Professional Documents
Culture Documents
Manifestations of IP
1. Patents the certificate that you get from the patent office after
you have made an invention. The relationship that exists between
an inventor on one hand or patentee and the patent office, the
estate or society. It is a juridical relationship between an inventor
or patent owner on one hand and on the other hand the patent
office or the state or society in general. The inventor is that
person who has brought out a new process or a new invention. A
patent owner is the person who holds the rights. The state here is
Kenya and the office is Kenya Intellectual Property Institute (KIPI).
To get a patent one must have an invention, it must be new
(novel). In the case of Windsurfing v Tabur Marines a boy used
to play with a play boat, later on a company made a similar play
boat and wanted a patent on it, they were denied because it was
not new. It must constitute an inventive step this is the doctrine
of non-obviousness i.e. is it obvious to PHOSITA (person having
ordinary skill in the art), an invention need not be complex for it to
constitute an inventive step, it may be simple but not obvious.
Patents must be useful (doctrine of utility), it must be capable of
industrial application this is the same as utility.
2. Utility Models these are sometimes called petty patents. The
concept is that there are certain innovations that dont need to be
entirely new, it might be new in Kenya but not necessarily
elsewhere, the newness need not be absolute and there need not
be an inventive step, it must be useful. Kenya has both patents
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and utility models, Kenya Ceramic Jiko (KCJ) from the metal jiko we
realised the need to conserve energy, the idea was that metal was
making energy disappear but ceramic would conserve energy.
Utility Models can be used to protect Kitenges, Kikois etc which is
also a case of copyrights.
3. Copyright: - protects original expressions embodied in material,
tangible or fixed form. it starts with an idea, it is expressed and
the expression is then embodied in material form. For example a
writer gets the idea to write, writes notes down on a piece of
paper and then the book, this is the idea, expression dichotomy.
Ideas are not protectable in intellectual property expressions are.
Copyright is more dynamic 3 areas where copyright is useful i.e. in
software, literature and entertainment amongst others.
4. Trademarks -
5. Trade secret
Look at the:
Industrial Property Act 2001
Trademarks Act Cap 506
Copyright Act 2001
COPYRIGHT
Copyright law is intended to protect and to reward original expressions
embodied in tangible material or fixed form. In the first category an idea
does not infringe copyright but once it is expressed in some form, then it
becomes tangible when expressed, you dont only have the idea in your
head you have expressed it and its somehow in fixed form. Not everything
that is new is patentable unless they are original expressions and are in
original form.
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Primary works include - These include literally works, artistic work, musical
work. Literally works are defined under Section 2 of Copyright Act as
meaning irrespective of literally quality. When a play is in writing it is a
literally work but the moment you perform it is called a performance. A
treatise is a book that deals with one subject in great detail. Essays and
articles are also copyrightable. Letters are copyrightable. Reports are
copyrightable. Memorandum including MOUs are copyrightable, summons
are copyrightable. Charts and tables, computer programs or software,
tables and compilation of data are copyrightable.
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5. Broadcasts this is any transmission intended to be received
whether it is received or not,
What is original?
Original is many times confused with the term creative but original may
mean
That its not a copy; - copy its not a reprint of another and it is not a copy
version of another, it embodies skill and judgment i.e. a work must embody
skill and judgment to be copyrightable Feist v Rural (US) a company
published a white pages directory, another company copied the entries and
published a yellow pages directory, they even copied trap entries.
In the supreme court the white pages directory said the yellow pages was
infringing and yellow pages argued that what white pages had was not
copyrightable but it was only sweat and brow, sweat and brow are not
copyrightable.
What white directory had entered was mere data and was not works of
skill. Feist Publications, Inc., v. Rural Telephone Service Co., Inc., 499 U.S.
340 (1991), commonly called just Feist v. Rural, was a United States
Supreme Court case in which Feist copied information from Rural's
telephone listings to include in its own, after Rural refused to license the
information. Rural sued for copyright infringement. The Court ruled that
information contained in Rural's phone directory was not copyrightable,
and that therefore no infringement existed.
UNFAIR COMPETITION:
This is a cross cutting aspect of intellectual property in the sense that it
relates to patents, copyright, trademark law and other areas. Under IP Act
2001 some regulations have been enacted to ensure that licensors of
technology or patents do not include inequitable and fair or oppressive
terms in licensing agreements or contracts. For example under IPA 2001 if a
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licensed agreement compels a licensee to acquire technology from abroad
and yet that technology is available locally that is regarded as unfair
technology, or importing expensive technology where alternative
technology is available and cheaper.
Cap 504 The Restrictive Trade Practices Monopolies and Price Control Act
this Act does not sufficiently deal with intellectual property. it does not
sufficiently understand intellectual property technological issues, there is a
technology and IP deficit.
The following instruments have tried to deal with the problems of unfair
competition
1. Paris Convention on the Protection of Industrial Property 1883
2. There were negotiations in the 70s through 1980s for an
international code of conduct on Restrictive Trade or Business
practices (RBTs) there were arguments that Trans-national
Corporations like Microsoft, Nation Media Group were engaged in
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restrictive business practice or unfair competition. For example
price fixing.
