Friday, 23 May 2014

No More Examination of Utility Models in Kenya

Patenting in Kenya just got a bit more South African.

The April edition of the Kenya Industrial Property Institute (KIPI) journal, available here, announces that KIPI will no longer do any substantive examination of Utility Model Certificate (UMC) applications. In KIPI’s words:
Examining a UMC
"The Night Before the Examination"
Pasternak, Leonid


Following a review of the practice in the Institute with regard to the processing of utility model applications, the Institute has decided to discontinue the carrying out of substantive examinations in relation to utility model applications with effect from 1 May 2014 in order to align the practice with the Industrial Property Act, 2001. However, such applications shall continue to be subject to examination for compliance with all the other requirements of the Act and Regulations.

By “all the other requirements” is meant checking the formalities of the application as well as checking for non-patentable subject matter (e.g., discoveries, scientific theories, business methods, plant varieties, etc.). Thus, an application for a UMC will be reviewed for such compliance and then will automatically be published and granted. 

This Leo has two problems with the announcement:

1. Automatically granting UMCs makes patenting in Kenya, essentially, a registration system rather than an examination system. Regular AfroIP readers will know that South Africa is currently in a high-stakes effort to do the reverse conversion – i.e., from a registration system to an examination system. The benefits (to humanity, at least) of examination have been thoroughly discussed on this blog and others (see, e.g., here), particularly with respect to the pharmaceutical industry.

2. The announcement is not, on the face of it, consistent with the law. Although UMCs lack a requirement for inventive step, they do come with a requirement for novelty. How can KIPI assure the public that granted UMCs describe novel inventions if there has been no substantive examination? The answer is that it cannot, so we are essentially guaranteed that invalid UMCs will be granted.

This Leo and his colleagues will soon be undertaking to prepare a more thorough legal argument supporting or not supporting KIPI’s decision. In the meantime, comments from readers would be most welcome. Is this a popular move by KIPI?

2 comments:

Anonymous said...

Two comments:
1. The new rule ONLY applies to utility models. Patent applications continue to be subject to substantive examination.
2. Section 82(2), IP Act specifically excludes utility model applications from the application of sections 43 & 44 relating to international type search and examination as to substance respectively.

Caroline Ncube said...

I don't think that this is necessarily a bad development as it is only second tier patents that will not be examined. Many jurisdictions do not examine second tier patents (e.g. Australia's Innovation Patent system). A good overview of such systems is Uma Suthersanen,Graham Dutfield and Chow Kit Boey (eds) Innovation Without Patents: Harnessing the Innovative Spirit in a Diverse World, (Edward Elgar, 2007). If I am reading South Africa's draft IP Policy correctly, if second tier patents are introduced, they will not be examined either.