Section 118 of the Act entitles the Managing Director, on his own motion or upon application by an affected person, to refer an unusual and /or complex point of law in relation to the interpretation of the Act to the Tribunal for directions. This is because the Tribunal is empowered to provide guidance on key issues as relates Kenyan patent law which is modeled on English patent law. The reference in this matter was based on section 118 and related to the question of whether pre-grant entitlement actions were recognized under Kenyan patent law and if so, what forms and procedure would apply.
The background of this matter, where the author represented the requesting parties, M/s Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd, global manufacturers of insecticide impregnated textiles, was that the requesting parties laid claim to a pending patent application filed into Kenya by M/s Intelligent Insect Control S.A.R.L ( applicant) and Ole Skovmand (inventor) on the basis that the inventor was employed by the requesting party during the time that he came up with the invention relating to the patent application. It was his job description to develop new processes and formulae in the development of the technology surrounding fabric impregnation with insecticides.
In arriving at its decision, the Tribunal rightly considered the nature of patent filings in Kenya and their examination. As noted by the Tribunal, examination of patents is important but the question as to the legality of an applicant in filing a patent is one best suited for determination by the Tribunal and not a patent examiner. The Tribunal cited Indian patent law in this decision and reached the conclusion that under Section 30 of the Indian law, the right to a patent is subject to a determination on the point of ownership. In Kenya, as is the case in many Commonwealth jurisdictions, the practice is that “the first to file” rule applies such that the person who files for a patent first normally obtains the rights to the patent upon grant as against the world and can enforce this limited monopoly. The mischief to be cured by a pre grant action would be to correct an anomaly where a patent application and related rights accrue to a person who lacks the legal rights to claim ownership yet maintains them until challenged via revocation, entitling such a person to enforce the rights as against third parties including the rightfully entitled party. In short, the Tribunal was of the view, and correctly so, that the question of ownership cannot be left to a patent examiner as they do not possess the requisite knowledge of patent law. This is further compounded by that fact that key legal questions would arise where an applicant to a patent was an employee of a third party and it was part of his job description to originate inventions that would be patentable. In addition, substantive examination of patents is limited to the technical issues of novelty, disclosure in prior art and possession of an inventive step and as such ignores the material issue of ownership.
The Tribunal held that pre grant proceedings are in aid of an examination of a patent application and must be conducted expeditiously to ensure that the entire process of prosecuting the patent application is not disrupted. Such actions must not be time consuming and expensive to prosecute.
Thus, in issuing directions by adopting a “purposive approach” to statutory interpretation, and in an effort to embrace international best practice, the Tribunal held that a pre grant proceeding which primarily deals with the question of ownership should be canvassed within 2 months before the Tribunal prior to grant by an affected party and shall be undertaken by use of a form similar to the one used in post grant proceedings (referred to as Form PR/IPT) such as revocation actions albeit with changes to reflect the nature of the proceedings. A claimant in such actions is now mandated to file its pre-grant arguments in written form within 10 days of written notice to the Tribunal and submission of the aforementioned form. It must annex supporting affidavits and documents in its possession as indicated in its Form PR/IPT.
In conclusion, this determination by the Tribunal was welcomed as it developed Kenyan patent law and provided a legal exception to the first to file rule at pre grant stage where questions of ownership arise. In effect, a party filing for a patent in Kenya must be the rightfully entitled party, through invention or otherwise."