WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IP/N/lIKENlIll 
23 July 2001 
(01-3662) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
KENYA 
The present document reproduces the text1 of the Industrial Property Act Cap 509 of 1989, as 
notified by Kenya under Article 63.2 of the Agreement (see document IP/N/1/KEN/2). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETlt INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
KENYA 
Le present document contient le texte1 de la Loi sur la propriete industrielle (chapitre509) de 
1989, notifiee par le Kenya au titre de l'article63:2 de l'Accord (voir le document IP/N/1/KEN/2). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIP ALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PA.RRAFO 2 
DEL ARTiCULO 63 DEL ACUERDO 
KENYA 
En el presente documento se reproduce el texto1 de la Ley de propiedad intelectual 
(capitulo 509) de 1989, que Kenya ha notificado en virtud del parrafo 2 del articulo 63 del Acuerdo 
(vease el documento IP/N/IIKEN/2). 
1 In English only'/En anglais seulement.lEn ingles solamente. IP/N/lIKEN/IIl 
Page 2 
LA\\'S OF KENYA 
.. 
The Industrial Property Act 
CHAPTER 509 
KSh. 72.80 . . . . 
Revised Edition 1991 
Printed and Published by the Government Printer 
Nairobi. CHAPTER 509 
THE INDUSTRIAL PROPERTY ACT 
ARRANGEMENT OF SECTIONS 
I 
PART I-PRELIMINARY 
Section 
J -Snort title. 
2-1 nterpretation. 
PART II-ADMINISTRATION 
3-Establishll1ent and functions of the office. 
4-Appointf!1ent of officers. 
5-SeaI. 
PART III-PATENTABILlTY 
(i-Meaning of "invention". 
7-Patentable inventions. 
S-Novelty. 
9-Inventive step. 
IO-Industrial application. 
ll-Non-patentable inventions. 
12-Temporary exclusion from p:ttentability. 
13-Patents relating to living matter. 
PART IV-RIGHT TO INVENTIONS M'-1D NAMING OF INVENTOR 
14-Right to patent. IPINIlIKENIIIl 
Page 3 
15-Unauthorized application based on invention of another person. 
16-Inventions made in execution of cOl11mission or by employee 
or during development projects or on the b;Jsis of living material 
collected in Kenya. 
17--Naming of inventor. 
PART V-ApPLICATION, GRANT AND R F.FUSAL. 
OF GRANT OF PATENT 
IS-Application. 
19-Unity of invention. 
20--Amendm~nt and division of applica tion 
21-Right of priority. 
22-Information concerning corresponding foreign applications and 
grants. 
23--::::-Payment of. fees. 
24-Withdrawal of application. IPINIIIKENIIII 
Page 4 
Section 
25-FiIing date and examination of application as to form, etc. 
26-International-type search. 
27-Examination as to substance. 
28-Grant, registration and pUblication of patent. 
29-Register of patents. 
30-Appeals. 
PART VI-INTERNATIONAL ApPLICATIONS 
31-Interpretation of Part. 
32-Functions of the Kenya Industrial Property Office. 
33-Unsearched or unexamined international applications, etc. 
34-Provisional protection of published international applications. 
PART VII-RIGHTS AND OBLIGATIONS OF THE ApPLICANT 
OR THE OWNER OF If HE INVENTION 
35-Rights and obligations. 
36-Rights of owner of patent. 
37--Scope of protection. 
38-Limitation of rights. 
PART VIII-TERM OF PATENT AND ANNUAL FEES 
39-Term of patent and extension. 
40-Annual fees. 
PART IX-CHANGE IN THE OWNERSHIP AND JOINT OWNERSHIP 
OF ApPLICATIONS AND PATENTS 
41-Change in ownership of applications, etc. 
42-Joi11t ownership applications and patents. 
PART X-UTILITY MODELS 
43-Persons entitled to obtain utility models registration. 
44-U nregistrable models. 
45-Requirements for utility model registration. 
46-Instances where utility models are not registrable. 
47-Presumption of novelty. 
48-First file policy. 
49-Application for utility model registration. 
50-One model for onc application. 
51-Conversion of application. Section 
52-Registration of establishment of utility model right. 
53-Acts deemed to be infringement. IP/N/lIKEN/IIl 
Page 5 
54-Non-exclusive licence due to working prior to registration of 
demand for invalidation trial. 
55-Non-exclusive licence after expiration of term. 
56-Compulsory licensing. 
57-Term of utility model right. 
58-Trial for granting non-exclusive licence. 
59-Remuneration in respect of compulsory licen.:e. 
60-Effect of registration of non-exclusive licence. 
61-Invalidation of the registration of utility models. 
G2-Registration in utility model register. 
63-Issuance of utility model registration certificate. 
64-Utility model gazette. 
G5-Registration fees. 
66-Request for examination of an application. 
67-Rejection and notification of reasons for rejection. 
G8-Demand for trial. 
69-Limitation on trials. 
70-Trial decision on remuneration. 
71-Appeals. 
PART XI-INDUSTRIAL DESIGNS 
72-Definition of "industrial design". 
73-Registration of industrial designs. 
74-Deposit and pUblication of industrial designs. 
7S-Duration, etc. of certificate of registration. 
76-Renewal, etc. of registration of industrial designs. 
77--5pecifications, drawings, etc. 
78-Pu blication of details of industrial designs. 
79-Reproduction of industrial designs. 
BO-Donation of ,industrial designs. 
81-Rights conferred by registration of industrial designs. 
82-Transfer and assignment of industrial designs. IP/N/1/KEN/IIl 
Page 6 
PART XII-RATIONALIZATION MODELS 
83-Interpretation of Part. 
84-Presull1ption of novelty, etc. 
8S-Certificate for author of rationalization proposal. 
86-Register of rationalization models. 
PART XIII-CONTRACTUAL LICENCES 
87-Rights of licensee. 
88-Right of licensor to grant further licences and use the invention. 
&9-Effeots of patent not being granted or being invalidated. 
9{}-Form of licence contracts. 
91-Petition for registration. 
92-Prohibited terms in licence contracts. 
93-Registrartion of the contract and issue of certificate. 
94-Remedies. 
9S-Compulsory licences for non-working and similar reasons. 
96--Compulsory licences based upon inter-dependence of patents. 
97-Compulsory . licences for products and processes declared to be 
of vital importance. 
98-Preconditions for grant of compulsory licences. 
99-Grant and terms of compulsory licences. 
lOO-Transfer of compulsory licences. 
lOl-Cancellation of compulsory licences. 
I02-Registration of grants, cancellation or variation. 
l03-Licences as of right. 
PART XIV-EXPLOITATION OF THE PROTECTED INVENTION 
BY THE GOVERNMENT OR BY THIRD PERSONS AUTHORIZED 
BY THE GOVERNMENT 
I04-Exploitation of the protected invention by the Government or 
by third person authorized by the Government. 
PART XV--SURRENDER, INVALIDATION AND REVOCATION 
IOS---Surrender. 
106-Invalidation. 
107-Effect of invalidation. 
108-Revocation. 
PART XVI-INFRINGEMENT 
I09-Acts con'>tituting infringement. 
110-Relief. 
Ill-Declaration of non-infringement. 
Il2-Threat of infringement proceedings. Section 
113-Criminal proceedings. 
114-Presumption of use of patented process. 
lIS-Legal proceedings by licensee. 
IIG-Burden of proof. 
PART XVII-INDUSTRIAL PROPERTY TRIBUNAL 
117-Appeal from decisions of Director. 
ll8-Industrial Property Tribunal. 
I 19-Powers of Tribunal. 
120-Appeals to Court. 
I 2 I-Assessors. 
I22-Rules. 
I 23-Reference to the Tribunal by the Director. 
PART XVIII-MISCELLANEOUS PROVISIONS 
I24-Regulations. 
12S-Repeal of Caps. 508 and 510. 
I2G-Transitional and saving provisions. IPIN/lIKEN/I11 
Page 7 IPINII/KENIIII 
Page 8 
CHAPTER 509 
THE INDUSTRIAL PROPERTY ACT 
Commencement: 2n(1, February, 1990 
An Act of Parliament to provide for the promotion of inven­
tive and innovative activity and to facilitate the acquKsi­
tion of technology through the grant and regulation of 
patents, utility models, rationalization models and 
industrial designs and for connected purposes 
PART I-PRELl.MINARY 19 of 1989, 
UN. 75/1990, 
LlN.45{1991. 
