INTRODUCTION TO INTRODUCTION TO INTELLECTUAL INTELLECTUAL

PROPERTY RIGHTSPROPERTY RIGHTS

Sylvance A. SangeSylvance A. Sange

Chief Trade Marks ExaminerChief Trade Marks Examiner

KIPIKIPI

ctme@kipi.go.kectme@kipi.go.ke

Intellectual PropertyIntellectual Property

Intellectual Property is a property that Intellectual Property is a property that arises from the human intellect. It is a arises from the human intellect. It is a product of human creation.product of human creation.

Intellectual Property is the creation of the Intellectual Property is the creation of the human intellectual process and is human intellectual process and is therefore the product of the human therefore the product of the human intellect or mind.intellect or mind.

Intellectual PropertyIntellectual Property

It is an intangible form of property.It is an intangible form of property.

It is a personal property.It is a personal property.

It is a basic form of property.It is a basic form of property.

It is based on information.It is based on information.

Objects of Intellectual Objects of Intellectual PropertyProperty

The objects of the rights covered by The objects of the rights covered by the concept of intellectual property the concept of intellectual property are manifestations of human are manifestations of human creativity.creativity.

-the form of the work;-the form of the work;

-the invention; and -the invention; and

-the relationship between a -the relationship between a symbol and a business.symbol and a business.

Protected Intellectual Protected Intellectual PropertyProperty

Invention by a patent or as trade secret.Invention by a patent or as trade secret. Utility models by a certificate or secret.Utility models by a certificate or secret. Industrial Design by a certificate.Industrial Design by a certificate. Trade and Service Mark by a certificate.Trade and Service Mark by a certificate. Copyright by reducing to a fixed form.Copyright by reducing to a fixed form.

Protection of Intellectual Protection of Intellectual PropertyProperty

Venetian Patent Law of the 19Venetian Patent Law of the 19thth March March 14741474

‘…‘…each person who will make in this city each person who will make in this city any new and ingenious contrivance, not any new and ingenious contrivance, not made heretofore in our dominion, as soon made heretofore in our dominion, as soon as it is reduced to perfection,…. as it is reduced to perfection,….

Protection of Intellectual Protection of Intellectual PropertyProperty

It being forbidden to any other in any It being forbidden to any other in any territory and place of ours to make any territory and place of ours to make any other contrivance in the form and other contrivance in the form and resemblance thereof, without the consent resemblance thereof, without the consent and licence of the author up to ten years.’and licence of the author up to ten years.’

Protection of Intellectual Protection of Intellectual Property in KenyaProperty in Kenya

Paris convention – 1965 UCC - 1966 WIPO – 1967 Geneva Convention – 1976 ARIPO – 1978 Brussels Convention – 1979 Nairobi Treaty – 1982 Bern Convention – 1993

Protection of Intellectual Protection of Intellectual Property in KenyaProperty in Kenya

Patent cooperation treaty PCT – 1994 TRIPS – 1995 WIPO Copyright Treaty – 1996 WPPT – 1996 UPOV – 1999 Madrid System – 1998 Singapore Treaty - 2006

IIntellectual ntellectual PProperty roperty BBranches ranches in Kenyain Kenya

Industrial PropertyIndustrial Property

CopyrightCopyright

Plant breeders Rights (PBR).Plant breeders Rights (PBR).

Industrial PropertyIndustrial Property

Industrial Property Includes:Industrial Property Includes:

-Patents-Patents

-Utility Models-Utility Models

-Industrial Designs-Industrial Designs

-Trade Secrets-Trade Secrets

-Trade and Service Marks-Trade and Service Marks

-Geographical Indications-Geographical Indications

-Layout Designs of Integrated Circuits.-Layout Designs of Integrated Circuits.

CopyrightCopyright

Copyright includes:Copyright includes:

-Literary-Literary

-Artistic works-Artistic works

-Musical works-Musical works

Plant breeders Rights Plant breeders Rights (PBR)(PBR)

Plant Breeders Rights include:Plant Breeders Rights include:

--new varieties all plant species (except new varieties all plant species (except algae and bacteria) algae and bacteria)

BackgroundBackground Copyright Act Cap 130 (1966)Copyright Act Cap 130 (1966) TradeMarks Act 1913 (TM Ordinance)TradeMarks Act 1913 (TM Ordinance).. Between 1914 and 1989 Patents Between 1914 and 1989 Patents

Registration Act Cap 508 was the law Registration Act Cap 508 was the law governing patent protection in Kenya.governing patent protection in Kenya.

