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The Kenya Patent Law: Promoting Local Inventiveness or Protecting Foreign Patentees?

Published online by Cambridge University Press:  28 July 2009

James Otieno Odek
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African countries, in particular Kenya, have recognized the role of science and technology in long-term economic adaptation and development. Consequently, they have turned to national planning with emphasis on science and technology. In this respect, the goals of national planning are geared towards enhancing the transfer and acquisition of foreign technology and the promotion of local inventive capacity. In Kenya, the importance of these goals is reflected in the enactment of a new patent law embodied in the Industrial Property Act of 1989.

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Articles
Information
Journal of African Law , Volume 38 , Issue 2 , Autumn 1994 , pp. 79 - 103
Copyright
Copyright © School of Oriental and African Studies 1994

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References

1 Formerly caps. 508 and 510 respectively of the Laws of Kenya.

2 Kenya Patent Registration Act, cap. 508 (Revised 1982), s. 9.

3 “At last! A miracle drug against Aids!” The Weekly Review, February 1990, 10–34.

4 See King'arui, Joseph, “Towards a national patent law for Kenya”Google Scholar in Juma, Calestous and Ojwang, Jackton B., Innovation and Sovereignty —The Patent Debate in African Development, Nairobi, 1989, 209–216.Google Scholar

5 Ibid.

6 Helleiner has argued that all new technologies are inappropriate and that is why we have modifications such as increased shifts, alteration in equipment, increased work speeds and so on. This argument puts emphasis on the functional aspect of new technology. A question that arises is whether it is only the functional aspect of a technology that makes it appropriate. See Helleiner, G. K., “International technology issues: southern needs and northern responses” in Bhagwati, J. (ed.), The New International Economic Order, Cambridge, MA, 1986, 295 at 306.Google Scholar

7 Joseph King'arui, op. cit., at 214.

8 The PCT establishes an International Searching Authority and an International Examination Authority that carries out international searches and examinations as to substance. Because these PCT authorities have skilled personnel and facilities, Kenya ratified the PCT Treaty in order to make use of its personnel and facilities for examination as to substance.

9 O'Brien, Peter, “Developing countries and the patent system: an economic appraisal”, (1974) 9 World Development at 32.Google Scholar

10 Section 40(3) of the Kenya Industrial Property Act 1989. Unless otherwise stated, all statutory references in the footnotes are references to this Act.

11 Preamble to the Kenya Industrial Property Act 1989.

12 Section 3(2).

13 Section 125.

14 Section 3.

15 ARIPO patents are regional patents granted under the ARIPO Protocol. For details of this patent, see the text of the Treaty establishing the African Regional Industrial Property Organization (ARIPO) in WIPO, Industrial Property, December 1989 Text 1–002.

16 Section 32(3).

17 Section 3(6) of the ARIPO Protocol.

18 Section 18(2) provides that: “Where 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 Office.” Section 21(1) states that “a patent application may contain a declaration claiming priority as provided for in the Paris Convention †”. Section 26(1) stipulates that “the Director may direct that any application found in order as to form be subject to an international-type search”, and section 31 stipulates that an “international application means an application filed in accordance with the Patent Cooperation Treaty …”.

19 Section 22(5).

20 Section 31.

21 It has been argued that the first to file rule is detrimental as it forces everyone to file abbreviated and hurried applications, some of which are bound to include incomplete and erroneous information. It would also force everyone to file much more frequently both to secure the earliest date for each new idea and to complete and correct the incomplete and erroneous information in hurriedly filed prior applications. This implies increased costs to the user, reduction in the quality of patents due to errors and an increased burden on the patent examination office. Katona, Gabriel P., “First to file—not in the United States” (1991) 73 Journal of Patent and Trademark Office Society 399 at 402Google Scholar. For a discussion of the advantages and disadvantages of adopting a first to file rather than a first to invent rule, see Wiggs, Blake R., “Canada's first to file experience-should the U.S. make the move” (1991) 73 Journal of Patent and Trademark Office Society 493 at 494–496Google Scholar. See also Wrenn, Gregory J., “What should be our priority—protection for the first to file or the first to invent?” (1990) 72 Journal of the Patent and Trademark Society 872–891.Google Scholar