1. This Act may be cited as the Industriall Property Act. Short title. 
2. In this Aat, unless the context otherwise requires- Interpretation. 
"application" means an application for the grant of a 
patent, utility certificate and registration of an indus!trial design 
under this Act, and "applican t" shall be construed accordingly; 
"ARIPO" means the African Regional Industrial Pro-
perty Organization; 
"ARIPO Protocol" means the protocol on patents and 
industrial designs adopted at Harare in December, 1984; 
"court" means ,the High Courl; 
"Director" means the Director of the Industrial Property 
Office appointed under section 4; 
"examiner" means an examiner appointed under section 
4· , 
"industrial design" has, the meaning assigned to it in 
section 72; 
"industrial property rights" means patents, cert'ificates for 
industrial designs, rationalization certificates and utility certi­
ficates issued under this Act; 
"International Bureau" means. the International Bureau 
of the World Intellectual Property Organization established 
by the convention signed at Stockholm on the 14th July, 1967; 
"innovation" means utility models, rationalization models 
and industrial designs and any other non-patentable creations 
or improvements that may be deemed as deserving of specified 
industrial property rights; IPINIlIKENIIIl 
Page 9 
"invention" means a new and useful art (whether pro­
ducing a physical effect or not), process, machine, manufacture 
or composition of matter which is not obvious, or any new 
and useful improvement thereof which is not obv,ious, capable 
of being used or applied in trade or industry alld includes an 
alleged invention; 
"inventor" means, the person who actually devises the 
invention and includes the legal representative of the inventor 
but does not include a person to whom an invention has been 
CDmmunicated dther wi;thin or outside Kenya,; 
"licence contract" means any contract by which a party 
grants permission to another person (whether or not a party) 
to do any of ,the acts referred to in section 36 in respect of an 
invention for which industrial property rights have been 
granted or an application is pending or in relation to utility 
models and ·industr:ial designs; 
"licensee" means a licensee under a con tract registered 
or deemed to have been registered under this Act; 
"licensor" means a party to the licence contract who 
grants the permission; 
"Minister" means the Minister for the time being respon­
sible for the supervision of the Office; 
"Office" means the Industrial Property Office established 
under section 3; 
"Paris Convention" means the Paris Convent'ion for the 
Protection of Industrial Property, of 20th March, l883 as last 
revised; 
"Patent Co-operation Treaty" means the Treaty of that 
name signed at Washington on the. 19th June, 1970; 
"rationalization model" has the meaning assigned to it 
in section 83; 
"priority date" means the date of the earlier application 
It·hat serves as the barsis far t'he right of pPl'Orrity proV1ided for in 
the Paris Convention; 
"self-replicable matter" means any matter possessing the 
genetic material necessary Ito direct its O\vn replication by way 
of a host organism or ,in any other indirect way; 
"Tribunal" means the Industrial Property Tribunal 
established under section 118; 
"utility model" means any form, configurations or clis­
position of elements of some appliance, utensil, tool, electrical IPINIlIKENIII 1 
Page 10 
and electronic circuitry, instrumenr, handicraft mechanism or 
other object or any part of the same allowing a better or 
different fUllclionill;j, ll.'-:e, or manufaclure of the subject matter 
or that gives some utility, advanta.ge, environmental benefit, 
saving or technical effect not available in Kenya before and 
includes micro-organisms or other self-replicable material, 
herbal as well as nutritional formulations which give new 
effects. 
PART lI-ADc.HNISTRA nON 
3. (1) There shall be established under the directions of 
the Minister an office to be known as the Kenya Industrial 
PropeDty Office. 
(2) The functions of the Office shall be-
(a) to examine application for, and grant, industrial 
property rights; 
(b) to screen technology transfer agreements and licences; 
(c) to provide patent information to the publ'ic; and 
(cl) to promote inventiveness in Kenya. 
4. There shall be-
(a) a Director of the Industrial Property Office who shall 
exercise the powers and perform the duties assigned 
to the Director by this Act and shall be responsible 
for its administration; and 
(b) such examiners and other officers as may be necessary 
for carrying out the provisions of this Act. 
S. There shall be a seal of the Office and ,impressions 
[hereof shall be judicially noticed. 
PART III-PATENTABILITY 
6. (1) For the purposes of this Part, "invention" means 
et solution to a specific problem in the field of teohnology. 
(2) Subject to subsection (3), an invention may be, or may 
relate to, a product or a process. 
(3) The following shall not be regarded as inventions for 
the purposes of patent protection-
(a) discoveries or findings that are products or processes 
of nature where mankind has not participated in 
their creation (including animals, plants and micro­
organisms) and scientific and mathematical methods 
and theories; Establishment 
o~ the Office. 
.A..ippoin'tmen t 
of officers. 
Seal. 
Meaning of 
"invention". Patentable 
ioventions. 
Novelty. 
Inventive 
step. IPINIlIKENIIIl 
Page 11 
(b) schemes, rules or methods for doing business, per­
forming purely mental acts or playing games, and 
computer programmes; 
(c) methods for treatment of the human or animal body 
by surgery or therapy, as well as diagnostic methods; 
except products, in -pa'rticular substances or com­
positions, for use in ariy of those methods; or 
(cl) mere presentation of information. 
7. An invention is patentable if it is new, involves an 
inventive step and is industrially applicable. 
8. (1) An invention is new if it is not anticipated by prior 
art.. 
(2) For the purpose of this Act, everything made available 
to the public by means of written disclosure (including draw­
ings and other illustrations) or by oral disclosure, use, exhibi­
tion or other non-written means shall be considered prior art 
provided that such making available occurred before the date 
of the filing of the application or, if priority is claimed. before 
the priority date validly claimed in respect {hereof. 
(3) For the purpose of the evaluation of novelty, an 
application for the grant of a patent or a utility model certifi­
cate in Kenya shall be considered to have been comprised in 
the prior art as from the filing date of the application, or if 
priority is claimed, as from the date of its validly claimed 
priority, to the extent to which its content is available, or is 
later made available, to the public in accordance with this Act 
or in accordance with the Patent Co-operation Treaty. 
(4) A disclosure of the invention shall not be taken into 
consideration if it occurred not earlier than twelve months 
before the filing of the application and if it was by reason or 
in consequence of-
{a) acts committed by the applicant; or 
(b) an evident abuse in relation to the applicant or his 
predecessor in ti tie. 
9. An invention shall be considered as involving an 
inventive step if, having regard to the prior art relevant to the 
application claiming the invention, it would not have been 
obvious to a person skilled in the art which the invention 
pertains on the date of the filing of application or, if priority 
is claimed. on the priority date validly claimed in respect 
thereof. JP/NIlIKEN/II 1 
Page 12 
10. An invention shall be considered industrially appli­
cable if, according to its nature, it can be made or used (in the 
technological sense) in any kind of lindustry, including agricul­
ture, fishery and services. 
11. The following shall not'be patentable-
(a) plant varieties as provided for in the Seeds and Plant 
Varieties Act, but not par,ts thereof or products of 
biotechnological processes; 
(b) inventions contrary to public order, morality, public 
health and safety, principles of humanity, and 
environmental conservation; and 
(c) any other inventions that may be declared non­
patentable by the Minister. 
12. Inventions concerning certain kinds of products or 
processes for the manufacture of those products, may, by 
notice in the Gazette, be excluded from patentability for not 
more than ten years except that any such exclusion may be 
extended for further periods, each period not exceeding ten 
years. 
13. (1) If an invention concerns a microbiological process 
or the product thereof and -involves the use of a micro­
organism or self-replicable material which is not available to 
the public and which cannot be descr1bed in the patent 
application in such a manner as to enable the invention to be 
carried out by a person skilled in the art, the invention shall 
only be regarded as being disolosed if-
(a) a culture of the micro-organism or other self­
replicating material has been deposited with a 
recognized national depository institution in Kenya 
not later than the da te of filing of the a pplica tion; 
(b) the application as filed gives such relevant information 
as is available to the applicant on the characteristics 
of the micro-organism or other self-replicating 
ma terial; and 
(c) the depository institution and the file number of the 
culture deposit are stated in the application. 
(2) The information referred to in paragraph (b) of sub­
section (1) may be submitted-
(a) within a period of sixteen months after the date of 
filing of the application or, jf priority is claimed, 
after the priority da'te; or Industrial 
application. 
Non·patentablc 
inventions. 
