Thursday, 16 May 2013

Observations of a Patent Lawyer in Kenya 5: Frustrating Law


When an inventor comes to CIPIT seeking patent help, there is one part of the conversation that I always dread: section 55.
Sisyphus, Titian, 1549


Section 55 of the Industrial Property Act (i.e., the Kenyan patent law) deals with enforcement of rights, and states that the owner of a patent [i.e., an issued patent] has the right to enforce by means of injunctions and collecting damages. Section 55(c)(i) provides for provisional rights that can be enforced against someone infringing a claim of a published application, provided that the infringer has “actual knowledge that the invention that he was using was the subject matter of a published application” (emphasis mine).

Separately, section 42 states that publication of an application will occur after 18 months from the filing (or priority) date.

The effect of these two provisions is that a patent applicant has no legal right that s/he can enforce for 18 months after the filing date. So when I help the inventor file an application, s/he must wait 18 months before s/he can legally do anything in terms of enforcement.

In America it is possible to request for early publication, but there is no such provision in Kenya. This is an instance where the patent law does little to nothing to help an inventor, and several of my advisees have decided not to bother with a patent application because of this issue.

The best advice I can think of is that, sometimes, just being able to say “I have a patent application pending” is enough for an inventor to scare away some of the would-be copycats, or maybe force a competitor into licensing negotiations. But this is far from an ideal situation and is frustrating to inventors.

Any thoughts from our readers?

1 comment:

Njuguna said...

Isaac,

Thanks for the article. We also experience the same questions from applicants with regard to publication of applications after 18 months as provided under section 42 as you have rightly observed. In 2011, KIPI submitted a proposal to the AG for amendment of the IPA, including section 42 to provide for early publication more so with regard to utility model applications, which are also subject to publication after 18 months. That has not happened yet. As you may be aware, the calendar of parliament for the last 3 years has been hectic due to implementation of the 2010 constitution and the general elections early this year.