Panari Introduction to IP v ETC

8/8/2019 Panari Introduction to IP v ETC

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INTRODUCTION TOINTRODUCTION TOINTELLECTUALINTELLECTUAL

PROPERTY RIGHTSPROPERTY RIGHTSSylvance A. SangeSylvance A. Sange

Chief Trade Marks ExaminerChief Trade Marks ExaminerKIPIKIPI

[email protected]@kipi.go.ke


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Intellectual PropertyIntellectual Property

Intellectual Property is a property thatIntellectual Property is a property that

arises from the human intellect. It is aarises from the human intellect. It is a

product of human creation.product of human creation.

Intellectual Property is the creation of theIntellectual Property is the creation of the

human intellectual process and ishuman intellectual process and is

therefore the product of the humantherefore the product of the human

intellect or mind.intellect or mind.


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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.


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Objects of IntellectualObjects of Intellectual

PropertyProperty The objects of the rights covered byThe objects of the rights covered by

the concept of intellectual propertythe concept of intellectual property

are manifestations of humanare manifestations of humancreativity.creativity.

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

--the invention; andthe invention; and

--the relationship between a symbolthe relationship between a symbol

and a business.and a business.


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Protected IntellectualProtected 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.


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Protection of IntellectualProtection of Intellectual

PropertyProperty

Venetian Patent Law of the 19Venetian Patent Law of the 19thth MarchMarch

14741474each person who will make in this cityeach person who will make in this city

any new and ingenious contrivance, notany new and ingenious contrivance, not

made heretofore in our dominion, as soonmade heretofore in our dominion, as soon

as it is reduced to perfection,.as it is reduced to perfection,.


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PropertyProperty

It being forbidden to any other in anyIt being forbidden to any other in anyterritory and place of ours to make anyterritory and place of ours to make any

other contrivance in the form andother contrivance in the form and

resemblance thereof, without the consentresemblance thereof, without the consent

and licence of the author up to ten years.and licence of the author up to ten years.


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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


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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


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IIntellectualntellectual PPropertyroperty BBranchesranches

in Kenyain Kenya

Industrial PropertyIndustrial Property

CopyrightCopyright

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


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Industrial PropertyIndustrial Property

Industrial Property Includes:Industrial Property Includes:

--PatentsPatents

--Utility ModelsUtility Models--Industrial DesignsIndustrial Designs

--Trade SecretsTrade Secrets

--Trade and Service MarksTrade and Service Marks--Geographical IndicationsGeographical Indications

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


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CopyrightCopyright

Copyright includes:Copyright includes:

--LiteraryLiterary

--Artistic worksArtistic works--Musical worksMusical works


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Plant breeders RightsPlant breeders Rights

(PBR)(PBR)

Plant Breeders Rights include:Plant Breeders Rights include:--new varieties all plant species (exceptnew varieties all plant species (except

algae and bacteria)algae and bacteria)


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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 PatentsBetween 1914 and 1989 Patents

Registration Act Cap 508 was the lawRegistration Act Cap 508 was the law

governing patent protection in Kenya.governing patent protection in Kenya. The law required an inventor to apply andThe law required an inventor to apply and

obtain protection in UK before having theobtain protection in UK before having the

same registered in Kenya.same registered in Kenya.

Intellectual Property in KenyaIntellectual Property in Kenya


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Bills aimed at complying withBills aimed at complying with

TRIPS AgreementTRIPS Agreement

Geographical IndicationsGeographical Indications

Layout of Integrated CircuitsLayout of Integrated Circuits

Counterfeit GoodsCounterfeit Goods

Trade secretsTrade secrets


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Other Forms Of ProtectionOther Forms Of Protection

Being ConsideredBeing Considered

Traditional Knowledge and FolkloreTraditional Knowledge and Folklore

Genetic resourcesGenetic resources


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Intellectual Property in KenyaIntellectual Property in Kenya

1.1. IndustrialIndustrial PPropertyroperty RRightsights --administered by the Kenya industrialadministered by the Kenya industrialproperty institute (KIPI)property institute (KIPI) underunder IPA 2001IPA 2001 &&TM ofTM of 1957 & Amended in 20021957 & Amended in 2002..

2.2. Copyright & Neighbouring RightsCopyright & Neighbouring Rights

--Administered by Office of RegistrarAdministered by Office of Registrar

General under the Copyright Act. 2001General under the Copyright Act. 2001

3.3. PlantPlant BBreedersreeders RRightsights-- Administered byAdministered by

KEPHISKEPHIS under an Actunder an Act of 199of 19977


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The Kenya Industrial Property InstituteThe Kenya Industrial Property Institute(KIPI) was transformed from Kenya(KIPI) was transformed from Kenya

Industrial Property Office (KIPO) uponIndustrial Property Office (KIPO) upon

enactment of the Industrial Property Actenactment of the Industrial Property Act

2001.2001.

