African intellectual property law, practice and policies. This weblog provides news, information and comment on IP law, practice and business deals right across Africa. Ce blog propose des actualités, informations, et commentaires sur la législation et la pratique en matière de propriété intellectuelle et de droit des contrats d'affaires en Afrique. For some insight into the origins of this blog click here.
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.