22 The Patent Act of 1793, ch. 11 Stat. 318 (1793) (codified as amended at 35 U.S.C. S. 102(g) (1990)). See also, Stewart, Terence P. (ed.), The GATT Uruguay Round: A Negotiating History (1986–1992), Vol. 11, Boston, 1993 at 2292.Google Scholar

23 Section 21.

24 UNCTAD, Historical Trends in Protection of Technology in Developed Countries and their relevance for Developing Countries, New York, 1990 at 7.Google Scholar

25 Section 8(2).

26 Meller, Michael N., “Patenting on the Isar—the central procurement of patents in Europe”, (1985) 67 Journal of Patent and Trademark Office Society 179 at 189.Google Scholar

27 Section 45(1) and (2).

28 Section 7.

29 Section 10.

30 Section 8.

31 (1982–88) 1 Kenya Appeal Reports 919 at 923.

32 (1938) 55 Report on Patent Cases 31.

33 Section 9.

34 U.S. 147 (1950) at 154.

35 For a discussion of this notional skilled person, see Tresansky, John O., “PHOSITA-the ubiquitous and enigmatic person in patent law”, (1991) 73 Journal of Patent and Trademark Office Society 37–55Google Scholar. PHOSITA is an abbreviation for “Person Having Ordinary Skill in the Art”. See also, Ebert, Michael, “Superperson and the prior art”, (1985) 67 Journal of Patent and Trademark Office Society 656–662.Google Scholar

36 Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., (1985) PRC 59.

37 (1989) Report of Patent Cases 147 at 154 and 242.

38 Section 10.

39 In contrast, in the U.K., the concept of industrial application is equated with technical effect, that is, if the use or working of the invention produces some tangible and physical consequences or if the invention is itself a physical entity (as opposed to information), then the requirement is met.

40 Section 11.

41 Cap. 326 of the Laws of Kenya.

42 See Gutmann, E., “The protection of biotechnological inventions within the framework of the European patent organization and, more particularly, in France”, Industrial Property, October 1991 at 377, 379.Google Scholar

43 Plasmids are small circular molecules of double stranded DNA that occur naturally in both bacteria and yeast, where they replicate as independent units as the host cell proliferates. See Hampar, Berge, “Patenting of recombinant DNA technology: the deposit requirement”, (1985) 67 Journal of Patent and Trademark Office Society 567 at 572, n. 12.Google Scholar

44 Official Journal of the European Patent Office, 1/1982 at 19.

45 Bozicevic, Karl, “Distinguishing products of nature from products derived from nature”, (1987) 69 Journal of Patent and Trademark Office Society 415–426.Google Scholar

46 Diamond v. Chakrabarty, 100 S.Ct. 2204, 2208 (1980).

47 The U.S.C. 100(b) defines the term “process” to mean process, art, method and includes a new use of a known process, machine, manufacture, composition of matter or material.

48 Section 11(b)and(c).

49 Section 12.

50 Section 6(3). The exclusions contained in the Kenyan Act resemble those in the BIRPI Model Law for Developing Countries on Inventions. (See WIPO publication no. 801 (e) Geneva 1965.)

51 LeRoy v. Tatham, 55 U.S. (14 How) 156, 175 (1852).

52 Wagner, Allen B., “Human tissue research: who owns the results?” (1987) 69 Journal of Patent and Trademark Office Society 329 at 347.Google Scholar

53 In Gottschalk v. Benson, 409 U.S. 63, 65 (1972)Google Scholar, an algorithm has been denned as a procedure for solving a given type of mathematical problem.

