Act No: No. 3 of 2001
Act Title: INDUSTRIAL PROPERTY
SUBSIDIARY LEGISLATION
Arrangement of Sections

INDUSTRIAL PROPERTY TRIBUNAL RULES, 2002

ARRANGEMENT OF RULES

PART I – PRELIMINARY

1.

Citation.

2.

Definitions.

3.

Forms.

4.

Fees.

PART II – APPEAL PROCEEDINGS

5.

Notice of appeal.

6.

Time limit for appeals.

7.

Parties.

8.

Service of notice of appeal.

9.

Reply.

PART III – PROCEEDINGS RELATING TO LICENCES

10.

Application for repayment of royalties, etc.

11.

Applications and requests for compulsory licences.

12.

Application for cancellation of a compulsory licence.

13.

Application for variation of terms of a compulsory licence.

14.

Form of instruction under section 78 of the Act.

15.

Application for fixing of terms.

PART IV – REVOCATION OR INVALIDATION PROCEEDINGS

16.

Request for revocation or invalidation.

17.

Counter-statement.

18.

Publication fee for application.

19.

Form of information under section 104(2) of the Act.

PART V – PROCEEDINGS RELATING TO INFRINGEMENT

20.

Requests under s. 106 of the Act.

21.

Requests under s. 107(1) of the Act.

22.

Requests under s. 108(1) of the Act.

PART VI – GENERAL RULES APPLICABLE TO ALL PROCEEDINGS

23.

Frivolous or vexatious proceedings.

24.

Evidence.

25.

Security for costs.

26.

Hearings, schedulings, etc.

27.

Hearings, particular provisions.

28.

Witness allowances.

29.

Withdrawal.

30.

Number of copies of documents to be filed.

31.

Documents in English.

32.

Rules for giving notices, etc.

33.

Extension of time.

34.

Signing of forms on behalf of certain bodies.

35.

Statutory declarations and affidavits.

36.

Application for order under section 114(1) of the Act.

37.

Directions with respect to procedure.

PART VII – MISCELLANEOUS PROVISIONS

38.

Application to fix remuneration under section 32(4) of the Act.

39.

Reference under section 118 of the Act.

40.

Form for appointment of assessors.

41.

Representation by agent.

42.

Copies of documents.

43.

Transition- matters before the Tribunal.

44.

Former rules repealed.

SCHEDULES

FIRST SCHEDULE—

FORMS

SECOND SCHEDULE—

FEES

INDUSTRIAL PROPERTY TRIBUNAL RULES, 2002
[L.N. 196/2002.]
PART I – PRELIMINARY
1.
Citation

These Rules may be cited as the Industrial Property Tribunal Rules, 2002.

2.
Definitions

In these Rules, unless the context otherwise requires—

“Chairman” means the Chairman of the Tribunal;

“Secretary” means the Secretary to the Tribunal.

3.
Forms

The forms referred to in these Rules are the forms set out in the First Schedule.

4.
Fees
(1)

The fees set out in the Second Schedule are prescribed.

(2)

If, for a fee, a corresponding form is referred to in the Second Schedule, the fee is payable when the form is used.

(3)

A fee paid in error may be refunded.

PART II – APPEAL PROCEEDINGS
5.
Notice of appeal
(1)

A person who may appeal to the Tribunal shall do so by filing a notice of appeal with the Tribunal.

(2)

The notice of appeal shall set out—

(a)

the decision appealed against;

(b)

whether or not the appeal is against the entire decision or only part of the decision, and if the appeal is against only part of the decision, the part of the decision appealed against;

(c)

the grounds of appeal; and

(d)

the order or any other relief sought.

(3)

The notice of appeal shall be in the following form—

(a)

for an appeal from a decision of the Minister under section 27(7) of the Act, in Form IPT 1;

(b)

for an appeal from a decision of the Managing Director under section 71 of the Act, in Form IPT 2;

(c)

for an appeal from a decision of the Minister under section 80(11) of the Act, in Form IPT 3;

(d)

for an appeal from a decision of the arbitration board under section 101(3) of the Act, in Form IPT 4;

(e)

for an appeal from a decision of the Managing Director, other than an appeal described in paragraph (b), in Form IPT 5.

6.
Time limit for appeals
(1)

An appeal shall be made within 90 days after the date of the notification of the decision.

(2)

Subrule (1) does not apply with respect to an appeal if a provision of the Act or the Industrial Property Regulations, 2002 provides a time limit for making the appeal.

7.
Parties
(1)

If a decision arising from a proceeding is appealed, each person who was a party to the proceeding is a party to the appeal.

(2)

The Managing Director shall be a party to an appeal from a decision of the Minister or the Managing Director other than an appeal under regulation 49(20) of the Industrial Property Regulations, 2002.

(3)

The Minister shall not be a party to an appeal from a decision of the Minister.

(4)

The Tribunal may add persons as parties to an appeal.

8.
Service of notice of appeal

The Secretary shall serve a notice of appeal upon each party other than the appellant.

9.
Reply
(1)

A party may oppose an appeal by filing with the Tribunal a reply setting out fully the grounds of opposition.

(2)

The reply shall be in Form IPT 6.

(3)

The reply shall be filed within 45 days after the notice of appeal is served.

(4)

The Secretary shall serve a copy of the reply upon the appellant and the other parties.

PART III – PROCEEDINGS RELATING TO LICENCES
10.
Application for repayment of royalties, etc
(1)

An application for an order of the tribunal under section 66 of the Act shall be in Form IPT 7 and shall be filed with the Tribunal.

(2)

The application shall set out the order being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the application and the accompanying statement of facts upon the person against whom the order is sought.

(4)

The person against whom the order is sought may oppose the application by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the application is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the applicant.

11.
Applications and requests for compulsory licences
(1)

This rule applies with respect to an application under section 72(1) of the Act or a request under section 73(1) of the Act.

(2)

The application or request shall be in Form IPT 8 and shall be filed with the Tribunal.

(3)

The application or request shall set out the relief being sought and shall be accompanied by a statement of the fact being relied upon and supporting evidence.

(4)

The Tribunal shall consider the application or request and, if the Tribunal is of the view that a prima facie case has not been made out for the relief sought, the following shall apply—

(a)

the Tribunal shall notify the person who made the application or request that the Tribunal is of the view that a prima facie case has not been made out and that the person may, within thirty days after the notification, request an opportunity to be heard;

(b)

if the person who made the application or request requests an opportunity to be heard within the time period described in sub-rule (a), the Tribunal shall give the person such an opportunity and, if the Tribunal is still of the view that a prima facie case has not been made out, the Tribunal shall dismiss the application or request; and

(c)

if the person who made the application or request does not request an opportunity to be heard within the time period described in sub-rule (a), the Tribunal shall dismiss the application or request.

(5)

Unless the Tribunal dismisses the application or request under sub-rule (4)(b) or (c)—

(a)

the Tribunal shall publish the application or request in the Kenya Gazette or in the Industrial Property Journal; and

(b)

the Secretary shall serve a copy of the application or request and the accompanying statement of facts and supporting evidence required under sub-rule (3) upon the owner of the patent and anyone else shown in the patent register as having an interest in the patent.

(6)

Before an application or request is published under sub-rule (5)(a), the person who made the application or request shall pay the publication fee.

(7)

A person may oppose the application or request by filing with the Tribunal a reply in Form IPT 9 setting out fully the grounds of opposition.

(8)

The reply shall be accompanied by a statement of the facts being relied upon and supporting evidence.

(9)

The reply shall be filed within 45 days after the application or request is published.

(10)

The Secretary shall serve a copy of the reply and the accompanying statement of facts and supporting evidence required under sub-rule (8) upon the person who made the application or request.

(11)

The person who made the application or request may, within 45 days after being served under sub-rule (10), file with the Tribunal further evidence confined to matters strictly in reply.

(12)

The Secretary shall serve a copy of evidence filed under sub-rule (11) upon the person opposing the application or request.

(13)

No further evidence shall be filed except by leave or direction of the Tribunal.

(14)

Evidence filed under this rule shall be by way of a statutory declaration or affidavit.

(15)

Rule 24 does not apply with respect to an application or request with respect to which this rule applies.

12.
Application for cancellation of a compulsory licence
(1)

An application for the cancellation of a compulsory licence under section 77(1) or (2) of the Act shall be in Form IPT 10 and shall be filed with the Tribunal.

(2)

The application shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the application and the accompanying statement of facts upon the licensee.

(4)

The licensee may oppose the application by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the application is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the applicant.

13.
Application for variation of terms of a compulsory licence
(1)

An application for the variation of terms of a compulsory licence under section 77(3) of the Act shall be in Form IPT 11 and shall be filed with the Tribunal.

(2)

The application shall set out the variation of terms being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the application and the accompanying statement of facts upon the other party to the licence.

(4)

The other party to the licence may oppose the application by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the application is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the applicant.

14.
Form of instruction under section 78 of the Act

An instruction under section 78 of the Act with respect to the recording of a grant, cancellation or variation shall be in Form IPT 12.

15.
Application for fixing of terms
(1)

An application to have the Tribunal fix the terms of a non-exclusive licence under section 79(5) of the Act shall be in Form IPT 13 and shall be filed with the Tribunal.

(2)

The application shall set out the terms being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the application and the accompanying statement of facts upon the other party to the licence.

(4)

The other party to the licence may oppose the application by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the application is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the applicant.

PART IV – REVOCATION OR INVALIDATION PROCEEDINGS
16.
Request for revocation or invalidation
(1)

A request under subsection (1) or (2) of section 103 of the Act for the revocation or invalidation of a patent, utility model or industrial design registration shall be in Form IPT 14.

(2)

The request shall be filed with the Tribunal after notice of the filing is given to the owner of the patent, utility model or industrial design registration by serving a copy of the request on the owner.

17.
Counter-statement
(1)

A period of 45 days beginning when the owner of the patent is served is prescribed, for the purpose of section 103(5) of the Act, as the time within which a counter-statement may be lodged.

(2)

The counter-statement shall be in Form IPT 6.

18.
Publication fee for application

Before an application is published under section 103(10) of the Act, the applicant shall pay the publication fee.

19.
Form of information under section 104(2) of the Act

The Chairman shall use Form IPT 15 to inform the Managing Director under section 104(2) of the Act.

PART V – PROCEEDINGS RELATING TO INFRINGEMENT
20.
Requests under section 106 of the Act
(1)

A request under section 106 of the Act shall be in form IPT 16 and shall be filed with the Tribunal.

