Industrial Property Act

The Act may be cited as the Industrial Property Act.

Mentions "a patent".

The Board may delegate its powers, functions or duties to a board committee or to a member, officer, employee or agent of the Institute by resolution.

The Board must appoint a Managing Director, set their terms, and the Managing Director must meet specified qualifications, serve as an ex‑officio non‑voting Board member and manage day‑to‑day affairs subject to the Board's directions.

The Board may appoint specified staff for the Institute; the Managing Director may delegate duties to officers.

The section states rules about the common seal: it must be kept in custody as the Board directs; it must not be used except on the order of the Board; and when affixed and duly authenticated it shall be judicially and officially noticed with a presumption that any Board authorisation has been given.

Members of the Board and officers, employees or agents of the Institute shall render themselves (and persons acting on their directions) personally liable to any action, claim or demand if the act is done bona fide in executing the Institute's functions, powers or duties.

The Institute remains liable to pay compensation or damages to any person for injuries to the person, their property or interests caused by the Board's exercise of powers or by failure of works.

Section 16 lists the funds of the Institute: (a) sums that the Cabinet Secretary may grant pursuant to subsection (2); (b) monies or assets that accrue to or vest in the Institute in exercising its powers or functions; and (c) monies from other sources provided for, donated, or lent to the Institute. Subsection (2) provides that grants shall be made to the Institute out of monies provided by Parliament for the Institute's expenditure in exercising its powers or performing its functions.

The Institute's financial year is the twelve-month period ending on 30 June each year.

The Board must prepare and approve annual revenue and expenditure estimates for the Institute, submit them to the Cabinet Secretary for approval, and must not increase them after Cabinet Secretary approval without consent; estimates must be prepared at least three months before each financial year.

The Board must keep proper books and records of the Institute's income, expenditure and assets; the accounts must be audited and reported by the Auditor-General or by an auditor appointed by the Board with the Auditor-General's approval under the Public Audit Act (Cap. 412B).

The Board may invest the Institute's funds in permitted securities (including those trustees may invest in or securities approved by the Treasury) and may, with the Treasury's approval, place monies not immediately required on deposit with banks it determines.

The Institute may sue and be sued.

The Headquarters of the Institute must be in Nairobi.

The Institute must consider applications for and grant industrial property rights.

The Chairperson must hold a degree in law or science and have at least seven years’ experience in matters relating to industrial property.

The Board has the power to control, supervise and administer the assets of the Institute to best promote the Institute's purpose.

Except as provided in the First Schedule, the Board may regulate its own procedure.

The Board must pay members of the Board remuneration, fees, or allowances for expenses, with amounts determined after consultation with the Cabinet Secretary responsible for finance.

Defines "invention" as a solution to a specific technological problem and states that, subject to exclusions, it may be a product or a process; lists categories excluded from being inventions.

An invention is patentable if it is new, involves an inventive step and is industrially applicable.

An invention is new if it is not anticipated by prior art; prior art includes any public disclosure worldwide (written, oral, use, exhibition or other non-written means) made before the filing date or claimed priority date, and Kenyan patent applications are prior art from their filing or valid priority date to the extent they are made public.

An invention involves an inventive step if, considering relevant prior art, it would not have been obvious to a person skilled in the art on the filing date or, where applicable, on the validly claimed priority date.

An invention is industrially applicable if it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services.

Plant varieties and products of biotechnological processes are listed as non-patentable.

The Managing Director may direct that patent application information be prohibited or restricted from publication or communication if notified as prejudicial to defence or public safety; Cabinet Secretary must consider such notices and the Managing Director must revoke directions on notice; failure to comply is punishable by imprisonment up to two years or a fine up to twenty thousand shillings.

Kenya residents must file the same patent application with the Institute at least six weeks before filing abroad; filing in contravention attracts a fine up to two hundred thousand shillings, or up to two years imprisonment, or both.

If a deposited micro-organism becomes unavailable, the depositor must make a new deposit within three months, forward the deposit receipt to the Institute within four months, and accompany the new deposit with a signed statement that it is the same as originally deposited.