Kenya Industrial PropertyKenya Industrial Property

InstituteInstitute


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To modernize the protection of industrialTo modernize the protection of industrial

property in Kenyaproperty in Kenya--including the provision for parallelincluding the provision for parallel

importation of essential medicine, inimportation of essential medicine, in

accordance the Trade Related Aspects ofaccordance the Trade Related Aspects of

Intellectual Property Rights (TRIPS).Intellectual Property Rights (TRIPS).


InstituteInstitute


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To improve the administration andTo improve the administration and

management of the Officemanagement of the Office

--separating policy and administrativeseparating policy and administrativefunctions of the Office.functions of the Office.

--creating a more business orientedcreating a more business oriented

approach to cost recovery and expenditureapproach to cost recovery and expenditure

control, including capital investmentcontrol, including capital investment

strategies and marketstrategies and market--based staffbased staff

remuneration.remuneration.


InstituteInstitute


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Core FunctionsCore Functions

Examine applications for and grantExamine applications for and grant

industrial property rights for:industrial property rights for:

--Patents for inventionsPatents for inventions-- utility models for innovationsutility models for innovations

--Industrial Designs for aesthetic featuresIndustrial Designs for aesthetic features

of productsof products--Trade and service marks for goods andTrade and service marks for goods and

services.services.


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Core FunctionsCore Functions

To provide industrial property informationTo provide industrial property information

to the public.to the public.

To promote inventiveness andTo 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.


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Why Protect IntellectualWhy Protect Intellectual

PropertyProperty Protect investment inProtect investment in timetime,, moneymoney or otheror other

resources used toresources used to createcreate new contribution tonew contribution to

technologytechnology,, commercecommerce andand entertainmententertainment..

GovernmentsGovernments encourageencourage Creators toCreators to

disclosedisclose their creations to the public in ordertheir creations to the public in orderto promote the progress of science and usefulto promote the progress of science and useful

arts which are the engines of developmentarts which are the engines of development--

investors demand this guaranteeinvestors demand this guarantee


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PropertyProperty Technology means systematicTechnology means systematic

knowledge for the manufacturing of aknowledge for the manufacturing of a

product, or the rendering of a service inproduct, or the rendering of a service in

industry, agriculture or commerce,.industry, agriculture or commerce,.

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

--communicable by one person tocommunicable by one person to

anotheranother

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


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PropertyProperty

Fosters economic growthFosters economic growth

Provides incentives for technologicalProvides incentives for technological

innovation, andinnovation, and

Attracts investment that will create newAttracts investment that will create new

jobs and opportunities.jobs and opportunities.


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PatentsPatents

DefinitionDefinition

AA patent describes an invention for whichpatent describes an invention for whichthe inventor claims the exclusive rightthe inventor claims the exclusive right..

Invention is a new solution to technicalInvention is a new solution to technicalproblem. (product, process and new use)problem. (product, process and new use)

It must be newIt must be new

Have an inventive stepHave an inventive step

Be Industrially applicableBe Industrially applicable


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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 andseparating, mixing, shaping, printing and

transporting.transporting.

Chemistry and metallurgy.Chemistry and metallurgy.

Textiles and paper.Textiles and paper.


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Patentable Subject MatterPatentable Subject Matter

Fixed constructions: building, earth movingFixed constructions: building, earth moving

and mining.and mining.

Mechanical engineering, lighting, heating,Mechanical engineering, lighting, heating,weapons, blasting including engines orweapons, blasting including engines or

pumps and engineering in general.pumps and engineering in general.

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

Electricity.Electricity.


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Unpatentable Subject MatterUnpatentable Subject Matter

A discovery, scientific theory orA discovery, scientific theory or

mathematical method;mathematical method;

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

A scheme, rule or method for performingA scheme, rule or method for performing

any mental act, playing a game or doingany 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.


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Unpatentable Subject MatterUnpatentable Subject Matter

Plant varieties, but not parts thereof orPlant varieties, but not parts thereof orproducts 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 environmentalprinciples of humanity, and environmentalconservation; andconservation; and

Any other invention that may be declaredAny other invention that may be declarednonnon--patentable by the Minister in charge ofpatentable by the Minister in charge ofIndustrial Property matters.Industrial Property matters.


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Filing For A Patent ApplicationFiling For A Patent Application

In KenyaIn Kenya Four RoutesFour Routes

--LOCALLOCAL--ARIPOARIPO

--PCTPCT (World intellectual(World intellectual

Property OrganizationProperty Organization--WIPO)WIPO)--FOREIGNFOREIGN -- DIRECTDIRECT


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Utility ModelUtility Model

DefinationDefination

A utility model is an invention that can beA utility model is an invention that can beutilized in industry, agriculture, educationutilized in industry, agriculture, educationservices or environmental conservationservices or environmental conservationand which relates to shape, structure orand which relates to shape, structure or

assemblages of articles.assemblages of articles.

