Thursday 20 October 2011

Darren Olivier


Last week Afro Leo promised a summary of a groundbreaking patent decision to come out of Kenya from John Syekei (Coulson Harney, who represented the requesting parties, Vestergaard Frandsen). Here it is - thanks John:

"The Kenyan Industrial Property Tribunal, a judicial body established under the Industrial Property Act (“the Act”) with powers, inter alia, to determine disputes related to Patents and Industrial designs, handed down a ground breaking decision on pre- grant entitlement actions in relation to patent applications pending grant at the Kenyan Patent registry.

In the decision, IPT No 50 of 2010, Reference of a Matter to the Tribunal by the Managing Director under Section 118 of the Act between Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd on one hand and Intelligent Insect Control S.A.R.L and Ole Skovmand, the Tribunal dealt with a material question on the recognition of and manner of procedure involved in the conduct of pre- grant entitlement proceedings in respect of a patent application in Kenya. The significance of the matter before the Tribunal was twofold in that, while on the one hand while section 30 of the Act impliedly recognized this right as being available to an aggrieved person, on the other hand it was silent as to form, costs, timelines and procedure.

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. 

On instructions from the requesting parties, we filed the reference under section 31 of the Act arguing that under Rule 37 of the rules subsequent to the Act, a party was entitled to approach the Tribunal to determine the appropriate mechanism, procedure and forms for the prosecution of a pre grant entitlement proceeding as the law was silent in this respect. As such we invited the Tribunal to take charge and create a forum for such actions which it was empowered to do, thus developing this important aspect of Kenyan patent law as it allowed an entitled aggrieved party some respite before grant. Normally, without such a forum, a party would have to challenge a granted patent by way of a revocation proceeding which is not only costly but also ineffective in the sense that there is a time lag between the time a patent application is noticed by an affected party and the time that it is published which may be 2 to 3 years. This would have implications on an affected party justly entitled to the patent in that no action can be taken on the patent for that period because of this lacuna in the law and may affect the effectiveness of the entitled party to consolidate and derive commercial benefit from its patent rights, including its entitled patent pending grant.

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."

Darren Olivier

Darren Olivier

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Write comments
19 July 2013 at 16:52 delete

This is very interesting. Has the Tribunal made the final decision on ownership of the Invention? I would be very interested in knowing what guidelines the Tribunal will use in resolving the issue of ownership.

22 July 2013 at 11:40 delete

There is no decision to be made by the Tribunal. The Tribunal may have bitten more than it could chew as the advice was not supported by the law. It seems that the parties did not proceed as "advised."