Observations of a Patent Lawyer in Kenya 6: Science Week

From 13-17 May the National Council of Science and Technology (NCST) held the second annual National Science, Technology, and Innovation Week in Nairobi. The theme was ‘Science, Technology and Innovation for the Realization of Kenya Vision 2030 and Beyond’.

The Thinker by Gibran Khalil Gibran

What a roller coaster of emotions/thoughts for a patent lawyer this event turned out to be!

First came a realization: the vast majority of the innovations at the show will likely never be patented. A variety of reasons explain this, but here is one example. Many of the inventors went to KIPI and filed an application, but most of the applications were likely written by the inventors due to the lack of patent drafting professionals in Kenya. KIPI will likely find many of the applications as lacking in one of the criteria for a patent (novelty, inventive step, written description, enablement, etc.). Indeed, KIPI issues only a dozen or so patents per year from locally filed applications.

Next came introspection: does it matter?  In other words, would patents be of any help to these innovators? Some of the patents would be simply too difficult to enforce because the likely infringers are not big companies but rather many small-scale “jua kali” (artisans working often without an official business, storefront, etc.). Some of the inventors have no intention of selling the same product for more than 18 months, which is the time it takes KIPI to publish a patent application and for provisional rights to attach (see my earlier post). For a handful of the inventions, patent protection made a lot of sense, but for many others, I found myself unsure of the value a patent would provide.

Finally came admiration: despite the above, Kenya clearly is not lacking in innovative people and ideas. I was thrilled by the novelty of some of the inventions (public phone with swap-able SIM slot), the creative of others (water hyacinth-based paper), and even the audacity of a few (transgenic fungal biopesticides, anybody?).

And now a word of caution!!  I met one inventor who filed a provisional application in KIPI in 2011. He didn’t realize that the application is now (in 2013) abandoned, and that he had no protection whatsoever. So by displaying his invention at the Science show, he had lost his rights in most countries to file a regular patent application! At least in Kenya there is a 1-year grace period so he can still file for local protection…

This post was first published on AfroIP, here.

Observations of a Patent Lawyer in Kenya 5: Frustrating Law

When an inventor comes to CIPIT seeking patent help, there is one part of the conversation that I always dread: section 55.

Sisyphus, Titian, 1549

Section 55 of the Industrial Property Act (i.e., the Kenyan patent law) deals with enforcement of rights, and states that the owner of a patent [i.e., an issued patent] has the right to enforce by means of injunctions and collecting damages. Section 55(c)(i) provides for provisional rights that can be enforced against someone infringing a claim of a published application, provided that the infringer has “actual knowledge that the invention that he was using was the subject matter of a published application” (emphasis mine).

Separately, section 42 states that publication of an application will occur after 18 months from the filing (or priority) date.

The effect of these two provisions is that a patent applicant has no legal right that s/he can enforce for 18 months after the filing date. So when I help the inventor file an application, s/he must wait 18 months before s/he can legally do anything in terms of enforcement.

In America it is possible to request for early publication, but there is no such provision in Kenya. This is an instance where the patent law does little to nothing to help an inventor, and several of my advisees have decided not to bother with a patent application because of this issue.

The best advice I can think of is that, sometimes, just being able to say “I have a patent application pending” is enough for an inventor to scare away some of the would-be copycats, or maybe force a competitor into licensing negotiations. But this is far from an ideal situation and is frustrating to inventors.

Any thoughts from our readers?

This post was originally published on AfroIP, here.

Kenya: a Patent Lawyer Observes... Lofty Goals

A curious trend has surfaced in the last few weeks: inventors coming to CIPIT with some extraordinarily grandiose goals. 

[Sadak in Search of the Waters of Oblivion
oil on canvas by John Martin, 1812]

A few examples are worth sharing (sorry, can’t give specific details so as to preserve confidence). One visitor had an innovation that was guaranteed to completely eliminate corruption from a branch of government.  The next visitor had an innovation that was guaranteed to completely eliminate ethnic tensions and lead to national cohesion. Previously, I had met a visitor with an invention that would easily generate trillions (with a “t”) of shillings every year.

These are worthy goals, to be sure.

As a patent lawyer, it is not so much my job to evaluate the business viability (or social viability or management viability) of an invention as it is to evaluate the patentability of the invention.  In any case, most business ideas sink or swim based on the characteristics of the entrepreneur rather than the merit of the idea. A good businessperson can find success with almost any idea, and a bad businessperson can cause even the most innovative and useful of ideas to fail.

I find these grandiose goals and guarantees to be unnecessary and even a bit distracting. Usually I’m able to ignore them and focus on the invention, but I am often left wondering whether the inventor will be completely disappointed if their ultimate level of success is less spectacular than they expect. 