The law required an inventor to apply and The law required an inventor to apply and obtain protection in UK before having the obtain protection in UK before having the same registered in Kenya.same registered in Kenya.

Intellectual Property in KenyaIntellectual Property in Kenya

Bills aimed at complying withBills aimed at complying withTRIPS AgreementTRIPS Agreement

Geographical IndicationsGeographical Indications

Layout of Integrated CircuitsLayout of Integrated Circuits

Counterfeit GoodsCounterfeit Goods

Trade secretsTrade secrets

Other Forms Of Protection Other Forms Of Protection Being ConsideredBeing Considered

Traditional Knowledge and FolkloreTraditional Knowledge and Folklore

Genetic resourcesGenetic resources

Intellectual Property in KenyaIntellectual Property in Kenya

1.1. Industrial Industrial PProperty roperty RRightsights - - administered by the Kenya industrial administered by the Kenya industrial property institute (KIPI) property institute (KIPI) under under IPA 2001 IPA 2001 && TM of TM of 1957 & Amended in 20021957 & Amended in 2002..

2.2. Copyright & Neighbouring RightsCopyright & Neighbouring Rights-Administered by Office of Registrar -Administered by Office of Registrar General under the Copyright Act. 2001General under the Copyright Act. 2001

3.3. Plant Plant BBreeder’s reeder’s RRightsights- Administered - Administered by KEPHIS by KEPHIS under an Act under an Act of 199of 19977

The Kenya Industrial Property Institute The Kenya Industrial Property Institute (KIPI) was transformed from Kenya (KIPI) was transformed from Kenya Industrial Property Office (KIPO) upon Industrial Property Office (KIPO) upon enactment of the Industrial Property Act enactment of the Industrial Property Act 2001.2001.

Kenya Industrial Property Kenya Industrial Property InstituteInstitute

To modernize the protection of industrial To modernize the protection of industrial property in Kenyaproperty in Kenya

-including the provision for parallel -including the provision for parallel importation of essential medicine, in importation of essential medicine, in accordance the Trade Related Aspects of accordance the Trade Related Aspects of Intellectual Property Rights (TRIPS).Intellectual Property Rights (TRIPS).

Kenya Industrial Property Kenya Industrial Property InstituteInstitute

To improve the administration and To improve the administration and management of the Officemanagement of the Office

-separating policy and administrative -separating policy and administrative functions of the Office.functions of the Office.

-creating a more business oriented -creating a more business oriented approach to cost recovery and expenditure approach to cost recovery and expenditure control, including capital investment control, including capital investment strategies and market-based staff strategies and market-based staff remuneration.remuneration.

Kenya Industrial Property Kenya Industrial Property InstituteInstitute

Core FunctionsCore Functions

Examine applications for and grant Examine applications for and grant industrial property rights for:industrial property rights for:

-Patents for inventions-Patents for inventions

- utility models for innovations- utility models for innovations

-Industrial Designs for aesthetic features -Industrial Designs for aesthetic features of productsof products

-Trade and service marks for goods and -Trade and service marks for goods and services.services.

Core FunctionsCore Functions

To provide industrial property information To provide industrial property information to the public.to the public.

To promote inventiveness and To promote inventiveness and innovativeness in Kenya.innovativeness in Kenya.

To organise and conduct training, To organise and conduct training, competition and awards in IP.competition and awards in IP.

Why Protect Intellectual Why Protect Intellectual PropertyProperty

““Technology” means systematic Technology” means systematic knowledge for the manufacturing of a knowledge for the manufacturing of a product, or the rendering of a service in product, or the rendering of a service in industry, agriculture or commerce,….industry, agriculture or commerce,….

-providing a solution to a problem-providing a solution to a problem

-communicable by one person to -communicable by one person to anotheranother

-directed to an end.-directed to an end.

Why Protect Intellectual Why Protect Intellectual PropertyProperty

Fosters economic growthFosters economic growth

Provides incentives for technological Provides incentives for technological innovation, andinnovation, and

Attracts investment that will create new Attracts investment that will create new jobs and opportunities.jobs and opportunities.

Patentable Subject MatterPatentable Subject Matter

Human necessities: agriculture, foodstuff, Human necessities: agriculture, foodstuff, tobacco, personal or domestic articles, tobacco, personal or domestic articles, health and amusement.health and amusement.

Performing operations and transporting: Performing operations and transporting: separating, mixing, shaping, printing and separating, mixing, shaping, printing and transporting.transporting.

