Industrial Property Act

Section 1. Short title Section This Act may be cited as the Industrial Property Act.

Section 2. Interpretation Section a patent;

Section 3. Establishment and incorporation of the Institute Section suing and being sued;

Section 4. Headquarters Section The Headquarters of the Institute shall be in Nairobi.

Section 5. Functions of the Institute Section consider applications for and grant industrial property rights;

Section 6. Boards of Directors Section a Chairperson appointed by the Cabinet Secretary, who shall be the holder of a degree in law or science and with at least seven years’ experience in matters relating to industrial property;

Section 7. Functions and powers of the Board Section control, supervise and administer the assets of the Institute in such manner as best promotes the purpose for which the Institute is established;

Section 8. Conduct of business and affairs of the Board Section 8(1) The conduct and regulation of the business and affairs of the Board shall be as provided in the affairs of the First Schedule. Section 8(2) Except as provided in the First Schedule, the Board may regulate its own procedure.

Section 9. Remuneration of Board members Section The Board shall pay members of the Board such remuneration, fees, or allowances for expenses as it may determine after consultation with the Cabinet Secretary for the time being responsible for finance. [Act No. 18 of 2018 , Sch.]

Section 10. Delegation by the Board Section The Board may, by resolution either generally or in any particular case, delegate to any committee of the Board or to any member, officer, employee or agent of the Institute, the exercise of any of the powers or the performance of any of the functions or duties of the Board under this Act or under any other written law.

Section 11. Managing Director Section 11(1) There shall be a Managing Director of the Institute who shall be appointed by the Board and whose terms and conditions of service shall be determined by the Board in the instrument of appointment or otherwise in writing from time to time. Section 11(2)(a) has a university degree in law, science, information technology or business administration from a recognised university; and Section 11(2)(b) has at least seven years’ working experience in matters relating to industrial property. Section 11(3)(a) be an ex-officio member of the Board but shall have no right to vote at any meeting of the Board; Section 11(3)(b) deleted by ActNo. 11 of 2017, Sch.; Section 11(3)(c) subject to the directions of the Board, be responsible for the day to day management of the affairs of the Institute.

Section 12. Staff of the Institute Section 12(1) The Board may appoint a Corporation Secretary and such Deputy Managing Directors, Assistant Managing Directors, examiners and such officers or other staff of the Institute as are necessary for the proper discharge of its functions under this Act or any other written law, upon such terms and conditions of service as the Board may determine. Section 12(2) The Managing Director may delegate to any officer any of the duties and functions conferred on him under this Act. [Act No. 11 of 2017 , Sch.]

Section 13. The Common seal of the Institute Section 13(1) The common seal of the Institute shall be kept in such custody as the Board may direct and shall not be used except on the order of the Board. Section 13(2) The common seal of the Institute when affixed to a document and duly authenticated shall be judicially and officially noticed and unless and until the contrary is proved, any necessary order or authorisation by the Board under this section shall be presumed to have been duly given.

Section 14. Protection from personal liability Section No matter or thing done by a member of the Board or any officer, employee or agent of the Institute shall, if the matter or thing is done bona fide for executing the functions, powers or duties of the Institute, render the member, officer, employee or agent or any person acting on his directions personally liable to any action, claim or demand whatsoever.

Section 15. Liability of the Board for damages Section The provisions of section 14 shall not relieve the Institute of the liability to pay compensation or damages to any person for an injury to him, his property or any of his interests caused by the exercise of the powers conferred on the Board by this Act or by any other written law or by the failure, whether wholly or partially, of any works.

Section 16. Funds of the Institute Section 16(1)(a) such sums as may be granted to the Institute by the Cabinet Secretary pursuant to subsection (2); Section 16(1)(b) such monies or assets as may accrue to or vest in the Institute in the course of the exercise of its powers or the performance of its functions under this Act or under any other written law; and Section 16(1)(c) all monies from any other source provided for or donated or lent to the Institute. Section 16(2) There shall be made to the Institute, out of monies provided by Parliament for that purpose, grants towards the expenditure incurred by the Institute in the exercise of its powers or the performance of its functions under this Act. [Act No. 18 of 2018 , Sch.]

Section 17. Financial year Section The financial year of the Institute shall be the period of twelve months ending on the thirtieth June in each year.