54 (1993) 5 European Intellectual Property Reimv 162.Google Scholar See also, Radudescu, David C., “The status of patentability of subject matter containing mathematical algorithms, after Grams and Iwahashi”, (1992) 74 Journal of Patent and Trademark Office Society 96–134.Google Scholar

55 Stern, Richard H., “Patenting algoridims”, (1993) 9 European Intellectual Property Review 351.Google Scholar

56 In Re Freeman, (573 F. 2d 1237 CCPA) the U.S. Court developed a test for determining whether a claim which included an algorithm was patentable. These tests were stated as: lirst, it must be determined whedier a claim direcdy or indirectly recites an algorithm, second, if a claim recites an algorithm, then it must be further analysed to determine whether the claim in its entirety pre-empts that algorithm. If the algorithm is wholly pre-empted, then the patent claim must be rejected as improper statutory subject matter.

57 Section 6(3)(c).

58 Ibid.

59 Section 45.

60 Section 44.

61 Section 51(1).

62 Section 83.

63 Section 14(1).

64 Section 17.

65 In Zimbabwe, an application for a patent may be made by a person claiming to be the inventor of the invention, his assignee or legal representative; section 6 of the Zimbabwe Patent Act 1971 as amended in 1983.

66 Section 18(2).

67 Section 27(a).

68 Section 27(2).

69 Sections 35 and 36.

70 Section 35(1).

71 Section 36.

72 Ibid.

73 Vaitsos has argued that the import privilege conferred by the grant of patent subordinates the external commercial policy of a country to patent legislation. See Constontine v. Vaitsos, “The revision of the international patent system: legal considerations for a Third World position”, 02 1976, World Development 85 at 97–98.Google Scholar

74 Section 35(2).

75 Section 37.

76 The rationale for this is that it is unreasonable to require the patentee's permission whenever a patented device is used on a vehicle while the vehicle is in the territory of a country temporarily or accidentally. See WIPO Paris Convention 1883 to 1983 (Geneva: WIPO, 1983) at 34.

77 Section 38.

78 Ladas, Stephen P., Patents, Trademarks and Related Rights: National and International Protection, Vol. 1, Cambridge, MA, 1975, 430.Google Scholar

79 Section 95.

80 Article 5(4) of the Paris Convention 1967.

81 Section 95(b).

82 Section 99(2)(a).

83 Section 97.

84 Section 104.

85 Section 108.

86 Section 98(a).

87 Section 99(2)(b).

88 Section 99.

89 Section 101.

90 This trend is discernible among the OECD countries whose economies have little in common with the Kenyan economy at the present time.

91 Section 39(1).

92 Section 39(2).

93 Section 113(1).

94 Section 110.

95 The plaintiff had licensed the second defendant, Bristol, to manufacture, use and sell ampicillin in a large number of countries, but not in Kenya. Bristol manufactured another penicillin drug called hetacillin (but within the scope of protection of Beecham's patent) and sold some to the first defendant, International Products Ltd., in Panama, which imported it into Kenya and sold it there. [1968] Law Reports of the Court of Appeal for East Africa, 399–406.

96 Section 9(1) of the then Kenya Patent Act, cap. 508 Laws of Kenya.

97 Section 125.

98 Section 3(2) of the 1949 U.K. Patent and Design Act.

99 Section 39(1).

100 Under section 20 thereof, a licence could be issued to an interested party for purposes of working the invention with a view “to ensure that food or medicine was available to the public at the lowest price consistent with the patentee deriving a reasonable advantage from the patent right”.

101 Stephen P. Ladas, op. cit., at 313.

102 Empirical study indicates that a weak or non-existent patent protection of pharmaceutical products in Ghana and Nigeria has played a major role in fostering locally-owned firms in the pharmaceutical industry. It has also attracted foreign investment in this field. This seems to be the case also in Argentina and Brazil. See Yankey, Sipa-Adjah, International Patents and Technology Transfer to Less Developed Countries, Avebury, 1987, at 169–171Google Scholar; see also Chudnovsky, Daniel, “The challenge by domestic enterprises to the transnational corporation's domination: a case study of the Argentine pharmaceutical industry”, (1979) World Development 45–58Google Scholar; see also Primo Braga, Carlos Alberto, “Pharmaceutical and chemicals; information; the audio, video and publishing industries”, in Strengthening the Protection of Intellectual Property in Developing Countries, Washington D.C., 1989, at 49.Google Scholar

103 Section 99(c).

104 Sections 17(3) and 35 of the 1949 U.K. Patent and Designs Act.

105 Section 27 of the 1907 U.K. Patents and Designs Act.

106 Sections 7(a) and 32(l)(e) of the 1949 U.K. Patents and Designs Act.

107 Section 2 of the 1949 U.K. Patents and Designs Act, 12 and 13 Geo. 6 ch. 62.

108 Section 18(5).

109 Due to WIPO's input, the Kenyan patent law incorporates the phraseology in the BIRPI Model Law for Developing Countries on Inventions.

