof appears to us to go beyond other features such as issuance of receipts and doing reconciliation that can be categorized as strictly methods for doing business. This and only this alone would insulate the subject designs from revocation.

52. Methods for doing business even using computer programs are not to be regarded as inventions by dint of section 21[3] b of the Industrial Property Act. As the Tribunal stated in IPT Appeal NO. 21/2018 John Kamonjo Mwaura Versus Kenya Industrial Property Institute, the MD KIPI & 2 interested parties]; business methods are not regarded as inventions in both our jurisdiction and in some other jurisdictions such as the EU. In the Halliburton Energy Services INC applications [2012] RPC the court held inter alia that the use of a computer to implement a better business method did not confer patentability where it is expressly excluded by statute stating;‘’The business method cases can be tricky to analyze by just asking whether the invention has a technical effect or makes a technical contribution. The reason is that computers are self-evidently technical in nature. Thus, when a business method is implemented on the computer, The Patentee has a rich vein of arguments to deploy in seeking to contend that his invention gives rise to a technical effect or makes a technical contribution. For example, the computer is said to be a faster, more efficient computerized book keeper than before and surely ‘says the patentee that is a technical effect or advance. And so it is, in a way, but the law resolutely sought to hold the line at excluding such things from patents’’

52. In the end we come to the conclusion that both the infringement and revocation actions fail and are hereby dismissed and each party shall bear its own costs.

Read and delivered virtually on the31st day of August, 2022. Signed:Brown M Kairaria - ChairmanPauline Muhanda - MemberDr. Frasia Wangari - Member