Section 18. Annual estimates Section 18(1) At least three months before the commencement of each financial year, the Board shall cause to be prepared estimates of the revenue and expenditure of the Institute for that year. Section 18(2)(a) the payment of the salaries, allowances and other charges in respect of the staff of the Institute; Section 18(2)(b) the payment of pensions, gratuities and other charges in respect of the staff of the Institute; Section 18(2)(c) the proper maintenance of the buildings and grounds of the Institute; Section 18(2)(d) the maintenance, repair and replacement of the equipment and other property of the Institute; and Section 18(2)(e) the creation of such reserve funds to meet future or contingent liabilities in respect of retirement benefits, insurance or replacement of buildings or equipment, or in respect of such other matter as the Board may deem appropriate. Section 18(3) The annual estimates shall be approved by the Board before the commencement of the financial year to which they relate and shall be submitted to the Cabinet Secretary for approval and after the Cabinet Secretary’s approval, the Board shall not increase the annual estimates without...

Section 19. Accounts and audit Section 19(1) The Board shall cause to be kept all proper books, and records of accounts of the income, expenditure and assets of the Institute. Section 19(2)(a) a statement of the income and expenditure of the Institute during that year; and Section 19(2)(b) a balance sheet of the Institute on the last day of that year. Section 19(3) The accounts of the Institute shall be audited and reported upon in accordance with the Public Audit Act (Cap. 412B), by the Auditor-General, or by an auditor appointed by the Board with the approval of the Auditor-General given in accordance with the Public Audit Act (Cap. 412B).

Section 20. Investment of funds Section 20(1) The Board may invest any of the funds of the Institute in securities in which for the time being trustees may by law invest trust funds, or in any other securities which the Treasury may, from time to time, approve for that purpose. Section 20(2) The Board may, subject to the approval of the Treasury, place on deposit with such bank or banks as it may determine, any monies not immediately required for the purposes of the Institute.

Section 21. Meaning of "invention" Section 21(1) For the purposes of this Part, "invention" means a solution to a specific problem in the field of technology. Section 21(2) Subject to subsection (3), an invention may be, or may relate to, a product or a process. Section 21(3)(a) discoveries, scientific theories and mathematical methods; Section 21(3)(b) schemes, rules or methods for doing business, performing purely mental acts or playing games; Section 21(3)(c) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised in relation thereto, except products for use in any such methods; Section 21(3)(d) mere presentation of information; and Section 21(3)(e) public health related methods of use or uses of any molecule or other substance whatsoever used for the prevention or treatment of any disease which the Cabinet Secretary responsible for matters relating to Health may designate as a serious health hazard or as a life threatening disease.

Section 22. Patentable inventions Section An invention is patentable if it is new, involves an inventive step and, is industrially applicable. [Act No. 11 of 2017 , Sch.]

Section 23. Novelty Section 23(1) An invention is new if it is not anticipated by prior art. Section 23(2) For the purposes of this Act, everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) or, by oral disclosure, use, exhibition or other non-written means shall be considered prior art: Provided that such disclosure occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof. Section 23(3) For the purpose of the evaluation of novelty, an application for the grant of a patent or a utility model certificate in Kenya shall be considered to have been comprised in the prior art as from the filing date of the application, or if priority is claimed, as from the date of its validly claimed priority, to the extent to which its content is available, or is later made available, to the public in accordance with this Act or in accordance with the Patent Co-operation Treaty. Section 23(4)(a) acts committed by the applicant or his predecessor in title; or Section 23(4)(b) an evident abuse committed by a third party in relation to th...

Section 24. Inventive step Section An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention, it would not have been obvious to a person skilled in the art to which the invention pertains on the date of the filing of the application or, if priority is claimed, on the priority date validly claimed in respect thereof.

Section 25. Industrial application Section An invention shall be considered industrially applicable if, according to its nature, it can be made or used in any kind of industry, including agriculture, medicine, fishery and other services.

Section 26. Non-patentable inventions Section plant varieties as provided for in the Seeds and Plant Varieties Act ( Cap. 326 ), but not parts thereof or products of biotechnological processes; and

Section 27. Information prejudicial to defence of Kenya or safety of public Section 27(1) Where an application for a patent is filed with the Institute under this Act or under any international convention to which Kenya is a party, and it appears to the Managing Director that the application contains information of a description notified to him by the Cabinet Secretary responsible for defence or the concerned Cabinet Secretary as being information the publication of which might be prejudicial to the defence of Kenya, the Managing Director may give directions prohibiting or restricting the publication of that information or its communication to any specified person or persons. Section 27(2) If it appears to the Managing Director that any application so filed contains information the publication of which might be prejudicial to the safety of the public, he may give directions prohibiting or restricting the publication of that information or its communication to any specified person or persons until the end of a period not exceeding three months from the end of the period prescribed for the purposes of section 42 . Section 27(3)(a) if the application is made under this Act, it may be...