It must be newIt must be new

Be Industrially applicableBe Industrially applicable


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Industrial DesignIndustrial Design

Industrial Design is theIndustrial Design is the ornamental orornamental oraestheticaesthetic aspect of a useful article ofaspect of a useful article of

industry. The aspect that givesindustry. The aspect that gives specialspecial

appearance to a productappearance to a product of industryof industry


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The Industrial PropertyThe Industrial Property

TribunalTribunal

TheThere exist there exist the Industrial Property TribunalIndustrial Property Tribunal

whichwhich deals with hearing of IP matters,deals with hearing of IP matters,particularly evaluating and determiningparticularly evaluating and determining

appeals from the decisions of the KIPIappeals from the decisions of the KIPI

MMananaagingging DDirectorirector affecting grantsaffecting grants..

It handles disputes concerning patents,It handles disputes concerning patents,

utility models, industrial designs.utility models, industrial designs.


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CopyrightCopyright

DefinitionDefinition

Protection ofProtection of cultural,cultural, artistic and literaryartistic and literarywritten 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.


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

Protection of New varieties of plantsProtection of New varieties of plants

--distinct,distinct,--uniform, anduniform, and

--stable.stable.


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Trade and Service MarksTrade and Service Marks

A trade mark is a sign used on, or inA 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. UsedUsed onon the goods means that itthe goods means that it

may appear not only on the goodsmay appear not only on the goods

themselves but on the container orthemselves but on the container orwrapper in which the goods are whenwrapper in which the goods are when

they are sold.they are sold.


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Trade and Service MarksTrade and Service Marks

UsedUsed in connection within connection with the marketing ofthe marketing of

the goods refers mainly to:the goods refers mainly to:

--the appearance of the sign inthe appearance of the sign in

advertisements (newspaper, television,advertisements (newspaper, television,

etc.) oretc.) or

--in the shop windows of the shops inin the shop windows of the shops in

which the goods are sold.which the goods are sold.


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Category of Trade MarksCategory of Trade Marks

Certain types of marks should notCertain types of marks should not

be protected, Marks arebe protected, Marks are

categorized as:categorized as:--Generic,Generic,

--Descriptive,Descriptive,--Suggestive, andSuggestive, and

--Arbitrary or fanciful.Arbitrary or fanciful.


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Category of Trade MarksCategory of Trade Marks

Trade Mark cannot beTrade Mark cannot becategorized in a vacuum. It iscategorized in a vacuum. It is

essential to know the product oressential to know the product orservice to which the mark will beservice to which the mark will beapplied in order to place it in theapplied in order to place it in the

proper categoryproper category Example: APPLE is generic forExample: APPLE is generic for

apples, but arbitrary forapples, but arbitrary for

computers.computers.


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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.


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Goods CoveredGoods Covered

2929 Meat, fish, poultry and game; meat extracts;Meat, fish, poultry and game; meat extracts;preserved, dried and cooked fruits andpreserved, dried and cooked fruits andvegetables; jellies, jams, compotes; eggs, milkvegetables; jellies, jams, compotes; eggs, milkand 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 preparationssago, artificial coffee; flour and preparations

made from cereals, bread, pastry andmade from cereals, bread, pastry andconfectionery, ices; honey, treacle; yeast,confectionery, ices; honey, treacle; yeast,bakingbaking--powder;powder;salt, mustard; vinegar, sauces (condiments);salt, mustard; vinegar, sauces (condiments);spices; ice.spices; ice.


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Live of a Trade MarkLive of a Trade Mark

Terms become generic overtime becauseTerms become generic overtime because

of the way the public used them andof the way the public used them and

because of the originators failure to policebecause of the originators failure to police

them.them.

--examples: YOexamples: YO--YO returning topYO returning top

fanciful and ESCALATOR moving stairsfanciful and ESCALATOR moving stairs

suggestive.suggestive.


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More examples of generic product names thatMore examples of generic product names thatused 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 canvasTrampoline (for a spring supported canvas

jumping apparatus); Kerosene (for distilledjumping apparatus); Kerosene (for distilledpetroleum lamp oil); Granola (for a cerealpetroleum lamp oil); Granola (for a cerealconsisting of rolled oats, fruit and nuts);consisting of rolled oats, fruit and nuts);Brassiere (for a womans undergarment worn toBrassiere (for a womans undergarment worn to

support the breasts); and Heroin (forsupport the breasts); and Heroin (fordiacetylmorphine). Heroin was originallydiacetylmorphine). Heroin was originallysuggestive mark. Workers at Bayer said it madesuggestive mark. Workers at Bayer said it madethem feel heroisch.them feel heroisch.


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The law provides that nonThe law provides that non--use of a markuse of a mark

for consecutive 5 years is ordinarilyfor consecutive 5 years is ordinarily

considered proof of an intention toconsidered proof of an intention to

abandon it.abandon it.

Delay in enforcement of a mark against aDelay in enforcement of a mark against a

third party may cause lose of rights.third party may cause lose of rights.


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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: [email protected]@swiftkenya.com

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

EndEnd


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Thank You!Thank You!

Enjoy the SeminarEnjoy the Seminar

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Panari Introduction to IP v ETC