Cap. 326. 
Temporary 
exclusion 
fro-m 
paitentability. 
Patents 
relating to 
living matter. IPINIlIKENIIIl 
Page 13 
(b) up to the date of submission of a request for early 
publication of the application; or 
(c) within one month after the Director has communicated 
to the applicant that a right to inspection of the files 
exists. 
(3) The deposited culture shall be made available upon 
request of any person having the right to inspect the files. 
(4) If a micro-organism or other self-replicating matter 
deposited ceases to be available from the institution with 
which it was deposited because-
((J) the micro-organism or other self-replicating matter is 
no longer viable; or 
(b) for any other reason th-~ deposi'tOry ,inst,i'tutiDl1 liS 
unable to supply samples, 
and if the micro-organism or other self-replicating matter has 
not been transferred to another depository institution recogn­
ized for the purposes of this Act, from which it continues 
to be available, an interruption in availability shall not be 
deemed to have occurred if a new deposi t of the micro­
organism or other self-replicable matter originally deposited 
is made within a period of three months from the date on 
\Vhich the depositor was notified of the jnterruption by the 
depository institution and a copy of the receipt of the deposit 
issued by the institution is forwarded to the Office within four 
months from the date of the new deposit stating the number 
of application or of the national patent. 
(5) A new deposit shall be accompanied by a statement 
signed by the depositor indicating that the newly deposited 
micro-organism or other self-replicable matter is the same as 
originally deposited. 
(6) If a deposit is not accepted or if the deposited 
material is no longer available from the depository institution 
and a re-deposit does not or could not remedy the unavail­
ability, such una vailabili ty shall not affect the patenta;bility 
of the invention of the applicant or patentee provided the 
requesting party ent·itlec1 ~o receive Cl sample certifies its 
identi ty with ,the material used in the invention obtained as 
the invention or with the originally deposited material, as 
the case may 'be. 
(7) If a patent is deemed invalid becaLlse the patentee can 
no longer provide a sample of the deposited material, sLlch 
invalidity shall not be retroactive. IP/N/lIKEN/III 
Page 14 
(8) The duration of a patent involving micro-organisms 
or other replicable matter shall be as provided under this Act 
for other patents or as long as the patentee can provide 
samples of the deposited material, whichever comes first. 
PART IV-RIGHT TO INVENTIONS AND 
NAMING OF INVENTOR 
14. (1) Subject to this section, the right to a patent shall 
belong to the inventor. 
(2) If two or more persons have jointly made an inven­
tion the right to the patent shall belong to them jointly. 
(3) If and to the extent to which two or more persons 
have made the same invention independently of each other, 
the person whose application has the earliest filing date, or 
if priority is claimed the earlies{ validly claimecl priority date 
that leads to the grant of a patent, shall have right to the 
patent. 
(4) The right to a patent may be assigned or may be 
transferred by succession. 
(5) Sections 90 to 93 shall apply mlltatis mlltandis to 
contracts assigning the right to a patent. 
15. Where the applicant has obtained the essential 
elements of the invention which is the subject of his applica­
tion from the invention of another person he shall, unless 
authorized by the person who has the right to the patent for 
the latte-r invention to apply fo'r the patent or own the patent, 
be obliged to ass'ign to such person the applica,tion or, where 
the patent has already been granted, the patent right. 
16. (1) Where an invention is made during the validity 
of a contract whose expressed object is research in Kenya and 
in which the inventive activity and improvements of the 
employee has been foreseen, or is implied by the very nature 
of the functions performed under the contract the invention 
shall'belong solely to the employer. 
(2) Inventions made without any re:lation to an employ­
ment or service contract and without the use of employer's 
resources, data. means, materials, ins,tallatiol1s or equipment 
shall belong sokly to the employee or person commissioned. 
(3) In the :1bsence of an express -term to the contrary, 
inventions made by the employee or person commissioned 
which do not come wilhin the provisions of subsection (1) and Right to a 
patent. 
Unauthorized 
application 
based on 
invention of 
another person. 
Invention made 
in exoecution 
of commission 
or by employee 
or during 
development 
projects or 
on the basis 
of living run te­
rial collected 
qn Kenya. Naming of 
inventor. 
Application. IP/N/lIKENIII1 
Page 15 
which result from both the personal contribution of the author 
and the resources, data, means, materials, installations or 
equipment of the employer shaH be owned jointly in equa'l 
shares and the employer shall have exclusive right to a ,licence 
of exploitation and the employee or pc.rson commissioned 
shall have the right to a fixecl remuneration. 
(4) The exploitation of the subject of the. patent shall 
be started by the employer within one year from the date of 
the pa tent grant, failing which the invention shall become the 
exclusive property of the employee or person commissioned. 
(5) The employer may also apply for a patent in another 
country provided the fixed remuneration is guaranteed to the 
employee or person commissioned. 
(6) In the absence of an agreement ,to start the exploita­
tion of the patent or during such exploitation, either of the 
joint owners on an equal footing may exercise his right of 
preference within the period provided under this Aot. 
(7) This section shall also apply, where relevant, directly 
or indirectly to governmental and other organizations. 
(8) The advantages given to the employee by subsection 
(4) shall not be reduced by contract. 
17. The inventor shall be named as such in the patent 
unless in a special written declaration addressed to the Director 
he indicates that he wishes not to be named and any promise 
or undertaking by the inventor made to any person to the 
effect that he will make such declaration shall be without legal 
effect. 
PAn.T V---ApPLlCATION, GRANT AND REFUSAL 
or GRANT OF PATENT 
18. (1) An application for a patent shall be filed with the 
Director and shall contain-
(a) a request; 
(b) a description; 
(c) one or more claims; 
(d) one or more drawings (where necessary); and 
(e) an abstract. 
(2) Where ,the applicant's ordinary residence o·r principal 
place of business is outside Kenya, he shall be represented by 
an agent who shall be ~} .citizen of Kenya admitted to practice 
before the OfIicc. IP/N/lIKEN/IIl 
Page 16 
(3) The request shall state the name of, and prescribed 
data concerning, the applicant, the jnventor and the agent, 
i(any, and the title of the invention; and where the applicant 
is not the inventor the request shall be accompanied by a 
statement justifying the applicant's right to the patent. 
(4) The appointment of an agent shall be indicated by 
the designation of the agent in the request or by furnishing 
of a power of attorney signed by the applicant and where 
subsection (2) applies, the agent shaLl be designated in the 
request. 
(5) The description shall disclose the invention and the 
manner and process best knovm to the inventor of using it, 
in such full, clear, concise and exact terms as to enable any 
person having ordinary skills in the art to make and ,to use 
and to evalua>te the invention and that description shall in­
clude any drawing and relevant deposits as in the case of 
micro-organisms and self-replicable material which are essen­
tia'l for the understanding of {he invention. 
(6) The claim or claims shalll define the matter for which 
protection is sought and, shall be clear and concise and fully 
supported by the description. 
(7) The abstract shall merely serve the purpose of tech­
nicalinformation; in particular, it shall not be taken into 
account for the purpose of interpreting the scope of the pro­
tection sought. 
(8) The details of the requirements with which the appli­
cation must comply shall be prescribed by the regulations 
made undertllis Act. 
19. (1) The application shall relate to one invention only 
or to a group of inventions so linked as to fonn a single 
general inventive concept. 
(2) The reglllations shall contain lrules concerning com­
pliance with the requirements of unity of invention under 
subsection (1). 
20. (1) The applicant may amend the application, pro­
vided that amendment shall not go beyond the disclosure in 
the initial application. 
(2) The applicant may divide out from the application 
one or more applicadons (hereinafter referred as the "divi-
sional applications") provided that each divisional application 
shall not go beyond the disclosure in the initial application. Unity of 
invention. 
Amendment 
and 
division of 
application. Right of 
priority. 
Information 
conc:erning 
correspoll d i ng 
foreign appli­
cation gran ts. IP/NIlIKENIII 1 
Page 17 
21. (1) The application may contain a declaration claim­
ing the priority as provided for in the Paris Convention of one 
or more earlier national, regional or international applications 
filed by the applicant or his predecessor in title or of the state 
paflty to the Pariis COllven!ti'On. 
(2) The Director may, at any time after the expiration 
of three months from the filing o.f an application containing the 
declaration, require that the applicant furnish a copy of fthe 
earlier application, certified as correct by the Office with 
which it was filed or, where the earlier a pplica tion is an inter­
nati0'nal appJicafion filed under the Patent Co-operation Treaty, 
by the Internationa:l Bure.:1.u. 