3. In 1970 1985 there were concerted discussion for a draft
international code of conduct on transfer of technology
hereinafter called the Draft Tot Code.
TRADE SECRETS
Trade secrets are sometimes called undisclosed information as TRIPS calls
them then they can also be called confidential information, know how.
Trade secrets have 3 major characteristics
1. Information must be secret or confidential not disclosed to other
people;
2. Information must have commercial value commercial value by
reason of its confidentiality;
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protected by Trade Secret Law. If it was protected by trademark, it
would have expired by now.
Trade Secrets protect your trade secrets through patents other than trade
secrets. Trade secrets are not sustainable if leaked or if the owner of a trade
secret dies, they die with it, this is the problem with traditional knowledge.
Traditional Medicinal Knowledge. Whenever an elder dies in a village a
section of the African Library is burnt because most of the information is
committed in memory and rarely disclosed.
TECHNOLOGY TRANSFER
For a long time there has been an argument whether IP enhances or stifles
innovation (creativity), technological transfer and development. On the one
hand it is argued that IP acts as a protective and reward mechanism to
creators. In sectors such as the pharmaceutical industries for instance there
is evidence to suggest that investment and development would be seriously
limited if patent protection were to be removed. Part of the reasoning is
that there are usually heavy upfront or sunk costs or investments before a
drug can be developed. Examples of this sunk costs include initial research,
initial development of the drug, clinical and related trials.
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From 1960s through 1980s there was a debate regarding technology
transfer. Developing countries argued that there was limited transfer of
technology to developing countries and that most of the technology was
controlled by the West and Transnational Corporations. Developing
countries persuaded UNCTAD to initiate a process for drafting an
international code of conduct for technology transfer (ToT Code). This draft
instrument was negotiated up to about 1985 when it ended in a stalemate.
Some of the core perspectives were as follows:
Promulgation of laws
Many developing countries including Kenya have since promulgated laws to
regulate technology (ToT). Most of these laws begin with a market based
approach to ToT e.g. the laws will saying that the parties who are
negotiating the transfer should decide the terms of the transfer and if there
is a problem with the transfer then the state can come in. Part X S. 64
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onwards of IPA 2001 has provisions on contractual licensing. It gives party
the freedom to determine the terms of the licence. However it indicates
about 33 terms which may make a contractual licence voidable and
therefore unregistrable by the MD of KIPI. The 33 terms may render a
licence voidable because the are oppressive, inequitable or
Choice of Law: What law shall apply to the transaction. It the law to
apply is foreign, then it is voidable because they want you to use Kenya Law.
if the forum for resolving the dispute is a foreign forum then the contract is
voidable.
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(3) No assignment of copyright and no exclusive licence to do an act the
doing of which is controlled by copyright shall have efect unless it is in
writing signed by or on behalf of the assignor, or by or on behalf of the
licensor, as the case may be and the written assignment of copyright shall
be accompanied by a letter of verification from the Board in the event of an
assignment of copyright works from outside Kenya.
(4) A non-exclusive licence to do an act the doing of which is controlled by
copyright may be written or oral, or may be inferred from conduct, and may
be revoked at any time, but a licence granted by contract shall not be
revoked, either by the person who granted the licence or his successor in
title, except as the contract may provide, or by a further contract.
(5) An assignment, licence or testamentary disposition may be efectively
granted or made in respect of a future work, or an existing work in which
copyright does not yet subsist, and the prospective copyright in any such
work shall be transmissible by operation of law as movable property.
(6) A testamentary disposition of the material on which a work is first
written or otherwise recorded shall, in the absence of contrary indication,
be taken to include the disposition of any copyright or prospective copyright
in the work which is vested in the deceased.
(7) Where an agreement for assignment of copyright does not specify the
period of assignment, the assignment shall terminate after three years.
(8) In the case of agreements regarding future works which are not
specified in detail, either party may, on giving not less than one month's
notice, terminate the agreement not earlier than three years after it was
signed or such shorter period as may be agreed.
(9) A licence granted in respect of any copyright by the person who, in
relation to the matters to which the licence relates, is the owner of the
copyright, shall be binding upon every successor in title to his interest in the
copyright, except a purchaser in good faith and without notice, actual or
constructive, of the licence, or a person deriving title from such purchaser
and any reference in this Act to the doing of anything in relation to any
copyright, with or without the licence of the owner of the copyright, shall
be construed accordingly.
(10) Where the doing of anything is authorised by the grantee of a licence
or a person deriving title from the grantee, and it is within the terms,
including any implied terms of the licence for him to authorise it, it shall for
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the purpose of this Act be deemed to be done with the licence of the
grantor and of every person, if any, upon whom the licence is binding.
ASSIGNMENT:
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In most assignment transactions the assignee replaces the assignors for
most intents and purposes. It is recommended that the contract should be
the assignor should sign the assignment, the assignors is the most
important.