(2)

The request shall set out the relief being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the request and the accompanying statement of facts upon the person against whom the relief is sought.

(4)

The person against whom the relief is sought may oppose the request by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the request is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the person who made the request.

(8)

If a counter-statement includes a request under section 103 of the Act the Tribunal shall, at the request of a party, give directions with respect to the procedure to be followed.

21.
Requests under section 107(1) of the Act
(1)

A request under section 107(1) of the Act shall be in Form IPT 17 and shall be filed with the Tribunal.

(2)

The request shall set out the declaration being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the request and the accompanying statement of facts upon the owner of the patent or registered utility model or industrial design and any licensee.

(4)

The owner or a licensee may oppose the request by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the request is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the person who made the request.

22.
Requests under section 108(1) of the Act
(1)

A request under section 108(1) of the Act shall be in Form IPT 18 and shall be filed with the Tribunal.

(2)

The request shall set out the relief being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the request and the accompanying statement of facts upon the person threatening infringement proceedings.

(4)

The person threatening infringement proceedings may oppose the request by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the request is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the person who made the request.

PART VI – GENERAL RULES APPLICABLE TO ALL PROCEEDINGS
23.
Frivolous or vexatious proceedings

If a notice of appeal, application or request discloses no reasonable grounds and it appears to the Tribunal that it is frivolous or vexatious, the Tribunal may dismiss the appeal, application or request without a hearing.

24.
Evidence
(1)

This rule applies with respect to evidence in an appeal, application or request to the Tribunal.

(2)

The person initiating the proceedings shall, within 45 days after being served with a copy of the respondent’s reply or counter-statement, file either—

(a)

evidence in support of his case; or

(b)

a statement that no evidence is to be adduced.

(3)

The Secretary shall serve a copy of the evidence or statement filed under sub-rule (2) upon the respondent.

(4)

The respondent shall, within 45 days after being served with a copy of the evidence or statement under sub-rule (3), file either—

(a)

evidence in support of his case; or

(b)

a statement that no evidence is to be adduced.

(5)

The Secretary shall serve a copy of the evidence or statement filed under sub-rule (4) upon the other parties.

(6)

The person initiating the proceedings may, within 45 days after being served with a copy of evidence under sub-rule (5), file further evidence confined to matters strictly in reply.

(7)

The Secretary shall serve a copy of evidence filed under sub-rule (6) upon the respondent.

(8)

No further evidence shall be filed except by leave or direction of the Tribunal.

(9)

Evidence filed under this rule shall be filed with the Tribunal and shall be by way of a statutory declaration or affidavit.

(10)

In this rule—

“a person initiating the proceedings” means the person making the appeal, application or request to the Tribunal;

“respondent” means the party or parties to the proceedings, other than the person initiating the proceedings.

25.
Security for costs
(1)

The Tribunal may order the person making an appeal, application or request to provide security for costs.

(2)

A party may apply for an order under sub-rule (1) by filing a notice of application with the Tribunal.

(3)

The Secretary shall serve a copy of the notice of application upon the party against whom the order is sought.

(4)

The Tribunal may order that security be provided and may specify the amount of the security and how and when it shall be provided.

(5)

A party who is ordered to pay security may apply for an extension of the time within which the security is to be given.

(6)

If the Tribunal has ordered a party to provide security, the proceedings shall be stayed until the security is provided and, if the security is not provided within the time specified, the Tribunal may dismiss the appeal, application or request.

26.
Hearings, scheduling, etc
(1)

The time and place of a hearing in a proceeding shall be determined by the Secretary in consultation with the Chairman.

(2)

The Secretary shall give the parties at least fourteen days notice of a hearing.

(3)

The Chairman may allow less than fourteen days notice to be given under sub-rule (2).

(4)

The hearing shall be held in Nairobi unless the Tribunal directs otherwise under sub-rule (5).

(5)

The Tribunal may, on the application of a party and after giving the other parties an opportunity to be heard, direct that a hearing be held at a place that is not in Nairobi.

(6)

An application for a direction under sub-rule (5) shall be filed with the Tribunal at least fourteen days before the hearing is scheduled to be held.

(7)

In making a direction under sub-rule (5), the Tribunal may also give such directions with respect to notice and costs as it deems fit.

(8)

A hearing may be adjourned by the Tribunal on such terms as the Tribunal deems fit.

27.
Hearings, particular provisions

The following apply with respect to a hearing before the Tribunal—

(a)

at the hearing the Tribunal may allow oral evidence and shall allow the cross examination of a person on his statutory declaration or affidavit;

(b)

the Tribunal may, on such terms as it may specify, allow a document to be amended or a procedural irregularity to be rectified;

(c)

the Tribunal may, on such terms as it may specify, dispense with or modify any requirement to do anything, including a requirement to provide a document, and

(d)

the Tribunal may require a party to pay all or part of the costs of another party and specify how the costs are to be determined and how they are to be paid.

28.
Witness allowances
(1)

A witness before the Tribunal shall be entitled to such allowances for food, accommodation and other incidental expenses as the Tribunal may direct.

(2)

The allowances of a witness shall be paid by the party producing or summoning the witness.

(3)

If a person is a witness in more than one proceeding in the same place on the same day, the following shall apply—

(a)

the person shall be entitled only to the allowances that would be payable if the person was a witness in a single proceeding; and

(b)

the costs of the allowances shall be shared equally among the parties producing or summoning the witness in the proceedings.

(4)

Sub-rules (2) and (3) do not limit the power of the Tribunal, in making an order with respect to costs, to order another party to pay the costs of the allowances of a witness.

29.
Withdrawal
(1)

The person making an appeal, application or request may, at any time, withdraw the appeal, application or request by giving notice to the Tribunal in Form IPT 19.

(2)

The Secretary shall serve a copy of the notice on the other party.

(3)

A party may request the Tribunal to order costs to be paid by the party withdrawing the appeal, application or request.

30.
Number of copies of documents to be filed
(1)

If a person files a document with the Tribunal that is to be served on one or more other persons, the person filing the document shall file sufficient copies so that there is one copy for each person to be served and one copy for the Tribunal.

(2)

If the document is signed, each copy required under sub-rule (1) shall be signed.

31.
Documents in English
(1)

Documents provided to the Tribunal shall be in English.

(2)

Notwithstanding sub-rule (1), a document that is not in English may be included as an exhibit to a statutory declaration or affidavit if—

(a)

an English translation of the document is also included as an exhibit to the statutory declaration or affidavit; and

(b)

the translation is certified to be an accurate translation.

32.
Rules for giving notices, etc
(1)

A notice or other document that is to be served on a person may be served—

(a)

by mailing or delivering the notice or document to the address of service provided by the person;

(b)

by giving the notice or document personally to the person or by mailing or delivering the notice or document to the person’s residence or place of business or employment; or

(c)

by giving the notice or document personally to the person’s agent or by mailing or delivering the notice or document to the agent’s place of business.

(2)

Proof that a notice or other document was served shall be in Form IPT 20.

(3)

A notice or document that is mailed shall be deemed to have been served on the day the notice or document would be delivered in the ordinary course of post.

33.
Extension of time
(1)

The Tribunal may extend, on such conditions as it may specify—

(a)

a time limit under these Rules; or

(b)

a time limit under the Act or the Industrial Property Regulations, 2002 for making an appeal.

(2)

An application to the Tribunal for an extension of a time limit under sub-rule (1) shall be in Form IPT 21 and shall be filed with the Tribunal.

(3)

The application shall state the grounds on which the application is based and shall be supported by a statutory declaration or affidavit.

(4)

An application for an extension of a time limit may be made even though the time limit has expired.

(5)

The Secretary shall serve a copy of the application and the accompanying statutory declaration or affidavit upon the other party to the application.

(6)

The other party to the application may oppose the application by filing with the Tribunal a counter-statement.

(7)

The counter-statement shall be in Form IPT 6.

(8)

The counter-statement shall state the grounds of opposition and shall be supported by a statutory declaration or affidavit.

(9)

The counter-statement shall be filed within 45 days after the application is served.

(10)

The Secretary shall serve a copy of the counter-statement and the accompanying statutory declaration or affidavit upon the applicant.

(11)

Rule 24 does not apply with respect to an application for an extension of a time limit under sub-rule (1).

34.
Signing of forms on behalf of certain bodies
(1)

A form that is required to be signed on behalf of a corporation shall, unless it is signed by an agent, be signed by a director of the corporation or the secretary of the corporation.

(2)

The following apply if a form is required to be signed on behalf of a partnership—

(a)

unless the form is signed by an agent, the form shall be signed by a partner or by a person who satisfies the Tribunal that the person is authorised by the partnership to sign on its behalf; and

(b)

the form shall set out the names of the partners in full.

35.
Statutory declarations and affidavits

The following apply with respect to a statutory declaration or affidavit under these Rules—

(a)

the statutory declaration or affidavit shall have a heading indicating the matter or matters to which it relates;

(b)

the statutory declaration or affidavit shall be divided into consecutively numbered paragraphs, each of which shall, if possible, be confined to a single subject-matter; and

(c)

the statutory declaration or affidavit shall fully identify the person making it and shall set out where the person resides.

36.
Application for order under section 114(1) of the Act
(1)

An application for an order under section 114(1) of the Act shall be in Form IPT 22 and shall be filed with the Tribunal.

(2)

The application shall set out the order being sought and shall be accompanied by a statutory declaration or affidavit setting out the facts being relied upon.

(3)

Rules 23 to 30 do not apply with respect to an application described in sub-rule (1).

37.
Directions with respect to procedure
(1)

The Tribunal may give directions with respect to the procedure to be followed in any proceedings, including directions with respect to the form to be used where no form is otherwise provided for under these Rules.

(2)

No direction may be inconsistent with any provision of the Act or these Rules.

PART VII – MISCELLANEOUS PROVISIONS
38.
Application to fix remuneration under section 32(4) of the Act
(1)

An application to have the Tribunal fix remuneration under section 32(4) of the Act shall be in Form IPT 23 and shall be filed with the Tribunal.

(2)

The application shall set out the remuneration being sought and shall be accompanied by a statement of the facts being relied upon.

(3)

The Secretary shall serve a copy of the application and the accompanying statement of facts upon the other party.

(4)

The other party may oppose the application by filing with the Tribunal a counter-statement setting out fully the grounds of opposition.

(5)

The counter-statement shall be in Form IPT 6.

(6)

The counter-statement shall be filed within 45 days after the application is served.

(7)

The Secretary shall serve a copy of the counter-statement upon the applicant.