22. (1) At the request of the Director, made within one 
year of the date of filing the application, the applicant shall 
furnish him with the date and number of any application for 
a patent or anothe[ title or protection filed by the applicant 
with a national industrial property office of another country 
or with a regional industrial property office (in this Act refer­
red to as foreign application), relating to the same invention 
as that cla,imed in the application filed with the Director. 
(2) 'J1he applicant 5,ha1'1, at the request of the Director, 
furnish him with the followin!:! documents relatinl! to one of ~ ~ 
the foreign applications-
(a) copies of any communication received by the applicant 
concerning the results of any search or examination 
carried out in respect of the foreign applicaftion; 
(b) a copy of the patent or other title of protection granted 
on the foreign application; and 
(c) a copy of any final decision rejecting the foreign appli­
cation or refusing the grant requested in the foreign 
application. 
(3) The applicant shall, at ,the request of the Director, 
furnish him-with a copy of any decision invalidating the patent 
or other title of protection granted to the applicant on the 
basis of the foreign application. 
(4) 'J1he applicant shall, at the request of {he Director, 
furnish him with copies of any communication received by the 
a:pplicant concerning ,the results of any search or examination 
carried out in respect of any foreign application other than 
the one referred to in subsection (2). JPINII IKENIJI 1 
Page 18 
(5) The documents furnished under this section shall 
merely serve the purpose of facilitating the evaluation of 
novelty claimed in the application filed with the Director or 
in the patent granted on the basis of that application. 
(6) The applicant shall hav~ the right to submit comments 
on the documents furnished under {his section. 
Cl) The details of the requirements under his section 
sha;ll' be prescribed by the regulations. 
23. The application shall be subject to the payment of 
the prescribed fees. 
24. At any time before the grant of a patent or the noti­
fication of rejection of the application or of refusal to grant 
a patent, the applicant may withdraw the application. 
25. 0) The Director shall accord as the filing date the 
elate of receipt of the application, provided at the time of 
receipt, the documents filed contain-
(a) the name of 1he applicant; 
(b) a part which on the face of it appears to be a des­
cription; and 
(c) a part which on the face of it appea.rs to be a claim 
or claims. 
(3) If the Director finds that the application did not, at 
the time of receipt, fulfil the prescribed requirements, he shall 
invite the applicant to file the 'fequired correction. 
(4) If, the applicant complies with the invitation referred 
to in subsection (3), the Director shall accord as filing date 
the date of receipt of the required correction otherwise he 
shall treat the application as if it had not been filed. 
(5) Where the application refers to drawings which in 
fact a're not included in the application, the Director shall in­
vite the applicant to furnish the missing drawings (lJld if the 
applicant complies with the invitation, the Director shall 
accord as the filing date the date of receipt of the missing 
drawings otherwise he shall accord as ,the filing date the date 
of receipt of the application and shaM treat any reference to 
the drawings as non-existent. Payment 
of fees. 
Withdrawal of 
application. 
Filing dat:: 
examina lion 
of applh. ,Ilion 
as to form, etc. IPINIlIKENIII1 
Page 19 
(6) Where no invitation under subsections (3) and (5) 
was sent Ito the appliawt and the applicant nevel'theless files 
a correction pertaining to any of the requirements under sub­
section (1) 10 his application the Director shall accord as filing 
date the date of reeel'pt of the correction, provided that the 
correction was received 'vvithin thirty days from the date of 
ilie application. 
(7) Where the request is accompanied by the statement 
on the right to the patent, the Director shall send a copy of 
the statement to the ,inventor and the inventor shall have the 
right to inspect the application and to receive, at his own 
expense, a copy thereof. 
(8) The Director shall cause an examinatiDn to be carried 
out as to whether there are any of the following defects \\lith 
respect ,to tbe application-
(a) the request does not comply wittl. the requirements of 
subsection (2) and the rules pertaining thereto; 
(b) the description, the claims and, v/here applicable, the 
drawings do not comply with the physical require­
ments prescribed by the regulations; 
(c) the application does not contain an abstract; 
(cl) the applicant bas not complied with a request of the 
Director under section 22; or 
(e) the fees referred to in seclion 23 are not pa.id as pro­
vided in the regulations. 
(9) If the Director finds any of the ddects referred to 
,in subsection (8), he shall invite the applicant to remedy such 
defects provided that any corrections made to the fJ,pplication 
shall not be 'Such that they would require a change of the filing 
date and if .the applicant does not comply with the invitation, 
the application shall be rejected by the Director. 
(10) Unless the application.is to be the subject of an'inter­
nationa1-type search under section 26, the Director shall cause 
an examination to be carried out as to whether the application 
appears to comply with 1he requirement of unity of invention 
prescribed by section 19 and the rules pertaining thereto. 
(11) If the Director is of the opinion :that the requirement 
of unity of invent.ion may not have been complied with, he 
shall invite the applicant to restrict or divide the application; 
and jf the a1Jplicant does not comply with the invitation the 
application shall be rejected by the Director. rp/N/1/KEN/III 
Page 20 
(12) The details of the requirements and the procedure 
under this section shall be presoribed by the regulations. 
26. (1) The Director may direct that any application 
found in order as to form be the subject of an international­
type search. 
(2) \X/hen a direction under subsection (1) is ma,de, the 
Director shall invite the applicant to pay the prescribed fees; 
and if the applicant does not comply with the invitation, the 
application shall be rejec~ed by the Director. 
(3) Upon receipt of the report on the international-type 
search the Director may request the applicant to furnish him 
with a copy of any document cited in the report 2nd if with­
out lawful reason, any copy is not furnished within the pre­
scribed time limit. the application shall be rejected. 
(4) If it is apparent from the report on the internation,ll­
type search or from the refusal to establish the report, that the 
subject of the application or of any claim OT cl2.,ims is not an 
invention, the Director shall reject the defective application 
or consider the defective claim or c1aims to be withdrawn, as 
the case ma.y be, unless the applicant satisfies him that the 
subject of the application or claims constitutes an invention. 
(5) If it is apparent from the report on the international­
type search or from the refusal to establish the report, that-
(a) the description, the claims or, where applicable, the 
dravvings do not comply, in whole or in part, \vith 
the prescribed requirements to such an extent that 
no meaningful search could be caTfied out; or 
(b) the application does not comply, in whole or in part, 
with the requirement of unity of i'l1vention pres­
cribed by section 19 and the rules pertaining thereto; 
or 
(c) the invention claimed in the application obviously 
does 110t fulfil the requirement of novelty, 
the Director shaH reject ,the applic(l,tion unless the applicant 
either satisfies him that the requirements have been fulfilled 
or amends or divides the application so as to comply with 
the requirements. 
(6) The details of the requirements and the procedures 
under this section shall be prescribed by the regulations. Interna tional­
type search. Examinations 
as to 
substance. IPINIlIKEN/IIl 
Page 21 
27. The Minister may, by order publishe,d in the 
Gazette-
(a) direct that applications for patents relating to a speci­
fied field or specified technical fields shall be the 
subject of an examination as to substance; and 
(b) add further technical fields to those covered by a 
direotion as aforesaid or remove any techniC<'ll field 
from the scope of the direction. 
(2) If, :in ,the opinion of the Director, the subject matter 
of an invention for which a patent is sought fa1ls within a 
technical field covered by the terms of a direction made under 
subsection 0), he shaH cause an examination to be carried 
out as 10 whether the foHowing conditions are fulfilled-
(a) the claimed invention is patenable within the meaning 
of the sections dealing with patentability and indus­
trial application; 
(b) the claimed invention is not excluded from protection 
under the sections dealing with prohibition by law 
and temporary exclusion from patenta.bility; and 
(c) the description and the claims comply with the require­
ments prescri'beel by section 18 (3) and (4) and the 
rules pertaining thereto. 
(3) For the purposes of the examination under subsection 
(2), the Director may transmit .the application, together with 
all relevant documents to the authority designated in the regu­
lations for a prelimimury examination as to the patentability 
of the claimed invention. 
(4) 'Dhe authority referred to in subsection (3) sball 
establish a report on the conclusions of its eXamiIJation and 
shall transmi,t it to the Director and to the applicant. 
