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Dr. Isaac Rutenberg (CIPIT Director) and Ms. Lillian Makanga (CIPIT Researcher) have co-authored a new peer-reviewed article titled: “Utility model protection in Kenya: The case for substantive examination” published in the African Journal of Information and Communication in late December 2016. A copy of the article is available online here. In the article, it is argued that a return to substantive examination of applications for utility model certificates (UMCs) would be on the whole beneficial to Kenya’s innovative ecosystem and the authors recommend that such examination be reinstated.

From 1994 until 2014, patent and UMC applications in Kenya were subjected to formal and substantive examinations. However, as readers may recall, Kenya Industrial Property Institute (KIPI), the national patent office, announced in 2014 that it has decide to cease substantive examination of UMC applications. This decision of KIPI was published in the Industrial Property Journal no. 2014/04 dated 30th April 2014 and reads as follows:

“Following a review of the practice in the Institute [KIPI] with regard to the processing of utility model applications, the Institute has decided to discontinue the carrying out of substantive examinations in relation to utility model applications with effect from 1 May 2014 in order to align the practice with the Industrial Property Act, 2001. However, such applications shall continue to be subject to examination for compliance with all the other requirements of the Act and Regulations.

In particular, the applications shall be examined for compliance with filing date and formality requirements as well as for inventions that are excluded from protection and for non-patentable inventions under sections 21(3) and 26 respectively. Upon compliance with formality requirements, the applications shall be published as provided under section 42 of the Act. A Utility Model certificate shall then be granted and a certificate issued to the applicant as provided under sections 45 and 46 of the Act.”

According to the authors, while the section 82 exclusion of sections 22 and 24 under the Industrial Property Act (IPA) for UMC applications is clear, it is less clear how to interpret the exclusion of sections 43 and 44. These sections read as follows:

“43. (1) The Managing Director may instruct that any application found in search order as to form be the subject of an international type search.”

(…)

“44. (1) The Managing Director may by notice in the Kenya Gazette or in the Industrial Property Journal: ­
(a) direct that applications for patents relating to a specified field or specified technical fields shall be the subject of an examination as to substance; or
(b) amend any direction issued pursuant to paragraph (a).”

(…)

“82. (1) An invention qualifies for a utility model certificate if it is new and industrially applicable.
(2) Sections 22, 24, 43, 44 and 60 shall not apply in the case of an application for utility model certificates.”

According to the authors, there are three reasonable interpretations of the meaning of section 82 read together with section 44 of the IPA (both reproduced above). Therefore it is argued that the choice of interpretation has potentially significant implications for UMC validity, UMC applicants, legal procedures, and, in turn, the country-wide innovation ecosystem.

The first interpretation is that the substantive examination provision of section 44 must not be applied to UMCs therefore UMCs are necessarily not substantively examined. The second interpretation, the optional substantive examination provision of section 44 does not apply thereby requiring KIPI to carry out substantive examination to determine UMC validity. In the third interpretation, the discretion of whether to substantively UMCs is left to KIPI since section 44 is deemed to have no bearing on UMC applications according to the IPA.

Recalling one of the functions of KIPI which is “to consider applications for and grant industrial property rights”, the authors argue that the word “consider” means that KIPI is not merely a registration body since it is not required to grant each and every application it receives. Instead, KIPI is mandated to apply patentability requirements prior to granting such rights. In this regard, substantive examination is the only way for KIPI to assess whether an application satisfies the relevant requirements prior to grant.

From the authors’ analysis, the discontinuation of UMC examination resulted in a dramatic increase in the number of UMC applications received and UMCs granted. However, this increase is coupled with an increase in the incidence of major errors in the laying out of claims in the UMC applications and an apparent granting of UMCs to applications that had stalled in the examination era prior to May 2014. Therefore the findings suggest that the recent dramatic increase in volume of UMCs is accompanied by a decrease in quality. While a reinstatement of substantive examination of UMCs would lead to a reduction in the rate of UMC grants, this reduction would represent an enhancement of the UMC system and in turn would allow granted UMCs to play a more legitimate role in Kenya’s complex innovation ecosystem.