Intellectual property rightsIP protection for software
Which intellectual property rights are available to protect software, and how do you obtain those rights?
Kenya is a party to the following international treaties and agreements on the protection of intellectual property:
- the Agreement on Trade-Related aspects of Intellectual Property;
- Madrid Agreement Concerning the International Registration of Marks;
- Protocol relating to the Madrid Agreement Concerning the International Registration of Marks;
- Banjul Protocol for the Registration of Marks;
- Patent Co-operation Treaty; and
- Paris Convention for the Protection of Industrial Property.
The ownership of copyright to a computer program belongs to the creator of the software. Subject to the provisions of the Copyright Act 2001, and any subsequent contractual agreements (for example, pursuant to any contract of employment or consultancy agreement), the copyright-holder enjoys the right to copy the software, create derivative or modified versions of it and distribute copies to the public for sale or licence. The rights come into existence immediately upon the production of the work in a tangible medium of expression. Copyright owners also have the option to register the copyright with the Kenya Copyright Board.
Patent protection is available for inventions of novel software that, beyond being novel, also disclose an inventive step that is machine linked and is industrially applicable. Patent protection is not available for software that comprises business methods or results in a score. A patent holder will enjoy the right to exclusive use, sale and distribution of the software.
An eligible applicant should submit their claims and the prescribed Form IP3 to the Registrar of Patents at the Kenya Industrial Property Institute, requesting the Registrar to grant a patent under the Industrial Property Act 2001. Kenya operates a substantive examination process that includes a worldwide novelty search. Patent holders’ rights may be subject to compulsory licensing where certain conditions under the Act are met for reasons of public interest or are based on the interdependence of patents.
Patent holders are prohibited from including unjustified restrictions in licences on the licensee where the restrictions are harmful to the economic interests of Kenya. The restrictions are put in place to ensure that the terms of licensing are fair, reasonable and non-discriminatory.
Although trademarks do not protect the software or technology itself, they can be used to protect the names or symbols used to distinguish a particular software or product in the marketplace.IP developed by employees and contractors
Who owns new intellectual property developed by an employee during the course of employment? Do the same rules apply to new intellectual property developed by contractors or consultants?
The Industrial Property Act 2001 and the Copyright Act 2001 provide that intellectual property developed by an employee during the course of employment belongs to the employer. This notwithstanding, the Industrial Property Act also recognises and provides for 'technovations' and grants an employee who develops a technovation the right to a technovation certificate where it can be shown that the degree of creative contribution of the employee exceeds what would normally be expected of the employee performing such his or her normal employment duties. Such an employee has the right to remuneration for his or her employer’s use or communication of the technovation to a third person.
Intellectual property developed by a contractor or consultant while executing a commission belongs to the person who commissioned the work unless otherwise agreed between the parties in writingJoint ownership
Are there any restrictions on a joint owner of intellectual property’s right to use, license, charge or assign its right in intellectual property?
Yes, a joint owner must obtain the consent of the other joint owner of the intellectual property right to use, license, charge or assign its right in the intellectual property.
It is recommended that joint owners set out each party’s rights and obligations in an agreement.Trade secrets
How are trade secrets protected? Are trade secrets kept confidential during court proceedings?
In Kenya, protection of trade secrets is mostly by way of common law and equity (and there are a few judicial decisions on this topic). Some form of protection of trade secrets can also be found in various pieces of legislation, such as those relating to employment and contracts.
Kenya does not have a statute dedicated to the protection of trade secrets. However, Kenya is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights, which regulates the unauthorised use and disclosure of trade secrets.
To protect trade secrets, non-disclosure agreements may be used, and information that is confidential should be marked as such and kept confidential, and its circulation should be limited to restricted persons.
Regarding whether trade secrets are kept confidential during court proceedings, there is currently no clear judicial precedent on the handling of evidence containing a trade secret while still maintaining its confidentiality. A review of the available case law shows that such matters are determined on a case-by-case basis, and one must demonstrate that the trade secret is indeed useful and applicable in the relevant trade or industry; is not public knowledge or public property; is of economic value to the business seeking to protect it and that the disclosure of such information would be prejudicial to the business.Branding
What intellectual property rights are available to protect branding and how do you obtain those rights? How can fintech businesses ensure they do not infringe existing brands?
Branding is protected in Kenya by registration of a brand as a trademark under the Trade Marks Act 1982 (revised edition 2012). A trademark is defined as a mark, which includes a guise, slogan, device, brand, heading, label, ticket, signature, word, letter or numeral or any combination of these, that is used to distinguish a product or service.
To be afforded protection under the Act, an applicant is required to register the trademark with the Registrar of Trademarks at the Kenya Industrial Property Institute, using the prescribed Form TM2 and providing a specimen of the trademark. Trademark protection is available for product names, logos, dress, certification marks and collective marks. Trademarks must be distinctive for them to be registrable and enforceable against third parties unless acquired distinctiveness through use can be proven. Additionally, holders of international registrations of a trademark may extend their registrations to cover Kenya by designating Kenya through the Madrid System or ARIPO System.
Upon registration of a trademark, the proprietor of the trademark will enjoy the right to exclusive use of the trademark. Upon infringement of the right, the proprietor can institute a claim for damages and may obtain an injunction preventing future use of the infringing mark.
A fintech business seeking to avoid infringing on any existing brands should conduct a search of the particular mark they propose to use at the trademarks registry to determine whether a brand is available for use or registration prior to use in Kenya.Remedies for infringement of IP
What remedies are available to individuals or companies whose intellectual property rights have been infringed?
In terms of copyright infringement under the Copyright Act 2001, an aggrieved party should alert the Kenya Copyright Board to seize the infringing materials and initiate appropriate criminal proceedings. Civil proceedings may also be initiated by aggrieved parties, and some of the remedies that may be sought include injunctions and damages.
In respect of trademarks, enforcement proceedings can be filed against any infringing action before the High Court of Kenya upon registration of the trademark. If successful, the aggrieved party may be entitled to an injunction to prevent the future use of the trademark, damages, an account for profits by the infringer, delivery up and destruction of goods, products or material bearing the infringing marks. Where the trademark is yet to be registered, enforcement proceedings (opposition or expungement) should be brought before the Kenya Industrial Property Institute.
Patent infringement proceedings are instituted before the Industrial Property Tribunal, which sits within the Kenya Industrial Property Institute. The aggrieved party may be entitled to an injunction to prevent the future use of the patent and damages.
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19 June 2020.