Section 2 of the Industrial Property Act, Cap 509 of the Laws of Kenya (IPA) defines utility model to mean
‘any form, configuration or disposition of element of some appliance, utensil, tool, electrical and electronic circuitry, instrument, handicraft mechanism or other object or any part of the same allowing a better or different functioning, use, or manufacture of the subject matter or that gives some utility, advantage, environmental benefit, saving or technical effect not available in Kenya before and includes micro-organisms or other self- replicable material, products of genetic resources, herbal as well as nutritional formulations which give new effects.’
Utility models is a form of exclusive right granted to inventors, empowering them to prevent unauthorized use of their inventions for commercial purposes within a specified territory for a limited period of time, without their explicit consent.
A Patent, on the other hand, is an exclusive right granted for an invention. Section 21 of IPA defines an invention to mean ‘a solution to a specific problem in the field of technology’ which encompasses a product or a process.
However, not all inventions are patentable. Section 30 of IPA provides that the right to a patent shall belong to the inventor. A patent gives its owner the exclusive right to forbid or restrict others from using their invention for profit for a predetermined amount of time, to which Section 60 of IPA provides that in Kenya, a patent shall expire at the end of twenty years from the filing date of the application. Furthermore, a patent prevents others from making, using, importing, selling, or distributing the invention for profit without the patent owner’s permission. Consequently, the exclusive rights encourage the patent holder to carry out more study and development.
Characteristics of patents
Section 22 of IPA espouses that for an invention to be patentable it has to be:
New or novel; Section 23 of IPA goes forth to describe an invention as new or novel when it is not anticipated by prior art. Prior art encapsulates any information made accessible to the public worldwide by written disclosure, including drawings and illustrations, oral disclosure, usage, exhibition, or other non-written means.
Involve an inventive step; Involving an inventive step entails the invention would not have been obvious to a person skilled in the art to which the invention pertains at the date of the filing of the application for the patent or, if priority is claimed, on the priority date validly claimed in respect thereof.
Industrially applicable; An invention is deemed industrially applicable if, given its nature, it may be applied in any industry, including fishing, medical, agricultural, and other services sectors.
Registration process for patents in Kenya
Section 33 of IPA provides that application is done by filing a patent specification together with the necessary forms and application fees with the Managing Director at the Kenya Industrial Property Institute (KIPI) office. The application entails request, description, claims, drawings (where necessary) and abstract. The request consists of the title of the invention, name and prescribed data of the applicant, their residence as well as signature. In the event the applicant’s ordinary residence or principal place of business is outside Kenya, he shall be represented by an agent who shall be a citizen of Kenya admitted to practice before the Institute.
There are instances where the applicant is not the inventor and as such the request must be accompanied by a statement justifying the applicant’s right to the patent. The description, on the other hand, discloses the invention providing background information, stating its technical field, the problem the invention is to solve including any drawing and relevant deposits as in the case of micro-organisms and self-replicable material which are essential for the understanding of the invention. The claim must be clear and concise specifying the subject matter for which protection is sought and fully supported by the description. Subsequently, the abstract should not contain economic merits or personal information rather it is only be used for technical informational purposes.
An application number and filing date are assigned when it is approved for filing, and 18 months after the filing date, the application is published. In order to avoid having their application considered abandoned, applicants must formally seek a preliminary examination and search after paying the examination costs within three years of the date of filing.
If the applicant satisfies the conditions outlined in Industrial Property Act regarding patentability, the patent is registered, awarded, subject to the payment of grant, maintenance, and publishing costs and published in the industrial property journal.
Characteristics of utility models
The following conditions must be satisfied for an invention to be eligible for a utility model as envisaged under Section 82 of IPA:
New; The invention must not have been disclosed to the public anywhere in the world before the filing date of the application. The inventions, unlike those in patents, must not be absolute but should be possible to duplicate or reproduce them.
Industrially applicable; The invention must be capable of being used in a process or in a product in any kind of industry.
Registration process for utility models in Kenya
First, a preliminary search should be carried through the KIPI databases to confirm the model’s uniqueness and ensure it has not been registered by another party before. Subsequently, the applicant has to prepare the utility model application, which entails information such as title of the utility model, the applicant’s name and address, and an extensive description supported by illustrations or diagrams. Furthermore, the applicant completes the KIPI-provided utility model application form and files the application with KIPI by paying the necessary application fee.
The utility model application is formally reviewed by KIPI in order to ensure sure it complies with every requirement and formalities. In the event it passes the formal assessment, the application moves on to the publishing phase, when its specifics are made available for public scrutiny in the Kenya Industrial Property Journal. Subsequently, individuals who seek to oppose the utility model’s registration do so during the publishing period, which usually lasts for around 60 days.
In the event there are any oppositions raised, KIPI ensures to resolve them. Subsequently, KIPI performs a substantive examination to evaluate the utility model’s inventiveness and novelty after the opposition period, or after any oppositions have been resolved. The applicant receives a utility model certificate from KIPI verifying its registration if the application satisfies the necessary requirements. Nevertheless, in order to maintain the utility model registration in effect, the applicant must pay annual maintenance costs.
Differences between utility models and patents
– The primary distinction between utility models and patents is that patents seek the inventive step requirement, whereas utility models do not. Patentability of an invention depends on the inclusion of an inventive step while a unique and industry-applicable utility model is sufficient.
– Utility models have a shorter protection period than patents. Section 82 of IPA espouses that a registration certificate for a utility model shall expire at the end of the tenth year after the date of filing of the application in respect thereof, and shall not be renewable while Section 60 of IPA provides that a patent shall expire at the end of twenty years from the filing date of the application.
– Utility models are subject to less strict registration requirements; that is, protection for utility models is frequently sought for improvements that fall outside of the patentability standards but yet have an incremental nature.
– Only in specific technical domains and for products, not processes, can protection of utility models be acquired.
– Utility model registration is easier and quicker. The scrutiny is a little more relaxed than for patents, which need a thorough and rigorous investigation.
This article is for informational purposes only and should not be construed as a legal opinion. If you have any queries or need clarifications, please do not hesitate to contact Gregory Makambo, Partner, (gmakambo@makambolaw.com), Chelsea Mukhebi, (cmukhebi@makambolaw.com) or your usual contact at our firm, for legal advice.