Chemistry and metallurgy.Chemistry and metallurgy. Textiles and paper.Textiles and paper.

Patentable Subject MatterPatentable Subject Matter

Fixed constructions: building, earth moving Fixed constructions: building, earth moving and mining.and mining.

Mechanical engineering, lighting, heating, Mechanical engineering, lighting, heating, weapons, blasting including engines or weapons, blasting including engines or pumps and engineering in general.pumps and engineering in general.

Physics: instruments and nucleonics.Physics: instruments and nucleonics. Electricity.Electricity.

Unpatentable Subject MatterUnpatentable Subject Matter

A discovery, scientific theory or A discovery, scientific theory or mathematical method;mathematical method;

A literary, dramatic, musical or artistic A literary, dramatic, musical or artistic work, or any other aesthetic creation;work, or any other aesthetic creation;

A scheme, rule or method for performing A scheme, rule or method for performing any mental act, playing a game or doing any mental act, playing a game or doing business, or a program for a computer;business, or a program for a computer;

Mere presentation of information.Mere presentation of information.

Unpatentable Subject MatterUnpatentable Subject Matter

Plant varieties, but not parts thereof or Plant varieties, but not parts thereof or products or biotechnological processes;products or biotechnological processes;

Inventions contrary to public order, Inventions contrary to public order, morality, public health and safety, morality, public health and safety, principles of humanity, and environmental principles of humanity, and environmental conservation; andconservation; and

Any other invention that may be declared Any other invention that may be declared non-patentable by the Minister in charge of non-patentable by the Minister in charge of Industrial Property matters.Industrial Property matters.

Filing For A Patent Application Filing For A Patent Application In KenyaIn Kenya

Four RoutesFour Routes

-LOCAL-LOCAL

-ARIPO-ARIPO

-PCT -PCT (World intellectual(World intellectual

Property Organization-WIPO)Property Organization-WIPO)

-FOREIGN - DIRECT-FOREIGN - DIRECT

Utility ModelUtility Model

DefinationDefination

A utility model is an invention that can be A utility model is an invention that can be utilized in industry, agriculture, education utilized in industry, agriculture, education services or environmental conservation services or environmental conservation and which relates to shape, structure or and which relates to shape, structure or assemblages of articles. assemblages of articles.

It must be newIt must be new Be Industrially applicableBe Industrially applicable

Industrial DesignIndustrial Design

Industrial Design is the Industrial Design is the ornamental or ornamental or aestheticaesthetic aspect of a useful article of aspect of a useful article of industry. The aspect that gives industry. The aspect that gives special special appearance to a productappearance to a product of industry of industry

The Industrial Property The Industrial Property TribunalTribunal

TheThere exist there exist the Industrial Property Tribunal Industrial Property Tribunal which which deals with hearing of IP matters, deals with hearing of IP matters, particularly evaluating and determining particularly evaluating and determining appeals from the decisions of the KIPI appeals from the decisions of the KIPI MMananaaging ging DDirectorirector affecting grants affecting grants. .

It handles disputes concerning patents, It handles disputes concerning patents, utility models, industrial designs.utility models, industrial designs.

CopyrightCopyright

DefinitionDefinition

Protection of Protection of cultural, cultural, artistic and literary artistic and literary written works such as poems, novels, written works such as poems, novels, articles, musical works, paintings, articles, musical works, paintings, cinematographic work, photographic, cinematographic work, photographic, sculpture and computer programs.sculpture and computer programs.

Plant breeders Rights(PBR)Plant breeders Rights(PBR)

Protection of New varieties of plantsProtection of New varieties of plants

-distinct, -distinct,

-uniform, and -uniform, and

-stable.-stable.

Trade and Service MarksTrade and Service Marks

A trade mark is a sign used on, or in A trade mark is a sign used on, or in connection with the marketing of, connection with the marketing of, goods or services. goods or services.

Used “on” the goods means that it Used “on” the goods means that it may appear not only on the goods may appear not only on the goods themselves but on the container or themselves but on the container or wrapper in which the goods are when wrapper in which the goods are when they are sold. they are sold.

Trade and Service MarksTrade and Service Marks

Used “in connection with” the marketing of Used “in connection with” the marketing of the goods refers mainly to:the goods refers mainly to:

-the appearance of the sign in -the appearance of the sign in advertisements (newspaper, television, advertisements (newspaper, television, etc.) oretc.) or

-in the shop windows of the shops in -in the shop windows of the shops in which the goods are sold.which the goods are sold.

