LEGAL NOTICE NO 50
THE 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, s. 27 of the Act 10— Request for authority, s. 28(1) of the Act 11— Patents relating to living matter, s. 29 of the Act
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, s. 35 of the Act 20— Amendment or division, s. 36 of the Act 21— Declaration claiming priority, s. 37 of the Act 22— Waiver of fees, s. 39(2) of the Act 23— Withdrawal of application, s. 40 of the Act 24— Filing date and examination, s. 41 of the Act 25— Publication of application, s. 42 of the Act 26— Confidentiality of application before publication 27— International-type search, s. 43 of the Act 28— Examination as to substance, s. 44 of the Act 29— Grant of patent, s. 45 of the Act 30— Register of patents, s. 46 of the Act
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, s. 54 of the Act 37— “Parallel importation”
PART VII - ANNUAL FEES
38— Annual fees
PART VIII - CHANGE IN OWNERSHIP
39— Change of ownership of application or patent, s. 62 of the Act
PART IX - CONTRACTUAL LICENCES
40— Petition to register licence contracts, s. 68 of the Act 41— Registration of contracts, s. 70 of the Act 42— Licences as of right, s. 79 of the Act
PART X - EXPLOITATION BY GOVERNMENT
43— Exploitation by Government, s. 80 of the Act
PART XI - UTILITY MODELS
44— Application of Regulations to utility models
PART XII-INDUSTRIAL DESIGNS
45— Register of industrial designs 46— Copyrighted designs not registerable 47— Application, s. 87 of the Act 48— Publication of application
2
49— Procedure if opposition to application 50— Procedure if no opposition to application 51— Registration of industrial design, s. 87(8) of the Act 52— Duration and renewal of registration, s. 88 of the Act 53— Restoration of lapsed right, s. 89 of the Act 54— Request to examine representations, etc., s. 90(2) of the Act 55— Publication relating to registration, s. 91(1) of the Act 56— Application of regulations under s. 93(2) of the Act
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, s. 102 of the Act
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
3
80— Repeal of former regulations
SCHEDULES:
First Schedule - Fees Second Schedule - Forms
4
THE INDUSTRIAL PROPERTY ACT, 2001 (No. 3 of 2001)
IN EXERCISE of the powers conferred by section 119 of the Industrial Property Act, 2001, the Minister for Trade and Industry makes the following regulations —
THE INDUSTRIAL PROPERTY REGULATIONS, 2002
PART I - PRELIMINARY
Citation and
1. These Regulations may be cited as the Industrial
commencement.
Property Regulations, 2002 and shall come into operation on 1st May, 2002.
Forms.
2. The forms referred to in these Regulations are the forms set out in the First Schedule.
Fees.
3. (1) The fees set out in the Second Schedule shall be the prescribed fees for purposes of these Regulations. - (2)
- If, for a fee, a corresponding form is referred to in the First 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
Training,
4. In carrying out its functions under paragraphs (c) and
competitions and
awards. (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;
Client deposit accounts.
Office hours of the Institute.
Publications of the Institute.
and
(b) organise competitions and contests and award trophies and awards.
5. (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. - 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.
- (1) This Regulation applies with respect to publications of the Institute.
- The Institute shall publish a journal to be called “The Industrial Property Journal”.
- Unless the Managing Director otherwise directs, the Industrial Property Journal shall be published monthly.
- 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.
- The Institute may publish such other documents as it considers appropriate.
- The Institute may provide for the sale of any of its publications.
2
Appointment of advisors, etc.
Certain notices, etc. in writing.
Request for authority.
Patents relating to living matter.
8. (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 authorized to make under section 12 of the Act.
PART III - PATENTS: PATENTABILITY
9. 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.
- A request for written authority referred to in section 28(1) of the Act shall be in Form IP 1.
- (1) This Regulation applies with respect to section 29 of the Act.
- The following are depository institutions for the purposes of section 29(1)(a) of the Act —
- the Kenya Agricultural Research Institute; and
- the Kenya Medical Research Institute.
- 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.
- A request for a certificate under paragraph (3)
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
Request.
12. (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’s name, address, nationality and country of residence;
- (b)
- for the inventor, the inventor’s name and
4
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 there is more than one inventor, for each inventor.
- (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 paragraph (10).
5
Description.
13. (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.
Claims.
14. (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
6
7
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.
Drawings.
15. (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
8
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.
Abstract.
16. (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
9
General requirements.
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. (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
10 11
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
12
Provisional specification.
Unity of invention.
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. (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. (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”
13
Amendment or division.
means those technical features that define a contribution that each of the claimed inventions, considered as a whole, makes over the prior art.