39.
Reference under section 118 of the Act
(1)

A reference of a matter by the Managing Director to the Tribunal under section 118(1) of the Act shall be in Form IPT 24 and shall be filed with the Tribunal.

(2)

A reference shall be accompanied by a statement setting out the facts of the matter and the directions being sought.

(3)

A party may reply to the reference by filing a reply with the Tribunal.

(4)

The reply shall be in Form IPT 6.

(5)

The reply shall be filed within 45 days after notice of the reference is served on the party under section 118(1) of the Act.

(6)

The Secretary shall serve a copy of the reply on the Managing Director and the other parties.

40.
Form for appointment of assessors

An appointment of an assessor under section 116 of the Act shall be in Form IPT 25.

41.
Representation by agent
(1)

A person may be represented before the Tribunal by an agent in respect of a matter if—

(a)

an appointment of the agent in respect of the matter has been filed with the Tribunal; and

(b)

the agent is an advocate.

(2)

An appointment of an agent shall be in Form IPT 26.

42.
Copies of documents

A person who wishes to obtain a copy of a document kept by the Tribunal shall use Form IPT 27.

43.
Transition matters before the Tribunal
(1)

In this rule—

“former Act” means the Industrial Property Act (Cap. 509) repealed by section 121(1) of the Industrial Property Act, 2001;

“former Tribunal” means the Industrial Property Tribunal under the former Act.

(2)

The following apply with respect to a matter still before the former Tribunal at the time the former Act was repealed—

(a)

the matter shall be continued before the Tribunal; and

(b)

the procedure under the Act and these Rules shall apply with necessary modifications and with such other modifications as the Tribunal may direct.

(3)

The following apply with respect to a matter that, under the former Act, could have been brought before the former Tribunal before the repeal of the former Act—

(a)

the matter may be brought before the Tribunal subject to any limitations under the former Act; and

(b)

the procedure under the Act and these Rules shall apply with necessary modifications and with such other modifications as the Tribunal may direct.

(4)

The application of this rule is subject to paragraph 2(e) of the Second Schedule to the Act.

(5)

This rule shall not apply to shorten any time limit for doing anything if the time limit has already started to run before these Rules come into operation.

44.
Former rules repealed

The Industrial Property Tribunal Rules, 1998 are repealed.

FIRST SCHEDULE
[Rule 3.]
FORMS

FORM IPT 1

[Rule 5(3)(a).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF AN APPEAL UNDER SECTION 27(7) OF THE ACT

This is a notice of appeal to the Industrial Property Tribunal.

Name and address for service of appellant:

Decision appealed against:

If only part of the decision is appealed against , description of that part of the decision:

Grounds of the appeal:

Order or other relief sought:

Names and addresses or other parties to the appeal:

Signature of appellant or agent: .......................................................

Date: ..........................................................................

FORM IPT 2

[Rule 5(3)(b).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF AN APPEAL FROM A DECISION OF THE MANAGING DIRECTOR UNDER SECTION 71 OF THE ACT

This is a notice of appeal to the Industrial Property Tribunal.

Names and address for service of appellant:

Decision appealed against:

If only part of the decision is appealed against, description of that part of the decision:

Grounds of the appeal:

Order or other relief sought:

Names and addresses of other parties to the appeal:

Signature of appellant or agent: .........................................................

Date: ...........................................................

FORM IPT 3

[Rule 5(3)(c).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF AN APPEAL FROM A DECISION OF THE MINISTER UNDER SECTION 80(11) OF THE ACT

This is a notice of appeal to the Industrial Property Tribunal.

Name and address for service of appellant:

Decision appealed against:

If only part of the decision is appealed against, description of that part of the decision

Grounds of the appeal:

Order or other relief sought:

Names and addresses of other parties to the appeal:

Signature of appellant or agent: .........................................................

Date: ...........................................................

FORM IPT 4

[Rule 5(3)(d).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF AN APPEAL FROM A DECISION OF THE ARBITRATION BOARD UNDER SECTION 101(3) OF THE ACT

This is a notice of appeal to the Industrial Property Tribunal.

Name and address for service of appellant:

Decision appealed against:

If only part of the decision is appealed against, description of that part of the decision

Grounds of the appeal:

Order or other relief sought:

Names and addresses of other parties to the appeal:

Signature of appellant or agent: .........................................................

Date: ..........................................................................

FORM IPT 5

[Rule 5(3)(e).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF AN APPEAL FROM A DECISION OF THE MANAGING DIRECTOR (OTHER THAN A DECISION UNDER SECTION 71 OF THE ACT)

This is a notice of appeal to the Industrial Property Tribunal

Name and address for service of appellant:

Decision appealed against:

If only part of the decision is appealed against, description of that part of the decision

Grounds of the appeal:

Order or other relief sought:

Names and addresses of other parties to the appeal:

Signature of appellant or agent: .................................................

Date: ...........................................................

FORM IPT 6

[Rules 9(2), 10(5), 12(5), 13(5), 15(5), 17(2), 20(5), 21(5), 22(5), 33(7), 38(5) & 39(4).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REPLY/COUNTER-STATEMENT

In the matter of

This is a reply/counter-statement to the appeal, appreciation or request described above.

Name and address for service of person filing the reply/counter-statement:

Grounds of opposition:

Signature of person filing reply/counter-statement

or agent: .......................................................

Date: ...........................................................

FORM IPT 7

[Rule 10(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR AN ORDER OF THE TRIBUNAL UNDER SECTION 66 OF THE ACT

This is an application for an order of the Tribunal under 66 of the Act.

Name and address for service of applicant:.

Description of licence contract with respect to which the application relates:.

Description of patent application or patent referred to in licence contract:.

I, the applicant declare that (tick the relevant box):The application has been withdrawn;The application has been finally rejected; or The patient has been finally revoked or declared invalid.

Order sought:.

Name and address of person against whom order is sought:.

A statement of the facts relied upon is attached.

Signature of applicant or agent: ................................................

Date: ....................................................................

FORM IPT 8

[Rule 11(2).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR A COMPULSORY LICENCE UNDER SECTION 72(1) OF THE ACT OR REQUEST FOR A COMPULSORY LICENCE UNDER SECTION 73(1) OF THE ACT

This is (tick the relevant box): □

An application for a compulsory licence under section 72(1) of the Act: □

a request for a compulsory licence under section 73(1) of the Act: □

Name and address for service of applicant or requester:.

Description of patent or patent application under which the compulsory licence is sought:.

Relief sought:.

A statement of the facts relied upon and supporting evidence, by way of a statutory declaration of affidavit, is attached.

Signature of applicant or requester or agent: .........................................................

Date: ...........................................................

FORM IPT 9

[Rule 11(7).]

(Rule 11(7))

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REPLY TO AN APPLICATION FOR A COMPULSORY LICENCE UNDER SECTION 72(1) OF THE ACT OR REQUEST FOR A COMPULSORY LICENCE UNDER SECTION 73(1) OF THE ACT

In the matter of.

This is a reply to the application or request for a compulsory licence described above.

Name and address for service of person filing the reply:.

Grounds of opposition:.

A statement of the facts relied upon and supporting evidence, by way of a statutory declaration of affidavit, is attached.

Signature of person filing reply or agent: ............................................

Date: ........................................................................

FORM IPT 10

[Rule 12(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR CANCELLATION OF A COMPULSORY LICENCE UNDER SECTION 77(1) OR (2) OF THE ACT

This is an application for the cancellation of a compulsory licence under (tick the relevant box):

Section 77(1) of the Act:

Section 77(2) of the Act:

Name and address for service of applicant:.

Licence for which application is made for cancellation:Date of issue of licence:Patent number:

Grounds on which the application is based:.

Name and addresses of other parties:.

A statement of the facts relied upon is attached.

Signature of applicant or agent: .........................................................

Date: ...........................................................

FORM IPT 11

[Rule 13(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR VARIATION OF TERMS OF A COMPULSORY LICENCE UNDER SECTION 77(3) OF THE ACT

This is an application for variation of the terms of a compulsory licence under section 77(3) of the Act.

Name and address for service of applicant:.

Licence for which application is made for variation of terms:Date of issue of licence:Patent number:

Variation of terms being sought:.

Grounds on which the application is based:.

Name and addresses of other parties:.

A statement of the facts relied upon is attached.

Signature of applicant or agent: .........................................................

Date: ...........................................................

FORM IPT 12

[Rule 14.]

INDUSTRIAL PROPERTY ACT, 2001

To: The Managing Director

Kenya Industrial Property Institute

INSTRUCTION UNDER SECTION 78 OF THE ACT TO RECORD A GRANT, CANCELLATION OR VARIATION

The Industrial Property Tribunal has granted, cancelled or varied the terms of a compulsory licence.

The specifics of the grant, cancellation or variation are set out in the attached document.

The Tribunal hereby instructs you to record the appropriate particulars in the patent register upon a petition for registration being made under section 78 of the Act by one of the parties to the contract.

Signature of Chairman of Tribunal: ..........................................................

Date: ................................................................................

FORM IPT 13

[Rule 15(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR FIXING TERMS OF A NON-EXCLUSIVE LICENCE UNDER SECTION 79(5) OF THE ACT

This is an application to have the Tribunal fix the terms of a non-exclusive licence under section 79(5) of the Act.

Name and addresses for service of applicant:.

Patent to which application relates:Patent number:

Terms being sought:.

Name and addresses of other parties:.

Signature of applicant or agent: ..........................................................

Date: ................................................................................

FORM IPT 14

[Rule 16(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REQUEST UNDER SECTION 103(1) OR (2) OF THE ACT FOR REVOCATION OR INVALIDATION OF A PATENT OR UTILITY MODEL OR INDUSTRIAL DESIGN REGISTRATION

This is a request for the revocation or invalidation of a patent or utility model or industrial design registration on under section 103(1) or (2) of the Act.

If this request is made in an existing proceeding, set out a description of the proceeding:.

Name and address for service of requester:.

Patent or utility model or industrial design registration for which revocation or invalidation is requested:Date of issue of patent or registration:Patent or registration number:

Grounds on which the request if based:.

Names and addresses of other parties:.

The following are attached as required under section 103(4)(b) of the Act:

1. a statement setting out particulars of the facts alleged in support of the grounds; and

2. proof of service, on the owner of the patent, of notice of filing of this request.

Signature of requester or agent: ................................................

Date: ..........................................................................................

FORM IPT 15

[Rule 19.]

