Patent infringement in Kenya follows a different procedural path from trademark disputes, and this is where businesses most often go wrong. Under the Industrial Property Act, the Industrial Property Tribunal, not an ordinary court, is the body the Act directs to grant relief to a patent owner. Knowing the Tribunal’s role, the remedies it can grant, and the defences open to an accused infringer shapes every decision from the first warning letter onward.
What counts as patent infringement in Kenya
Section 105 of the Industrial Property Act says that any act specified in section 54 (for patents) or section 92 (for registered industrial designs) performed without the owner’s authorisation, in relation to a product or process within the scope of a validly granted patent or registration, is an infringement. The section is subject to listed exceptions, including those in sections 58, 72 and 73. It applies equally to registered utility models and industrial designs.
Where the patent covers a process for obtaining a product, section 110 helps the owner. In non-criminal proceedings, the burden of showing that an identical product was not made by the patented process shifts to the alleged infringer if either of two conditions is met: the product is new, or there is a substantial likelihood that the identical product was made by the process and the owner, despite reasonable efforts, has been unable to determine the process actually used. Product patents get no such presumption, so the owner must gather evidence, such as a test purchase and technical comparison, before filing.
The Industrial Property Tribunal
Section 113 establishes the Industrial Property Tribunal, consisting of a chairperson and four members appointed by the Cabinet Secretary. The chairperson must be a judge or be qualified to be appointed a judge of the High Court. At least two members must be advocates of seven or more years’ standing, and two must have industrial, scientific or technological expertise. That mix matters in patent disputes, where the central question is often whether a product falls within the claims.
Section 106 provides that, on the owner’s request, the Tribunal shall grant an injunction to prevent imminent infringement or stop a continuing one, damages, or any other remedy provided for in law. Appeals from the Tribunal go to the High Court under section 115, and the High Court may confirm, set aside or vary the decision, remit it to the Tribunal, or exercise the Tribunal’s powers. The Act also gives registered industrial design owners an express right, in section 92(3), to institute court proceedings in addition to other remedies. We have not verified Kenyan authority on how far the High Court may entertain a patent infringement claim directly, so take advice on forum before you file.
Criminal proceedings
Section 109 makes any intentional infringement of a patent, registered utility model or industrial design an offence. The penalty is a fine of not less than KES 10,000 and not more than KES 50,000, or imprisonment for not less than three and not more than five years, or both. For most commercial disputes, the injunction and damages available through the Tribunal are more useful than a criminal complaint, but the option exists for deliberate large-scale copying.
Declarations of non-infringement and threats
The Act protects accused parties as well as owners. Under section 107, a person with a legitimate interest may ask the Tribunal to declare that a specific act does not infringe. The owner and any licensee have the right to be defendants. No declaration is made if the acts are already the subject of infringement proceedings, or if the applicant cannot prove that it first demanded written acknowledgement of lawfulness and the owner refused or failed to reply within fourteen days.
Section 108 deals with threats. A person threatened with infringement proceedings who can prove that its acts do not infringe may ask the Tribunal for an injunction against the threats and damages for financial loss. Section 108(2) says that merely notifying someone of the existence of the patent or registration is not a threat. The practical lesson for an owner is to confirm that the competitor’s product really falls within the claims before sending a letter that goes beyond notification.
Defences: invalidity is the most common
Under section 103, any interested person may ask the Tribunal, in proceedings against the owner or proceedings brought by the owner, to revoke or invalidate the patent. The Tribunal shall revoke on listed grounds, including that:
- the invention is obvious and involves no inventive step;
- the invention is not new;
- the patent does not fully describe the invention or disclose the best method of performing it;
- the invention is not capable of being applied in trade or industry, or is not useful;
- the application contained a material misrepresentation, or the owner was not entitled to apply.
The applicant must state its grounds and give particulars of the facts relied on, and the owner may file a counter-statement. No evidence is admitted on grounds not particularised unless the Tribunal allows it. A revoked patent is treated as null and void from the date of grant (section 104), and an aggrieved party may appeal to the High Court (section 103(11)). Because a successful invalidity challenge disposes of the whole case, an accused infringer will often counter-attack with a revocation request. That is why strategy should begin with a review of the prosecution history and the prior art, before the argument about whether the product falls within the claims.
Licensees can sue
Under section 111, an exclusive licensee within section 65(2) may ask the owner, by registered letter, to institute proceedings for a specific infringement. If the owner refuses or fails to do so within three months, the licensee may, after giving notice, sue in its own name, and the owner may join. Before the three months end, the Tribunal may grant an injunction at the licensee’s request if immediate action is needed to avoid substantial damage. If you hold an exclusive licence, check its terms and registration before relying on this right. See also our guide to trademark licensing and assignment for the parallel trademark position.
Practical steps
- Confirm that the patent is in force and valid, including its renewal position and prosecution history. Our guide to patent prosecution at KIPI explains how patents are granted.
- Compare the product against each claim, with technical input where needed.
- Collect evidence of the infringing acts, including a documented test purchase.
- Send a measured letter that identifies the patent and invites a response.
- Decide on forum and remedy with advice, and be ready for an invalidity counter-attack.
How We Can Help
Clay & Associates Advocates advises patent owners, licensees and accused infringers on Industrial Property Tribunal proceedings, injunction applications, non-infringement declarations, groundless-threat claims and invalidity strategy. See our intellectual property practice and our guide to Kenya’s IP protection tools.
Sources: Industrial Property Act (Kenya Law).
Frequently asked questions
Who grants relief for patent infringement in Kenya?
Section 106 of the Industrial Property Act provides that the Tribunal shall grant an injunction, damages or other relief on the owner’s request. Appeals lie to the High Court.
What is the criminal penalty for patent infringement?
Intentional infringement is an offence under section 109, punishable by a fine of KES 10,000 to KES 50,000, or three to five years’ imprisonment, or both.
Can I be sued for sending a warning letter?
Section 108 lets a person who proves it is not infringing seek an injunction and damages for threats. Merely notifying someone that a patent exists is not a threat.
What is the usual defence to patent infringement?
Invalidity. Section 103 lets the Tribunal revoke a patent on grounds such as lack of novelty or inventive step, and a revoked patent is void from the date of grant.
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This article is general information on Kenyan law as at its publication date, not legal advice. Reading it does not create an advocate and client relationship.