(5) Where, 'taking due account of the conclusions of any 
report referred to jn subsection (4), the Director is of the 
opinion that any of the conditions referred to in subsection 
(2) are not fulfilled, he shall notify the applicant accordingly 
and invite him to submit his observations and, where applica­
ble, to amend his application. 
(6) Where, despite any observation or amendment sub­
mitted by the applicant, the Director finds that any of the 
conditions 'referred to in subsection (2) are not fulfilled, he 
shall refuse the grant of patent and notify the Q,pplicant 
accordingly. IPIN/lIKEN/IIl 
Page 22 
(7) The details of the requirements and the procedure 
under this section shall be prescribed by the regulations. 
28. (1) Unless the application has been rejected under 
sections 25 and 26 or a patent has been refused under section 
27, a patent shall be granted and issued to the applicant in the 
form specified in the regulations. 
(2) Any granted patent under subsection (1) shall be 
registered in the register. 
29. (1) The Director shall maintain a register in which 
shall be recorded all patents granted, numbered in the order 
of grant, and, in respect of each patent, where appropriate, 
its la,pse for non-payment of annual fees and all transactions 
to be recorded by virtue of this Act. 
(2) The register may be consulted by any person, and 
the person may obtain extracts therefrom, under the condi­
tions prescribed in the regulations. 
(3) The details concerning the register shall be prescribed 
by the regulations. Grant, 
registration 
and· 
publication 
of patent. 
Register of 
patents. 
30. The applicant may appeal to tbe Tribunal against Appeals. 
any decision by which the Director accords a filing date, 
rejects the application, treats ,the application as if it ha,d not 
been filed, considers any of the claims to be withdrawn or 
refuses to grant a patent. 
PART VI-INTERNATIONAL ApPLICATIONS 
31. For the purposes of this Part, "internat·ional appli­
cation" means an internationa.l application filed in accordance 
with the Patent Co-operation Treaty and the regulations estab­
lished thereunder. 
32. (1) The Office shall act as a receiving office \vhere an 
international application ,is filed with it and the a.pplicant is 
a national or a resident of Kenya. 
(2) The Office sha 11 act as a designated office in the case 
of any international appJica,tion in which the country is 
designated. 
(3) A patent in respect of which Kenya is a designated 
state granted by ARIPO by virtue of the ARIPO Protocol shall 
have the same effect in Kenya as a patent granted under this Interpre­
ta'lion of 
Part. 
Functl'ons 
of the Kenya 
Industrial 
Property 
Office. Unsearched or 
unexamined 
interna:tional 
upplic<ltions, etc. IP INIlIKEN!I1l 
Page 23 
Act unless -the Director communic2,tes to ARIPO, in respect 
of the application thereof, a decision in accordance with the 
provisions of the protocol that if a patent is granted by 
ARIPO that patent shaH have no effect in Kenya. 
33. (1) VVhere an internatio,nal search report is not estab­
lished or relates to only one or some of the claims of 1he 
international application, the Director shall reject the inter­
national applica.tion or consider \vithdrawing any claim or 
claims not covered by the report, as the case may be, except 
to the extent that the applicant satisfies him that the refusal 
to est8 blish the report in whole or in part \vas not justified. 
(2) Where the international search report relates to only 
one or some of the cla.ims due to the applicant's refusal to 
pay additional fees, those parts of the international applications 
which consequently have not been searched shall be considered 
withdrawn unless the applicant satisfies the Director that the 
invitation to pay the additional fees wa.5 not justified. 
(3) vVhere an international preliminary examination rc­
port with respect to an international application has been 
communicated to the Director the foJIowing paragraphs shail1 
apply-
({[) where, in the case of lack of compliance with require­
ment of unity of invention the international prelimi­
naTY examination report jndicates that the inter­
national preliminary examination was carried out 
on restricted claims, or was carried out on the main 
invention ouly, those parts of the internati{)nal appli­
cation indicated as not having been the subject of 
international preliminary examination shall be con­
sidered withdravm unless the applicant pays rthe 
prescribed fee or satisfies the Director that the 
invitation of the international preliminary examin­
ing authority \vas not justified; and 
(b) where the international preliminary report sta,tes, with 
respect to the entire international application or one 
or some of its claims only, the opinion that the 
defects exist, the international application or the 
claim or cla.ims, as ·the c£'lse may be, sbaJI be con­
sidered withdrawn unless the applicant satisfies the 
Director that ,the defects do not exist. 
(4) If it is apparent from an international search report 
or an international prelimi·nary examination report that an IP/N/J/KENIIIJ 
Page 24 
invention claimed in an internationa:1 application obviously 
does· not fulfil the requirement of novelty, the Director 
shall not grant a patent upon the applica,tion unless the 
applicant ei,ther satisfies him that the requirement ha.s been 
fulfilled or amends the claims in a way that fulfils the require­
ment. 
34. (1) Relief may be sought in respect of acts com­
mitted before the grant of the patent but after the date of 
international publication was effected in English. 
(2) Where the internationail publication was effected in 
a language other than English, subsection (1) shall apply pro­
vided that 1he applicant had transmitted an English translation 
of the international publication to the infringer and only in 
respect of acts committed by the 1a.tter after he had received 
the translation. 
PART VII-RIGHTS AND OBLIGATIONS OF THE ApPLICANT 
OR THE OWNER OF THE INVENTION 
35. (1) The applicant or the owner of the patent shall 
have the following rights-
(a) to be granted the patent, where the relevant require­
ments under thi's Act are fulfilled; 
(b) af,ter the grant of the patent and within the limits de­
fined in section 16, to preclude any person from 
exploiting the patented invention in the manner refer­
red ,to in section 36; and 
(c) to conclude licence contracts, as provided for in Part 
XIII and subject to the obligations refer.red to in 
subsection (2). 
(2) The applicant or the owner of the patent shall have 
the following obligations--
(a) to disclose the invention and the manner and process 
best known to ,the inventor of using it, in suoh full, 
clear, concise and exact terms as to enable any per­
son having ordinary skills in the alrt to make and 
to use and to evaluate the invention; 
(b) to give information concerning corresponding foreign 
application and grants; 
(c) to work the protected invention in Kenya within the 
time limits; Provisional 
protection of 
published 
international 
applica!tion. 
Rights and 
obligatrons. Rights of 
owner of 
\':1 rent. 
Scope of 
protection. 
Limitation 
of rights. IPINIlIKENIII 1 
Page 25 
(cl) to pay fees to the Director, as prescribed in this Act 
and the regulations, subject to the sanctions provided 
for therein; and 
(cl in connection \vith liCence contracts and contracts , 
assigning pa.tents or p'Jteilt appliC<:'1tions, to refrain 
from making abusive provisions referred to in section 
27. 
36. The owner of the patent shall have the right to pre­
clude any person from exploi,ting the prutected invention by 
any of the follO'vving acts-
(0) when the patent has been granted in respect of a pro­
duct-
(i) making, importing, oa'ering for sale, selling anel 
using the product; or 
(ii) stocking such product for the pl!rposes of offer­
ing it for sale, selling or using the product; 
(b) when the patellt }w.s been granted in respect of a pro­
cess-
0) using ,the process; or 
(ii) doing any of the acts referred to in paragraph (0), 
in respect of a product obtained directly by 
means of the process. 
37. The scope of the protectlOn shall be determined by 
the terms of the claims; nevertheless, ·the description and the 
drawings included in the invention may be used to interpret 
the claims. 
38. (1) The rights under the patent shall extend only to 
acts done for industrial or commercial purposes and in parti­
cular not to acts done for scientific research. 
(2) The rights under the patent shall not extend to acts in 
respect of articles which have been put on the market in the 
cOLlntryby the owner of the patent or with his express 
consent. 
(3) The rights under the pa tent shall not extend to the 
use of articles on aircraft, land vehicles or vessels of other 
countries which temporarily or accidentally en ter tlle airspace. 
territory or waters of the country . 
. (4) The rights under the patent shall be limited by the 
provisions on the patents term. IPlNlI/KEN/IIl 
Page 26 
(5) The rights under the patent shaH be limited by the 
provisions on compulsory licences for reasons of public 
interest or based on interdependence of patents and by the 
provisions on Stale exploitation of patented inventions. 
(6) The rights of the patent shall not extend to variants 
or mutants of living forms or replicable living matter that is 
distinctively different from the original for which patent were 
obtained such mutants or variants are deserving of separate 
patents. 
PART VIII-TERI"f OP PATENT AND Ar-.WOAL FEES 
39. (1) Subject to subsection (2). a patent shall expire at 
the end of the seventh year after the date of the filing of the 
application and may be extended for ten years. 