INDUSTRIAL PROPERTY ACT, 2001

To: The Managing Director

Kenya Industrial Property Institute

INFORMATION, UNDER SECTION 104(2) OF THE ACT, OF TRIBUNAL DECISION

I hereby inform you, under section 104(2) of the Act, of the decision of the Tribunal, set out in the attached document. The decision is no longer subject to appeal.

Section 104(2) of the Act requires you to register and publish this decision.

Signature of Chairman of Tribunal: ..........................................................

Date: ................................................................................

FORM IPT 16

[Rule 20(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REQUEST UNDER SECTION 106 OF THE ACT

This is a request under section 106 of the Act.

Name and address for service of requester:.

Patent, registered utility model or industrial design which requester owns and in respect of which relief is sought:Date of issue:Patent or registration number:

Relief sought:.

Names and addresses of person against whom relief is sought..

A statement of the facts relied upon is attached.

Signature of applicant or agent: ..........................................................

Date: ................................................................................

FORM IPT 17

[Rule 21(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REQUEST UNDER SECTION 107 (1) OF THE ACT FOR A DECLARATION OF NON-INFRINGEMENT

This is a request under section 107(1) of the Act for a declaration that the performance of a specific act does not infringe a patent or registered utility model or industrial design.

Name and address for service of requester:.

Patent, registered utility model or industrial design in respect of which the declaration is sought:Date of issue:Patent or registration number:

Declaration sought:.

Names and addresses of owner of patent or registered utility model or industrial design and any licensees:.

A statement of the facts relied upon is attached.

Signature of requester or agent: ..........................................................

Date: ................................................................................

FORM IPT 18

[Rule 22(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REQUEST UNDER SECTION 108 (1) OF THE ACT FOR AN INJUNCTION AND DAMAGES

This is a request under section 108(1) of the Act for an injunction and damages relating to threats of infringement proceedings.

Name and address for service of requester:.

Patent registered utility model or industrial design in respect of which the threat of infringement proceedings was made:Date of issue:Patent or registration number:

Relief sought:.

Names and address of person threatening infringement proceedings:.

A statement of the facts relied upon is attached.

Signature of requester or agent: ..........................................................

Date: ................................................................................

FORM IPT 19

[Rule 29(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

NOTICE OF A WITHDRAWAL OF AN APPEAL, APPLICATION OR REQUEST

In the Matter of.

This is a notice that the appeal, application or request described above is being withdrawn.

Name and address for service of person who made the appeal, application or request being withdrawn:

Names and address for service of other party:.

Signature of person withdrawing the appeal, application or request or his agent: ...........

Date: ...............................................................

FORM IPT 20

[Rule 32(2).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

PROOF OF SERVICE

I ............................... of .................... hereby certify that at (see note 1) ................. on the .......... day of ............., 20 ........ at ............ o’clock in the ....................., I served the documents, copies of which are attached, on ................ by (see note 2) .............

Dated at ........................ this ................... day of ...................., 20 .............

Signature (see note 3): ................................................

Notes:

1. State precisely where service was effected.

2. Describe the method of service used.

3. To be signed by the person effecting service.

FORM IPT 21

[Rule 33(2).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR EXTENSION OF TIME LIMIT

This is an application for an extension of a time limit.

Name and address for service of applicant:.

Description of the matter with respect to which the time limit relates:.

Extension sought:.

Grounds on which the application is based:.

Name and addresses of other parties:.

A statutory declaration of affidavit supporting this application is attached.

Signature of applicant or agent: ......................................

Date: ................................................................................

Extension granted:

.........................................................................................

Signature of Secretary of Tribunal: ...................................

Date: .....................................................................................

FORM IPT 22

[Rule 36(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION FOR AN ORDER UNDER SECTION 114(1) OF THE ACT

In the Matter of.

This is an application for an order under section 114(1) of the Act.

Order sought:.

Name and address for service of applicant:.

Name and addresses for service of other parties:.

A statutory declaration of affidavit supporting this application is attached.

Signature of applicant or agent: ......................................

Date: ................................................................................

FORM IPT 23

[Rule 38(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPLICATION TO HAVE EMPLOYEE’S REMUNERATION FOR INVENTION FIXED

This is an application to have the Tribunal fix remuneration under section 32(4) of the Act.

Name and address for service of applicant:.

Patent to which application relates:Patent number:

Remuneration being sought:.

Name and addresses for service of other parties:.

Signature of applicant or agent: ..........................................................

Date: ................................................................................

FORM IPT 24

[Rule 39(1).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

REFERENCE OF A MATTER BY THE MANAGING DIRECTOR UNDER SECTION 118(1) OF THE ACT

This is a reference of a matter by the Managing Director to the Tribunal under section 118(1) of the Act.

Description of the matter being referred and directions sought:.

Name and addresses of other parties:.

Signature of Managing Director: ..........................................................

Date: ................................................................................

FORM IPT 25

[Rule 40.]

INDUSTRIAL PROPERTY ACT, 2001

APPOINTMENT OF AN ASSESSOR UNDER SECTION 116 OF THE ACT

I hereby appoint ...................................................................., under section 116 of the Act, to act as an assessor in an advisory capacity in the following case:

..........................................................................................................................

..........................................................................................................................

Signature of Chairman of Tribunal: ...................................................

Date: ...................................................................................................

FORM IPT 26

[Rule 41(2).]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

APPOINTMENT OF AN AGENT

Name and address of person appointing agent:.

Name and address of agent:.

Matter in respect of which agent is appointed:.

I/We, the person(s) identified above, have appointed the above agent to act on my/our behalf in the matter described above and request that all communications relating thereto be sent to the agent at his address given above.

I/We revoke all previous appointments in respect of the same matter.

Signature of person appointing agent: ...............................................

Date: ...................................................................................................

FORM IPT 27

[Rule 42.]

INDUSTRIAL PROPERTY ACT, 2001

To: The Secretary

Industrial Property Tribunal

ORDER FORM FOR COPY OF DOCUMENT

Name and address of person seeking copy:.

I wish to obtain a copy of a document of the following type (tick the relevant box):

a judgment or order of the Tribunal or other document used in a proceeding before the Tribunal □

another document

Description of document:

I wish to have the copy of the document certified (tick the relevant box):

Yes □

No □

Signature of person seeking copy: ..................................................

Date: .................................................................................................

SECOND SCHEDULE
[Rule 4.]

FEES

Notes:

1. A foreign fee is payable if the person paying the fee or on whose behalf the fee is being paid does not reside in Kenya and does not have a principal place of business in Kenya.

INDUSTRIAL PROPERTY REGULATIONS, 2002

ARRANGEMENT OF REGULATIONS

PART I – PRELIMINARY

1.

Citation and commencement.

2.

Forms.

3.

Fees.

PART II – ADMINISTRATION

4.

Training, competitions and awards.

5.

Client deposit accounts.

6.

Office hours of the Institute.

7.

Publications of the Institute.

8.

Appointment of advisors, etc.

PART III – PATENTS: PATENTABILITY

9.

Certain notices, etc., in writing.

10.

Request for authority.

11.

Patents relating to living matter.

PART IV – APPLICATION, GRANT AND REFUSAL OF PATENT

12.

Request.

13.

Description.

14.

Claims.

15.

Drawings.

16.

Abstract.

17.

General requirements.

18.

Provisional specification.

19.

Unity of invention.

20.

Amendment or division.

21.

Declaration claiming priority.

22.

Waiver of fees.

23.

Withdrawal of application.

24.

Filing date and examination.

25.

Publication of application.

26.

Confidentiality of application before publication.

27.

International-type search.

28.

Examination as to substance.

29.

Grant of patent.

30.

Register of patents.

PART V – INTERNATIONAL AND REGIONAL APPLICATIONS

31.

Filing requirements for international or regional application.

32.

Entry of international application to national phase.

33.

Conversion of refused international application.

34.

Conversion of refused regional application.

35.

Publication of certain international and regional applications.

PART VI – RIGHTS AND OBLIGATIONS OF THE APPLICANT OR THE OWNER OF THE INVENTION

36.

Clarification of application to new use.

37.

“Parallel importation”.

PART VII – ANNUAL FEES

38.

Annual fees.

PART VIII – CHANGE IN OWNERSHIP

39.

Change of ownership of application or patent section 62 of the Act.

PART IX – CONTRACTUAL LICENCES

40.

Petition to register licence contracts.

41.

Registration of contracts.

42.

Licences as of right.

PART X – EXPLOITATION BY GOVERNMENT

43.

Exploitation by Government.

PART XI – UTILITY MODELS

44.

Application of Regulations to utility models.

PART XII – INDUSTRIAL DESIGNS

45.

Register of industrial designs.

46.

Copyrighted designs not registrable.

47.

Application.

48.

Publication of application.

49.

Procedure if opposition to application.

50.

Procedure if no opposition to application.

51.

Registration of industrial design.

52.

Duration and renewal of registration.

53.

Restoration of lapsed right.

54.

Request to examine representations, etc.

55.

Publication relating to registration.

56.

Application of regulations under.

PART XIII – REGISTRATION OF TECHNOVATION CERTIFICATES

57.

Form of certificate.

58.

Register of technovation certificates.

59.

Application for registration.

60.

Certificate of registration.

PART XIV – SURRENDER

61.

Surrender.

PART XV – AGENTS

62.

Representation by agent.

63.

Admission to practice as agent.

64.

Annual fees for admitted persons.

65.

Advocates Act restrictions preserved.

66.

Revocation of admission to practice.

67.

Offence acting as agent without admission.

PART XVI – GENERAL AND MISCELLANEOUS PROVISIONS

68.

Copies of documents.

69.

Copy of lost or destroyed certificate.

70.

Request for a search.

71.

Request to amend a name, etc., in a register.

72.

Caution or notice in a register.

73.

Rules for giving notices, etc.

74.

Opportunity to be heard.

75.

Hearings, particular provisions.

76.

Extensions of time.

77.

Signing of forms on behalf of certain bodies.

78.

Statutory declarations and affidavits.

79.

Documents in English or translated.

80.

Repeal of former regulations.

SCHEDULES

FIRST SCHEDULE —

FORMS

SECOND SCHEDULE —

FEES

INDUSTRIAL PROPERTY REGULATIONS, 2002
[L.N. 50/2002.]
PART I – PRELIMINARY
1.
Citation and commencement

These Regulations may be cited as the Industrial Property Regulations, 2002 and shall come into operation on the 1st May, 2002.

2.
Forms

The forms referred to in these Regulations are the forms set out in the First Schedule.