110 Section 108(3) of the 1989 Kenya Industrial Property Act and section 7(2) of the 1949 U.K. Act.

111 Section 33 of the 1949 U.K. Patents and Designs Act.

112 World Intellectual Property Organization (WIPO), Industrial Property Statistics 1989— Publication A (Geneva: WIPO, 1989).

113 WIPO, Industrial Property Statistics 1990—Publication A (Geneva: WIPO, 1990) at 3.

114 WIPO, Industrial Property Statistics—Part II, 1991 (Geneva: WIPO).

115 WIPO, Industrial Property Statistics 1988—Publication A (Geneva: WIPO, 1988) at 4.

116 WIPO, Industrial Property Statistics 1987—Publication A (Geneva: WIPO, 1987) at 4.

117 WIPO, Industrial Property Statistics 1989—Publication A (Geneva: WIPO, 1989) at 16.

118 WIPO, Industrial Property Statistics 1983—Publication A (Geneva: WIPO, 1983).

119 WIPO, Industrial Property Statistics 1990—Publication A (Geneva: WIPO, 1990) at 16.

120 Seyoum, B., “The patent system and transfer of technology in East Africa: an analysis with particular emphasis on Kenya and Tanzania”, (1985) 16 International Review of Industrial Property Copyright Law 704 at 713, n. 32.Google Scholar

121 For a discussion of this see “Acquisition, adaptation and assimilation of technology in Kenya”, prepared for the National Symposium on Industrial Research and Development, 7–11 December 1981, (mimeo) at 1–57.

122 B. Seyoum, op. cit, at 715.

123 Patent classes are a product of the Strasbourg Agreement which provides a uniform international classification system incorporating eight sections including 114 classes and over 46,000 groups and subgroups.

124 Section 8(2).

125 Ojwang, J. B., “A regime for protecting inventions and innovations”, in Juma, Calestous and Ojwang, Jackton B. (eds.), Innovation and Sovereignty, Nairobi, 1989, at 42–43.Google Scholar

126 Vaitsos, Constantine, “Patent revisited: their function in developing countries”, (1972), Journal of Development Studies 71 at 88.Google Scholar

127 Understanding the Kenyan economic reality requires identification of sectors in which patents cannot be granted. It also necessitates that the criteria for patentability be revised to indicate developmental goals. This would involve extending protection to products and processes that are conducive for the creation of a local adaptive research capacity and inventiveness. These products and processes usually involve the simplification, adaption and modification of foreign technology to local conditions.

128 Beier, Friedrich-Karl and Schricker, Gerhard (eds.), GATT, or WIPO? New Ways in the International Protection of Intellectual Property, Munich, 1988, at 45.Google Scholar

129 UNCTAD, The Role of Patent System in the Transfer of Technology to Developing Countries, New York, 1975, at 48 para. 321.Google Scholar

130 Ibid.

131 An example discussed by Kaplinsky involves the establishment of a pineapple plant in Kenya by a subsidiary of a multinational corporation. Under the agreement setting up the pineapple plant, it was agreed that the Kenya government would restrict licences for pineapples for a period of ten years after the expansion of the plant and, thereafter, the government would give first priority for expansion to the company for a further 20-year period. In addition, the company was remunerated at the rate of 3% commission on net sales. This provided an assured income to cover the company's costs (since the commission was not linked to profits) and thereby provided an almost cosdess opportunity for the company to invest in Kenya. See, Raphael Kaplinsky, “Export oriented growth: a large international firm in a small developing country”, (1979) World Development 825 at 827.

