The High Court has upheld a tribunal’s decision revoking a patent claimed by an inventor, ruling that there was nothing novel about his invention.
Justice Hellene Namisi said the Industrial Property Tribunal had ample basis to conclude that Patent KE 861- granted to Suhash Ratilal Shah, was invalid due to a lack of novelty and failure to comply with the substantive examination requirements under the Industrial Property Act.
“The fact that the ultimate claims on which the patent was granted were not subjected to the rigorous examination, coupled with earlier evidence of prior art for the original claims, constitutes a fundamental flaw in the grant process,” said the judge.
Metro-PolyKenya Limited, a wheelbarrow wheel manufacturer headquartered in Eldoret Town, successfully argued for the patent to be revoked after being served with a cease and desist notice in 2021.
Mr Shah then challenged the decision, stating that he was the inventor and the registered proprietor of Kenyan Patent No. KE 861, titled ‘Wheel Assembly’.
He said that he had applied to the Kenya Industrial Property Institute (KIPI) on October 18, 2018 to have his invention patented. The application was accompanied by a specification that included an initial set of eight claims.
In February 2019, KIPI issued a Notification of Substantive Examination Report and acceptance of the patent application.
The notification included a search report which identified two pre-existing patents — US Patent No. US005316377 and UK Patent No. GB 2229975 — as prior art that disclosed the invention claimed in the initial application.
On June 30, 2020, Mr Shah filed an entirely new and amended set of 12 claims, significantly altering the scope and definition of the invention for which he was seeking protection.
About 23 days later, KIPI proceeded to grant Patent No. KE861 to Mr Shah.
After being served with a cease-and-desist notice, Metro-PolyKenya challenged the patent at the tribunal, requesting its revocation and invalidation.
They argued that the invention lacked the novelty required by Section 23 of the Act.
On his part, Mr Shah accused the rival manufacturer of violating his patent and sought orders to block Metro-PolyKenya from infringing on his work and claiming damages.
After hearing the case, the three-member tribunal chaired by Brown Kairaria said they were satisfied that there was nothing new or novel in the said patent.
The tribunal also ruled that patent number 861 had not been validly granted due to a lack of novelty, and ordered that it be expunged from the register.
Unsatisfied with this outcome, Mr Shah appealed to the High Court, asserting that his invention was patent-worthy and that KIPI had issued the patent after reviewing his 12 claims without objection.
In response, Metro-PolyKenya said KIPI’s initial search report dated February 14, 2019 and concerning Mr Shah’s original eight claims, had already identified prior art that anticipated the claimed invention.
The judge noted that under Section 23 of the Act, novelty is an absolute standard. “An invention is new only if it is not anticipated by the prior art, which is defined as everything made available to the public anywhere in the world, by any means, before the filing date of the application,” she said.
Justice Namisi said the record showed that the only substantive examination conducted by KIPI was on the original eight claims, and which ‘invention’ was disclosed by prior art.
“The appellant then filed a completely new set of 12 claims, which ought to have been subjected to substantive examination as mandated by Section 44 (of the Act),” said the judge, adding that when the claims are fundamentally amended, a new substantive examination is required.
The court said that Mr Shah had not produced any evidence that such an examination of the 12 claims had ever taken place.
“Such a procedural lapse is not a mere technicality, but goes to the heart of the patent’s system’s integrity,” the court said.