(2) On the request of the owner of the patent, or of a 
licensee, made not more :than twelve months and not less than 
one month before the expiration of the patent under sub~ 
section 0), and on payment of the prescribed fee, the Director 
shaH extend the term of that patent for a period of five years, 
provided that the owner or licensee proves, to the sa tisfaction 
of the Director-
(a) that the invention which is the subject of the patent 
is being worked in the country at the date of the 
request; or 
(b) that there are legitimate ,reasons for failing so to work 
the invention. 
(3) On the. request of the owner of the patent, or of a 
licensee, made not more than twelve months and not less than 
one month before the expiration of the patent under subsection 
(2), and on payment of the prescribed fee. the Director shall, 
subject to that subsection, extend the duration of the patent 
for a further period of five years. 
(4) If tl1e Director does not reject the request referred to 
in subsections (2) and (3) within six months after its receipt, 
he shall be deemed to have extended the term of the patent as 
requested. 
(5) The owner of the patent or a licensee may appeal to 
the Tribunal against any refusal to extend the term of tbe 
pa ten t under Sll bsections (2) and (3). 
(6) For the purposes of this section the ,invention is 
worked if the protected product is permanently or regularly Term or 
patent and 
extension. Annual fees. 
Ohango In 
ownership of 
applications, etc. IPlNllIKENlI1l 
Page 27 
llsed in the manufacture of the product. covered by the protec­
tion in order to market the product under reasonable com­
mercial and market conditions either directly or by the paten­
tee or his successor in title or liceqsee, in quantities that amount 
to efIective indusLrial exploitation under satisfactory conditions 
as to quantity and price. ' 
40. (1) In order to maintain 111e application or the patent, 
an annual fee shall be paid in advance to the Director starting 
with the second year after the date of the filing of the applica­
tion. 
(2) A period of grace of six months shall he grallted for 
the payment of the annual fee upon payment of a surcharge 
whose amount shall be fixed by the regulations, 
(3) If an annual fee is not pelid in accordance with this 
section the application shall be deemed to have been with­
drawn or the patent shall lapse automatically and the related 
informati'on s11a'H faH into 'the 'public domain and 'the lapse of 
the patent 'shaH promptly be pubiished by the Director. 
(4) \Vithin six. months from the expiration of the period 
of grace referred to in subsection (2), any interested person 
may, upon payment of the prescribed fee, request the Director 
to restore an application that is deemed to have been with­
drawn, or a patent that has lapsed, by virtue of subsection (3). 
(5) If the Director is satisfied ,that the failure to pay the 
annual fee was due to force majeure and all annual fees due 
have been paid, he shall make an order restoring the appliCa­
tion or the patent, as the case may bc. 
(6) Where a patent is restored, no proceedings may be 
brought by virtue of the patent-
(a) with respect .to any acts performed after tbe Japse of 
the patent and before the date of the order for 
restoration; or 
(b) with respect to any acts performed after the date of 
the order for restoration in relation to articles im­
ported into Kenya, or manufactured therein, after 
the lapse of the patent and before the date of the 
order for restora tion. 
PART IX-CHANGE IN THE OWNERSHIP At-,'D JOINT 
OWNERSHIP OF ApPLICATIONS AND RIGHTS 
41. 0) All contracts assigning applications or patents 
shall be in vvriting and shall be signed by the parties thereto 
otherwise they shall not be valid. IP/NII1KENIII 1 
Page 28 
(2) Any change in the ownership of an application or a 
patent shall be recorded in the patent register in accordance 
with, and on payment of prescribed fee and after the change 
have been recorded, any document evidencing the change in 
ownership shall not be admitted in any proceedings as evidence 
of the title of any person to an application or a patent, unless 
the court otherwise directs. 
42. In the absence of any agreement to the contrary 
between the parties, joint owners of an application or a patent 
may, separately, transfer their shares in the application or the 
patent, exploit the protected patent and preclude any person 
from exploiting the patent but may only jointly grant per­
mission to any third person to do any of the acts referred to 
in section 26. 
PART X-UTILITY 110DELS 
43. (1) Any person who makes a new model shall 
be entiNed to obtain a utility model certificate, provided, 
however, that employees of the Office shall not be entitled to 
obtain a utility model registration during their employment at 
the Office except in the case of inheritance or bequest. 
(2) If two or more persons make a model, the right to 
obtain a utility model registration shall be jointly O\vncd. 
44. Models falling under any of the following categories 
shall not be registrable-
(a) discoveries, scientific theories and mathematical 
methods; 
(b) models which are liable to contravene public order or 
morality or principles of humanity, or to injure 
public health or which are contrary to environmental 
conservation; 
(c) aesthetic creations; 
(d) schemes, rules and methods of performing mental acts, 
playing games or doing business, and programs for 
computing; 
(e) presentations of information; 
(I) acts done privately for nOLI-commercial purposes, 
except acts done for educational or instructional 
purposes and whose intention is to be put to use 
but one which have the potential for commercial 
application; or 
(g) acts done for experimental purposes relating to tbe 
subject matter of the utility model. Joint ownership 
of applica-
tions and 
patents. 
Persons 
entitled to 
obtain a 
utility model 
registra tioD. 
Unregistrabk 
models. Requirements 
for utility 
modd 
registration. 
Instance:; where 
utiliry models 
r.ot registrab1e. 
Presumption 
of noyelty. IPINIlIKENIII 1 
Page 29 
45. (1) Any person who has made a model which can be 
ut-ilized <in inclusittfY, agriculture, educa!t!i'On services or environ­
mental conservation and which relates to shape, structurc or 
assemblages of articles s:haH be cntitkd t'O obtain a utiUty 
model registration thereon. except in the case of the following 
models-
(a) models which were publicly known or publicly worked 
in Kenya prior to the filing of the utility model 
registration application; or 
(b) models which were described in a publication distri­
buted in Kcnya prior to the filing of the utili ty model 
registration application. 
(2) In case a person having an ordinary technical know· 
ledge in the field to which such model belongs could easily 
have made the model on the 'basis of a mode,l prior to the 
filing of a utility model registration, a utility model registra tion 
shall not be granted in respect of tha t model. 
46. \X/here a model for which a utility model registration 
application is filedvvith a model or an invention described in 
lhe specification or drawings originally appended to another 
application for a utility model registration or a patent and 
where such other application was filed prior to the utility 
model registralti'On application concerned and was published 
for opposition or was laid open to public inspection after the 
filing of the utility model registration application concerned, 
a utility model registration shall not be granted for the first 
mentioned model; provided, however, tJnt this provision shall 
not apply in cases where the inven (or of the other applica tion 
and where, at the time of filing of the other appEcation 
for a patent or a utility model registration are the same person. 
47. (1) If a registrable utiliLY model falls under anyone 
of the following categories it shall be deemed to be novel at 
the national level provided that the utility model registration 
application is filed within six months of the applicable date--
(a) when a person having the right to obtain a utility 
model registration by conducting an experiment 
thereon, publishing the model in printed matter, Or 
presenting it in writing at a research meeting held 
by a scientiiic organization; IPlN/IIKEN/IIl 
Page 30 
(b) when a person having the right to obtain a utility 
model registration has unintentionally caused his 
model to fall under section 45 (1); 
(c) when a person having the right to obtain a utility 
model registration has caused his model to fall under 
the terms of section 45 (1) by displaying his model 
at an exhibition held by the Government or local 
public entity, or by those \\'ho have obtained approval 
from the Government or the local entity; 
(d) when a person having [he right to obtain a utility 
model registration has caused his model to fall under 
the terms of section 45 (1) by displaying his model 
at an exhibition held in a foreign country with the 
approval of the Govcrnmc.nt; and 
(e) when a person having the right to obtain a utility 
model registration has caused the model to fall under 
the terms of section 45 (1) by displaying the model 
at an international exhibition held in a foreign 
country. 
(2) Any person who desires the application of subsection 
(1) shall submit, simultaneously with the utility model registra­
tion application, a written statement to that effect to the 
Director, to whom he shall also submit, within thirty days 
from the filing date of the utility model registration applica­
tion, a document verifying the relevant facts. 
48. (1) The applicant is entitled to obtain a utility model 
registration for (he same model only; provided, however, that 
where two or more applications relaling to the same model 
are filed on the same date, only the person agreed upon by all 
the applican ts may obtain a utility model registration for the 
model and, if no ag:reement is reached or no consultation is '-' 
possible, none of the applicants shall obtain a utility model 
registra tion for the model. 