132 Greer, Douglas F., “The case against patent systems in less-developed countries”, (1973) 8 Journal of International Law and Economics 223 at 247.Google Scholar

133 Helleiner, G. K., “International technology issues: southern needs and northern responses”, in Ramesh, Jairam and Weiss, Charles Jr (eds), Mobilizing Technology for World Development, New York, 1979, at 86.Google Scholar

134 Bogsch, Arpad, Paris Convention Centenary 1883–1983, Geneva, 1983, at 36.Google Scholar

135 Anderfelt, Ulf, International Patent-Legislation and Developing Countries, The Hague, 1971, at 148.CrossRefGoogle Scholar

136 Jayachandran, C., “Technology negotiation under imperfect market conditions: an examination of policy implications”, (1990) 7 (1) Issues in International Business 27 at 28.Google Scholar

137 WIPO, Licensing Guide for Developing Countries, Geneva, 1977, para. 23.

138 Ibid., para. 15.

139 Penrose, Edith, “International patenting and the less developed countries”, (1973) 83 Economic Journal 768 at 777.CrossRefGoogle Scholar

140 Under the GATT TRIPs Agreement, it is stipulated that patents shall be available without discrimination as to the place of invention; section 27(1) of GATT TRIPs Agreement.

141 Article 31(h) of the GATT TRIPs Agreement.

142 Article 31(j) of the GATT TRIPs Agreement.

143 Section 99(2)(d).

144 Whereas equity may be construed to mean fairness, its application between countries can be a matter of controversy. What is equitable in one country may be inequitable in another. The inclusion of equity in the Kenya law would invite consideration of other factors other than the economic value of the patent. These “other” factors may make the remuneration amount higher or lower than its economic value.

145 Section 39(1).

146 Article 33 of the GATT TRIPs Agreement. On the duration of protection of trademarks, the GATT Agreement makes litde change to die Kenyan law. Under die GATT, trademark protection shall be for an initial term of seven years, renewable indefinitely (article 18). This is the same duration embodied in the Kenyan law (section 23, ruled 64 and 68 of the Kenya Trademark Act). In respect of copyright protection, the GATT Agreement imposes a duration of no less than 50 years except in cases where the term of protection is calculated on the basis of die life of the author or if the work is photographic or relates to applied art (article 12). This stipulation alters die Kenyan law which provides 25-year protection (section 4(2) of the Kenya Copyright Act). On industrial design protection, the Kenyan law provides for a five year protection subject to renewability (section 75 of the Industrial Property Act). The GATT TRIPs regime stipulates for a minimum of at least ten years (article 26(3)).

147 Article 27(1) of the GATT TRIPs Agreement.

148 Section 27(3)(b) of the GATT TRIPs Agreement.

149 Section 11(a).

150 Section 6(3)(a).

151 Article 39 of the GATT TRIPs Agreement.

152 Article 39(2) of the GATT TRIPs Agreement.

153 Kewanee Oil Co. v. Bicrom Corp. 416 U.S. 470, 491 (1974).Google Scholar

154 Article 51 of the GATT TRIPs Agreement.

155 Stephen P. Ladas, op. cit., at 386.

156 These reforms are in line with Evenson's recommendations that developing countries should abridge intellectual property protection to foreigners, provide shorter protection periods and curtail some fields except in negotiated cases. See Evenson, R. E., “Intellectual property rights and the Third World”, (1983) 12 European Intellectual Property Review 330 at 332.Google Scholar

157 A question that arises is: what makes technology appropriate? It is unclear whether modification of foreign technology by private individuals and/or public research determines the appropriateness of technology. It is argued that public research is essential and fundamental to technology development of any given country. However, the reduction in public funding of research projects in Kenya (though this may be ill-advised and hence bad policy) necessitates that incentives be given to individuals to encourage inventiveness at the local level by way of modification of foreign technology. This is because it is such modified technology that is relevant to the individual consumers in Kenya.

158 Stephen P. Ladas, op cit., at 291.

159 Article 27(1) of the GATT TRIPs Agreement.

160 Ibid.

161 Ibid.