Section 28. Restrictions on applications abroad by Kenya residents Section 28(1)(a) an application for a patent for the same invention has been filed with the Institute not less than six weeks before the filling of the application outside Kenya; and Section 28(1)(b) either no directions have been given under section 27 in relation to the application in Kenya or any such directions have been revoked. Section 28(2) Subsection (1) shall not apply to an application for a patent for an invention in respect of which an application for a patent has first been filed in a country outside Kenya by a person resident outside Kenya. Section 28(3) A person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be liable on conviction, to a fine not exceeding two hundred thousand shillings, or to imprisonment for a term not exceeding two years, or to both. Section 28(4) Deleted by ActNo. 11 of 2017, Sch. [Act No. 11 of 2017 , Sch.]

Section 29. Patents relating to living matter Section 29(1)(a) a culture of the micro-organism has been deposited with a depository institution as prescribed by the regulations. Section 29(1)(b) deleted by ActNo. 18 of 2018, Sch.; Section 29(1)(c) deleted by ActNo. 18 of 2018, Sch. Section 29(2) The information referred to in paragraph (b) of subsection (1) may be submitted within a period of sixteen months after the date of filing of the application or, if priority is claimed, after the priority date. Section 29(3) The deposited culture shall be made available upon request of any person having the right to inspect the files. Section 29(4)(a) the micro-organism is no longer viable; or Section 29(4)(b) for any other reason the depository institution is unable to supply samples, and if the micro-organism has not been transferred to another depository institution from which it continues to be available, an interruption in availability shall not be deemed to have occurred if a new deposit of the micro-organism originally deposited is made within a period of three months from the date on which the depositor was notified of the interruption by the depository institution and a copy of the...

Section 30. Right to a patent Section 30(1) Subject to this section, the right to a patent shall belong to the inventor. Section 30(2) If two or more persons have jointly made an invention the right to the patent shall belong to them jointly. Section 30(3) If and to the extent to which two or more persons have made the same invention independently of each other, the person whose application has the earliest filing date, or if priority is claimed, the earliest validly claimed priority date that leads to the grant of a patent shall have the right to the patent. Section 30(4) The right to a patent may be assigned or may be transferred by succession. Section 30(5) Sections 64 to 80 shall apply mutatis mutandis to contracts assigning the right to a patent.

Section 31. Unauthorized application based on an invention of another person Section Where the applicant has obtained the essential elements of the invention which is the subject of his application from the invention of another person, he shall, unless authorized by the person who has the right to the patent or who owns the patent, be obliged to assign to such person the application or, where the patent has already been granted, the patent.

Section 32. Inventions made in execution of commission or by employee Section 32(1) Notwithstanding section 30 and in the absence of contractual provisions to the contrary, the right to a patent for an invention made in execution of a commission or of an employment contract shall belong to the person having commissioned the work or to the employer: Provided that where the invention is of exceptional importance the employee shall have a right to equitable remuneration taking into consideration his salary and the benefit derived by the employer from the said invention. Section 32(2) The provisions of subsection (1) shall apply where an employment contract does not require the employee to exercise any inventive activity but when the employee has made the invention by using data or means available to him during his employment. Section 32(3) In the circumstances provided for in subsection (2), the employee shall have a right to equitable remuneration taking into account his salary, the importance of the invention and any benefit derived from the invention by the employer. Section 32(4) In the absence of agreement between the parties, the remuneration shall be fixed by the Tribunal. Sect...

Section 33. Naming of inventor Section The inventor shall be named as such in the patent application and in the patent unless in a special written declaration addressed to the Managing Director he indicates that he wishes not to be named and any promise or undertaking by the inventor made to any person to the effect that he will make such declaration shall be without legal effect.

Section 62. Change in ownership of applications, etc Section 62(1) All contracts assigning applications or patents shall be in writing and shall be signed by the parties thereto. Section 62(2) Any change in the ownership of an application or a patent shall be recorded in the patent register in accordance with, and on payment of a fee fixed by the regulations and until the change has been recorded, any document evidencing the change in ownership shall not be admitted in any proceedings as evidence of the title of any person to an application or a patent, unless the Tribunal otherwise directs. [Act No. 18 of 2018 , Sch.]