(2) 'tlherc a utility model application concurs with a 
patent application for the same contents, subsection (1) shall 
l7lutatis mutandis apply. 
(3) Where a utility model application or patent applict.­
tion, both contents of which are identical, is invalidated or 
withdrawn, such application sh811, for the purposes of sub-­
section 0), be deemed never to have been made. First file 
policy. Application for 
utility model 
registration. IPINIlIKENlIl1 
Page 31 
(4) A utility model application or patent application by 
a person who -is not the inventor nor the successor in title to 
the (right ,to 'obtain a utility model registration 'Or a pa:tent 
registra tion shall, for the purposes of subsections (1) and (2) 
be deemed to be a utility model a'pplication or a patent appli-
cation. ' 
(5) The Director shall order the applicants to report the 
result of the consultations prescribed under subsection (1), 
designating an adequate time limit; and if the report is not 
made within the designated time limit, the applicants shall be 
deemed not to have concludecl an agreement within the mean­
ing of subsection (1). 
49. (1) Any person who desires to obtain a utility model 
registration shaM submit a request to the Director stating 
the following matters-
(a) the name, proof of nationality, domicile or place of 
business or name of institution (in case of utility 
model for educational or instructional purposes) of 
the applicant for the utility model registration (in 
case of a juristic person, the name of its representa­
tive to be included); 
(b) the name and domicile or place of business of the 
agent, in case an agent is designated; 
(c) the date of the submission; 
(d) the title of the model; and 
(e) the name and domicile or place of business of the 
innovator. 
'(2) A specification and, if necessary, drawings which set 
forth the following items shall be appended to the request-
(0) title of the model; 
{b) brief explanation of the drawings; 
(c) detailed explanation of the model; and 
(d) scope of the utility model registration claim, 
(3) In a detailed explanation of the model, the purpose, 
construction, function and effect of the model shall be des­
cribed so as to be easily practised by any person having an 
ordinary knowledge in the technical field to which the model 
belongs. IPlNlI/KEN/IIl 
Page 32 
(4) Within the scope of the utility model registration 
claim of subsection (2), the matter to be protected among those 
matters described in the specification may be set forth in a 
single claim or two or more claims clearly and concisely. 
50. An application for utility model registration shall 
relate to a single model. 
51. (1) An applicant for a patent may convert his appli­
cation into a utility model application; provided, however, 
that this provision shall not apply after thirty days from the 
transmission of the examiner's first decision that the patent 
application (excluding the thirty days period counted from the 
filing date of the patent application) is to be rejected. 
(2) \Vhere the conversion is carried, the utility model 
application shall be deemed to have been i1led on the date 
of filing of the application for the patent registration; provided, 
however, that this provision shaH not apply where the neyv 
utility model application converted is another application for 
a utility model. 
(3) V/here such conversion is carried out, the application 
for the patent shall be deemed to have been withdrawn. 
(4) An application may not be converted under subsection 
(1) more than once. 
52. (1) A utility model right shall come into force upon 
registration of its establishment. 
(2) The owner of a utility model right shall have the right 
exclusively to produce, use, sell, import or distribute the 
articles of registered utility model ccmmercially or industrially. 
(3) Where a registered utility model would utilize or be 
in conflict with another person's registered utility model, 
patented invention or registered design and jf the latter were 
filed prior to the filing date of the utility model application 
concerned, tbe owner of the utility model right or exclusive 
licensee 'or non-exclusive licensee shall not commercially work 
his registered utility model without the consent of tbe owner 
of the earlier utility model right, patentee or owner of the 
design right. 
53. Acts of manufacturing, using, selling, importing or 
distributing commercially the things to be used exclusively for 
the manufacture of the product relating to a utility model 
re?~stration, shall be deemed to 'be an infringement of the 
utIlIty model right or an exclusive licence. One model 
for one 
applica:tion. 
Conversion of 
applica:tion. 
Registra:tion of 
establishment 
of utility 
model right. 
Acts deemed 
to be 
tnfringcmen t. Non-exclusive 
fi'cence due to 
working prior 
to registration 
0.£ demand for 
invalidation 
trial. 
Non-exclusive 
licence after 
expirati'on of 
term. IP/N/lIKEN/IIl 
Page 33 
54. (1) \Vhen a person to whom this section applies has 
in good faith, been commercially working a model or invention 
in Kenya or been making preparations thereof, prior to the 
registration of a demand for trial to invalidate a registered 
ut·ility model or a patent, such fl person shall have a non­
exclusive licence on the utility model right or on the exclusive 
licence at the same time when the utility model registration 
or the patent was invalidated, within the scope of the purpose 
of the business at the time the demand was made--
((1) the original owner of the utility model right, where 
one or two or more utility model registrations granted 
for the same model has been invalidated; 
(0) the original patentee, where a model registered as a 
utility model and a patented invention are the same 
and the patent has been invalidated; or 
(c) in the cases referred to in paragraphs (a) and (b), a 
person, who has an exclusive licence or a non­
exclusive licence anc1 has obtained registration there­
of on the invalidated utility model right or patent 
right, prior to the registration of demand for inva1i­
dation trial. 
(2) A person wbo bas obtained a non-exclusive licence 
in accordance with subsection (1) shall pay a reasonable 
remuneration to the owner of the utility model right or the 
exclusive licence. 
55. (1) \Vhen a patent right under an application filed 
prior to or on the filing date of a utility model registration 
application conflicts with the utility model right under the 
utility model registration application and the term of the 
patent right has expired, the origina'1 patentee, owner of the 
design right and theif exclusive or non-exclusive licensee shall, 
to the extent of the original right, have a non-exclusive licence 
on the utility model registration; provided, however, that 
registration shall not be required in case where the original 
licence was effective wi thou t registration. 
(2) An exclusive licensee and a non-exclusive licensee on 
the basis of the original patent right or design right under 
subsection (1) shall pay a reasunable remuneration to the 
owner of the utility model right. IJ>~/l/~~/I/l 
J>age 34 
56. The provisions of compulsory licensing shall be 
similar to those applied to patents. 
57. (1) The term of the utility model right shall be five 
years from the date of the publication of the application in 
case where this is published, and five years from the date of 
registration in case where there is no publication; provided, 
however, that such term shall not exceed twelve years from 
the filing date of the utility model application. 
(2) When a utility model registration is granted to a law­
ful applicant, the term of five years shall run frOIll the follow­
ing date of publication of the application that was filed by 
unentitled person. 
(3) \Vhen a utility model registration is granted to a law­
ful applicant, the term of five years shall run from the 
following date of publication of the application that was 
invalidated. 
58. (1) The owner of a utility model right, exclusive 
licensee or non-exclusive licensee may, jf he desires to obtain 
a non-exclusive licence demand a trial for granting non­
exclusive licence in case the other person refuses to grant a 
licence without due reasons or in case he is not able to obtain 
the grant of licence. 
(2) \Vhere a person who has granted a non-exciusive 
licence under subsection (1) requires working of Ithe registered 
utility model of the person to whom the non-exclusive licence 
has been granted, and if the latter refuses to grant a licence 
without due reasons or if it is not possible to obtain a licence 
from the latter, the former may demand CL trial for the grant 
of non-exclusive licence. 
59. (1) A non-exclusive licensee under the provlslOll of 
section 58 shall pay a reasonable remuneration to the owner 
of the utility model right, the patentee, the ovmer of the 
des'ign right or the exclusive 'licensee. 
(2) A non-exclusive licensee under subsection (1) may 
work the registered utility model, patented invention or 
registered design upon payment of the remuneration thereof 
or by making a deposit thereof if payment is not possible due 
to causes beyond his control. Compulsory 
licensing. 
Terms of 
utility model 
right. 
Trial for 
granting 
no n-exIusive 
licence. 
Remuneration 
in respect of 
compulsory 
licence. Effect of 
registrat~on of 
non-exclusive 
licence. 
Invalid3!tron of 
the registratron 
of utioJity model. 
Registratron in 
utility model 
register. IPIN/lIKEN/IIl 
Page 35 
60. (1) When a non-exclusive licence has been registered, 
it shall be etIective against any person who subsequently 
acquires the utility model right or exclusive licence or any 
person who subsequently establishes a pledge on the utility 
model right or exclusive licence. 