The right to a patent belongs to the inventor; joint inventors hold it jointly; where separate persons independently make the same invention, the person with the earliest filing (or priority) date that leads to grant has the right.

If an applicant obtained the essential elements of an invention from another person, the applicant must assign the application (or the patent, if already granted) to that person unless that person authorizes the applicant.

When an invention is made under a commission or employment, the right to the patent belongs to the commissioner or employer; employees have a right to equitable remuneration when the invention is exceptionally important or made using employer resources, and if parties do not agree the Tribunal fixes remuneration.

The inventor is to be named in the patent application and in the patent, unless the inventor makes a special written declaration to the Managing Director that he wishes not to be named; promises to make such a declaration have no legal effect.

Contracts assigning applications or patents must be in writing and must be signed by the parties to the contracts.

Joint owners of an application or a patent may separately transfer their rights, exploit the patent, and stop others exploiting it, but they may only jointly grant permission to a third person to perform acts referred to in section 54.

Section 34 sets parts of a patent application and requires foreign-resident applicants to be represented by a Kenya-admitted agent; appointment of an agent must be indicated by a power of attorney signed by the applicant.

An application must relate to a single invention or to a group of inventions so linked as to form a single general inventive concept.

Applicants may amend an application or divide it into divisional applications so long as amendments or divisional applications do not go beyond the disclosure in the initial application; the Cabinet Secretary may make regulations to carry this section into effect.

The Managing Director may require the applicant to furnish a certified copy of the earlier application after three months from filing.

At the Managing Director's request, an applicant must provide dates, numbers and copies of foreign patent applications, communications, grants, rejections, revocations or invalidations; the applicant may submit comments on those documents.

The Board may waive all or part of the fees in the manner and circumstances prescribed.

The applicant may withdraw the application at any time before a patent is granted or before notification of rejection or refusal to grant a patent.

The Managing Director must invite applicants to correct form defects, may accord filing dates based on timely corrections or missing drawings, and must reject applications if required defects are not remedied.

The Managing Director must publish the patent application as soon as possible after eighteen months from the filing date (or date of priority); the Managing Director may publish earlier at the applicant's request.

The Managing Director may order an international-type search for applications in order; may request documents after the search; must invite the applicant to pay a prescribed fee and must reject or consider withdrawn defective applications or claims unless the applicant remedies specified defects.

The Managing Director must notify applicants when their patent application meets certain requirements; applicants must request substantive examination within five years of filing or the application is abandoned. The Managing Director must invite observations and amendments if conditions appear unmet and may refuse grant if conditions remain unmet.

Patents granted must be registered and the Managing Director must publish them as soon as reasonably practicable in the manner prescribed in the regulations.

The Managing Director must keep a register of all patents granted, recording and numbering them and recording lapses and transactions; any person may inspect the register during working hours and may obtain extracts subject to payment of the prescribed fee and regulations.

An applicant may appeal to the Tribunal.

Defines "international application" and several patent-related terms (Receiving Office, designated Office, elected Office, international publication, international search report, international preliminary examination report, "to designate", "to elect") for Part VI.

The Institute must act as a receiving Office for international applications filed by Kenyan nationals or residents; must act as a designated or elected Office when Kenya is designated or elected for a national patent; and must perform these functions in accordance with the Patent Co-operation Treaty, its regulations and administrative instructions and this Act, with treaty provisions prevailing in case of conflict.

If an international search or preliminary examination report is missing or incomplete for some claims, the Managing Director treats the unsearched or unexamined claims as withdrawn or may reject the application unless the applicant satisfies the Managing Director that the omission was justified or takes specific corrective actions.

Relief against infringement may be sought for acts committed after international publication under the Patent Cooperation Treaty (if published in English), or where an English translation was transmitted to the infringer when the publication was in another language.

An international application for which Kenya is designated shall be treated as a publication under section 42 when published under Article 21 of the Patent Co-operation Treaty.

