Patent Registration

Patent registration is the legal process by which an inventor secures exclusive rights to an invention — a new product or process that involves an inventive step and is capable of industrial application. In Kenya, patents are granted under the Industrial Property Act, 2001 and administered by the Kenya Industrial Property Institute (KIPI). A granted patent gives the owner the exclusive right to prevent third parties from making, using, offering for sale, selling, or importing the patented invention for a period of 20 years from the filing date, subject to the payment of annual renewal fees.

This area covers the full prosecution process. Advocates begin with a patentability assessment — reviewing the invention against the criteria of novelty, inventive step, and industrial applicability, and conducting a prior art search to determine whether the invention has been disclosed in any published document or public use anywhere in the world. The patentability assessment helps the inventor decide whether to proceed with a patent application, whether to keep the invention as a trade secret, or whether to pursue other forms of protection.

If the inventor decides to proceed, they prepare and file the patent application with KIPI. The application includes the patent specification — the document that describes the invention in sufficient detail for a person skilled in the art to carry it out, and that defines the scope of the protection sought through the claims. Drafting a patent specification is a highly technical exercise: the description must be enabling (it must teach the reader how to make and use the invention), and the claims must be broad enough to provide meaningful protection but narrow enough to be novel and non-obvious over the prior art.

Advocates work closely with the inventor and their technical team to understand the invention and to draft a specification that captures the full scope of the inventive concept. Advocates handle the filing of the application, the management of the examination process, and the response to examination reports from the KIPI examiner. Advocates argue for the grant of the patent, distinguishing the invention from the prior art cited by the examiner and amending the claims where necessary to overcome objections.

For inventions that are intended for international protection, they handle the filing of international applications under the Patent Cooperation Treaty (PCT). The PCT allows an inventor to file a single international application that has the effect of a national application in all PCT member countries, and to defer the decision on which countries to pursue national phase entry in for up to 30 months from the priority date. Advocates file PCT applications through KIPI as the receiving office, and they manage the international phase and the entry into the national phase in selected countries.

Advocates also advise on the commercial exploitation of patents — including the drafting and negotiation of licensing agreements (exclusive, non-exclusive, and cross-licensing), assignment agreements, and technology transfer agreements. Advocates ensure that these agreements comply with the Competition Act and the transfer pricing rules, and they structure deals that maximise the commercial value of the patent while preserving the owner's control.

Advocates handle the enforcement of patent rights — including the identification of infringements, the preparation of cease-and-desist letters, and the filing of infringement proceedings before the High Court. Advocates also act in proceedings for the revocation of patents — challenging the validity of a patent on grounds of lack of novelty, lack of inventive step, or insufficient disclosure.