Friday, 5 June 2015

Tales from a Kenyan Patent Agent: the Utility Model, friend or foe?

This blogger has taken a bit of a hiatus, but welcomes the inspiration to write about his favorite subject: Utility Model Certificates (UMCs). Specifically, from an IP practitioner perspective, let's investigate whether UMCs are the inventors best friend or the proverbial wolf in sheep's clothing.
Halt! Who goes there?
(Getty Images) 

Inventors seeking to patent are inevitably faced with a decision - go for a patent, or go for a UMC? Both options have pros and cons, and the decision is always case specific.

The great part about a patent (in Kenya, or ARIPO, at least), is that the patent office does a substantive examination. The patent is therefore very likely to be assumed valid by a court in infringement proceedings. Indeed, there are patent cases in Kenya where the judge refuses to address whether the patent is valid, stating that the patent office is the venue for such analysis. This, of course, is quite different from litigation in most developed countries, where patent validity is part of nearly every patent trial. It is also, in this blogger's opinion, a reasonable decision by any judge that does not have the technical or legal expertise to judge the validity of a patent.

The drawback about a patent application is, lo!, that the patent office does a substantive examination. Thus a patent applicant takes the risk that the patent office will reject the application, leaving him/her with absolutely nothing but a patent application publication (which, it must be said, discloses the invention and exposes the applicant to further copycatting!).

The great part about a UMC is that there is no substantive examination. (There used to be substantive examination in Kenya, but this practice has stopped.) So a UMC applicant is guaranteed to get a UMC. This is true for UMCs in most countries around the world, and is essentially equivalent to the registration system of patenting in South Africa.

The (huge) drawback about a UMC is (lo, again!) that there is no substantive examination. So, when the applicant gets the granted UMC, s/he has no idea whether it's valid and would stand up in a court proceeding. Should I sue an infringer? Will it be a waste of money since the UMC is likely invalid?  Is the court going to even address validity? These are the questions that will forever plague a UMC holder. A patentability search/analysis can give some idea of the likely outcome, but is by no means a guarantee.

Then of course is the option to apply for a patent, and convert the application to a UMC application if the examination is negative. This seems an attractive option but is quite risky - if the examination is negative, then the resulting UMC will have a file history explaining to any future judge exactly why the application was not novel and/or not inventive.

Decisions, decisions, decisions.....

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