Section 63. Joint ownership of applications and patents Section In the absence of any agreement to the contrary between the parties, joint owners of an application or a patent may, separately, transfer their rights in the application or patent, exploit the protected patent and preclude any person from exploiting the patent but may only jointly grant permission to any third person to do any of the acts referred to in section 54 . [Act No. 18 of 2018 , Sch.]

Section 34. Application Section 34(1)(a) a request; Section 34(1)(b) a description; Section 34(1)(c) one or more claims; Section 34(1)(d) one or more drawings (where necessary); and Section 34(1)(e) an abstract. Section 34(2) Where the applicant’s ordinary residence or principal place of business is outside Kenya, he shall be represented by an agent who shall be a citizen of Kenya admitted to practice before the Institute. Section 34(3) The request shall state the name of, and prescribed data concerning the applicant, the inventor and the agent, if any, and the title of the invention; and where the applicant is not the inventor the request shall be accompanied by a statement justifying the applicant’s right to the patent. Section 34(4) The appointment of an agent shall be indicated by furnishing a power of attorney signed by the applicant. Section 34(5) The description shall disclose the invention and the best mode for carrying out the invention, in full, clear, concise and exact terms as to enable a person skilled in the art to make, use or evaluate the invention and that description shall include any drawing and relevant deposits as in the case of microorganisms and self-replicab...

Section 35. Unity of inventions Section 35(1) The application shall relate to one invention unity of only or to a group of inventions so linked as to form a single general inventive concept. Section 35(2) The regulations shall contain rules concerning compliance with the requirements of unity of invention under subsection (1). Section 35(3) The fact that a patent has been granted on an application that did not comply with the requirements of unity of invention shall not be a ground for the invalidation or revocation of the patent.

Section 36. Amendment and division of application Section 36(1) The applicant may amend the application, provided that the amendment shall not go beyond the disclosure in the initial application. Section 36(2) The applicant may divide the initial application into two or more applications (hereinafter referred to as "divisional applications") provided that each divisional application shall not go beyond the disclosure in the initial application. Section 36(3) The Cabinet Secretary may make regulations for the carrying out of the provisions of this section. [Act No. 11 of 2017 , Sch.]

Section 37. Right of priority Section 37(1) The application may contain a declaration claiming the priority as provided for in the Paris Convention of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or of any state party to the Paris Convention. Section 37(2) The Managing Director may, at any time after the expiration of three months from the filing of an application containing the declaration, require that the applicant furnish a copy of the earlier application, certified as correct by the Institute with which it was filed or, where the earlier application is an international application filed under the Patent Co-operation Treaty, by the International Bureau.

Section 38. Information concerning corresponding foreign applications and grants Section 38(1) At the request of the Managing Director, the concerning applicant shall furnish him with the date and corresponding number of any application for a patent or other foreign applications title of protection filed by the applicant with a national industrial property office of another country or with a regional industrial property office (in this Act referred to as a "foreign application"), relating to the same invention as that claimed in the application filed with the Managing Director. Section 38(2)(a) copies of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application; Section 38(2)(b) a copy of the patent or other title of protection granted on the foreign application; and Section 38(2)(c) a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application. Section 38(3) The applicant shall, at the request of the Managing Director, furnish him with a copy of any decision revoking or invalidating the patent or any other title of protection granted b...

Section 39. Payment of fees Section 39(1) The application shall be subject to the payment of the prescribed fees. Section 39(2) The Board may waive whole or part of the fees in the manner and in the circumstances as may be prescribed.

Section 40. Withdrawal of application Section The applicant may withdraw the application at any time before the grant of a patent or the notification of rejection of the application or of refusal to grant a patent.

Section 41. Filing date and examination of application as to form, etc. Section 41(1)(a) the name and address of the applicant; Section 41(1)(b) a part which on the face of it appears to be a description; and Section 41(1)(c) a part which on the face of it appears to be a claim or claims. Section 41(2) If the Managing Director finds that the application did not, at the time of receipt, fulfil the prescribed requirements, he shall invite the applicant to file the required correction. Section 41(3) If, the applicant complies with the invitation referred to in subsection (2), the Managing Director shall accord as filing date the date of receipt of the required correction; otherwise he shall treat the application as if it had not been filed. Section 41(4) Where the application refers to drawings which are not included in the application, the Managing Director shall invite the applicant to furnish the missing drawings, and, if the applicant complies with the invitation, the Managing Director shall accord as the filing date the date of receipt of the missing drawings; otherwise he shall accord as the filing date the date of receipt of the application and shall treat any reference to the...

