Thursday, 15 October 2009

Patent Tribunal rules that ARIPO patents cannot be revoked in Kenya

In a ruling that is likely to create a legal loophole and ambiguity in the patent system in Kenya, the Industrial Property Tribunal (Tribunal) has made a ruling that it has no jurisdiction to hear applications to revoke patents granted by ARIPO.

The ruling arises from an application by Chemserve Cleaning Services Ltd (Applicant) to revoke (the notorious) patent AP 773 held by Sanitam (EA) Services Limited (Respondent).

Before the application could be heard, the respondent filed a preliminary objection that the Tribunal lacks jurisdiction to hear and determine issues regarding an application to revoke a patent issued by ARIPO in that section 59 of the Industrial Property Act 2001 (the Act) only incorporates patents granted by ARIPO in relation to their effect in Kenya and that other issues such as revocation are not expressly stated in the section.

Under section 59, patents granted by ARIPO are recognized as valid in Kenya and are given the same effect as patents granted under the Act. Relevantly the section states that:
“A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act…”
The main issue between the parties was the meaning of the word “effect” in the section. According to the Tribunal the word simply means “the powers conferred to a right holder by the patent in Kenya.”

The Tribunal further canvassed on various provisions of the Harare Protocol and concluded that once an ARIPO patent is given “legal effect” in Kenya, the only matters it is mandated to adjudicate are infringement and compulsory licences. Pertinently it argued that where an application for revocation is filed under the Act, ordinarily it would have to peruse the registration file and on finding that the patent ought not to have been registered, it orders KIPI to remove the patent from the register. Accordingly the Tribunal held that since it had no mandate to order ARIPO to remove the patent from its register, it had no jurisdiction to revoke the patent!

The Tribunal’s interpretation of section 59 is problematic and raises numerous questions. It is recognized that patent rights are not absolute; there are limitations to the rights given to the patentee, and which can be raised as a defence by an alleged infringer. A common defence in infringement proceedings is invalidity of the patent. Having conceded it has jurisdiction to hear infringement proceedings, the question is how the tribunal would deal with a case where, for the example, the defendant argues invalidity of the patent, which if successful would call for revocation of the patent.

It would seem that there are now two sets of rules applying in Kenya; while on one hand the Tribunal cannot revoke a patent granted by ARIPO, it can nevertheless revoke a patent granted by KIPI as provided under section 103 of the Act!

At this point it is not clear what will happen next or whether the loosing party will make an appeal to the High Court. Afro-IP has been reliably informed that there are a number of revocation applications before the tribunal over the same patent.

The matter is further complicated arising from a number of rulings by the High Court and the Court of Appeal regarding the question of validity of patents once granted. In 2006 in the matter Sanitam services (E.A) Ltd v Rentokil (k) Ltd & another [2006] eKLR the court of Appeal made it clear that it had no capacity to determine validity of patents, and that only technical bodies such KIP[I] and ARIPO had the capacity to do so. Early this year, the High Court in Rentokil v Sanitam Civil Case No 702 of 2008 (unreported) held that “it is not the duty of th[e] court to determine whether the invention that is the subject of litigation conforms to the patent or not.”

See previous posts here and here .

2 comments:

Anonymous said...

David, i am petrified by that line of reasoning preferred by the Tribunal. Without even looking at the letter of the law, i would submit that the Harare Protocol does not oust the powers and jurisdiction of Member states to administer patents in accordance with their national laws. To this extent, a tribunal created to deal with Patent related disputes must have original and unfettered powers to pronounce itself on any Patent related issues.

To decide otherwise would be an affront on the legislative intention of the Kenyan Parliament which in my view could not have desired such a blantant lacunae to exist in the law. Paul

Njuguna said...

I do agree with Paul that the reasoning preferred by the Tribunal is not convincing. In as much as the tribunal held that revocation issues should be canvassed at ARIPO “as laid down in the Protocol", the Harare Protocol has no provision for revocation of a patent.

Secondly the Tribunal's interpretation of the word “effect” in section 59 is also not convincing. My view is that rather than looking at the word "effect" in isolation, perhaps the Tribunal should have reviewed the entire section and then ask itself the question “what is the effect in Kenya of a patent granted under the Kenyan Act”. Contrary to the Tribunal’s view, the effect of a patent is much broader than the powers conferred upon the patentee, and even if that was the case such powers have limitations.