Key steps in patenting business innovation

It was a breakthrough of sorts for five students who started making sanitary towels and diapers from plant materials a few weeks ago.

Paul Ntikosia and Ivy Etemesi, Bachelor of Education students at Kabarak University in Nakuru, use banana fibres to make sanitary pads.

At the Jomo Kenyatta University of Agriculture and Technology, Moses Mathenyu, Edwin Madivoli and Martin Murigi – second year Master of Science students – are making sanitary pads and diapers from papyrus reeds, banana stalks, rice straw and water hyacinth.

In the long walk to enterprise, however, the five students have realised the innovations only mark the first step. They require a patent to commercialise their work and prevent others from reaping the fruits of their labour.

And so they have applied for patents from the Kenya Industrial Property Institute (KIPI), marking the beginning a crucial phase in their journey to own their innovations.

Under the law, it is not automatic that everyone who submits an application must get a patent.

Under the Industrial Property Act 2001, an invention is defined as a solution to a specific problem in technology that relates to a product or a process.

The law prohibits patenting of discoveries or findings that are products or processes of nature where mankind has not participated in their creation, such as animals, plants and micro-organisms.

Discoveries in scientific and mathematical methods and theories cannot receive a grant for a patent.

Schemes, rules or methods for doing business, performing purely mental acts or playing games, and computer programmes are also not legible for legal protection under the law.

One cannot receive a patent for inventing methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods except products, in particular substances or compositions, for use in any of those methods.

Mere presentation of information is equally an example of inventions that cannot be protected under the industrial law.

Locally, only KIPI has the powers to grant a patent. However, it is also possible to obtain one through the African Regional Intellectual Property Organisation, an inter-governmental organisation, based in Harare mandated to grant patents on behalf of member states.

Mr Sylvance Sange, KIPI acting managing director, says a patent gives the owner exclusive rights to prevent others from manufacturing, using or selling the product. The patent rights are enforceable in the country where it is granted.

Acquisition of a patent is a rigorous process involving making an official application to KIPI, publication of the application in the Kenya Gazette or Industrial Property Journal and examination of the invention to determine if it meets the legal requirements before the patent is finally granted.

The application form, which is available from the KIPI website or their offices, gives a detailed description of the invention and is submitted at a fee of Sh3,000.

This is followed by publication of the application after 18 months from the date of filing at Sh3,000. The assessment of an innovation is done within three years from the filing date at a cost of Sh5,000. If the invention meets the legal requirements, a patent is granted at a fee of Sh3,000.

“The term of patent protection in Kenya is 20 years. This is not renewable and once it has expired, the invention is no longer protected and can be exploited by anyone,” said Mr Sange.

He says some applications are rejected if they do not meet the three requirements of novelty, inventive step and industrial applicability. Notably, an industrially applicable invention must be capable of being used in a respective industry.

“Many patent applications are not successful because they either do not provide a proper description of the invention or the invention is not new because the applicant disclosed it to the public before applying for a patent,” Mr Sange said.

“The patent application can also be rejected if the invention is not new when compared with things that are already known.

“For example, a similar invention may have been published in an earlier patent document; or the application is for something that is not patentable such as a principle, idea or concept rather than its practical adaptation.”

He says the law requires that an inventor fully discloses and describes the invention to enable any skilled person to make use of and evaluate the innovation.

“This is a key consideration for grant of patents in the sense that in return for grant of a patent, the applicant is required to disclose his or her invention fully so that others can learn and improve on the invention as well as make use of the invention once the patent has expired,” he said.

Data provided by World Intellectual Property Organisation on Kenya’s industrial property statistics show that in 2012, a total of 259 patent applications were made but only 76 received grants.

This is an improvement from a decade earlier in 2002 when out of 72 applications made, only seven received protection licences.

Between 2000 and 2012, KIPI received a total of 1,651 patent applications and found only 487 legally acceptable for patenting.