Protecting Industrial Property Rights

Rights of an applicant

The applicant or the owner of the invention has the following rights: -

1. to be granted the patent, where the relevant requirements are fulfilled;

2. after the grant of the patent and within the limits defined below to preclude any person from exploiting the patented invention in the manner referred to in section 53; and

3. to conclude licence contracts as provided for in the Act.

Obligations

The applicant or the owner of the invention has the following obligations -

1. to disclose the invention in a clear and complete manner, and in particular to indicate at least one mode for carrying out the invention, in accordance with the requirements, and subject to the sanctions, applicable under the Act;

2. to give information concerning corresponding foreign applications and grants;

3. to pay fees to the Managing Director, as prescribed in the Act and the regulations, subject to the sanctions provided for therein; and

4. in connection with licence contracts and contracts assigning patents or patent applications, to refrain from making undesirable provisions referred to in section 69.

Rights of owner of a patent

The owner of the patent has the right to preclude any person from exploiting the protected invention by any of the following acts -

1. when the patent has been granted in respect of a product -

1. making, importing, offering for sale, selling and using the product; or

2. stocking such product for the purposes of offering it for sale, selling or using the product;

2. when the patent has been granted in respect of a process -

1. using the process, or doing any of the acts referred to in paragraph (1), in respect of a product obtained directly by means of the process.

Enforcement of rights

The owner of a patent has the right -

1. to obtain an injunction to restrain the performance or the likely performance, by any person without his authorization, of any of the acts referred to above; and

2. to claim damages from any person who, having knowledge of the patent, performed any of the acts referred to above, without the owner’s authorization.

3. to claim compensation from any person who, without his authorization, performed any of the inventions, claimed in the published application, as if a patent had been granted for that invention; Provided that the said person, at the time of the performance of the act, had -

1. actual knowledge that the invention that he was using was the subject matter of a published application;

2. received written notice that the invention that he was using was the subject matter of a published application, such application being identified in the said notice by its serial number.

Right of a prior user

A patent has no effect against any person (hereinafter referred to as “the prior user”) who, in good faith, for the purposes of his enterprise or business, before the filing date or, where priority is claimed, the priority date of the application on which the patent is granted, and within the territory where the patent produces its effect, was using the invention or was making effective and serious preparations for such use; any such person has the right, for the purposes of his enterprise or business, to continue such use or to use the invention as envisaged in such preparations. The right of the prior user may only be transferred or devolve together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made.

Scope of protection

The scope of protection is determined by the terms of the claims but the description and the drawings included in the patent may be used to interpret the claims.

Limitation of rights

The rights under the patent extend only to acts done for industrial or commercial purposes and in particular not to acts done for scientific research. The rights under the patent do not extend to acts in respect of articles which have been put on the market in Kenya or in any other country or imported into Kenya. The limitation on the rights under a patent above, extends to acts in respect of articles that are imported from a country where the articles were legitimately put on the market. The rights under the patent do not extend to the use of articles on aircraft, land vehicles or vessels of other countries, which temporarily or accidentally enter the airspace, territory, or waters of Kenya. The rights under the patent are limited by the provisions of the terms of the patent. The rights under the patent are limited by the provisions on compulsory licences for reasons of public interest or based on interdependence of patents and by the provisions on State exploitation of patented inventions. The rights of the patent do not extend variants or mutants of living forms or replicable living matter that is distinctively different from the original for which patents were obtained where such mutants or variants are deserving of separate patents.

See also

Exploitation of patented inventions by government

Guide to Patenting

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