3.
Fees
(1)

The fees set out in the Second Schedule shall be the prescribed fees for the purposes of these Regulations.

(2)

If, for a fee, a corresponding form is referred to in the Second Schedule, the fee is payable when the form is used, unless the Act or these Regulations provide for the fee to be payable at another time.

(3)

A fee paid in error may be refunded.

PART II – ADMINISTRATION
4.
Training, competitions and awards

In carrying out its functions under paragraphs (c) and (d) of section 5 of the Act, the Institute shall—

(a)

organise and conduct training relating to industrial property matters at all levels in Kenya, in collaboration or association with other relevant institutions, if necessary; and

(b)

organise competitions and contests and award trophies and awards.

5.
Client deposit accounts
(1)

The Institute shall have one or more separate banking accounts for funds that the Institute receives to be held temporarily for other persons.

(2)

All funds described in paragraph (1) shall be paid into an account required under that paragraph.

6.
Office hours of the Institute

The offices of the Institute and the records and documents kept by the Managing Director shall be open to the public each day, other than on a Saturday, Sunday or public holiday, from 9 a.m. to 1 p.m. and from 2 p.m. to 4 p.m.

7.
Publications of the Institute
(1)

This regulation applies with respect to publications of the Institute.

(2)

The Institute shall publish a journal to be called “The Industrial Property Journal”.

(3)

Unless the Managing Director otherwise directs, the Industrial Property Journal shall be published monthly.

(4)

The Institute shall publish, from time to time, reports of cases relating to industrial property rights including decisions by the Tribunal or a court or other body, whether in Kenya or elsewhere.

(5)

The Institute may publish such other documents as it considers appropriate.

(6)

The Institute may provide for the sale of any of its publications.

8.
Appointment of advisors, etc
(1)

The Managing Director may appoint a person to act as an advisor in relation to a proceeding or to perform any other function specified by the Managing Director.

(2)

Paragraph (1) does not authorize the Managing Director to make an appointment that the Board is authorised to make under section 12 of the Act.

PART III – PATENTS: PATENTABILITY
9.
Certain notices, etc., in writing

The following shall be in writing—

(a)

a notification or notice under section 27 of the Act;

(b)

directions or instructions under section 27 of the Act; and

(c)

the report referred to in section 27(5)(b) of the Act.

10.
Request for authority

A request for written authority referred to in section 28(1) of the Act shall be in Form IP 1.

11.
Patents relating to living matter
(1)

This regulation applies with respect to section 29 of the Act.

(2)

The following are depository institutions for the purposes of section 29(1)(a) of the Act—

(a)

the Kenya Agricultural Research Institute; and

(b)

the Kenya Medical Research Institute.

(3)

The Managing Director shall, on request, issue a certificate certifying that a person has a right to inspect the files for the purposes of section 29(3) of the Act if the Managing Director is satisfied that the person has such a right.

(4)

A request for a certificate under paragraph (3) shall be in Form IP 2.

(5)

A person to whom a deposited culture is made available under section 29(3) of the Act shall not do any of the following until the application is refused or withdrawn or, if a patent is granted, until after the patent ceases to have effect—

(a)

make the culture available to any other person; or

(b)

use the culture other than for experimental purposes.

(6)

Paragraph (5)(b) does not apply with respect to anything done for the service of the Government by the Government or a person authorized in writing by the Government.

(7)

A person who contravenes paragraph (5) is guilty of an offence and is liable, on conviction, to a fine not exceeding six thousand shillings or, to imprisonment for a term not exceeding six months or to both.

PART IV – APPLICATION, GRANT AND REFUSAL OF PATENT
12.
Request
(1)

This regulation applies with respect to a request referred to in section 34(1)(a) of the Act.

(2)

The request shall be in Form IP 3.

(3)

The following data concerning the applicant, inventor or agent is prescribed for the purposes of section 34(3) of the Act—

(a)

for the applicant, the applicant, the applicant’s name, address, nationality and country of residence;

(b)

for the inventor, the inventor’s name and address; and

(c)

for the agent, the agent’s name and address.

(4)

If there is more than one applicant, the request shall set out, in addition to an address for each applicant, a single address at which all the applicants can be contacted.

(5)

The following apply with respect to names of persons set out in the request—

(a)

if the person is a natural person, the person’s family name shall be set out first followed by the given names; and

(b)

if the person is not a natural person, the full name of the person shall be set out.

(6)

The following apply with respect to addresses of persons set out in the request—

(a)

the address shall be sufficient to allow prompt postal delivery; and

(b)

only one address shall be set out for each person, except as required under paragraph (4).

(7)

The title of the invention, required under section 34(3) of the Act, shall be short and precise.

(8)

The statement justifying the applicant’s right to the patent, required under section 34 (3) of the Act if the applicant is not the inventor, shall be in Form IP 4.

(9)

The request shall be accompanied by an extra copy of the statement referred to in paragraph (8) for the inventor, or if.

(10)

The request shall not include anything that is not provided for in Form IP 3 or that is not required or allowed under the Act or these Regulations.

(11)

The Managing Director shall require the applicant to delete anything included contrary to subregulation (10).

13.
Description
(1)

This regulation applies with respect to a description referred to in section 34(1)(b) of the Act.

(2)

In addition to the requirements under section 34(5) of the Act, the description shall—

(a)

state the title of the invention;

(b)

specify the technical field to which the invention relates;

(c)

indicate the background art which, as far as it is known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention; and

(d)

indicate how the invention is industrially applicable.

14.
Claims
(1)

This regulation applies with respect to claims referred to in section 34(1)(c) of the Act.

(2)

In defining, under section 34(6) of the Act, the matter for which protection is sought, a claim shall set out—

(a)

the technical features that are necessary to define the subject matter of the invention but that are part of the prior art; and

(b)

the technical features that, in combination with the features referred to in subparagraph (a), define that for which protection is sought.

(3)

The features set out in the claim under paragraph (2)(b) shall be preceded by the words “characterized in that”, “characterized by”, “wherein the improvement comprises” or any other words to the same effect.

(4)

A technical feature set out in a claim shall not rely on a reference to the description or drawings but a reference to a feature may be included in parentheses if the intelligibility of the claim can be increased by doing so.

(5)

The reference to a feature included under paragraph (4) shall be deemed to be included only for convenience.

(6)

A claim shall not include a drawing.

(7)

If more than one claim is included in the application, the claims shall be numbered consecutively in Arabic numerals.

(8)

An application may include two or more independent claims if each independent claim relates to a single product or a single process.

(9)

An application may include a claim stating the essential technical features of an invention with one or more following claims setting out particular embodiments of the invention.

(10)

The following apply to claims described in paragraph (9)—

(a)

the claims setting out particular embodiments of the invention shall include a reference to the claim stating the essential technical features of the invention;

(b)

the claims setting out particular embodiments of the invention shall state the features that it is desired that those claims protect; and

(c)

the claims shall be grouped together to the extent possible and in the most appropriate way.

(11)

If more than ten claims are included in the application, the application fee shall be increased by the excess claims fee payable for each of the claims in excess of ten.

15.
Drawings
(1)

This regulation applies with respect to drawings referred to in section 34(1)(d) of the Act.

(2)

The sheets of paper that drawings appear on shall comply with the following—

(a)

the minimum margins shall be as follows—

(i) top margin, 2.5 centimetres;
(ii) left margin, 2.5 centimetres;
(iii) right margin, 1.5 centimetres; and
(iv) bottom margin, 1.0 centimetres;
(b)

the area within the margins shall not exceed 26.2 centimetres by 17 centimetres; and

(c)

there shall not be a frame around the area of the sheet that is used or useable.

(3)

The drawings shall comply with the following—

(a)

the drawings shall not be coloured;

(b)

the lines of the drawings shall be black, durable, uniformly thick and well-defined and shall be drawn with the aid of drafting instruments;

(c)

the drawings, including their scale and the distinctness of their lines, shall be such that all details can be distinguished without difficulty when the drawings are reproduced photographically at two-thirds their actual size;

(d)

if the scale is given on a drawing, it shall be given graphically;

(e)

cross sections shall be indicated by hatching that does not impede the clear reading of the reference signs and reading lines;

(f)

all numbers, letters and other references signs shall be at least 32 centimetres high and shall be circled or within brackets or inverted commas;

(g)

if the drawings show a feature mentioned in the description, that feature shall be denoted in the drawings by a reference sign and that reference sign shall be used throughout the application to denote that feature;

(h)

except as required under subparagraph (g), no feature shall be denoted in the drawings by a reference sign;

(i)

the lettering on drawings shall use the Latin alphabet or, where customary, the Greek alphabet;

(j)

the different figures in the drawings shall be numbered consecutively in Arabic numerals independently of the numbering of the sheets on which the drawings appear; and

(k)

the drawings shall not include text other than single words or phrases.

16.
Abstract
(1)

This regulation applies with respect to an abstract referred to in section 34(1)(e) of the Act.

(2)

The abstract shall include—

(a)

the title of the invention; and

(b)

a summary of the disclosure included in the description under section 34(5) of the Act.

(3)

The summary required under paragraph (2)(b) shall indicate the technical field to which the invention relates and the principal use or uses of the invention.

(4)

The abstract shall be drafted in a way that it can be used efficiently for searching in the relevant technical field and so that it is possible for a reader to assess, from the abstract, whether the description should be consulted.

(5)

The abstract shall not include statements about the merits or value of the invention or about uses that are speculative.

(6)

If applicable, the abstract shall include the formula that best characterizes the invention.

(7)

The abstract shall not include a drawing, but if the application includes drawings—

(a)

the applicant shall indicate which drawing the applicant suggests should accompany the publication of the abstract; and

(b)

a feature referred to in the abstract shall, if the feature is illustrated in a drawing, be followed, in the abstract, by the reference sign used in the drawing.

(8)

Unless it is impractical, the abstract shall not contain more than one hundred and fifty words.

17.
General requirements
(1)

This regulation sets out general requirements for an application under section 34 of the Act.

(2)

All parts of the application shall be in English.

(3)

All pages of the application shall be on durable white paper with a matt finish of the size known as A4 paper (29.7 centimetres by 21 centimetres).

(4)

Each page of the application shall be oriented with the short side at the top.

(5)

Each page of the application, other than the request and the drawings, shall have margins as follows—

(a)

top margin, 2.0 centimetres;

(b)

left margin, 2.5 centimetres;

(c)

right margin, 2.0 centimetres; and

(d)

bottom margin, 2.0 centimetres.

(6)

The margins shall be completely blank.

