The Statute Law (miscellaneous amendments) Bill, 2018 (“the Bill”) has proposed amendments to various intellectual property (IP) law-related statutes including the Industrial Property Act, Number 3 of 2001 and the Copyright Act, Number 12 of 2007. Some of the proposed amendments to these Acts are as discussed herein.
Amendments to the Industrial Property Act (“the IP Act”)
The Bill seeks to restrict the Managing Director’s (MD) power of delegation under the Act. The MD may only delegate his or her duties under the Act to either a Deputy Managing Director or manger and not to any officer as is currently the case. The Bill also uses acknowledges the fact that the office of the MD may be held by a person of either gender.
Regarding patents that relate to living matter, the Bill proposes the deletion of the current requirements and timelines on deposits of micro-organisms and proposes that the same should be provided for under in the Regulations. This may be as a result of the challenges that the Kenya Industrial Property Institute (KIPI) has faced in recent times as depository institutions fail to take up their role in such patent applications.
Further on the application process, the Bill requires the applicants to disclose in the description of the invention “the best mode for carrying out the invention”. Presently, the IP Act requires the disclosure of at least one method of carrying out the invention. The Bill seems to be setting a stricter requirement on inventors and in order to protect against non-disclosure/ concealment by some inventors.
The Bill introduces a new definition for industrial designs. Industrial design shall mean “the overall appearance of a product resulting from one or more visual features of the shape, configuration, pattern or ornamentation of a product.” Product on the other hand shall mean “anything that is made by hand, tool or machine”. The Bill also excludes from registration as an industrial design methods or principles of manufacture or construction. Works of sculpture, architecture, painting, photography and any other creations that are purely of artistic nature are also expressly excluded from registration as industrial designs. These are better protected under copyright laws.
The Bill also amends the novelty requirement for industrial designs by providing that “an industrial design is new unless it is identical or substantially similar in overall impression to an industrial design that has been disclosed to the public anywhere in the world by publication…” This appears to raise the bar for eligibility of registration of industrial designs.
Finally the Bill sets out the qualifications for appointment as Secretary to the Industrial Property Tribunal. The Cabinet Secretary will be required to appoint a person who has experience of not less than seven (7) years in matters relating to industrial property being qualified and entitled to practise as an advocate in Kenya.
Amendments to the Copyright Act (“the IP Act”)
The Bill proposes the reduction of the members of the Kenya Copyright Board (the Board) from the current twenty (20) to nine (9) members. Further, the Chairman of the Board is to be appointed by the President and not the Cabinet Secretary as is currently the case.
The minimal amendments to the Copyright Act may be as a result of the changes already proposed in the Copyright (amendments) Bill, 2017 which is currently before the National Assembly.
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