Patent infringement in Kenya follows a different procedural path from trademark or copyright disputes, and this is the point businesses most often get wrong. A trademark infringement claim goes straight to the High Court. A patent dispute generally starts at the Industrial Property Tribunal, a specialist body created specifically to handle patent, utility model, and industrial design matters, with the High Court entering the picture only on appeal. Structuring a patent enforcement strategy around the wrong forum wastes time that a patent owner, watching a competitor sell an infringing product, usually cannot afford to lose.
What Counts as Infringement
Section 105 of the Industrial Property Act, 2001 sets out the acts that constitute infringement, essentially any exploitation of the patented invention, whether making, using, selling, or importing the patented product or process, carried out without the owner’s authorisation while the patent remains in force. Where the patent covers a process rather than a product, section 110 gives the patent owner a significant practical advantage: a product that could have been made by the patented process is presumed to have been made by that process unless the alleged infringer proves otherwise. This reverses what would otherwise be a difficult burden for the patent owner, who often cannot see inside a competitor’s factory to prove which process was actually used, and shifts that burden onto the party in the best position to know it. Product patent claims do not get this presumption, so a product patent owner must independently gather evidence, such as a test purchase and technical comparison, that the accused product actually embodies the patented features, before filing rather than after.
The Industrial Property Tribunal, Not the High Court, Hears Most Disputes
Section 113 establishes the Industrial Property Tribunal, and section 114 gives it the powers to hear and determine matters including infringement, revocation, and related disputes under the Act. This matters for two practical reasons. First, the Tribunal includes members with technical and scientific expertise alongside its legal chair, which matters in patent disputes where the central question is often a technical one, whether a competitor’s product genuinely falls within the scope of the patent claims, that a purely legal forum is not necessarily best placed to assess. Second, a party dissatisfied with the Tribunal’s decision has a right of appeal to the High Court under section 115, so the Tribunal is not the end of the road, but it is almost always the starting point, and a patent owner who files directly in the High Court without first considering the Tribunal’s jurisdiction risks a threshold argument over forum before the merits are even reached.
Remedies Available
Section 106 sets out the relief available to a successful patent owner, which includes an injunction to restrain further infringement, damages, and an account of profits, broadly mirroring the remedies available for trademark infringement, with the choice between damages and an account of profits again being an either-or election rather than both together. Separately, section 109 makes patent infringement a criminal offence, so a patent owner facing large-scale, deliberate copying has the option of a criminal referral running alongside, or instead of, the Tribunal proceedings, though the more commercially useful remedy for most disputes remains the injunction and damages available through the Tribunal itself.
Declarations and Groundless Threats: Protection Runs Both Ways
The Act is not one-sided in favour of patent owners. Section 107 allows a person who is not actually infringing, but who has reason to believe they may be accused of it, to apply for a declaration of non-infringement, which can be a useful way to clear the path for a new product launch where a competitor’s patent creates uncertainty. Section 108 goes further and addresses the reverse problem: a patent owner who makes groundless threats of infringement proceedings against a competitor, supplier, or customer can itself be sued by the party threatened, and restrained from continuing to make the threats, with damages available for any loss caused. This is a genuine risk for a patent owner tempted to send an aggressive cease and desist letter before actually confirming the competitor’s product falls within the patent’s claims, since an unjustified threat can turn the patent owner into the defendant. A carefully worded warning letter that identifies the patent and invites a response is generally safe; a public statement to a competitor’s customers or distributors that they risk being sued simply for stocking a rival product is exactly the kind of threat section 108 targets.
Defences: Invalidity Is the Most Common
The most frequently raised defence to a patent infringement claim is that the patent itself is invalid and should never have been granted, whether for lack of novelty, lack of inventive step, or insufficient disclosure in the original application. Sections 103 and 104 govern revocation and invalidation and its effects, and a defendant facing an infringement claim will often counter-attack with a revocation petition rather than simply denying the infringing conduct, since a successful invalidity challenge disposes of the entire case rather than just the specific acts complained of. This is why patent litigation strategy typically begins with a careful review of the patent’s prosecution history and the state of the art at its filing date, well before any argument about whether the defendant’s product actually falls within the claims. Claim construction, the exercise of working out precisely what the patent’s claims cover, is usually the single most contested technical question in the whole dispute, and both sides typically need expert evidence from someone qualified in the relevant field, not just a patent agent, to argue their position persuasively before the Tribunal.
Licensees Can Also Sue
Section 111 allows a licensee to bring infringement proceedings in appropriate circumstances, which matters for businesses operating under an exclusive licence rather than owning the underlying patent outright. A licensee planning to rely on this should confirm the licence contract has been properly registered, since registration and the terms of the licence itself, discussed in our guide to trademark licensing and assignment for the equivalent trademark position, materially affects a licensee’s standing to act.
Patent disputes frequently arise in the same commercial context as trade secret disputes, particularly where a departing employee or former partner is alleged to have used confidential technical information alongside, or instead of, a patented invention; our guide to trade secrets covers that related but legally distinct claim. Businesses bringing technology into Kenya through licensing arrangements, especially in regulated sectors, should also see our guide to trademark registration and international protection for the trademark side of a combined IP portfolio.
For advice on patent infringement claims, Industrial Property Tribunal proceedings, invalidity defences, and groundless threats actions, consult our intellectual property practice. We advise innovators and technology businesses across Kenya from our offices at Nextgen Mall, Nairobi.