Applicants or owners of an invention have specified rights (to be granted a patent, to exclude others within limits after grant, and to conclude licence contracts) and specified obligations (to disclose the invention; to provide information on corresponding foreign filings; to pay prescribed fees; and to refrain from making undesirable provisions in licence or assignment contracts).

The owner of the patent is entitled to make, import, offer for sale, sell and use the product, use the process, and stock products for sale or use; these rights do not apply to third parties acting to obtain regulatory approval or registration of a product for commercialisation after patent expiry.

Provides for obtaining an injunction to restrain the performance or likely performance, by any person without his authorization, of the acts referred to in section 54.

A person who, in good faith and for their business, was already using an invention or making serious preparations before the patent filing (or priority) date in the patent's territory has the right to continue that use for their business.

The scope of patent protection is determined by the terms of the claims; the description and drawings in the patent may be used to interpret the claims.

Patent rights are limited; they do not extend to certain acts including articles put on the market or imported by the patent owner with his consent.

The Institute must act as receiving and designated office for regional applications under the Harare Protocol where Kenya is designated; owners of such grants have the same rights and remedies as under this Act.

A patent expires at the end of twenty years from the filing date of the application.

Annual fees must be paid to maintain an application or patent; failure to pay leads to withdrawal or lapse, with limited restoration options.

A licensee is entitled to perform the acts in section 54 in relation to the invention, without time or field-of-use limits, and (unless the licence contract says otherwise) may not grant a third person those acts.

Licensor may permit third parties or act himself unless the licence contract expressly makes the licence or permission exclusive; if exclusive, the licensor must not grant permission or act and the licensee is an exclusive licensee.

Effects apply when a patent is not granted, is revoked or invalidated, or when the application is withdrawn.

Licence contracts must be in writing.

Licence contracts must be registered; any party may petition and petitions must include prescribed documents and fees; the Managing Director must issue a receipt and a contract may be void if registration is refused.

Prohibits licence contract terms that permit or require importing technology from outside Kenya when substantially similar or equivalent technology can be obtained on the same or more favourable conditions without importation from abroad.

The Managing Director must register a contract that may be registered and issue a certificate of registration to the petitioner; the Managing Director must notify the petitioner of defects or refusal within specified ninety-day periods; when corrected or amended the petition is deemed received on the correction/amendment date; contract contents are confidential unless both parties agree to permit third-party access.

States that "the decision of refusal contains no statement of the reasons for refusal."

Any person may apply to the Tribunal for a licence to exploit a patented invention after the later of four years from filing or three years from grant, on grounds the market is not being supplied on reasonable terms in Kenya.

If a later patented invention cannot be worked without infringing an earlier patent and the later invention is an important technical advance of considerable economic significance, the owner of the later (latter) patent may ask the Tribunal for a compulsory licence of the earlier patent to the extent necessary; the owner of the earlier (first) patent is entitled to a cross-licence on reasonable terms to use the later invention.

Compulsory licences may be granted only if the Tribunal is satisfied that the applicant has requested a contractual licence from the patent owner but could not obtain it on reasonable commercial terms within a reasonable time, and offers satisfactory guarantees to work the invention; the requirement to request a licence is waived in national emergency or extreme urgency, provided the patent owner is notified as soon as reasonably practicable.

The Tribunal must decide whether to grant a compulsory licence and, if it decides to grant one (taking into account any agreed terms), must fix the licence terms as a valid contract; representatives of the Institute and the Government have the right to appear and be heard at the hearing.

A compulsory licence may be transferred only together with the part of the industrial undertaking or its goodwill where the relevant invention is used, and such a transfer is not valid until the Tribunal's consent has been obtained.

The Tribunal may cancel a compulsory licence on specified grounds (licensee non-compliance; cessation of conditions) and, within two years after grant, may cancel if the licensee has not worked the invention sufficiently; terms may be varied if new facts justify it.

When the Tribunal grants, cancels or varies the terms of a compulsory licence, the Tribunal must instruct the Managing Director to record the grant, cancellation or variation in the register without payment of any fee.

