IMPLICATIONS OF RECENT AMENDMENTS TO THE INDUSTRIAL PROPERTY ACT

Friday, July 14, 2017
  • SHARE THIS ARTICLE

The Statute Law (Miscellaneous Amendments) Act No. 11 of 2017 amended several sections of the Industrial Property Act No. 3 of 2001 (the Industrial Property Act), effective 4 May 2017.

We highlight two key amendments to the Industrial Property Act that will have far reaching implications for owners of intellectual property (IP) as well as legal practitioners in the area of IP. These two amendments relate to Sections 44 and 103 of the Industrial Property Act.
 
Section 44 (2) of the Industrial Property Act has been deleted and substituted by a new provision that increases the period for requesting substantive examination from three years to five years from the international filing date. This amendment was made to address the challenges of filing Patent Cooperation Treaty (PCT) applications which enter national phase in the 30th month (2½ years) from the international filing date. Prior to the amendment, such applicants had only about six months to request substantive examination, a  period which was considered short, bearing in mind that most of the applicants were not based in Kenya.

Section 103 has been amended by deleting subsection (2) which was inconsistent with subsection (1). Subsection (2) set a nine month time limit from the date of publication, to request the Industrial Property Tribunal to revoke or invalidate a patent, utility model or industrial design.  However, there was no time limitation under subsection (1). The uncertainty caused by subsections (1) and (2) resulted in much litigation before the Industrial Property Tribunal and the High Court of Kenya. Following the amendment, there is currently no time limitation to request the Industrial Property Tribunal to revoke or invalidate a patent, utility model or industrial design.

In our view, the amendment to Section 44 (2) provides greater certainty in prosecution of patent applications as it increases the period for requesting  substantive examination from three to five years from the international filing date. The amendment to Section 103 to delete subsection (2) eliminates the contradictions that were inherent in Section 103.

For further assistance please contact John Syekei, Partner and Head of Intellectual Property practice, or your relationship partner at Bowmans Kenya.