Protecting your Intellectual Property

Apart from ensuring that your new products or services reach as many consumers as possible, it is also crucial to guarantee that none of your competitors will be able to copy your new products and flood the market with cheap imitations.

Two ways of protecting new products are by registering patents or trademarks.

Patents

Patents are registered with the Kenya Industrial Property Institute (KIPI) which is a Government department under the Ministry of Trade and Industry. Kenya is a member of African Regional Industrial Property Office (ARIPO). This is a regional organization of 12 countries namely Kenya, Zimbabwe, The Gambia, Ghana, Lesotho, Botswana, Somalia, Sudan, Tanzania, Uganda, Swaziland, Malawi and Zambia.

Inventors wishing to protect their inventions in these countries may file one application in Kenya and designate any or all them.

Kenya is also a member of the World Intellectual Property Organization (WIPO) World Intellectual Property Organization WIPO, which administers the international Patent Cooperation treaty (PCT).

An application for a patent should contain:

1. A request (Form IP 3) available from KIPI
2. A description which should:

• state the title of the invention
• specify the technical field to which the invention relates;
• indicate the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention; and
• indicate how the invention is industrially applicable

3. Claims:
The claim(s) should define the matter for which protection is sought. A claim should set out:

• the technical features that are necessary to define the subject matter of the invention but that are part of the prior art; and
• the technical features that, in combination with the features referred to above, define that for which protection is sought.

4. One or more drawings (where necessary)

5. An abstract
The abstract should include the title of the invention; and a summary of the disclosure included in the description. The summary should indicate the technical field to which the invention relates and the principal use or uses of the invention.

Trademarks

A trade mark is a form of property with considerable value acquired through goodwill. It can be sold, given or otherwise transferred to another party through a transaction referred to as an assignment. Trademarks are registered at the Kenya Industrial Property Institute (KIPI) and last for an initial term of 10 years. Six months prior to the expiry of the ten years, the registrar will notify the owner of the trade mark of the imminent expiry of the concerned trademark. The owner may then apply for a renewal which covers the next 10 years and the renewal can continue every 10 years thereafter upon payment of a renewal fee.

Before applying for the registration of a trade mark, an applicant should conduct a search to find out whether the trademark is registrable or not and also whether there exists in the records a trademark which could be confused with the intended trade mark. A search which costs Kshs. 2,000 is not mandatory but is advisable for the following two reasons:

1. It helps to determine whether the application has a chance of success, or whether it would be a waste of time and money to try and register it in its present form.
2. It also helps to avoid trade-mark infringement and potential lawsuits if one went straight ahead in applying for registration.

Thereafter, an application should be made accompanied by seven (7) representations of the mark. Each application costs Kshs. 3,000. Foreign applicants are required to file through an agent and thus the application should be accompanied by a form of authorization or power of attorney duly completed and signed and must have a duty stamp affixed on it.

There are three stages in examination of a Trade Mark:

1. Formality examination: this involves close checking to find out whether the right documents are filed, whether the forms included are properly filled, and the required fees is appropriately paid. It is necessary that the class should be checked against the specification and confirm that the name, description and address of the Applicant is clearly written
2. Search: A Search is conducted to ascertain that there is no similar or closely resembling mark is on the register, otherwise the present application can be refused on that ground.
3. Substantive examination: During substantive examination, the mark is examined as to its distinctiveness. Normally the applicant is requested to remove non distinctive matter and descriptive elements.

Logos, emblems, flags and Marks of International Organizations are normally not registrable by anybody else except the respective Organizations or one authorized by them to do so. Generic names of products are also not registrable.

If the examiner finds no grounds to refuse a trade mark application, then the Trade mark is advertised in the Industrial Property Journal or Kenya gazette to allow any interested party an opportunity to raise objections to the pending application prior to registration.

Any aggrieved party with valid grounds may oppose the registration of a trade mark so advertised in the Kenya Gazette. An opposition must be made within 60 days of the publication date, by filing a statement of opposition.

If there is no opposition or if an opposition has been decided in the applicants favour, the application will be registered and the Institute will issue a Certificate of Registration and enter the registration in the Trade Marks Register. This costs Kshs. 1,500.

One of the major functions of the trade marks office is to prevent anyone else from registering a mark that is the same as or confusingly similar to another. The Institute does not police trade mark or rather keep an eye out for cases of infringement on behalf of the owner.

It is the duty and full responsibility of the owner to monitor the market and to institute legal proceedings, in case someone is infringing on a registered trademark or is using a deceptively similar trademark likely to cause confusion.