Owners of patents may ask the Managing Director to record that licences are available as of right; the Managing Director notifies licensees, and (absent successful objections) makes and publishes the entry. Any person may require a non-exclusive licence on terms fixed by the Tribunal if there is no agreement; annual fees due after the entry are halved. The owner may request cancellation but must pay the balance of annual fees before cancellation is published.

Allows the Cabinet Secretary to authorise, by written order, use/import/manufacture/supply of patented inventions (including naming persons or entities) without notice in certain circumstances; requires six months' prior notice for revocation; Managing Director sets compensation; owners may still licence and may appeal decisions.

Provisions of the listed patent Parts apply, mutatis mutandis, to utility model certificates and their applications.

Utility model certificates require novelty and industrial applicability; some patent sections do not apply to utility model applications; utility model applications are published when section 41 requirements are met; registration certificates expire at the end of the tenth year after filing and are not renewable (with a transitional rule for certificates issued before this subsection).

Before grant or refusal, an applicant may convert a patent application to a utility model application (and vice versa) upon payment of the prescribed fee; an application may not be converted under subsection (1) more than once.

Defines "industrial design" as the overall appearance of a product from visual features (shape, configuration, pattern, ornamentation) and defines "product" as anything made by hand, tool or machine; protection does not extend to elements serving solely to obtain a technical result or to methods/principles of manufacture or construction.

The creator of an industrial design (or their successors) has the exclusive right to sell, or have sold, for commercial or industrial purposes the goods incorporating the design, subject to other written laws and this Act.

An industrial design is registrable only if it is new; a design is not new if identical or substantially similar in overall impression to a design disclosed to the public anywhere before the filing or priority date; certain categories are excluded (contrary to public order and morality; purely artistic creations); procedural details are prescribed in regulations.

Sets application requirements (form, power of attorney if agent, graphic representation, fee), filing-date rule, procedures for acceptance, opposition, objection reports and registration by the Managing Director; allows withdrawal and reexamination and provides that details are in regulations.

An industrial design registration lasts five years from the application date; it may be renewed twice for further five‑year periods on payment of a prescribed fee; the renewal fee must be paid within the twelve months preceding expiration, with a six‑month grace period for late payment subject to a surcharge.

Owners or other persons entitled may apply to restore an industrial design if non-renewal was beyond their control by paying the prescribed renewal fee and surcharge within one year; applications with proof and grounds must be sent to the Managing Director, who shall examine and either restore or reject, and restored designs shall be published.

Applications and graphic representations for industrial-design registrations must be kept confidential until published; the Institute retains representations for eight years after expiry; interested persons may examine them for a fee; after publication anyone may obtain an official copy; applicants seeking foreign priority may obtain an official copy.

The Managing Director must publish the details prescribed in the regulations for each industrial design registered under section 87.

Section 46 applies, with necessary modifications, to maintaining the register of industrial designs.

Registration of an industrial design gives the registered owner the right to stop others from reproducing, importing, offering for sale, selling or stocking products that reproduce the protected design and to bring court proceedings against infringers, subject to limits for industrial or commercial purposes and not applying after lawful import or sale in Kenya.

Rights in an industrial design may be transferred in whole or in part.

Contract terms that are less favourable to employees or technovators than the provisions of this part are void.

Disputes under this part must be submitted by any interested party to a three-member arbitration board; the board must hear parties and issue a ruling; if the parties cannot agree on a Chairperson the Resident Magistrate Court in the enterprise's location shall appoint the Chairperson; an aggrieved party may appeal to the Tribunal.

Defines "technovation" as a solution to a specific technology problem proposed by an employee of an enterprise in Kenya for use by that enterprise that relates to the enterprise's activities and, on the date of proposal, has not been used or actively considered for use by that enterprise.

Employees employed on the date of the proposal are entitled to a technovation certificate, but employees whose duties include making and proposing technovations are not entitled for technovations in their field of employment unless their creative contribution exceeds what is normally required; if several employees request for the same technovation the first requester is entitled.

Enterprises must assist employees to file a written request for a technovation certificate and must issue a receipt acknowledging the filing and the filing date.

