Notable amendments to Kenyan Patent Legislation

The Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016 was published in Kenya Gazette Supplement No. 185 (National Assembly Bills No. 45 ) on 11th November, 2016. The Bill seeks to amend to the Industrial Property Act 2001 (No. 3 of 2001). The amendments are intended to align the membership of the Board of Kenya Industrial Property Institute (KIPI) with the Mwongozo Code of Governance and to make several other minor amendments affecting the handling of applications for registration of patents by the Board.

The proposed amendment to the Industrial Property Act seeks to amend section 22 on Patentable inventions by deleting the words “or is a new use” and now reads: “An invention is Patentable if it is new, involves an inventive step and is industrially applicable.”

Almost every jurisdiction that has enacted Patent legislation requires that for an invention to be patentable, it must be new, involve and inventive step and is industrially applicable. New use inventions are typically allowable for pharmaceutical inventions and it is possible to patent the new use of a known substance. For example, in the European Patent Convention (EPC) and in Australia, second and subsequent medical uses of known compounds or substances are patentable. Deleting the words “or is a new use” may now imply that it is no longer possible to patent second and subsequent medical uses of known compounds or substances in Kenya.

Another notable amendment is to section 44 which intends to streamline the substantive examination of patent applications. The proposed amendment now directs that applications for patents relating to a specific field or specific technical fields shall be subject of an examination as to substance and that the request for examination which must be made by the applicant would be extended from three years to five years from the filing date of the application, else the application shall be deemed to be abandoned. This is similar for jurisdictions such as Australia and Canada and now applicants have more time available to them to file a request for examination of patents in Kenya.

For more information please contact Oswald Alembong.