(7)

Only one side of each page of the application, other than the request, shall be used.

(8)

The pages of the application shall be bound so that they can be easily separated and rejoined.

(9)

The pages of the application shall be free of cracks, creases and folds.

(10)

Each of the following shall start on a new page—

(a)

the request;

(b)

the description;

(c)

the claim or claims;

(d)

the drawing or drawings; and

(e)

the abstract.

(11)

The application shall be in triplicate.

(12)

Each of the following shall be numbered as a separate series, using Arabic numerals with the numbers centred at the top of the sheets but not in the top margin—

(a)

the request;

(b)

the description, claims and abstract; and

(c)

the drawings.

(13)

Every fifth line of the description and the claims shall be numbered with the number appearing to the left of the line but not in the margin.

(14)

All parts of the application, other than the drawings and the request, shall be typed or printed rather than hand-written and the following apply to the appearance of the text—

(a)

the text shall be dark and indelible;

(b)

the line spacing of the text shall be at least one and one half; and

(c)

the capital letters shall be at least 20 centimetres high.

(15)

All parts of the application must be prepared so that they are legible when they are photocopied or otherwise reproduced.

(16)

Notwithstanding paragraph (14), graphic symbols and characters, and chemical and mathematical formulae may be hand-written but must be dark and indelible.

(17)

The request may be hand-written, typed or printed but the text must be dark and indelible.

(18)

All parts of the application shall be reasonably free of over-writings, insertions between lines, deletions or other alterations.

(19)

All terms, signs and symbols used in the application shall be used consistently throughout the application and shall be the terms, signs and symbols generally accepted in the relevant field.

(20)

If anything is expressed in units other than metric units the equivalent in metric units shall also be given.

18.
Provisional specification
(1)

In this regulation,

“specification” means the description, claims, drawings and abstract.

(2)

An application may be filed with a provisional specification.

(3)

The following apply if an application is filed with a provisional specification—

(a)

unless the applicant files a final specification within one year after the application is filed, the application shall be deemed to have been withdrawn;

(b)

the Managing Director shall take no steps with respect to the application until the final specification is filed, except under section 41(1) to (3) of the Act;

(c)

the final specification shall be filed using Form IP 3;

(d)

the final specification shall not go beyond the disclosure in the provisional specification; and

(e)

the filing of the final specification shall not affect the filing date accorded under section 41 of the Act.

19.
Unity of invention
(1)

For the purposes of section 35 of the Act, a group of inventions forms a single general inventive concept if there exists between or among those inventions a technical relationship that involves one or more of the same or corresponding special technical features.

(2)

In paragraph (1),

“special technical features” means those technical features that define a contribution that each of the claimed inventions, considered as a whole, makes over the prior art.

20.
Amendment or division
(1)

This section applies with respect to an amendment or division of an application under section 36 of the Act.

(2)

A request for amendment or division of an application shall be in Form IP 5.

(3)

If the request is to amend a name, address or other contact information, the request shall be in Form IP 6.

(4)

The Managing Director may require proof that it is appropriate to make the requested amendment to a name, address or other contact information.

(5)

The following apply with respect to an amendment—

(a)

the amendment shall be in the form of a letter of explanation and pages to replace pages of the application;

(b)

the letter of explanation shall draw attention to the differences between any new pages and the pages being replaced; and

(c)

the letter of explanation shall specify any pages that are to be removed from the application without being replaced.

(6)

If an application is divided under section 36(2) of the Act—

(a)

the filing date for each divisional application shall be the filing date of the initial application;

(b)

any declaration of priority in the initial application shall be deemed to be included in each divisional application; and

(c)

the applicant shall pay the application fee and any other fees payable in respect of the additional applications resulting from the division.

21.
Declaration claiming priority
(1)

This regulation applies with respect to a declaration, referred to in section 37(1) of the Act, claiming the priority, as provided for in the Paris Convention, of one or more earlier national, regional or international applications.

(2)

The declaration shall include, in respect of each earlier application—

(a)

the date and number of the earlier application;

(b)

the symbol of the international patent classification that was assigned to the earlier application or, if no such symbol has been assigned, a statement of that fact;

(c)

if the earlier application was a national application, the name of the state in which it was filed; and

(d)

if the earlier application was a regional or international application, the name of the office in which it was filed and the name of the state for which it was filed.

(3)

If the number of the earlier application, as required under paragraph (2)(a), is not known at the time of making the declaration, a statement of that fact shall be included in the declaration and the declaration shall be amended to include the number within ninety days after the application containing the declaration is made.

(4)

A certified copy of the earlier application required by the Managing Director under section 37(2) of the Act shall be furnished within ninety days after the requirement was made.

(5)

If it is discovered that the date given to the earlier application was incorrect, the following apply—

(a)

the Managing Director shall invite the applicant to provide the correct date; and

(b)

the Managing Director shall disregard the claim for priority unless the applicant provides the correct date within ninety days after the date of the invitation to provide the correct date and that correct date is within the period of priority provided under the Paris Convention.

22.
Waiver of fees
(1)

This regulation applies with respect to a waiver of fees under section 39 (2) of the Act.

(2)

The Board may waive fees under section 39 (2) of the Act, in whole or in part, for a natural person who is unable to pay the fees.

(3)

A request for a waiver by the Board shall be submitted to the Managing Director in writing.

(4)

The payment of any fees for which a waiver is sought shall be deferred pending the decision by the Board.

(5)

The Managing Director shall communicate the Board’s decision to the applicant and any deferred fees that have not been waived shall be paid within 60 days after the date of that communication.

23.
Withdrawal of application
(1)

A withdrawal of an application under section 40 of the Act shall be in writing.

(2)

If there is more than one applicant, the application may only be withdrawn by all of the applicants.

24.
Filing date and examination
(1)

This regulation prescribes the details of the requirements and procedure under section 41 of the Act.

(2)

The following apply with respect to an invitation referred to in section 41(2) of the Act—

(a)

the invitation shall be given within fourteen days after the Managing Director makes the finding referred to in section 41(2) of the Act; and

(b)

the invitation shall indicate that the applicant has until sixty days after the date of the invitation to comply with the invitation.

(3)

If the Managing Director determines that the applicant has not complied with an invitation referred to in section 41(2) of the Act and, as a result, treats the application as if it had not been filed under section 41(3) of the Act, the Managing Director shall, within fourteen days after his determination, inform the applicant of the reasons for that determination.

(4)

The following apply with respect to an invitation referred to in section 41(8) of the Act—

(a)

the invitation shall indicate that the applicant has until ninety days after the date of the invitation to remedy the defects;

(b)

the ninety day period may be extended by the Managing Director for a period not exceeding sixty days; and

(c)

a request for an extension under subparagraph (b) shall be in Form IP 7.

(5)

If the Managing Director accords a filing date to the application under section 41 of the Act, the Managing Director shall send the applicant a certificate of filing, which shall be a copy of the request with the filing date and number marked on it.

25.
Publication of application
(1)

This regulation applies with respect to the publication of a patent application under section 42 of the Act.

(2)

Before the patent application is published, the applicant shall pay the publication fee.

(3)

The following are the particulars to be published to effect the publication of a patent application under section 42(3) of the Act—

(a)

the application number;

(b)

the name and address of the applicant;

(c)

the name and address of the inventor unless he has indicated that he wishes not to be named in the application under section 33 of the Act;

(d)

the name and address of the agent, if any;

(e)

the filing date of the application;

(f)

if priority is claimed, the priority date and the name of the state in which or for which the earlier application was filed;

(g)

the symbol of the international patent classification;

(h)

the title of the invention;

(i)

the abstract; and

(j)

if applicable, the drawing the applicant suggested, under regulation 16(7)(a), should accompany the publication of the abstract or, another drawing, if the Managing Director decides it would better characterise the invention.

26.
Confidentiality of application before publication
(1)

The Managing Director shall ensure that information about a patent application is kept confidential until the application is published.

(2)

Paragraph (1) does not apply to the following—

(a)

the application number;

(b)

the name of the applicant;

(c)

the filing date of the application;

(d)

if priority is claimed, the priority date and the name of the state in which or for which the earlier application was filed and the number of the earlier application; and

(e)

the title of the invention.

27.
International-type search
(1)

This regulation prescribes the details of the requirements and procedure under section 43 of the Act.

(2)

Within thirty days after receiving a report on an international-type search, the Managing Director shall send a copy of the report to the applicant.

(3)

The time limit, referred to in section 43(3) of the Act, for the applicant to furnish a requested copy of a document, is ninety days after the date of the request.

(4)

If an applicant has a lawful reason under section 43(3) of the Act for not furnishing a requested copy of a document, the applicant shall inform the Managing Director of that reason within ninety days after the date of the request.

(5)

If the Managing Director rejects an application under subsection (2), (3), (4) or (5) of section 43 of the Act, the Managing Director shall, within thirty days after doing so, send the applicant a notice of the rejection.

(6)

The time limit for appealing to the Tribunal against a decision by which the Managing Director rejects an application under subsection (2), (3), (4) or (5) of section 43 of the Act is ninety days after the date of the notice of the rejection.

28.
Examination as to substance
(1)

This regulation prescribes the details of the requirements and procedure under section 44 of the Act.

(2)

A request for an examination of an application, submitted under section 44 (2) of the Act, shall be in Form IP 8.

(3)

If an application is withdrawn after a request for an examination has been submitted but before the examination has begun, the fee paid with the request shall be refunded.

(4)

The following are relevant documents for the purposes of section 44 (4) of the Act—

(a)

the report of any search;

(b)

if priority is claimed, foreign documents relating to the invention; and

(c)

any other document the Managing Director considers relevant.

(5)

The following apply with respect to the submission of the copy of the report of the findings of the examination by the Managing Director to the applicant under section 44 (4) of the Act—

(a)

the Managing Director shall submit the copy within thirty days after the report is submitted to the Managing Director; and

(b)

the Managing Director shall include with the copy an explanation of whether or not the invention is patentable.

(6)

The following apply with respect to an invitation referred to in section 44 (7) of the Act—

(a)

the invitation shall indicate that the applicant has until sixty days after the date of the invitation to remedy the defects;

(b)

the sixty day period may be extended by the Managing Director for a period not exceeding ninety days; and

(c)

a request for an extension under subparagraph (b) shall be in Form IP 7.

(7)

A notification by the Managing Director under section 44(8) of the Act of a refusal of a grant of a patent shall include written reasons for the refusal.

29.
Grant of patent
(1)

This regulation applies with respect to a patent granted under section 45 of the Act.