Anything under the sun made by man is patentable. This doctrine helps
stimulate investments in bio-technology in the 80s-90s. there has been a
lot of investment in Genetics and informatics. (Genomics genetic
engineering and informatics.
In 1994 TRIPS adopted the standard that all inventions are prima facie
patentable and that no invention should be excluded by state parties
without sufficient justification.
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Technovations related to industrial designs, they relate to arrangements of
things. Section 94 of IPA
Right of Publicity: seeks to protect the image, voice and likeness of famous
people especially celebrities. These should not be copied or imitated
without their permission. Paul Goldstein talks of Johnnie Carson in the way
he used to enter the stage and say Heeeere comes Johnnie! and Vorna
White who had her own style of spinning the wheel of fortune. Right of
publicity does not extend to protect the individual from satirical
commentary. Satirising is not property but is in the area of freedom of
expression.
Discuss forms of IP that may be used to protect a Coke bottle and its
contents
Many scholars have argued that in a perfect market where transactions are
efficient intellectual property (IP) may not be justified. They have thus
argued that (IP) should be created only where there is market failure. The
best arguments have been made by Stanford Law Professor John Barton. He
argues that trade presupposes freedom. On the other hand property or IP
presupposes restriction or control. Indeed property includes the right to
use abuse and the right to exercise exclusive control. John Bartons
arguments underscore the tensions within TRIPs. He is more convincing
than activists and others who have argued that trade has nothing to do with
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IP. Many of our communities have pots, whenever they made posts they
would put their marks, that was a sign of trademark. In the area of music
many people were identifiable with the music that they had sung or written
which is an issue of copyright. It is not created by TRIPs but trademarks
have there.
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Novels are good places from which one can do character merchandising e.g.
Harry Porter one can merchandise Harry.
Characteristics of Network Efect examples tv programs and novels
Public goods problems:
Non-rivalrous products
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Utilitarianism finds expression in Article 1 of he American Constitution, the
idea is that for copyright and patents to be protected they must be able to
promote useful art and science. The question is which comes first, the
promotion of useful arts and science or is it the protection of IP? The whole
debate of incentive regimes.
There are two broad typologies of incentives. They may be ex post facto or
they may be ex ante, they may be to the creator or innovator or they may
be to others.
For example the money given to gidigidi by the NARC government was after
the fact. KISIMA AWARDS and KORA AWARDS. JOMO KENYATTA AWARDS
IN LITERATURE. Ex post facto are things like Oscar Awards all these are post
facto.
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In the Supreme Court Eldred lost 7 to 2. The argument at the Supreme
Court for Eldred were that for a long time Congress had extended copyright
time which was contrary to the Constitution which states that Copyright
should have limited time. But the other were arguing that limited could
mean eternity minus a day. The other argument was on incentives and the
question was who was getting the incentives, the creator or their
dependants. Experts were brought to bring in their opinion.
The question is what is the optimal, or efficient copyright duration.
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theory, that it is costly to monitor the use of intellectual property in private
area, for example would it be possible for a lecturer to call Daily Nation
every time they wanted to quote from an article that was on that days
newspaper? It would be practically impossible.
Prof Goldstein in Copyrights highway has argued that transaction costs are
being reduced by the internet. There was a time that it would take a long
time for one to get a book or a piece of music. The internet facilitates a
quicker way of getting these items especially music, books and software.
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any individual finds land which is farrow and they apply their labour to
improve the land they make the land useful and ought to claim ownership
of that land this is usufructuary. This theory in IP says that IP ought to be
protected where one has made a creation.
The other angle to John Lockes argument is that one can appropriate that
which was pre-existing so long as one leaves enough and as good for the
public domain. This is related to the argument of common use.
MORAL RIGHTS
Copyright is divided into 2 broad categories
1. Moral rights
2. Economic or material rights
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The first person to own copyright is the publisher until the author is
identified.
Moral rights live and die with the author. These are covered under S. 32(1)
of the Copyright Act, 2001.
Duration of anonymous works is 50 years since there is no author, for
audiovisual work it is 50 since creation or being published. After the end of
the year in which the author dies.
Imitative Innovation people who mutilate other peoples songs and come
up with their song e.g. Mercy Myra borrowing a little here a little there to
make a song, or Kajairo totally mutilating a song to come up with his own.
The amount of material in terms of quantity and quality matters. An
example is Gerry Fords Memoirs - Gerry was being asked questions on the
Watergate Scandal whether he wanted to forgive Nixon or take him to trial
as the Vice President. He decided to forgive Richard Nixon.
The dilemma had been to forgive and be seen as condoning political
corruption or trying Nixon and being seen as a callous person. Harper
agree with The Time Magazine agrees that they will get the scoop but
before the Memoirs hit the streets, Nation steals the book and they publish
300 words from a volume the issue is do 300 words out of about
constitute copyright infringement? This is based on the right to modify,
alter or mutilate. The court held that there was infringement as the words
were Jerry Fords own words.
