Patent registration in Kenya gives an inventor or business the exclusive right to exploit a new invention for a limited term, and to stop others from making, using or selling it without consent. For technology companies, manufacturers, life sciences businesses and anyone investing in research, patent registration in Kenya is a core part of intellectual property strategy. This guide covers the legal test, the filing and examination steps, the key deadlines and the options for regional and international protection.
The legal framework for patent registration in Kenya
Patents are governed by the Industrial Property Act, 2001 and administered by the Kenya Industrial Property Institute (KIPI). The Act defines what is an invention, sets the conditions for patentability, regulates examination and grant, and provides for disputes before the Industrial Property Tribunal established under section 113. It also deals with Kenya’s regional and international filing routes, including the Harare Protocol administered by the African Regional Intellectual Property Organization (ARIPO).
What can be patented
Under section 22, an invention is patentable if it is new, involves an inventive step and is industrially applicable. Section 23 provides that an invention is new if it is not anticipated by prior art, and prior art is everything made available to the public anywhere in the world, in writing or by oral disclosure, use, exhibition or other means, before the filing date or valid priority date. An invention involves an inventive step if it is not obvious to a person skilled in the field, and it is industrially applicable if it can be made or used in industry.
What cannot be patented
Section 21(3) excludes from patent protection:
- discoveries, scientific theories and mathematical methods;
- schemes, rules or methods for doing business, performing purely mental acts or playing games;
- methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on them, except products for use in those methods;
- mere presentation of information; and
- public health related methods of use of a substance that the Cabinet Secretary for Health designates for a serious health hazard or life-threatening disease.
Check your invention against this list early. Many software and business-method inventions fail at this stage unless they are framed as a technical solution to a technical problem.
The registration process at KIPI
The applicant files an application with a description enabling a skilled person to carry out the invention, claims that define the scope of protection, any drawings and an abstract. KIPI first checks that the application meets the formal requirements. Substantive examination is not automatic: under section 44(2), the applicant must request examination in the prescribed form within five years from the filing date, and an application for which no request is made in time is deemed abandoned. The examiner then assesses the application against the patentability criteria, raises objections where needed, and the applicant can respond and amend. Applications are published after eighteen months from the filing date or earliest priority date, although the applicant may ask for earlier publication.
Patent term and fees
Under section 60, a patent expires at the end of twenty years from the filing date of the application. Section 61 requires an annual fee, paid in advance, to maintain the application or patent, and it falls due on the eve of each anniversary of the filing date, with a grace period of six months. A missed fee can end protection and put the invention into the public domain, so build an annual fee calendar into your portfolio management.
Who owns an employee’s invention
Section 32 deals with inventions made by employees. In the absence of contractual provisions to the contrary, the right to a patent for an invention made in execution of an employment contract belongs to the employer, though an employee may be entitled to equitable remuneration where the invention is of exceptional importance. The same rule applies where the employee was not hired to invent but made the invention using data or means available through the employment, in which case the employee has a right to equitable remuneration taking into account salary, the importance of the invention and the benefit to the employer. Because these defaults leave room for dispute, employers should use express assignment and invention clauses in their employment contracts.
ARIPO and international filing
An applicant can use the ARIPO route under the Harare Protocol to seek a patent covering several member states from a single application, and the Industrial Property Act contains provisions on ARIPO applications. For protection in many countries, the Patent Cooperation Treaty (PCT) system administered by the World Intellectual Property Organization (WIPO) allows a single international application that preserves priority and defers the cost of national filings. Deadlines for entering the national or regional phase, and the countries designated, differ by route, so confirm them for each jurisdiction before relying on a regional or PCT filing. Our guide to patent prosecution at KIPI covers the process in more detail.
Enforcing a patent
A patent owner whose rights are infringed can seek remedies such as an injunction, damages or an account of profits, and delivery up or destruction of infringing goods. The Industrial Property Tribunal hears disputes under the Act, including applications relating to patent validity. Enforcement against counterfeiters is often easier when civil proceedings are combined with customs recordal and, where appropriate, criminal complaints. Patent filing should also be weighed against keeping an invention secret; see our guide to trade secrets in Kenya and our comparison of Kenya’s four IP protection tools.
How We Can Help
Clay & Associates Advocates advises inventors, technology companies, manufacturers and life sciences businesses on patent registration in Kenya, including patentability assessments, KIPI filings and examination, ARIPO and PCT strategy, employee invention clauses and enforcement. Our intellectual property practice can scope your filing. To discuss an invention, contact us.
Sources: Industrial Property Act, 2001, sections 21, 22, 23, 32, 44, 60, 61 and 113.
Frequently asked questions
What are the requirements for a patent in Kenya?
Under section 22 of the Industrial Property Act, the invention must be new, involve an inventive step and be industrially applicable, and it must not fall within the exclusions in section 21(3).
How long does a patent last?
Twenty years from the filing date of the application under section 60, provided annual fees are paid.
When must I request examination?
Within five years from the filing date under section 44(2). If you do not, the application is deemed abandoned.
Who owns an invention made by an employee?
Absent a contrary agreement, the employer, under section 32, with a possible right to equitable remuneration for the employee. Written assignment clauses avoid disputes.
