Sunday, 24 February 2013

THE PROCESS OF FILING FOR PATENTS AND TRADEMARKS IN KENYA.


Trademark Registration Requirements in Kenya
To obtain a trademark you will need to have fulfilled the following requirements:
- Power of attorney simply signed.
- Design of the trademark in JPEG format in case of a graphical trademark (not required for word mark).
- The design of goods and/or services for which  the trademark will be registered or the classes in case they are known.
- Details of the trademark owner (name, address, registration number).
- Invoicing details (name, address, fiscal number, registration number).
- In case that priority is claimed, the certified copy of the priority document will be filed simultaneously with the application.
- Statement of whether the mark is used or intended to be used in Kenya.

Trademark registration procedure in Kenya
The mark is published after the acceptance in the Official Gazette. The opposition period is within 2 months after the publication. The registration procedure lasts 15 months. The protection lasts 7 years from the filing date.
Who is the regulatory authority?
The government agency responsible for trademarks in Kenya is the
Kenya Intellectual Property Institute located at South C, Nairobi.
Can the registration be canceled?
The registration may be canceled if the trademark was registered without any intention to use the use it, or there has been no use of the trademark up to one month before the date of the application has been set for cancellation. The registration may also be canceled if there has been no bona fide use of the trademark for a continuous period of five years and one month until the date of application for cancellation. Permitted use by a third party cannot be accepted by the proprietor unless the user has been recorded as a licensee.

Other trademark procedures in Kenya:
Trademark Renewal in Kenya :The trademark renewal may be done within three months before expiry. After renewal the protection last ten years. Renewal of registration will also last another ten years.
Trademark use in Kenya: Non-use for 5 years following registration makes the registration vulnerable to cancellation

What is a Patent?
A patent is an exclusive right granted for an invention. An invention provides a new way of doing something or offers a new technical solution. A Patent provides its owner the protection of the invention.

Why do need a patent?
If your invention has market potential and you think that another company could make profits from your invention, you need protection from a patent.
-A patent gives you the right to exclude others from making your product.
-As a patent gives exclusivity, the patent holder has time to market the invention without competition making him/her able to charge higher prices.
-It gives the right to initiate legal action against anyone that is making or selling, without permission, the patent holder invention.
-You can make money by licensing or selling your invention to someone else.
-It gives you priority over third parties wanting to register their patents in countries that do not require registration.

PATENT APPLICATION PROCEDURE
What should I do to apply for my patent?
STEP 1: Request the Patent Search Study.
STEP 2: Request the Patent Application.
STEP 3: Once your patent has been granted, obtain your Patent Issue.
The attorneys in charge of your registration will complete each one of the above procedures.

Who decides if patents are granted or not?

Applications, other than provisional applications, filed with the Patent Office and accepted as complete applications are assigned for examination to the respective examining technology centers having charge of the areas of technology related to the invention.
Applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed or in accordance with examining procedures established by the Director.
The examination of the application consists of:
(a) A study of the application for compliance with the legal requirements
(b) search through granted patents, publications of patent applications, foreign patent documents, and available literature, to see if the claimed invention is new, useful and non-obvious.

Patent Application Procedure in Kenya
Kenya’s patent domain falls under Kenya Industrial Property Institute (KIPI) a government parastatal under the Ministry of Trade and Industry. KIPI administers Intellectual Property Rights, provides technological information to the public, promotes inventiveness and innovation in Kenya and provides training on industrial property. KIPI was formally known as Kenya Industrial Property Office (KIPO) but was then renamed to KIPI when the Industrial Property Act 2001came into force. The previous act Cap 509 was repealed in 2001. Before KIPO came into existence Kenya was dependent upon the British patent regime as she was once a British colony. Patents, unlike copyrights, are granted after an applicant fulfills a number of requirements.
The Procedure for Patent Application
For patent registration a patent application needs to be filed with KIPI and this  application should consist of:
(a)Completed request form referred to as IP 3
(b)A clear description of the invention that is easily
understood
(c)One or more claims – this involves information that
would determine the limit of protection that would be
defined by the patent
(d) One or more drawings of the invention – these would be
visual materials to understand the invention better
(e) An abstract indicating the title, summary as well as
technical details of the invention.

As indicated earlier, in order for a patent application to qualify, it must be new (novelty), it must involve an inventive step (it must be a step forward in the technological field) and it must be industrially applicable. Patent protection in Kenya lasts for a period of twenty years. Having ownership of a patent in Kenya gives the patent holder certain rights or protection from having the invention exploited such as making, importing, offering for sale, selling and using product or process (if the invention is a process).
The requirements for filing a non-PCT application in Kenya are as follows:
(a) A Power of Attorney - no legalization or notarization necessary;
(b) An Assignment of Invention (not required if the inventor(s) and applicant(s) are the same) - no legalization or notarization necessary;
(c) A copy of the specification (including claims, drawings, and abstract) in English;    and
(d) A certified copy of the priority application and, if necessary, a certified translation into English thereof.

The documents listed under item (c) are required on the day of filing. Items (a), (b), and (d) can be late lodged subsequent to the filing date.
The requirements for filing a PCT application in Kenya are as follows:
(a) A Power of Attorney - no legalization or notarization necessary;
(b) A copy of the specification (including claims, drawings, and abstract) in English;
(c) A copy of the PCT International advertisement;
(d) A copy of International Search Report; and
(e) A copy of International Preliminary Examination Report and, where appropriate, an English translation thereof.

The documents listed under items (b) and (c) are required on the day of filing. Items (a), (d), and (e) can be late lodged subsequent to the filing date.
Who may be granted a patent?

A patent may be obtained or owned by a natural or juridical legal/artificial person. Natural persons refers to individuals or groups. Artificial persons may be corporations or companies such as Pfizer, or research organizations and universities such as Harvard. Under section 17 of the Science and Technology Act, Cap 250, inventions made by scientists in research institutions established under the Act e.g. KEMRl are patented in favor of the Research Institute and not the individual inventor. But the inventor must be named as per section 33, IPA. Governments and other organizations may also hold a patent by commissioning the research, through assignment and by compulsorily acquiring patents.

What is the compulsorily acquisition by the Kenyan Government?
Compulsory acquisition may be exercised when the patentee has refused to work the patent, or when the patentee has refused to license other persons to work the patent on equitable terms. The owner of the patent must be promptly and adequately compensated.

No comments:

Post a Comment