Section 42. Publication of application Section 42(1) The Managing Director shall publish the application as soon as possible after the expiration of eighteen months from the filing date or, where priority is claimed, the date of priority: Provided that the Managing Director may at the request of the applicant, publish the application before the expiry of eighteen months. Section 42(2) For the purposes of subsection (1), in the case of applications claiming priority, the term of eighteen months shall be construed from the original filing date and in the case of applications with two or more priority claims, the period shall be construed from the earliest priority dates. Section 42(3) The publication of the patent application shall be effected by publishing the particulars set out in the regulations, in the Kenya Gazette or in an Industrial Property Journal. Section 42(4) The Cabinet Secretary may make regulations for the carrying out of the provisions of this section. [Act No. 11 of 2017 , Sch.]

Section 43. International-type search Section 43(1) The Managing Director may instruct that any application found in order as to form be the subject of an international-type search. Section 43(2) When a direction under subsection (1) is made, the Managing Director shall invite the applicant to pay the prescribed fee; and if the applicant does not comply with the invitation, the application shall be rejected. Section 43(3) Upon receipt of the report on the international-type search, the Managing Director may request the applicant to furnish him with a copy of any document cited in the report and if without lawful reason, any copy is not furnished within the prescribed time limit, the application shall be rejected. Section 43(4) If it is apparent from the report on the international-type search or from the declaration on the non-establishment of the report, that the subject of the application or of any claim or claims is not an invention, the Managing Director shall reject the defective application or consider the defective claim or claims to be withdrawn, as the case may be, unless the applicant satisfies him that the subject of the application or claims constitutes an invention. Se...

Section 44. Examination as to substance Section 44(1) Deleted by ActNo. 11 of 2017, Sch. Section 44(2) Where an application for a patent satisfies the requirements specified in subsection (7) of section 41 , the Managing Director shall so notify the applicant who shall, within five years from the filing date of the application, submit a request in the prescribed form for the examination of the application pursuant to the provisions of subsection (3): Provided that where no request is made within the prescribed period, the application shall be deemed to be abandoned. Section 44(3)(a) the invention in respect of which the application is made is patentable within the meaning of this Act; Section 44(3)(b) the application complies with the requirements of subsections (5) and (6) of section 34 ; and Section 44(3)(c) the application complies with the requirements of unity of invention prescribed in section 35 . Section 44(4) Deleted by ActNo. 11 of 2017, Sch. Section 44(5) Deleted by ActNo. 11 of 2017, Sch. Section 44(6) Deleted by ActNo. 11 of 2017, Sch. Section 44(7) Where the Managing Director is of the opinion that any of the conditions referred to in subsection (3) are not fulfilled,...

Section 45. Grant, registration and publication of a patent Section 45(1) Unless an application has been rejected under or a patent has been refused under section 41 or 44 , a patent shall be granted and issued to the applicant in the prescribed form. Section 45(2) Every patent granted under subsection (1) shall be registered, and shall, as soon as reasonably practicable, be published by the Managing Director in the manner prescribed in the regulations. [Act No. 11 of 2017 , Sch.]

Section 46. Register of patents Section 46(1) The Managing Director shall maintain a register in which all patents granted under this Act shall be recorded and numbered in the order of grant, and, in respect of each patent, where appropriate, its lapse for non-payment of annual fees and all transactions to be recorded by virtue of this Act. Section 46(2) Any person may, during working hours, inspect the register maintained under subsection (1) and may, subject to the payment of the prescribed fee and any regulations made under this section, obtain extracts therefrom. Section 46(3) The details concerning the register shall be prescribed by the regulations.

Section 47. Appeals Section The applicant may appeal to the Tribunal against any decision by which the Managing Director accords a filing date, rejects the application, treats the application as if it had not been filed, considers any of the claims to be withdrawn or refuses to grant a patent.

Section 48. Interpretation of Part VI Section For the purposes of this Part— "international application" means an international application filed in accordance with the Patent Co-operation Treaty and the Regulations established thereunder; "Receiving Office", "designated Office", "elected Office", "international publication", "international search report", "international preliminary examination report", and the words "to designate" and "to elect" have the meanings respectively assigned to them in the Patent Co- operation Treaty.