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to call up the actor or actress every time they wanted to use the clip which
would be a very expensive and tedious exercise whenever one is acting it
is assumed that it is hired work, it is an artificial agreement that all actors
and actresses are treated as if their work is on hire.
American quarrel with moral rights- suppose one removes from Titanic the
scene where Leonardo Di Caprio is drawing and put it on t.v. two issues will
arise, Di Caprio may have a problem with that.
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research is not entirely empirical but is largely intuitive and
speculative.
Refer to Casper Primo Brage , Keith Mascus, studies by WIPO, UNDP and
Cultural Industries, Edwin Mansfield
IP and TRIPS
UNCTAD poor mans cushion for helping developing countries in their
trade interests.
344-345
Historically WIPO and UNESCO were the major regimes regulating trade
regimes and Intellectual Property. UNCESCO was administering Universal
Copyright Convention of 1952 (UCC)which had partly been passed to
accommodated America. America for a long time was not a member of
Berne but was using Berne.
Over the years WIPO had been criticised and it lacked resources to deal
with IP it had limited personnel and more recently it has sent limited
materials to address IP. In order to continue being relevant WIPO has now
moved to Dispute Resolution since most of its mandate has been taken over
by WTO/GATT.
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1. Aggressive Unilateralism
2. Bilateralism America dealing with countries one on one
3. Multilateralism through GATT
1. Watch list
2. Priority Watch List South Africa most Asian countries that were
counterfeiting which meant that measures were likely to be taken.
PATENTS
One of the core issues in TRIPS is that it adopts the obita dicta in Diamond v
Chakrabaty. For a long time Japan did not want to patent bombs because of
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Hiroshima and Nagasaki but as per TRIPS article 27 one has to patent or
innovations.
Article 9(2) makes it absolutely clear that copyright does not extend to
idea procedures, the clearest statement on this
Article 10 deals with computer programs and software and not literally
works
10(2) protects databases in machine readable forms.
Article 12 deals with the term of copyright and it is at least life plus 50
Europeans life plus 70.
There can be exceptions to copyright
Article 14 protects performance.
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Bank to help countries in reconstructing and the IMF to help countries
facing balance of payments problems.
To regulate international trade there was a suggested to establish the
International Trade Organization but in the Havana Charter the ITO was
rejected. GATT has a three prong identity one it was a forum for countries
to discuss on how to regulate tarifs but it was not very organized like the
UN for example. It was just a forum with rounds like the Havana Round. It
also had the character of Rules the GATT deals on how to deal with tarifs
the other prong was about its being an organization and a Club. It was
referred to as the rich countries club.
Around 1964 during the Kennedy Round of GATT some countries argued
that tarifs and barriers were not the only barriers to trade but there were
other Non-tarif barriers to trade such as Sanitary and Phyto sanitary
standards SPS and technical barriers referred to as NTBs sanitary standards
are used for example when the EU puts a ban on importation of fish from
Kenya saying they are not handled well, this becomes an SPS barrier to
trade.
1979 Japan Round the US and other countries started talking about
counterfeiting that when you counterfeit other peoples works, you deny the
countries the right to trade, allowing copying of others trademark was
trade distorting
In 1974 US enacted its Trade Act Section 301 that any country that
undermined US Trade would face sanctions. Infringing copyrights a country
could be put on the Watch List and if they continued they would be put on a
Priority Watch List and a country could face sanctions. The US adopted
unilateral measures on countries that continued to infringe on its
copyrights. America also adopted bilateral measures and negotiated the US
Canada Free Trade Agreement USCFTA among other agreements with
Intellectual Property clause USCFTA was later transformed into North
America Free Trade Agreement NAFTA after they signed multilateral
agreement with Canada and Mexico.
In 1986 1994 the Uruguay Round took place and the foreign Minister met
at Punta del Este and at this round the main issue was reforming the trade
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in goods and adding services such as banking, telecommunications, legal
services etc there should be no restriction to ofering services if AT&T
wants to come and invest in telecommunications in Kenya then there
should be no barriers into their doing so.
In April 1994 the deal was sealed in Marrakesh Morocco and Intellectual
Property became part of GATT. A General Agreement on Trades in Services
(GATS) also became part of GATT. Intellectual Property was allowed in GATT
as Trade Related Aspects of Intellectual Property (TRIPS) and intellectual
property was allowed into WTO. WTO became a specific institute that was
born in Marrakesh Morocco. Developed countries were to be bound by the
year 2000 and LDCs like Uganda and Tanzania were to be bound in 2016.
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mark has not been used for 12 years, the owners have slept on their rights
and equity does not protect the indolent but protects the diligent and
therefore abandonment is as good as cancellation. There can be arguments
on both sides.
Trademark, copyright, patent are territorial so for example if Drum was not
being used in Kenya, it can be said to have died in Kenya.
Article 40
Geographical Indications GIs are being debated quite a lot. TRIPS issue
that are controversial are patents and Geographical Indications this is partly
because countries have realised that they did not take interest to protect
their own interests.