(2)

Before a patent is granted, the applicant shall pay the grant fee.

(3)

The patent shall be in Form IP 9 with a copy of the description, claims and drawings attached.

(4)

When a patent is issued, a certificate of a grant of a patent in Form IP 10 shall also be issued.

(5)

The patent shall be published under section 45(2) of the Act by publishing the following particulars in the Kenya Gazette or in the Industrial Property Journal—

(a)

the number of the patent;

(b)

the name and address of the owner of the patent;

(c)

the name and address of the inventor unless he has indicated that he wishes not to be named in the application under section 33 of the Act;

(d)

the name and address of the agent, if any;

(e)

the filing date of the application;

(f)

if priority was claimed and accepted, a statement of the priority, the priority date and the name of the state in which or for which the earlier application was filed;

(g)

the date of the grant of the patent;

(h)

the symbol of the international patent classification;

(i)

the title of the invention;

(j)

the abstract; and

(k)

if there are drawings, the most illustrative drawing.

30.
Register of patents
(1)

This regulation prescribes the details concerning the patent register under section 46 of the Act.

(2)

The following shall be included in the patent register for each application for a patent—

(a)

the application number and the filing date of the application;

(b)

the name and address of the applicant;

(c)

the title of the invention;

(d)

the name and address of the inventor unless he has indicated that he wishes not to be named in the application under section 33 of the Act;

(e)

if priority is claimed, the priority date and the name of the state in which or for which the earlier application was filed;

(f)

the date of the request for an examination submitted under section 44(2) of the Act;

(g)

the publication date of the application;

(h)

the address for service of the applicant;

(i)

a notice of every document effecting a change in ownership of the application or purporting to give the application or an interest in it as security;

(j)

if the applicant dies, a notice of that fact; and

(k)

any other information required under the Act or these Regulations or that the Managing Director considers appropriate.

(3)

The following shall be included in the patent register for each patent—

(a)

the information included, under paragraph (2), for the application for the patent;

(b)

the number of the patent;

(c)

the name and address of the owner of the patent;

(d)

the date of the grant of the patent;

(e)

the address for service of the owner;

(f)

a notice of every document effecting a change in ownership of the patent or purporting to give the patent or an interest in it as security;

(g)

a notice of every document effecting a change in ownership of a licence or purporting to give a licence or an interest in it as security;

(h)

if the owner of the patent dies, a notice of that fact; and

(i)

any other information required under the Act or these Regulations or that the Managing Director considers appropriate.

(4)

A person who wishes to obtain an extract from the patent register shall make a request in Form IP 11 for a certified copy or in Form IP 12 for an uncertified copy.

PART V – INTERNATIONAL AND REGIONAL APPLICATIONS
31.
Filing requirements for international or regional application
(1)

This regulation applies with respect to the following applications—

(a)

an international application filed with the Institute as the receiving office under the Patent Co-operation Treaty; or

(b)

a regional application filed with the Institute under section 2 of the ARIPO Protocol.

(2)

An application described in paragraph (1)—

(a)

shall be in triplicate;

(b)

shall be in English; and

(c)

shall be accompanied by the transmittal fee.

32.
Entry of international application to national phase
(1)

An international application in which Kenya is designated shall, on request, be treated as an application under the Act if the conditions set out in Article 22 or 39 of the Patent Co-operation Treaty and the applicable rules under that Treaty are satisfied.

(2)

A request under paragraph (1) shall be in Form IP 13.

33.
Conversion of refused international application
(1)

An international application in which Kenya is designated shall, on request, be treated as an application under the Act if a refusal, declaration or finding described in Article 25 of the Patent Co-operation Treaty was made and the refusal, declaration or finding was the result of an error or omission on the part of the receiving Office or the International Bureau.

(2)

A request under paragraph (1) shall be in Form IP 14 and shall be accompanied by a statement of the facts upon which the applicant relies.

(3)

The date of filing, for the purposes of the treatment of an international application as a national application, shall be the date of filing of the international application under the Patent Co-operation Treaty.

34.
Conversion of refused regional application
(1)

A regional application in which Kenya is designated and that has been refused by the Secretariat of ARIPO shall, on request, be treated as an application under the Act if the Secretariat of ARIPO transmits to the Institute—

(a)

a request made by the applicant to the Secretariat of ARIPO that the application be treated, in Kenya, as an application under Kenyan law; and

(b)

a copy of the files relating to the application.

(2)

A request to have a regional application treated as an application under the Act shall be in Form IP 15.

(3)

The date of filing, for the purposes of the treatment of a regional application as a national application, shall be the date of filing of the regional application under the ARIPO Protocol.

35.
Publication of certain international and regional applications
(1)

The Managing Director shall publish—

(a)

an international application in which Kenya is designated within two months after the application enters the national phase; and

(b)

a regional application in which Kenya is designated within two months after Kenya is notified of being designated in the regional application under the ARIPO Protocol.

(2)

The publication of an application under paragraph (1) shall be in the Kenya Gazette or in the Industrial Property Journal.

PART VI – RIGHTS AND OBLIGATIONS OF THE APPLICANT OR THE OWNER OF THE INVENTION
36.
Clarification of application to new use

For greater certainty, section 54(1)(b) of the Act applies with respect to a patent that has been granted in respect to a new use as though the new use were a process.

37.
“Parallel importation”

The limitation on the rights under a patent in section 58(2) of the Act extends to acts in respect of articles that are imported from a country where the articles were legitimately put on the market.

PART VII – ANNUAL FEES
38.
Annual fees
(1)

This regulation applies with respect to annual fees under section 61 of the Act.

(2)

A fee shall be paid by submitting the fee along with Form IP 16.

(3)

At least one month before a fee is due, the Managing Director shall send a reminder that the fee is due to the applicant or the owner of the patent.

(4)

A fee paid after it was due but within the grace period granted under section 61(2) of the Act shall be paid by submitting it along with—

(a)

the form required under paragraph (2); and

(b)

the prescribed surcharge.

(5)

If, under section 61(3) of the Act, an application is deemed to have been withdrawn or a patent lapses, the Managing Director shall send a notification to the persons specified in paragraph (6), within thirty days after the application is deemed to have been withdrawn or the patent lapses.

(6)

A notification under paragraph (5) shall be sent to the following persons—

(a)

the applicant or owner of the patent; and

(b)

every registered licensee.

(7)

The following apply with respect to a request under section 61(5) of the Act to restore an application or patent—

(a)

the request shall be in Form IP 17 and shall be accompanied by a statutory declaration or affidavit supporting the statements made in the request;

(b)

if after considering the request, the Managing Director is not satisfied that the failure to pay the annual fee was not intended, the Managing Director shall notify the person who made the request;

(c)

the person notified under subparagraph (b) may request a hearing with the Managing Director within sixty days after the date of the notification and, if the person does so, the Managing Director shall hear the person before finally deciding whether or not the Managing Director is satisfied, under section 61(6) of the Act, that the failure to pay the annual fee was not intended; and

(d)

if the Director makes an order restoring the application or patent—

(i) paragraph (4) applies with respect to the payment of the annual fee under section 61(6) of the Act; and
(ii) the Managing Director shall advertise the restoration of the application or patent in the Kenya Gazette or in the Industrial Property Journal.
(8)

If an application or patent has lapsed and the time for making a request under section 61(5) of the Act to restore the application or patent has expired without a request being made or a request was made but was denied, the Managing Director shall, within forty-five days after the time expired or the request was denied, notify the applicant or owner of the lapse and draw their attention to the provisions of section 61(3) of the Act.

(9)

There is no fee for the first year following the date of filing of the application.

(10)

For an international application, the only annual fees that are payable are those due after the application enters the national phase.

PART VIII – CHANGE IN OWNERSHIP
39.
Change of ownership of application or patent section 62 of the Act
(1)

This regulation applies with respect to section 62 of the Act.

(2)

An application to have a change of ownership recorded in the patent register shall be in Form IP 18.

(3)

An application to have a change of ownership recorded may be made by the former owner or the new owner.

(4)

A copy of the following shall accompany the application—

(a)

the instrument effecting the change in ownership; or

(b)

a certificate issued by a competent authority of the change in ownership.

(5)

When a change in ownership is recorded in the patent register the Managing Director shall—

(a)

issue a certificate of the registration of a change in ownership, in Form IP 19, to the new owner; and

(b)

publish, in the Kenya Gazette or in the Industrial Property Journal, the following information—

(i) the date of the application to have the change of ownership recorded;
(ii) the name of the former owner;
(iii) the name of the new owner; and
(iv) the registration number and date of registration of the change in ownership.
(6)

The Managing Director shall ensure that the instrument described in paragraph (4)(a), and its contents, is kept confidential except to the extent that the new owner agrees otherwise.

(7)

If the ownership of an application is changed, the new owner shall be deemed to be the applicant.

PART IX – CONTRACTUAL LICENCES
40.
Petition to register licence contracts
(1)

This regulation applies with respect to petitions for registration of licence contracts or modifications to licence contracts in the patent register under section 68 of the Act.

(2)

A petition shall be in Form IP 20.

(3)

The following are prescribed as documents that shall accompany the petition under section 68(2) of the Act—

(a)

the documents constituting the contract; and

(b)

any documents relating to the contract that are necessary to understand or interpret the contract.

41.
Registration of contracts
(1)

This regulation applies with respect to licence contracts registered under section 70 of the Act.

(2)

The certificate of registration under section 70(1) of the Act shall be in Form IP 21.

(3)

In addition to the information required under section 70(5) of the Act, the following shall be set out in the patent register—

(a)

the addresses of the persons referred to in section 70(5)(a) of the Act;

(b)

the date the registration takes effect;

(c)

the duration of the contract; and

(d)

if the contract was submitted for registration by an agent, the name and address of the agent.

(4)

The additional information set out in paragraph (3) shall be published along with the information that is required to be published under section 70(5) of the Act.

(5)

The information required to be published under section 70(5) of the Act shall be published by the Managing Director.

42.
Licences as of right
(1)

This regulation applies with respect to entries in the patent register under section 79 of the Act to the effect that licences are to be available as of right.

(2)

A request under section 79(1) of the Act to have an entry made shall be in Form IP 22.

(3)

The request shall be accompanied by an undertaking of the owner to grant licences under section 79 of the Act.

(4)

When the Managing Director notifies the licensees of the request under section 79(2) of the Act he shall also notify them of their right to object under section 79(3) of the Act.

