Navigating the Path to Patent Registration in Kenya : A Summarised Guide

Introduction

Kenya’s long-term development blueprint (Vision 2030) aims to transform the state to a competitive state. To actualise this, the state commits to intensifying the application of science, technology and innovation to raise productivity in industry. 1 This allows for the emergence of a knowledge-based economy, that is reflective of creation, adoption and use of knowledge for economic growth.2 This further encourages innovation in industry , where knowledge is transformed into inventions that are protected by Intellectual Property Rights (IPRs). 3 Patents are IPRs that provide protection for innovations. 

According to recent statistics by the World Intellectual Property Organisation on total ( resident and foreign) patent filing activity by origin indicates that Kenya is ranked 1st amongst other member states of the African Regional Intellectual Property Organisation (ARIPO) and 7th within the continent.4 Kenya boasts of a comprehensive Patent legislative framework ; Industrial Property Act (IPA) 2001 and the Industrial Property Regulations 2002. Section 3, of The IPA establishes the Kenya Industrial Property Institute (KIPI) whose primary function is to provide oversight and approval of applications for the grant of industrial rights provided for within Section 5 of the IPA. However, despite the presence of legislation, we acknowledge that there are still a large number of inventions that have not been transformed into patents, thus inventors have not realised their benefit. 

Appreciating that patented inventions are “important entrepreneurial products” that should be protected and exploited,5 The following article will serve as a summarised guide to assist with navigating the intricacies of patent registration in Kenya. This will range from comprehending the basics of patents to understanding the application process. 

The Basics

Before delving into the specifics of patent registration in Kenya , it is important to comprehend what a patent is and why they are essential. A patent is a legal right that grants the inventor exclusive rights to their invention for a specific period ( common practice – 20 years ). These exclusive rights allow the inventor to prevent others from utilising , selling or importing their patented invention without their consent. The underpinning rationale of the right stems from utilitarianism. This involves patents as a social contract between innovators and the state , where there is grant of a temporary monopoly right as “quid pro quo” for disclosure. 6

Quid pro quo requires two key functions ; a gatekeeping function and information function.7 The gatekeeping function is one that ensures the state-operated patent administrative system is guarded with experts in respective fields that assist with evaluating the “merits” of the declared inventions in terms of subject matter and eligibility of the statutory framework.8 The experts are patent examiners within KIPI. Whilst, the information function facilitates disclosure of the knowledge , this is vital for relevant stakeholders such as entrepreneurs, researchers , inventors, academics and other interested parties who are interested in the development of innovations within their respective fields. 9 Therefore a “compliant patent application” with “sufficient disclosure and description” is representative of an effective functioning patent system. 10

An effective functioning patent system allows for innovative ideas and inventions within the public and private sector , stimulating economic growth within the state, as it allows for the commercialisation and monetization of inventions through licensing and sales. In addition, it fosters innovations that assist with solving developmental issues within the state as it provides an incentive to invest time and resources in developing novel innovations.

The Application Process

To qualify for patent registration in Kenya there are certain criteria that should be met , in order to qualify for eligibility. The criterion includes three main requirements. They include; 

Novelty , Inventive Step and Industrial Application. Starting off with novelty, the invention must be novel. It must be described sufficiently to enable comprehension of the invention to be understood easily as well as utilised. 11 Inventive step is a development or an improvement that should not be obvious to the average skilled persons in the applicable industry. 12 Industrial application assesses the utility of the invention , as the invention must be capable of being applied in the relevant industry. 13

In accordance with Section 21 of the IPA , patents are given to the ‘first inventor’ that files an application. Therefore, one is advised to file a formal application with a written request soon after the completion of an invention. 14 The application for a patent is done by filling a patent specification together with the perquisite forms and payment of application fees at the KIPI office. 15 The application is inclusive of request , description, claims drawings and abstract. When the application is accepted for filing, it is assigned a number and a filing date, where there is publication of the application 18 months after the filing date.16 The subsequent steps involve the applicant formally requesting for a preliminary examination and search as well as attaching the examination fees within the 3 years of the filing date, otherwise the application is considered to be abandoned. 17

The patent is granted if the applicant satisfies the threshold of patentability set out in section 23-25 of the IPA. Patents granted are registered and published within KIPI’s Journal. The certificate of grant is issued accompanied with copies of the patent documents ( abstract, disclosure and claims). It is important to note that after 3 years from the date of filing , if the applicant will not have requested for substantive examination as required by section 44 of the IPA the patent will not be registrable . 

Conclusion

Patent registration in Kenya is a comprehensive process that requires careful consideration, attention to detail and adherence to the legal requirements set out by the IPA and KIPI. Protection of IPRs, specifically patents are essential as it promotes innovation and fosters economic growth.

1 Kiveu M, Patenting in Kenya : Status and Challenges [2012] KIPPRA Discussion Paper No. 141,3.

2 ibid.

3 ibid..4.

4 World Intellectual Property Organization (WIPO) World Intellectual Property Indicators 2022 < https://www.wipo.int/edocs/pubdocs/en/wipo-pub-941-2022-en-world-intellectual-property-indicators-2022.pdf> last accessed 25th October 2023.

5 Kiveu(n3).

6 Braga E, Souza A, Soares P & Rodrigues R, The role of specification in patent applications: A comparative study on sufficiency of disclosure [2018] WPI 53,58.

7 Rutenberg I & Nzomo V, Patenting the Un-Patentable : Lessons for African Patent Systems from a review patent subject matter exclusion in Kenya [2018] SIPJ, 2-3.

8 ibid.

9 ibid.

10 ibid.

11 Kiveu(n5) 15-16.

12 ibid.

13 ibid.

14 ibid.

15 ibid.

16 ibid.

17KIPI, KIPI’s Guidelines for the examination of Patents, Utility Models, and Industrial Designs [2007]< http://www.kipi.go.ke/images/docs/guidelines%20to%20patenting.pdf > last accessed 25th October 2023.