If the Part's requirements are met, the enterprise must issue a technovation certificate to the employee within three months of the proposal; the enterprise may refuse if it believes the requirements are unmet and must notify the employee of reasons within the same time limit.

Enterprises issuing a technovation certificate must notify the technovator in writing whether they intend to use the technovation; enterprises must inform the technovator if testing is needed and may postpone that notification for up to a year; technovators must assist in testing and the enterprise must give opportunity; technovators must not disclose or use the technovation except limited circumstances; technovators are exempted from assistance obligations if the enterprise does not use the technovation within specified times.

A technovator is entitled to remuneration when the enterprise uses the technovation or communicates it to a third person; the amount and method of payment, absent a collective bargaining agreement, are to be fixed by mutual agreement between the technovator and the enterprise.

Owners may surrender patent, utility model or industrial design registration certificates to the Institute; Managing Director must publish the surrender, and if a licence is recorded the licensee must submit a declaration consenting to the surrender unless the licensee has waived that right in the licence contract.

Anyone interested may ask the Tribunal to revoke or invalidate a patent, utility model or industrial design; the Tribunal must arrange hearings, may make orders, must publish the application, and owners must lodge and serve counter-statements within prescribed time.

When a Tribunal decision revokes or invalidates an intellectual property right, the Chairperson must tell the Managing Director when the decision is no longer subject to appeal, and the Managing Director must then register and publish the decision as soon as possible in the Kenya Gazette or the Industrial Property Journal.

Performing an act listed in section 54 or 92 in relation to a product or process covered by a valid patent or registration, without the owner’s authorization, by a person who is not the owner, shall constitute an infringement.

Provides an injunction to prevent imminent infringement or to prohibit the continuation of an infringement once it has started.

A person with a legitimate interest may ask the Tribunal to declare that performing a specific act does not infringe a patent, utility model, or industrial design; the owner and any licensee have the right to be defendants in such proceedings.

A person threatened with infringement proceedings who can prove the acts do not infringe may ask the Tribunal for an injunction and damages.

Intentional infringement of a patent, registered utility model or industrial design is an offence.

Presumes that a patented process was used.

An exclusive licensee may request the patent (or registered model/design) owner to start legal proceedings by registered letter; if the owner does not proceed within three months after notice the licensee may start proceedings in the licensee's own name and the owner may join; the Tribunal may, on the licensee's request and before the three months expire, grant an injunction if immediate action is necessary to avoid substantial damage.

When the Act allows appeals from decisions of the Managing Director, those appeals must be made to the Industrial Property Tribunal under this Part.

Establishes an Industrial Property Tribunal appointed by the Cabinet Secretary, sets qualifications for Chairperson and members, a three-year term, appointment of a Secretary, pay set by the Cabinet Secretary, and grounds and mechanisms for removal and replacement.

The Tribunal has the power to make any order to secure attendance, obtain documents, or investigate or punish contempt to the same extent as a court.

Any party to proceedings before the Tribunal may appeal to the High Court in accordance with the Part's rules; the High Court may confirm, set aside, vary, remit with instructions, exercise the Tribunal's powers, or make orders as to costs.

The Chairperson of the Tribunal may appoint an expert as an assessor to advise in cases where the Tribunal considers that expert knowledge is needed to determine the case.

The Cabinet Secretary may make rules to regulate the Tribunal's practice and procedure.

If the Managing Director considers a matter involves a point of law or is unusually important or complex, he may refer it to the Industrial Property Tribunal (after giving notice to the parties), must then follow the Tribunal's general direction (or any direction replaced on High Court appeal), and, when a matter is so referred, the Managing Director and the parties are entitled to be heard by the Tribunal and may appear or be represented by an advocate.

The Cabinet Secretary may make regulations to prescribe anything allowed under the Act and generally to better carry out the Act's objects and purposes.

The Board must submit an annual report to the Cabinet Secretary within four months after the end of each financial year; the Cabinet Secretary must lay that report before the National Assembly within fourteen days of receipt.

The Institute is exempt from stamp duty on any instrument executed by, on behalf of, or in favour of the Institute that would otherwise make the Institute liable.