Patent Annuities at KIPI: Due Dates, Surcharges and Restoring a Lapsed Patent

A Kenyan patent can last twenty years from its filing date, but only if the owner keeps paying for it. Patent annuities, which the Industrial Property Act calls annual fees, are due every year from the second year, and a missed payment can end the protection. This article explains when the fees fall due, what the grace period and surcharge are, how a lapsed patent can be restored, and how the position differs for utility models and industrial designs.

What is due and when

Section 60 of the Industrial Property Act provides that a patent expires at the end of twenty years from the filing date of the application. Section 61(1) says that to maintain the application or the patent, an annual fee must be paid in advance, falling due on the eve of each anniversary of the filing date. Annual fees are therefore payable on pending applications as well as on granted patents. Regulation 38 of the Industrial Property Regulations, 2002 requires payment on Form IP 16, and regulation 38(9) says there is no fee for the first year after filing. For an international application, regulation 38(10) provides that only the annual fees falling due after national phase entry are payable; see our article on PCT national phase entry in Kenya.

KIPI’s patent fee schedule sets the amounts by year. The fee for each of the second to seventh years is KES 2,000 (local) or USD 300 (foreign). It is KES 6,000 or USD 300 for the eighth year, KES 20,000 or USD 1,000 for the sixteenth, and KES 50,000 or USD 2,500 for the twentieth. The nineteen annual fees from the second to the twentieth year total KES 278,000 for a local owner or USD 15,100 for a foreign owner, before agent fees. The foreign rate applies where the payer neither resides nor has a principal place of business in Kenya.

Regulation 38(3) requires KIPI’s Managing Director to send a reminder to the applicant or owner at least one month before a fee is due. The reminder goes to the details on file, so an outdated address can mean no one sees it. Do not rely on it; diarise each due date from the filing date, not the grant date.

The grace period and surcharge

Section 61(2) grants a grace period of six months for paying an annual fee on payment of a prescribed surcharge. Under regulation 38(4) the late fee is submitted with Form IP 16 and the surcharge, which KIPI’s schedule sets at KES 3,000 (local) or USD 150 (foreign). Paying inside the grace period keeps the application or patent alive, but it is a safety net, not a plan.

What happens on lapse

If an annual fee is not paid in accordance with section 61, section 61(3) provides that the application is deemed withdrawn or the patent lapses, and the invention ceases to be protected. The Managing Director must publish the lapse, and under regulation 38(5) and (6) must notify the applicant or owner and every registered licensee within thirty days after the lapse.

Restoring a lapsed patent

Section 61(5) lets any interested person, not only the owner, request restoration of an application deemed withdrawn or a patent that has lapsed, on payment of the prescribed fee, within six months from the end of the grace period. Section 61(6) directs the Managing Director to restore if satisfied that the failure to pay was not intended, subject to payment of the annual fee. In practice the outer limit is about a year after the due date: six months of grace, then six months to apply for restoration.

• Form and fee. The request is made on Form IP 17 with a statutory declaration or affidavit supporting the statements in it (regulation 38(7)(a)). KIPI’s schedule sets the restoration fee at KES 6,000 (local) or USD 300 (foreign).
• Hearing. If the Managing Director is not satisfied that the failure was unintended, the person is notified and may request a hearing within sixty days before a final decision (regulation 38(7)(b) and (c)).
• Publication. A restoration is advertised in the Kenya Gazette or the Industrial Property Journal (regulation 38(7)(d)).

Restoration does not revive the owner’s rights for the gap. Under section 61(7), no proceedings may be brought in respect of the restored patent for acts performed after the lapse and before the order for restoration, or for acts after restoration relating to articles imported or manufactured in Kenya during the lapse. An owner planning enforcement should therefore treat the lapse period as unprotected; see our article on patent infringement claims and Tribunal proceedings.

Utility models and industrial designs

Section 81 applies the annual fee provisions to utility model certificates and their applications. Under section 82(3), a utility model certificate expires at the end of the tenth year after the filing date and cannot be renewed, so the only maintenance is annual fees; KIPI’s schedule sets lower amounts for them (for the first year after grant, KES 1,000 or USD 50, rising to KES 5,500 or USD 275 in the tenth year after grant), and a restoration fee of KES 2,000 or USD 100.

Industrial designs work differently. Under section 88, registration lasts until the end of the fifth year after the application date and can be renewed for two further five-year periods, a maximum of fifteen years. The renewal fee is paid within the twelve months before expiry, with a six-month grace period on payment of a surcharge. Renewal is made on Form IP 32, and regulation 52(2) requires KIPI to send a reminder at least ninety days before expiry. KIPI’s schedule lists the renewal fee at KES 10,000 (local) or USD 500 (foreign), and the late-renewal surcharge at KES 3,000 or USD 150. Section 89 allows restoration where a design was not renewed due to circumstances beyond the owner’s control, within one year from the date the renewal fee was due, on payment of the renewal fee and surcharge; the application is on Form IP 33 with a statutory declaration or affidavit, and restoration does not extend the maximum duration. That test is stricter than the “not intended” test for patents. Our article on industrial designs in Kenya covers registration.

A practical docketing rule

Treat every filing date as the start of a twenty-year fee calendar. Set the reminder well before the eve of each anniversary and keep KIPI’s contact details current. Where a patent is no longer worth its fees, record the decision to let it lapse, because any interested person can seek restoration for six months after the grace period ends. Patents obtained through ARIPO are outside this article and follow ARIPO’s own maintenance rules; see our guide to ARIPO patent filings, and our article on patent registration in Kenya for the national route.