Protecting Industrial Property Rights

International Applications

Applying for a Patent Outside

Kenya Obtaining a Kenyan patent does not protect your invention in another country. If you wish such protection, you will have to apply for foreign patents. Suppose for example, you have invented a vaccine against East Coast Fever in cattle and hope to cover the market in countries where the vaccine may be in demand. You will probably want a patent not only in Kenya, but also in most countries in Africa where East Coast Fever is a major cattle killer and the vaccine can be used to control the disease. You might also want a patent in other countries in the world where East Coast Fever is prevalent, otherwise, someone in one of those countries might copy your invention and market it in competition with you. You may apply for a foreign patent through the Institute (KIPI) under: -

1. Patent Co-operation Treaty (PCT) administered by World Intellectual Property Organization (WIPO) in Geneva, Switzerland covering over 100 countries of the world. A single application is sufficient to cover those countries.

2. African Regional Industrial Property Organization (ARIPO) in Harare, Zimbabwe to cover the following 14 African countries: Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Sudan, Swaziland, Uganda, Zambia, Zimbabwe, Tanzania and Sierra Leone.

In some countries, for example you lose the right to a patent if your invention is disclosed before the filing date. (Remember in Kenya there is an exception i.e. you can still apply for a patent within 12 months from the date of disclosure). This is not the case in most other countries. Many countries require that your patented invention be manufactured or otherwise worked in that country within a certain period, usually three years. In some places you may have to allow some other company or an individual to work out your invention (i.e. granting a licence).

Patent Co-operation Treaty (PCT)

An application for a foreign patent is made possible through a treaty called the Patent Co-operation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) in Geneva. It provides standardized international filing procedure.

Under the PCT, you may file a patent application in over 100 member countries through, a single application filed in Kenya. This procedure is simpler than filing separate applications and enables you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agent's fee, you can file in one language and have up to 20 or 30 months to pay some of these fees. This gives you more time to raise capital or to conduct market studies.

When you file under the PCT, you will get a search report with a list of published documents that may be related to you application. It is also possible to obtain a preliminary examination with an opinion on the Patentability of your invention. This is no guarantee of a patent. National patent offices in the countries to which you apply reserve the right to conduct their own examinations, but they often accept the preliminary examination report. This means you will receive a fairly reliable indication of whether it is worthwhile to seek multiple patents in foreign countries before fees are due.

Your application for a foreign patent filed under PCT through the Institute must be in English. You may also be required to provide translation into the language of the designated countries in those countries. The International Bureau publishes the PCT application after 18 months from the date of filing. Only nationals and residents of Kenya can file under the PCT in Kenya.

Receiving office

The Institute acts as a receiving Office where an international application is filed with it by a national or a resident of Kenya. An international application filed with the Institute as the receiving office under the Patent Co-operation Treaty should be in triplicate; be in English; and be accompanied by the transmittal fee.

Designated or elected office

The Institute acts as a designed Office or an elected Office in the case of any international application in which Kenya is designated or elected for a national patent. The functions of the Institute are performed in accordance with the provisions of the Patent Co-operation Treaty, the regulations made thereunder and the administrative instructions issued under the said regulations and with the provisions of this Act and the regulations pertaining thereto, provided that in case of conflict, the provisions of the Patent Co-operation Treaty, the regulations and the administrative instructions issued thereunder shall apply.

Entry of international application to national phase.

An international application in which Kenya is designated may, on request, be treated as an application under the Act if the application is filed in the Institute within the time limit set out in Article 22 or 39 of the Patent Co-operation Treaty. Form IP 13,though not mandatory, should be used for purposes of entering the national phase.

Unsearched or unexamined international applications

Where an international search report is not established or relates to only one or some of the claims of the international application, the international application may be rejected or the claim or claims not covered by the report be considered withdrawn , as the case may be.

Where the international search report relates to only one or some of the claims due to the applicant’s refusal to pay additional fees, those parts of the international application which consequently have not been searched are considered withdrawn unless the applicant divides out from the application as provided for or satisfies the Managing Director that the invitation to pay the additional fees was not justified.

Where an international preliminary examination report with respect to an international application has been communicated to the Managing Director the following paragraphs apply:-

1. where, in the case of lack of compliance with the requirements of unity of inventions, the international preliminary examination report indicates that the international preliminary examination was carried out on restricted claims, or was carried out on the main invention only, those parts of the international application indicated as not having been the subject of international preliminary examination will be considered withdrawn unless the applicant divides out from the application as provided for or satisfies the Managing Director that the invitation of the international preliminary examining authority was not justified; and

2. where the international preliminary examination report states, with respect to the entire international application or one or some of its claims only, the opinion that a defect under Article 34(4)(a) of the Patent Co-operation Treaty exists under the international application or the claim or claims, as the case may be, will be considered withdrawn unless the applicant satisfies the Managing Director that the defects do not exist.

The Managing Director may refuse to grant a patent upon the application if it is apparent from an international search report or an international preliminary examination report that an invention claimed in an international application does not fulfill the requirements of novelty, unless the applicant either satisfies him that the requirements have been fulfilled or amends the claims in such a way that fulfils the requirements.

Conversion of refused international application.

An international application in which Kenya is designated may, on request, be treated as an application under the Act if a refusal, declaration or finding described in Article 25 of the Patent Co-operation Treaty was made and the refusal, declaration or finding was the result of an error or omission on the part of the receiving Office or the International Bureau. The request should be in Form IP 14 and should be accompanied by a statement of the facts upon which the applicant relies. The date of filing, for the purposes of the treatment of an international application as a national application, shall be the date of filing of the international application under the Patent Co-operation Treaty.

If you want more information about filing a PCT application read the PCT applicants Guide which is available in the Institute or visit WIPO's website.