Tuesday, 24 March 2009

Kenya: Sanitary patent wars


As posted earlier here, the High Court of Kenya has declined to grant a temporary injunction to restrain the Sanitam (the defendant) from threatening Rentokil’s (the plaintiff) clients over a sanitary bin.

The plaintiff made the application for temporary injunction after the defendant wrote letters to the plaintiff’s clients warning them to stop using sanitary bins supplied by the plaintiff, which the defendant considered an infringement of its patent AP 773.

In an affidavit by its financial director, the plaintiff acknowledged the continuing dispute between the parties over sanitary bins. It will be recalled, as posted here that the dispute between the two started back in 1999 when Sanitam sought but was denied by the High Court an injunction against Rentokil for infringing the patent. The injunction was finally granted by the Court of Appeal in 2006, and Rentokil was restrained from infringing the patent for “the life of the patent”.

In the present dispute, it would appear that Rentokil developed a new bin by changing certain features in its bin to distinguish it from that of Sanitam. In its application before the Court, the plaintiff focused on the features of the new bin to argue that the two bins were different and that the defendant was seeking to enforce a patent over a completely different bin.

After reviewing the “conditions for grant of an interlocutory injunction in East Africa”, Kimaru J dismissed the application pointing out that the plaintiff had failed to establish a case.

The ruling brings out a number of issues. First is the way the parties presented their arguments. It would seem that the plaintiff set the ground for what seemed like a case of threat of infringement proceedings, but then proceeded to base its argument on differences between the bins, in essence arguing that the defendant was seeking to enforce a patent over a product that was completely different from the patent one. It would seem that the plaintiff by design or inadvertently shifted attention perhaps from what would have been the main thrust of argument i.e. the threatening letters issued by the defendant. Instead, the plaintiff focused on the defendant’s patent.

From there on the issue before the court was whether the bins were similar or not. This line of argument seems to have worked in favour of the defendant who presented evidence that was accepted by the Court that the bins were similar.

It is debatable whether the court would have arrived at a different opinion if the plaintiff had pursued the matter under section 108 of the Industrial Property Act (the Act), which provides for injunction and damages against a party issuing threat of infringement. Interestingly the defendant swore that it wrote to various entities, warning them of consequences they were likely to face for infringing the patent!

The defendant presented an expert report to substantiate that the two bins were similar to the extent that all the plaintiff had done was to change the external angles of the bin to suggest a change but the working of the mechanism was the same as that of the defendant’s patent. The Court seems to have been persuaded by this report, and agreed with its finding that the two bins perform the same function in the market place!

The previous dispute between the parties culminating in the Court of Appeal decision in 2006 in favour of Sanitam seems to have also worked against the plaintiff. The Judge noted with approval the recognition given by the Court of Appeal on the validity of the patent, and it seems that the court was not ready to entertain any contradicting view. In the end the modifications made on the plaintiff’s bin were termed as cosmetic.

At some point the court made a number of pronouncements that do not seem to be clear or relevant to the issue under consideration. In dismissing the application the Court was of the view that although the plaintiff claimed that its sanitary bin was different to the patented one, the plaintiff did not present evidence to suggest it had attempted to patent its modified bin. The relevant of this pronouncement is not clear, as it is not necessary for one to have patented a rival widget to have it recognized as being different from an existing one. It is also true that a second patented widget may also infringe on an earlier patented widget.

While acknowledging that the plaintiff could have designed its bin to be different from that of the defendant, the Court was however of the view that the only institution capable of determining whether the two bins were different is the patent office- KIPI.
According to the Court, it is not its duty to determine whether the invention that is the subject of litigation conforms to the patent or not, rather the duty of the Court is to uphold a registered patent. These statements seem to contradict the final opinion of the Court whilst dismissing the case on the ground that the plaintiff had failed to establish that its bin is different to the patented one!

It is also not clear why the plaintiff pursued the matter in the High Court rather than with the Industrial Property Tribunal. The Tribunal, established under section 112 of the Act is mandated at first instance to hear matters such as infringement and threats of infringement. It is upon the decision of the Tribunal that a party can appeal to the High Court. Under section 115 (2) of the Act, the High Court, upon hearing of the appeal, may confirm, set aside or vary the decision of the Tribunal.

From the foregoing, it follows that contrary to its view that it can only uphold a registered patent the Court also has the mandate to determine whether a patent is infringed or not. In doing so, it is necessary to determine whether the accused widget falls within the ambit of the claims under the patent. The extent to which KIPI could determine whether the two widgets are the similar or not is during the patent granting procedure, and once a patent is granted the mandate of the patent office ends. If any dispute arises thereafter as in the present case, it is incumbent upon the Court to make that determination. A patent office is hardly equipped to determine issues of patent validity. Suffice to say that a big number of granted patents are routinely invalidated by the courts.

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