Article 25
Paris Convention did not bind states to have specific standards in patents. It
was not strict on issues of patent rights and we had a chaotic regime, some
countries like US had 17 years before TRIPS after TRIPs it became 20 years,
US added 3 years the time they estimated it would take from application of
a patent to grant. There were no substantive issues on patenting, Japan
could refuse to patent explosives but after Diamond and Chakrabaty things
changed.
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TRIPs has provide to criminal and civil enforcement procedures which were
lacking before. before TRIPs, if ones patent was infringed by other
countries one could only try to take the matter to the UN where UN could
use diplomacy to try and resolve the issue. One could also take the matter
to the ICJ but decisions of ICJ matter if all parties are willing to be bound.
TRIPs brought in procedural requirements regarding how one could acquire,
maintain and register patents, trademarks etc.
Goldstein has argued that the magic or wisdom of TRIPs was that before
there were no clear enforcement mechanism, now there is a Dispute
Settlement Mechanism and even an Appeal.
Sihanyas issues some of the issues are that TRIPs is only enforcing
Western Standars and Patent terms are American Standards, where is
forklore, Traditional Knowledge? There are no utility models under TRIPs.
This is partly because America said that utility models are a dilution of
patents.
Constitutional politics and that there was not enough participation from
developing countries.
When TRIPs comes to form in Kenya (January 2000) developing countries
argue that they have other challenges facing them that they have to sort
out before they can comply with TRIPS requirements. They were asking for
realistic standards that all countries could easily comply with instead of
graduated compliance. There has been a huge debate in the idea of
compliance in that the terms of TRIPs are onerous and burdensome, they
should be made less onerous to developing countries but US is saying they
can only review how TRIPs can be implemented while developing countries
are saying that they should make compliance less onerous. Western want
review of TRIPs and they want to add new issues.
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Implementation of TRIPs have serious implication, it requires administrative
reforms and these are debatable issues, sovereign countries do not want to
be told how to reform their administrative and judicial systems. Trying to
direct a country on political and judicial decision making is not easy it is
tantamount to interfering with the sovereignty of a country.
REGIONAL IP REGIMES
ARIPO (African Regional Intellectual Property Organization)
It was established in 1976 in Lusaka Zambia as English Speaking African
Regional Property Organization and industrial which means it did not deal
with copyright, it was later changed to African Regional Property
Organization Industrial and now it is known as African Regional Property
Organization. It helps in registration of patents and trademarks but it is not
clear what role it will play in copyright. It has laws and is trying to
harmonise IP regimes in English speaking Africa. It is trying to harmonise
the substantive IP Laws which are known as ARIPO model laws. It is also
helping in administration of IP where countries can compare notes on IP
issues.
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into their agreements there are only a few clauses that mention IP related
concepts such as trade, Industrial Development, Science and Technology
and cultural development hence it is argued that these RTAs exhibit an IP or
technology deficit.
When one wanted to participate in trade, one required patent. The modern
patent law is traceable to UK and the system of Monopoly, patents were
granted at the discretion of the Monarch. Now it has become an IP issue
rather than a business issue. In 1789 it was incorporated into the US
Constitution Article 1881. A Patent is a bundle of rights that can protect an
individual and it carries duties and obligations, duties to disclose to the
patent office, on payment office on grant of registration and renew etc.
there is also the obligation of compulsory licensing if one does not meet the
conditions.
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It has been argued that patents are the most important in IP and in many
universities it is taught in a lot of lectures as opposed to only about two for
trademarks and copyright. The argument is because patents involve
inventions and the most sophisticated technologies. They also require long
procedures and thirdly it has been argued that protection of Patents if very
high partly because of its sophistication. There is a lot of protection for
patents. Patents generally have the tendency to secure very high revenues
for the inventors, for example if somebody invented a vaccine for HIV this
would be a goldmine. It is unlike some areas of copyright. Patents are the
most controversial and notorious because in most cases it deals with life
and death issues as in HIV drugs.
Acording to Professor Donald Chisum Patents
The patent problem arose when there was an exhibition in Paris in 1983
and there was need to protect the exhibitors.
PATENT LAW IN KENYA
Trademark Independence came in 1966 before that we applied 1911,
1956 UK Trademark Act
Patent Independence came in 1989
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(a) UK Patent Act 1977 did not provide for protection for
Biological innovations; there was a hot debate on non-
patentability of life forms, research by 1989 had shown that
Kenya was making headway in the area of Research and
Development evidenced by the fact that KARI had done a
lot of research on crops and so had JKCAT, Life form was
Kenyas Forte where they felt that they had made a lot of
innovations;
(b) It was also argued that UK Patent Act 1977 did not protect
Jua Kali utility models and Kenya needed its own
independent system to do this and this is in 1989. In 1988
we had exhibited what Kenya was producing in the Jua Kali
Sector the Nyayo Era Exhibition which coincided with Kenya
enacting the Intellectual Property Act
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
1. 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.