Category of Trade MarksCategory of Trade Marks

Certain types of marks should not Certain types of marks should not be protected, Marks are be protected, Marks are categorized as:categorized as:

-Generic,-Generic,

-Descriptive,-Descriptive,

-Suggestive, and-Suggestive, and

-Arbitrary or fanciful.-Arbitrary or fanciful.

Category of Trade MarksCategory of Trade Marks

Trade Mark cannot be Trade Mark cannot be categorized in a vacuum. It is categorized in a vacuum. It is essential to know the product or essential to know the product or service to which the mark will be service to which the mark will be applied in order to place it in the applied in order to place it in the proper categoryproper category

Example: APPLE is generic for Example: APPLE is generic for apples, but arbitrary for apples, but arbitrary for computers.computers.

Registration ProcedureRegistration Procedure

Application for search.Application for search. Application for registration.Application for registration. Examination of trade mark.Examination of trade mark. Advertisement of trade mark.Advertisement of trade mark. Filing of opposition.Filing of opposition. Certificate issued/hearing set.Certificate issued/hearing set.

Goods CoveredGoods Covered

1818 Leather and imitations of leather, and Leather and imitations of leather, and goods made of these materials and not goods made of these materials and not included in other classes; animal skins, included in other classes; animal skins, hides; trunks and travelling bags; hides; trunks and travelling bags; umbrellas, parasols and walking sticks;umbrellas, parasols and walking sticks;whips, harness and saddlery.whips, harness and saddlery.

2424 Textiles and textile goods, not Textiles and textile goods, not included in other classes; bed and table included in other classes; bed and table covers. covers. 

2525 Clothing, footwear, headgear.Clothing, footwear, headgear.

Goods CoveredGoods Covered

2929 Meat, fish, poultry and game; meat Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.and milk products; edible oils and fats.

3030 Coffee, tea, cocoa, sugar, rice, tapioca, Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations sago, artificial coffee; flour and preparations made from cereals, bread, pastry and made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, confectionery, ices; honey, treacle; yeast, baking-powder;baking-powder;salt, mustard; vinegar, sauces (condiments); salt, mustard; vinegar, sauces (condiments); spices; ice.spices; ice.

Live of a Trade MarkLive of a Trade Mark

Terms become generic overtime because Terms become generic overtime because of the way the public used them and of the way the public used them and because of the originators’ failure to police because of the originators’ failure to police them.them.

-examples: YO-YO “returning top” -examples: YO-YO “returning top” fanciful and ESCALATOR “moving stairs” fanciful and ESCALATOR “moving stairs” suggestive.suggestive.

Live of a Trade MarkLive of a Trade Mark

More examples of generic product names that More examples of generic product names that used to be trade marks: Zipper, Cellophane, used to be trade marks: Zipper, Cellophane, Thermos, Aspirin (for acetylsalicylic acid); Thermos, Aspirin (for acetylsalicylic acid); Trampoline (for a spring supported canvas Trampoline (for a spring supported canvas jumping apparatus); Kerosene (for distilled jumping apparatus); Kerosene (for distilled petroleum lamp oil); Granola (for a cereal petroleum lamp oil); Granola (for a cereal consisting of rolled oats, fruit and nuts); consisting of rolled oats, fruit and nuts); Brassiere (for a woman’s undergarment worn to Brassiere (for a woman’s undergarment worn to support the breasts); and Heroin (for support the breasts); and Heroin (for diacetylmorphine). “Heroin” was originally diacetylmorphine). “Heroin” was originally suggestive mark. Workers at Bayer said it made suggestive mark. Workers at Bayer said it made them feel “heroisch.”them feel “heroisch.”

Live of a Trade MarkLive of a Trade Mark

The law provides that non-use of a mark The law provides that non-use of a mark for consecutive 5 years is ordinarily for consecutive 5 years is ordinarily considered proof of an intention to considered proof of an intention to abandon it.abandon it.

Delay in enforcement of a mark against a Delay in enforcement of a mark against a third party may cause lose of rights.third party may cause lose of rights.

Contact:Contact:

Kenya IndustrialKenya Industrial Property InstituteProperty Institute

Kapiti Road off Mombasa RoadKapiti Road off Mombasa Road

Weights & Measures Premises.Weights & Measures Premises.

Email: Email: kipi@swiftkenya.com

Website: http://www.kipi.go.keWebsite: http://www.kipi.go.ke

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