Inventors: I love to see enthusiasm and dedication, but leave the lofty guarantees for pitches to potential funders or customers. They are not so helpful to your patent lawyer. 

This post was first published on AfroIP, here.

Kenya: a patent lawyer observes ... education in science and law

My graduate degrees are in Chemistry and in Law. To me, this is perfectly natural, and many of my friends in America have similar backgrounds. Any time I tell this to people in Kenya, I am met with amazement and disbelief. I can hear them thinking “why would anybody study both chemistry and law?“

Unlike in America, law is an undergraduate subject in Kenya so the vast majority of lawyers have no training beyond their training in the law. After law school, lawyers here (it is hoped) find jobs; I have heard of no instances where they pursue an additional degree or additional training in science/technology.

At CIPIT, I have been training patent drafting skills. Both legal and scientific literacy are needed for the task. I originally assumed that it would be easier to train an inventor the required legal skills rather than training a lawyer the required technology skills. I have since decided that both are hard, and neither is necessarily “better” or “easier”.  As long as the trainee is not scared away by scientific or legal technical terms, the main inquiry seems to be whether the individual is dedicated and focused.

If there is ever to be a good number of patent drafting professionals in Kenya, people need to believe that a living can be made doing such work. But if nobody is doing the work, then the number of patent applications stays low. If the number of applications is low, there is a perception (actually a misconception – see my earlier diary entry here) that there is no demand for drafting skills.  This Catch-22 is one of several reasons that patent drafting is a skill that remains elusive in Kenya.

So what of the scientific literacy that is needed for patent work? In the case of chemistry, without a doubt one needs a formal education to do any patent work. In other fields such as mechanical devices, I know that non-scientist lawyers can learn enough to draft good applications. My lawyer trainees have shown this, at least so far.

This post was first published on AfroIP, here.

Kenya: a patent lawyer observes ... the diversity of "typical" inventors

On a fairly regular basis (maybe twice a week on average) I get paid a visit by the “typical Kenyan inventor.” I am surprised at the diversity of these inventors.

There is diversity in age. I cannot even say that most inventors are young, which is what I expected, as I am frequently meeting inventors in their 40s and 50s. The youngest inventor that I have met so far had his big breakthrough invention (which you can view here; this invention is supported by Wildlife Direct, here) before becoming a teenager.

There is diversity in ethnicity and gender. So far I have met more men than women, but it’s not exclusively Kenyan men that are inventing and innovating. Plus, the diverse group includes Africans, Asians, White folk, and mixes thereof.

ICT comes as a great relief ...

There is diversity in subject matter. The most common subject matter is ICT (mobile applications, web-based applications, cloud computing, mobile money applications, and social networking), which constitutes about half of the overall inquiries that I receive. Patentability in these areas is challenging, but an in-depth discussion on the challenges will be saved for a future posting. The remaining half of the inquiries are scattered over an enormously diverse field. Biogas and other environmentally friendly technologies are currently very popular areas.

Something that is common to most inventors is that they do not hang the entire success of their business on receiving patent protection. In a region where patent protection can be difficult to enforce, this is quite necessary. It is also, I think, quite healthy from a business perspective as it forces the inventors to be creative with their business models.

Another thing is common to almost all of the inventors I have seen. They have looked far and wide seeking help with the patenting system and have been frustrated by the lack of local affordable help.

This post was first published on AfroIP, here.

Kenya: a patent lawyer observes ... some common misconceptions

There is a common misconception among Kenyan law firms that there is not much local patent work to be done. This is far from the truth, particularly if you include Information and Communications Technology (ICT) innovations in the pool of patent-worthy inventions. Apart from ICT, Kenyan inventors are active in a variety of fields, including renewable energy sources, water treatment and waste treatment methods, pest and insect control, livestock protection, plant varieties, hair care, and more.

Although it’s far from true that there is little local patent work to be done, the misconception is grounded in some factual evidence. Those factors are primarily: 

(1) Most big companies in Kenya spend very little on pure research and development. Accordingly, most big companies have very little cause to investigate patents as a form of IP protection. Simultaneously, these companies are the major source of work for big law firms.

(2) Most research and development done in Kenya (and there is quite a lot of it) is done by individual entrepreneurs and inventors. Such clients tend to be highly interested in patenting but rather distrusting and suspicious of law firms. The expectation is that law firms will charge a lot of money.

(3) Many Kenyan would-be patent seekers go to the Kenyan patent office (KIPI) for advice on the patenting process. KIPI correctly advises them that they should seek the help of a qualified patent lawyer for drafting the patent. Unfortunately there is a serious shortage of such “qualified patent lawyers” for KIPI to refer inventors. 

(4) Government funding of R&D is only now taking centre stage (with the recent passage of the Science, Technology, and Innovation Act 2012). This funding will take time to result in innovations that are suitable for patenting.

This post was first published on AfroIP, here.