Section 21 says that certain things are excluded from patents ab initio,
plants are not patentable. Discovery in America patent law means
invention. Scientific theories are not patentable, for example discovering a
universal law of nature like the fact that water boils at a 100 degrees Celsius
is not patentable. Energy is neither destroyed or created but transferred.
2. 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
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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. After 1980 they were allowed to patent
software in Kenya it was in 1989 saying that a logarithms and
computer programming were not patentable. Diamond &
Diehr were insisting that software could be patentable and
Diamond v Chakarbaty were saying that anything was
patentable, in 1989 Kenya Industrial Act said that one could
not patent software but in 2001 the Kenya Act is saying that it
is possible to both copyright and patent software in Kenya. The
one click patent was given to Amazon.com this was a way of
clicking once to access what you want.
The reason why one does not want to protect the above list is because most
of them are protected under diferent regimes or other systems of law,
discoveries of plants are protected by Plant Breeders Rights, trade secrets
are protected by Industrial Property etc.
Novelty
Novelty must be absolute. How is novelty determined. There are three
ways in Kenya.
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(a) General Data Base of research at KIPI where one can
research and see whether what one has invented can be
protected or whether it has been patented in Kenya;
(b) ARIPO based in Harare has another data base on what has
been patented somewhere and it helps member states with
access to the database so that they can know what has
been patented
(c) Patent African Cooperation Treaty entered into under the
auspices of WIPO and where one wants their invention to
be protected in Kenya, 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
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.
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If Professor Obel is afraid of disclosing the Pearl Omega Formula, it is an
unfounded fear or it can be regarded as misplaced fear because under
Kenyas IPA one is protected and they are supposed to keep the patent
confidential. In Kenya we do not have the equivalent of the Section 6 of the
Lesotho Patent Act under which all officers of the patent office are bound
not to disclose the information and that in case they do they will sufer
imprisonment, fine or both and it would thus seem that Professor Obels
fears are not all that misplaced. The fear is also well-placed because the
Public Officer Ethics Act and the Common Law Rules on privacy and
protecting information and Copyright, Trade Secret, the Official Secrets Act
all of these Acts do not have a firm basis for protecting information
disclosing to a Patent Officer by an Inventor. On the other hand The Official
Secrets Act, Public Officer Ethics Act, Common Law Rules as well as
copyright can actually be used to protect patent information. For example
the information contained under copyright so even Professor Obel needs
protection, he can get protection under copyright, a patent can have two
forms of protection
1. Patent or product process protected..
2. 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.
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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.
Exclusion
Section 37 Right of Priority the right of priority, one has duty to disclose
whether there are other inventions that are in the field that you have
applied for. all the applications have to be sent within 12 months, one can
seek priority to be granted a patent where they live even though they are
aware that it is patented elsewhere by somebody else. When one is an
inventor they must disclose what other inventions close to theirs that
people have made and gotten protection elsewhere, an inventor buys time
before one comes to their market to file for patent. A Kenya may seek
priority to be protected in Kenya even though another inventor has filed
papers somewhere
PATENT PROCEDURE
One has to name the Inventor
Name the Applicant
Description the inventor must specifically describe their invention, give
background art or background technology.
Designation of the State
The best mode of working the patent must be stated. The cheapest, easiest
most efficient way of working the patent. How best can it be done. Include
specifications and be clear on what you are claiming. Specification should
be accompanied by a drawing where appropriate, sometimes it may not be
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easy to have a drawing. The significance of drawing is related to the
Chinese Proverb that a picture is worth a thousand words.
CLAIM
What exactly does one want to protect? East African Breweries v Castle
A claim may be broad or narrow and most inventors tend to make their
claims very broad and use words like all rights etc. this is not acceptable in
many countries, in US they allow broad patent claims for certain reasons
UNITY OF INVENTION
One is allowed to make as many patent applications as possible but each
application must have a unity of claim, if it is a writing instrument, patent it
for writing but not as a beverage.
EXAMINATION AS TO SUBSTANCE:
EXAMINATION AS TO FORM
Has the doctrine of patentability been met
Amendment
Minor changes and not substantive changes.
Grant of Patent have you fulfilled examination as to form and examination
as to substance.
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.
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REMEDIES/DEFENCES & SANCTIONS
More often than not these are clearly set out in the IP Act of 2001 and
there are civil, criminal remedies. The first thing a person does is to get an
injunction either interim or permanent. Permanent if the infringement is
found to be subsisting.
Damages
Under Section 106(b) of the IP Act of 2001 the main purpose of granting
damages is to compensate the Plaintif done by the patent infringor,
punitive damages are only awarded where the act amounts to criminal
activity but courts usually give compensatory damages. The plaintif is
entitled to any other remedy provided by the law.