(5)

The period within which a licensee may object under section 79(3) of the Act is 45 days after the date of the Managing Director’s notification to the licensee of the request.

(6)

A licensee may object under section 79(3) of the Act by giving a notice of opposition in Form IP 23 in duplicate to the Managing Director.

(7)

Paragraph (3) to (20) of regulation 49 apply, with necessary modifications, with respect to an objection under section 79(3) of the Act.

(8)

The publication of an entry under section 79(4) of the Act shall be in the Kenya Gazette or in the Industrial Property Journal.

(9)

A request under section 79 (7) of the Act to cancel an entry shall be in Form IP 24.

(10)

The publication of a cancellation under section 79(7) of the Act shall be in the Kenya Gazette or in the Industrial Property Journal.

PART X – EXPLOITATION BY GOVERNMENT
43.
Exploitation by Government
(1)

This regulation applies with respect to section 80 of the Act.

(2)

An application to the Minister for an order under section 80(1) of the Act shall be in Form IP 25.

(3)

A request under section 80(7) of the Act to have an order revoked shall be in writing.

PART XI – UTILITY MODELS
44.
Application of Regulations to utility models
(1)

Subject to paragraph (2), these Regulations apply, with necessary modifications, with respect to utility model certificates as though these Regulations referred to utility model certificates instead of to patents.

(2)

Regulations 27, 28, 29(3) and (4) and 31 to 35 do not apply with respect to utility model certificates.

(3)

A utility model certificate shall be in Form IP 26.

PART XII – INDUSTRIAL DESIGNS
45.
Register of industrial designs
(1)

The Managing Director shall maintain a register of industrial designs for the registration of industrial designs under Part XIII of the Act.

(2)

For each registered industrial design, the following shall be recorded in the register of industrial designs—

(a)

the registration number of the industrial design;

(b)

the name and address of the owner of the industrial design;

(c)

the title of the industrial design;

(d)

any disclaimer by the applicant limiting the rights conferred by registration; and

(e)

any other information required under these Regulations or that the Managing Director considers appropriate.

(3)

A person who wishes to obtain an extract from the register of industrial designs shall make a request in Form IP 11 for a certified copy or in Form IP 12 for an uncertified copy.

46.
Copyrighted designs not registrable

An industrial design is not registrable if it is protected under the Copyright Act, No. 12 of 2001.

47.
Application
(1)

This regulation applies with respect to an application to register an industrial design under section 87 of the Act.

(2)

The application under section 87(1)(a) of the Act shall be in Form IP 27.

(3)

Subject to paragraph (4), there shall be a separate application for each article embodying the industrial design.

(4)

There may be a single application for a set of articles embodying the industrial design if the articles in the set are intended to be used together.

(5)

The application shall be accompanied by—

(a)

an additional copy of the representations required under section 87(1)(c) of the Act; and

(b)

a second specimen in addition to the specimen required under section 87(2) of the Act.

(6)

The application, representations and all documents provided with them shall be on paper of a size known as A4 paper (29.7 centimetres by 21 centimetres) with a weight of at least 80 grams per square metre and each page shall have a left hand margin of approximately 2.5 centimetres.

(7)

The following apply with respect to the representations required under section 87(1)(c) of the Act—

(a)

if the application is for a set of articles the representations shall include representations of each article in the set embodying the industrial design;

(b)

figures used in the representations shall be in an upright position, unless the Managing Director is satisfied that it is impractical to do so;

(c)

if more than one figure is used to represent an article, all the figures representing the same article shall, unless it is impractical to do so, appear on the same page and shall be labelled to indicate the view they represent;

(d)

if the representations are drawings they shall be in ink;

(e)

if the industrial design consists of a repeating surface pattern, the representation shall show all of the pattern that is repeated;

(f)

only one side of each page of the representations shall be used;

(g)

the name of the applicant shall be set out in the top left hand corner of each page; and

(h)

the pages shall be numbered and the page number and the total number of pages shall be set out in the top right hand corner of each page.

(8)

A statement describing the features of the design which it is claimed are new shall be included on—

(a)

the representations required under section 87(1)(c) of the Act; and

(b)

the specimen required under section 87(2) of the Act.

(9)

If the design includes a reproduction of arms registered under the College of Arms Act (Cap. 98)or a specified emblem within the meaning of that Act, the application shall be accompanied by the consent to the registration of the reproduction of the arms or specified emblem from such person as appears to the Managing Director to be entitled to give such consent.

(10)

The following apply if the design includes the name or portrait of a person—

(a)

if the person is living, the application shall be accompanied by the consent of the person to the registration; or

(b)

if the person is dead, the Managing Director may require the application to be accompanied by the consent of such person as the Managing Director considers appropriate.

(11)

Regulations 21 and 24(2), (3) and (5) apply, with necessary modifications, with respect to the application, under section 87(7) of the Act, of sections 37 and 41(2) and (3) of the Act.

48.
Publication of application
(1)

The Managing Director shall publish a notice of an application to register an industrial design in the Kenya Gazette or in the Industrial Property Journal.

(2)

Before the notice is published, the applicant shall pay the publication fee.

49.
Procedure if opposition to application
(1)

This regulation applies with respect to opposition to an application to register an industrial design under section 87 of the Act.

(2)

Within 60 days after the notice of the application is published a person may oppose the application by giving a notice of opposition in Form IP 23 in duplicate to the Managing Director.

(3)

The notice of opposition shall set out the grounds for opposing the application.

(4)

The Managing Director shall give one copy of the notice of opposition to the applicant.

(5)

Within 42 days after receiving the notice of opposition, the applicant shall give a counter-statement in Form IP 28 in duplicate to the Managing Director.

(6)

The counter-statement shall set out the grounds the applicant relies upon to support the application and shall set out any facts alleged in the notice of opposition that the applicant admits.

(7)

The Managing Director shall give one copy of the counter-statement to the person opposing the application.

(8)

Within 42 days after receiving the counter-statement, the person opposing the application shall give to the Managing Director and to the applicant a statutory declaration or affidavit supporting the opposition to the application.

(9)

Within 42 days after receiving the statutory declaration or affidavit of the person opposing the application, the applicant shall give to the Managing Director and to the person opposing the application a statutory declaration or affidavit supporting the application.

(10)

Within one month after receiving the statutory declaration or affidavit of the applicant, the person opposing the application may give to the Managing Director and to the applicant a statutory declaration or affidavit replying to the applicant’s statutory declaration or affidavit.

(11)

A statutory declaration or affidavit replying to the applicant’s statutory declaration or affidavit shall be confined to matters strictly in reply.

(12)

If the applicant fails to provide a counter-statement under paragraph (5) or a statutory declaration or affidavit under paragraph (9) the application shall be deemed to have been withdrawn.

(13)

If the person opposing the application fails to provide a statutory declaration or affidavit under paragraph (8), the opposition to the application shall be deemed to have been withdrawn.

(14)

After all documents have been provided the Managing Director shall conduct a hearing of the matter.

(15)

The Managing Director shall give at least 14 days notice of the hearing to each party.

(16)

A party may be heard at the hearing only if the party provides the Managing Director with a notice in Form IP 29 at least seven days before the date of the hearing.

(17)

At the hearing no evidence other than the evidence provided by statutory declaration or affidavit may be introduced without the leave of the Managing Director.

(18)

The Managing Director shall give each party a written notice of his decision together with written reasons.

(19)

If there is more than one person opposing the application the Managing Director may provide for the objections to be dealt with at the same hearing.

(20)

A party may appeal the Managing Director’s decision to the Tribunal within ninety days after the date of the notification of the decision.

50.
Procedure if no opposition to application
(1)

This regulation applies if there is no opposition to an application to register an industrial design under section 87 of the Act.

(2)

If the Managing Director proposes to reject the application, the Managing Director shall send a written notice to the applicant explaining the reasons for proposing to refuse to register the industrial design and inviting the applicant to do one of the following within sixty days after the date of the invitation—

(a)

submit written submissions; or

(b)

request a hearing.

(3)

If the Managing Director has sent a notice under paragraph (2), the Managing Director shall not make his decision as to whether or not to register the industrial design until—

(a)

if the applicant requests a hearing, after holding the hearing;

(b)

if the applicant submits observations, after considering the observations; or

(c)

if the applicant does not request a hearing or submit observations, after the expiry of the sixty day period referred to in paragraph (2).

(4)

The Managing Director shall notify the applicant in writing of his decision.

(5)

If the Managing Director decides to refuse to register the industrial design, the applicant may, within thirty days after the date of the notification of the decision, request that the Managing Director provide written reasons for his decision.

(6)

A request under paragraph (5) shall be in Form IP 30.

(7)

The Managing Director shall comply with a request under paragraph (5) within forty-five days after the request is made.

(8)

The applicant may appeal the Managing Director’s decision to the Tribunal within ninety days after—

(a)

the date of the notification of the decision; or

(b)

if written reasons are requested, the date of the reasons.

51.
Registration of industrial design
(1)

This regulation applies with respect to section 87(8) of the Act.

(2)

Before an industrial design is registered under section 87(8) of the Act, the applicant shall pay the registration fee.

(3)

A certificate of registration issued under section 87(8) of the Act shall be in Form IP 31.

52.
Duration and renewal of registration
(1)

This regulation applies with respect to section 88 of the Act.

(2)

At least ninety days before the expiry of the registration of an industrial design, the Managing Director shall send a reminder of the impending expiry to the owner.

(3)

An application for a renewal under section 88(2) of the Act shall be in Form IP 32.

(4)

If a registration is renewed, the Managing Director shall register the renewal and issue a certificate of renewal.

53.
Restoration of lapsed right
(1)

This regulation applies with respect to section 89 of the Act.

(2)

An application for restoration of the protection granted to an industrial design under section 89 (1) of the Act shall be in Form IP 33.

(3)

The application shall be accompanied by a statutory declaration or affidavit supporting the application and by an application for renewal in Form IP 32.

(4)

Before rejecting an application, the Managing Director shall send a written notice to the applicant explaining the reasons for proposing to reject the application and inviting the applicant to request a hearing within sixty days after the date of the invitation.

(5)

If the Managing Director sends a notice under paragraph (4), the Managing Director shall not make his decision as to whether to restore the design or reject the application until—

(a)

if the applicant requests a hearing, after holding the hearing; or

(b)

if the applicant does not requests a hearing, after the expiry of the sixty day period referred to in paragraph (4).

(6)

The Managing Director shall notify the applicant in writing of his decision and, if the Managing Director decides to reject the application, the notification shall include written reasons for his decision.