Patents


What is the difference between a trade mark and a trade name? trademark falls under the realm of Intellectual Property. Since colonial times we have had trademark registered from as early as 1901 but the system then was to register your trademark in UK for it to have value in Kenya.


WHAT IS PATENTABILITY

What is a patentable invention – under IPA a patent is defined as a solution to a specific problem in technology. It may be of two forms


Product e.g. aspirin which means that a person can repackage and recreate aspirin for other purposes and patent it, may be one discovers a new use of aspirin for eg cancer, they can patent aspirin as a cure for cancer and Bayer can still be manufacturing aspirin for the other diseases that they invented it for like heart defects, one has to discover a new way of using a known product, you can have the patent for the process.


Methods of treatment of human bodies or animals, these are not patentable, mere representation of data or information is not patentable, public health using of molecules to cure disease is not patentable and neither is gene therapy. Standard information is not patentable e.g. Ghai and Mcauslan cannot patent Kenya’s getting Independence in 1963 though they have written about it.


Schemes, Rules, Methods of doing business – schemes of playing games such as soccer or performing mental acts are not patentable, the utility is doubtful. For a long time the Law in US, UK and Kenya used to argue that u cannot patent business methods. For example mali kwa mali is not patentable. The argument is if one has a new way of doing business, they can be protected under trademark. Around 1980 there was a lot of debate and mostly people wanted to be allowed to patent business methods. There was a convergence of computer science and there was development of software and internet business. In the case of Diamond v Diehr (1980) there were so many developments in software engineering and people wanted their inventions in software protect and the US was saying that no you cannot patent software which was classified as a logarithm you could only copyright software


The reason why one does not want to protect the above list is because most of them are protected under different regimes or other systems of law, discoveries of plants are protected by Plant Breeders Rights, trade secrets are protected by Industrial Property.


That,KIPI will do but when one wants to patent in many other countries ARIPO will protect one in English speaking Africa, Patents are territorial and is only protectable only where it has been registered when one wants patent in Europe they can go to PCT. All these organizations help the inventor with the data and also help patent offices with information to avoid duplicating research. There is no worldwide patent and one has to designate the countries where they are protected


Doctrine of disclosure under patents
Duty to disclose invention to the Patent Office to get patent protection: The disclosure must be full disclosure and must enable the PHOSITA to use the product. Obel is being bound to KIPI and he will be granted a Patent but only after he makes full disclosure. Where one discloses in a journal or newspaper without seeking protection, in some cases one may lose novelty and at other times not due to full and enabling disclosure. Some of the scientific journals for purposes of disclosures such as Lancet the Journal of Medicine is taken seriously, Nature Journal , New England Journal of Medicine - A patent lawyer has to read these journals. Suppose one discloses in the context of delivering samples in a confidential context? When one sends a colleague material under confidential cover, is that disclosure? No it is not. The first person with an invention to get to the Patent Office is the one who gets the Patent – in Kenya they have first past the post – philosophy and in some countries researchers try to outsmart each other


A patent can have two forms of protection Patent or product process – protected.. Disclosure of information, the claim, the description, the drawings which are all protected under copyright. One can argued both ways about protection of an invention.
Inventive Step
This is sometimes called non-obvious – it is not obvious to PHOSITA. Inventive step is UK-Kenya term and for US it is Non-Obivousness. Non obvious does not mean that it must be complex, it could be a very simple process. PHOSITA need not be a complicated scientist, he need not be Einstein he can be of a lower standard than the inventor. PHOSITA can even be an unimaginative unskilled worker. But some people like Lord Morton have argued that PHOSITA must not be a mechanical idiot but a mechanical genius and this was the case in Gillette Razor. The halfway house is that PHOSITA must be a cross between the genius and the idiot, intelligent enough who has some expertise in that specific field.


This is sometimes called non-obvious – it is not obvious to PHOSITA. Inventive step is UK-Kenya term and for US it is Non-Obivousness. Non obvious does not mean that it must be complex, it could be a very simple process. PHOSITA need not be a complicated scientist, he need not be Einstein he can be of a lower standard than the inventor. PHOSITA can even be an unimaginative unskilled worker. But some people like Lord Morton have argued that PHOSITA must not be a mechanical idiot but a mechanical genius and this was the case in Gillette Razor. The halfway house is that PHOSITA must be a cross between the genius and the idiot, intelligent enough who has some expertise in that specific field.


Industrial Applicability
Utility is the convergence between the intellectual and the property or commercial in Intellectual Property, it brings the issues home. After we have invented, there is emphasis on utilitarianism and one has to prove that an invention is useful. Something may appear useful but it may not be patent, moneychangers, cannot patent their con-game, issues.
Reproducibility
This means that it is not good enough to reproduce a prototype or model, a product must have the ability to be mass-produced to be useful to Kenyans and the world. It may be difficult to develop biological models.


PATENT INFRINGEMENT

What constitutes infringement?
The infringement can be strict/narrow or purposive/broad. In our Act we look at primary and secondary infringement. Primary is where one counterfeits a process e.g. where Smithkline has panadol another person makes a paracetemol and calls it paranol this is outright infringement. Secondary is where one actually encourages someone else to use a process that has already been patented. In the case of Catnic. Secondary infringement is where there is already a registered patent or a patent waiting to be patent and another person wants to patent the same kind of product.