Criminal Sanctions:
This are all available under the IP Act and in Kenya what we have for
example the find of KShs. 50,000/- the amount the infringer makes is much
more than the fine and therefore it does not seem to be a deterrent. One
of the issues that have been raised in this regard is that the fines and the
sentences which are between 3-5 years dont act as a deterrent. This is an
Act passed in 2001 and we hope KIPI will address this issue.. it is
noteworthy that a lot of jurisdiction do not criminalize Intellectual Property
but in Kenya there has always been criminal sanctions for infringement.
There is a big problem however with the enforcement of these rights
probably because of the intangible nature if Intellectual Property.
Bio-technology
This has in the recent past assumed a significant role with regard to
medicine, agriculture where one can modify organisms to increase the yield
of plants etc. the IP Act has certain things excluded from patentability and
one of them is the issue of life forms. In the US practically anything under
the sun can be patented. O ne of the leading cases is Diamond v Chakarbaty
and one of he main issues here was whether artificially created life forms
can be patented. At first they agree to patent the process that created the
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bacteria but refused to patent the bacterium itself at appeal they did agree
to patent the bacterium that was being created from the process.
Plant Varieties are protected under the Seeds and Plant Varieties Act, to
patent a new breed of plant, it has to be new, it has to be distinct meaning
it has to be distinguishable from any other existing variety. It has to be
uniform so there cannot be variance in the new breed. It has to be stable
meaning every time it is propagated it does not mutate i.e. it maintains the
same characteristics. The opposition of patenting life forms is a moral,
religious and ethical reason and not legal.
Bio-tech companies rely on genetic resources that are found within the
tropics so essentially they take a life form from here and go to the US and
patent it stopping people from the tropics who can patent it. For example
they took the Basmati seed, modified it and patented it in the US amid
protests from Asia. How do we share benefits that accrue from genetic
resources? Who gets paid? One of the most interesting cases is the Hoodia
case of South Africa SCIR carried out some research on the Hoodia Plant
that had hunger depressant properties and came up with an anti-obesity
drug that were used by the Koikoi of the Kalahari. SCI have now agreed to
give 10% to the Sun and Koikoi. Patenting of life forms is complex. At the
moment WIPO has created a forum where they meet once a year where the
various country are supposed to come up with ways to deal with issues of
genetic resources and traditional knowledge.
TRADE MARKS
What is the diference 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.
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and register the same trademark in Ethiopia. A trademark like Coca cola is
universal to the point of being generic.
Trade names are registered with the registrar of companies to use in the
course of trade. One can register a trade name if they have used it for a
while as a trademark. Certification marks give certification as to the quality
of the work for example the KBS logo shows that the quality is approved by
Kenya Bureau of Standards.
Use of Trademark
1. To distinguish the goods of one traded from those of another.
2. It refers to a particular quality more so like designer quality, like
Gucci, Channel etc, the trademarks are associated with quality.
3. Trademark protects the investment of the inventor, labour capital
and goodwill, this attribute has been questioned that it has no
legal basis.
4. Identifying the origin of a product i.e when you see Omo you
associate it with Unilever. This issue has become redundant in
scholarly terms because of the issue of franchising e.g. Nandos in
Kenya makes diferent tasting chicken from the Nandos in South
Africa.
5. To promote the marketing and sale of a product. When one has a
trademark.
According to David Bainbridge says that the purpose of a trademark are the
distinguishing aspect, protection of goodwill and to protect the consumers
against confusion.
Registrability of trademarks:
Sections 20-22 of Trademarks Act are on registerbility.
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2. Relative Grounds: the registrar may accept or refuse the
registration. If the is likely to cause confusion, the registrar will
refuse to register it, if it is confusingly similar the registrar will
refuse to register the mark, where the mark is misleading for
example when one says Kilimanjaro Oranges where the origin is
from Meru, this is lying and confusing as to the origin of the
goods. Where the mark is descriptive the registrar will refuse to
register it since it describes what one is trying to sell and may
exclude a lot of people from using the mark in future. The case of
Wagamama v city centre restaurant Wagamama was sending
some kind of cuisine and then some Indian came up with
Rajamama selling cuisine and Wagamama was arguing that this
was likely to confuse clients. The court held that there was a
likelihood of confusion by association since one is likely to
associate Rajamama with Wagamama one may confuse and thing
they are one and the same people and Wagamama was given an
injunction. This is likelihood of confusion through the doctrine of
confusion by association.
3. Marks Capable of Distinguishing one product from another: ExE
for Flour or Vaseline for Petroleum Jelly. These can distinguish
what one is buying. Distinctive marks are registerable under Part
A and Part B for those that are marks capable of distinguishing
products
Registration Procedure:
Read Trademarks Act Saudi Arabia v Saudia Kenya Enterprises
Whatever one registers for a certain product they cannot deviate and
later register the same for other goods. The use of has to be in good
faith. Read
Passing-Of
Brooke Bond v Chai, BAT v Cut Tobacco, Hack Babies v Oper Pharmacies
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Rights of a owner
Rights to use the if a 3 rd party uses the to further his own interests, it
amounts to infringement.
If one uses a that is confusingly similar to the of another, refer to Nivea
v Nivelin or for example in Kenya we have panadol and in South Africa we
have Panado if one registers Panado in Kenya there is a likelihood of
confusion.
Parallel Importation
Parallel Importation the principle of exhaustion once you have released
your goods to the market, you have no control and it can be used by an
infinite number of people at the same time. But the principle can be
defined as National meaning once goods are sold within Kenya one has
exhausted the first right, so a 3 rd party cannot take the goods and sell them
in Tanzania. International exhaustion is to the extent that once the goods
are in the market, you cannot stop other people from selling the goods, the
goods cannot be reproduced but they can be redistributed. Refer to the
Silhouette Case silhouette were manufacturers of designer shades. The
Defendant was based in Vienna and used to sell discount frames, after a
while Silhouette sold some old fashioned frames to a buyer in Bulgaria and
the defendant went to Bulgaria, bought the frames and brought them to
sell at a discount and Silhouette went to court. the court held that since
Bulgaria was out of the EU (regional exhaustion) the importation and
subsequent sale by the defendant amounted to infringement of the
Silhouette .
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People who compose their own music have primary rights to the copyright
while those who perform have secondary derivative or related rights to
copyright.
Berne Convention of 1886
Right of author to be recognized as the author of his work
Right of paternity
Parody and satire are not infringement of
COPYRIGHT
Copyright protects the original expression of ideas, not the ideas
themselves. It is free and automatically safeguards your original works of
art and literature, music, films, sound recording, broadcasts and computer
programs from copying and certain other uses.
Original means one has to show sufficient skill and judgment. Refer to the
case of Fiest Publications v Rural Rural was a telephone company and had a
telephone directory Fiest a Yellow pages company. Feist Publications, Inc.,
v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), commonly called
just Feist v. Rural, was a United States Supreme Court case in which Feist
copied information from Rural's telephone listings to include in its own,
after Rural refused to license the information. Rural sued for copyright
infringement. The Court ruled that information contained in Rural's phone
directory was not copyrightable, and that therefore no infringement
existed. The questions for determination were can there be copyright in
facts the answer was no. Had Rural exercised sufficient skill and judgment
to come up with their directory, they had but the information in the
directory was not copyrightable. This is the definitive guide for originality.
The Judges stated The primary objective of is not to reward the owner
to promote science and useful art. To this end assures the author the
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right to their original expression but also encourages others to built freely
on the ideas and information conveyed by the work.
DURATION OF COPYRIGHT
Act in Kenya grants to the owners. It subsists for the life of the
owner plus 50 years. In case of sound records, they compute 50 years after
the year in which the first recording was made. The problem with duration
is that most computer programs have a very short life span and there is no
need of protecting them for 50 years plus. Anonymous Works: subsists
for the duration starting from the year of publication which is strictly 50
years but if the author decides to disclose his identity before he dies, then it
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will persist for his lifetime and then another 50 years after the authors
death. These are called pseudononymous works. 50 years is a short time
and there are 2 dimensional characters like Mickey Mouse and the Looney
Tunes and their time was about to expire in the 2004, what the industry
leaders did was to lobby Congress to extend the duration of copyright
another 20 years which now made it the life of the author plus 70 years.
Music produced in US prior to 1976 Act is already in public domain.
It does not matter what kind of work it is, it may be a fantastic paper for the
law journal but the subject matter depends on whether it falls on the
category of literary, artistic or musical works.
Copyright Act 2001 Section 22.(1) Subject to this section, the following works
shall be eligible for copyright
(a) literary works;
(b) musical works;
(c) artistic works;
(d) audio-visual works;
(e) sound recordings; and
(f) broadcasts.
A broadcast shall not be eligible for copyright until it has been broadcast.
(3) A literary, musical or artistic work shall not be eligible for copyright
unless
(a) sufficient efort has been expended on making the work to give it
an original character; and
(b) the work has been written down, recorded or otherwise reduced
to material form.
(4) A work shall not be ineligible for copyright by reason only that the
making of the work, or the doing of any act in relation to the work,
involved an infringement of copyright in some other work.
Related rights for a long time were not included in copyright because it was
argued they lacked creativity. Broadcasting Houses only get fringe rights for
the investment they have made. Broadcasting Stations have copyright to
broadcast their own programs. They only have primary rights in those
programs that they have themselves produced like Wingu la Moto NTV
would have the primary rights to this programs. But they get related rights
to protect their investments for broadcasting other peoples work.
The authors of a joint work are co-owners of the copyright in the work,
unless there is an agreement to the contrary.
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Copyright in each separate contribution to a periodical or other collective
work is distinct from copyright in the collective work as a whole and vests
initially with the author of the contribution.
Two General Principles
Mere ownership of a book, manuscript, painting, or any other copy or
phonorecord does not give the possessor the copyright. The law
provides that transfer of ownership of any material object that
embodies a protected work does not of itself convey any rights in the
copyright.
Minors may claim copyright, but state laws may regulate the business
dealings involving copyrights owned by minors. For information on
relevant state laws, consult an attorney.
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