(2) A non-exclusive licence shall be effective against a 
person who has established a right of pledge prior to its 
registration. 
(3) The transfer, modification, extinguishment or restric­
tion on disposal of a non-exclusive licence or the establish­
ment, transfer, modification, extinguishment or restriction on 
disposal of a pledge relating to a non-exclusive licence shall 
not be effective against any third party unless it is registered. 
61. (1) If a utility model registration falls under any of 
the following categories it shall be invalidated by trial-
(a) where a utility model right bas been granted in 
violation of the provisions of this Act; 
(b) where a utility model right has been granted to a 
person who is not entitled to succeed it, or to a 
person who has misappropriated such a right; or 
(c) where, after registration of a utility model, the owner 
of the utility model right has become a person who 
is for any other reason no longer eligible to enjoy 
utility model rights. 
62. (1) A utility model register shall be kept at the Office 
in which anyone of the following shall be recordcd-
(a) the 'establishment, transfer, extinguishment or restric­
tion on disposal of a utility model right: 
(b) the establishment, maintenance, transfer, modification, 
extinguishment or restriction on disposal of an ex­
clusive or no:n-exclus,ive [licence; and 
(c) the establishment, transfer, modification, extinguish­
ment or restriction on disposal of a pledge upon a 
utility model right or an exclusive or non-exclusive 
licence. 
(2) Other matters relating to registration which are not 
provided for in this Act shall be prescribed by the Minister. IPINII/KENIII1 
Page 36 
63. When the establishment of a utility model right has 
been registered the Director shall issue a utility model 
registration certificate to the owner of the utility model right. 
64. The Director shall publish the utility model gazette. 
and the matters to be described in the utility model gazette 
shall be prescribed by the Minister. 
65. (1) A person who wishes to register a utility model 
r.ighJt lor ~n 'owner of ,the utHiity ,model ,right or any person who 
files a request or initiates other proceedings shall pay registra­
tion fees, publication fees, examination fees or other official 
fees; provided, however, that this provision shall not apply 
to utility model rights or utility model registration applications 
belonging to the Government or to a trial for invalidation 
which is initiated by the examiner. 
(2) An interested party may pay registration fees, publica­
tion fees, examination fees or other official fees on behalf of 
the person liable to pay. 
(3) \Vhere an applicant fails to pay the publication fees 
within the time limit by which the payment for registration 
of establishment of utility model right is to be made, such an 
application shall be deemed to have been abandoned. 
66. (1) The utility model registration application shall 
be -taken up for examination only when there is a request for 
the examination thereof. 
(2) \Vhen a utility model registration application has 
been filed, any person may make a reques.t for examination 
to ,the Director within two years from the filing date thereof. 
(3) A request for examination of an application shall not 
be withdrawn. 
(4) If no request for examination thereof is made within 
the prescribed period, the utility model registration application 
concerned shall be deemed to have been wi thd ra '.vn. 
67. (1) An examiner shall, in case a utility model 
registration application falls under anyone of the following 
categories make a decision to rejeot it-
(a) where an application 1S not regi'Strable; or 
(b) where an application is filed by a person who cannot 
succeed to rights to obtain a utility model registration 
or who has misappropriated such right. Issuance of 
utility model 
registra1ion 
certificate, 
Utility model 
gazette. 
Registration 
fees. 
Request for 
examination of 
an application, 
Rejection and 
notification 
of reasons 
for rejecoioIl. Demand for 
trial. 
Limitation 
on trial. 
Trial decision 
on re·munera­
tion. 
Appeals. IP/N/l IKENIII 1 
Page 37 
(2) An examiner shall, when he intends to render a deC'i­
sion of rejection recognizing that an application has fallen 
under subsection (1), notify ithe applicant of the reasons and 
give him an opportunHy to 'Submit a statement of his argu­
ments, designating a time limit. for the submission. 
68. (1) A tria'l may be demanded for the mMters pres­
cribed in any of the following, unless othenvise provided for 
in this Act-
(a) trial to invalida te a registra tion under tbe provisions.' 
of tbis Act; 
(h) trial to confirm the scope of utility model right; 
(c) trial to grant a non-exclusive licence; 
(cl) tria,1 to obtain permission to correct; or 
(e) trial to invalidate the permission to correct. 
(2) Only the interested party or the examiner may 
demand a trial for invalidation. 
(3) Only the interested party may demand a trial pres­
cribed under paragraphs (a) to (e) of subsection 0). 
69. \Vhere a registered utility model is granted for a 
model \vhich has been described in a publication distributed 
prior to the ut'ility model registration application or for a 
model which could be easily made by a person having an 
ordinary technical knowledge in the field to which such 
invention belongs, a trial to invalidate the utility model 
registration shall not be demanded after five years from the 
date of the establishment of the registration of the utility 
model right. 
70. A trial under ,the seotion 68 shall include a decision 
011 remuneration. 
71. (1) Any person who objects to the examiner's 
decision or the trial decision may file an appeal within thirty 
days from the transmission of the examiner's deCision or the 
trial decis'ion and in that case, no trial may be demanded 
aga'inst the trial dedis·ion concerning ,the remuneration or 
costs only. 
(2) The person who appeals against the deoision shall 
submit his demand in writiing to rthe Director, stating the 
following parbiculars-
(a) name or title, proof of nationality and domicile or 
place of ·business of the applican t and his represen­
tative or, in case of a juristic person, the name of its 
represerrtative; IP/N/l/KEN/IIl 
Page 38 
(b) date and number of the application; 
(c) title of the model; 
(d) date of rendering examiner's decision; 
(e) identification of the trial case; 
(f) purpose of and reasons for the demand; and 
(g) grounds of appeal and supporting evidence. 
PART XI----INDUSTRIAL DESIGNS 
72. (1) For the purposes of this Act, "an industrial 
design" means any composition of lines or colours or any 
three dimensional form whetller or not associated \Vi th line.s 
or colours, provided that such composition or form gives a 
special appearance to a product of industry or handicraft and 
can serve as a pattern for a product of industry or handicraft. 
(2) The protection under this Act shall not extend to 
any thing in an industrial design which serves solely to obta'in 
a technical result. 
73. (I) Any crea tor of an industr'ial design or his 
successors in title shalt have tbe exclusive right to exploit the 
design, to sell or cause to be sold for commercial or industrial 
purposes the goods in which the design is incorporated, subject 
to the conditions of this Act, without prejudice to the rights 
conferred by any other written law. 
(2) The following shall not be registered as industrial 
desio-ns-b 
(a) works of sculplure architecture l)aintin rr enlrravinfT , )~) b b' 
enamelling, embroidery and photography and any 
other inventions of purely artistic na lure; 
(b) inventions contrary to public order, morali ly, public 
health and safety, principles of humanity, and en­
vironmental conservation: 
(c) designs whose features correspond to or are determined 
by the fUllctions to be performed by the products; 
or 
(cl) designs that consist solely in a cbange in the colour 
of designs already known. 
74. (1) Any person wishing to deposit an industrial design 
shall send to the Director-
(a) a declaration of deposit; Definition of 
an industrial 
design. 
Regislratroll of 
industrial designs. 
Deposit and 
publication 
of industrial 
designs. Duration, etc. 
of certilicate 
of registrntron. 
Reulewa:l, etc. 
of registratiion 
of mdustriaI 
designs. JPINIlIKENIII1 
Page 39 
(b) an unstamped power of attorney, jf the applicant is 
represented by an agent; 
(c) on pain of annulment of the deposit, a sealed package 
containing two identical copies of a representation 
or specimen of the design. 
, , 
(2) The deposit may consist of between one to one 
hundred designs, which shaH be numbered from first to last 
and any design above one hundred shall not be considered as 
validly deposited under rthe terms of this Act. 
(3) A written statement drawn up by the Director shall 
note each deposit, specifying the date and the time the docu­
ments were handed over. 
(4) A copy of the written statement referred to in sub­
seotion (3)' shall be given to the applioant. 
(5) The Director shall register the depos'it after having 
ascertained that it is in due form and in accordance with the 
requirement of this Act, and shall send a certificate of registra­
tion to the applicant. 
(6) The legal date of the registration shall be that of the 
deposit. 
(7) In the event either of a material error not entailing 
annulment of the deposit or of failure to pay the required fees. 
a period of two months shall be granted to the applicant in 
order to rect,ify his deposit, and the period may be extended 
upon legitimate request by the applicant or his agent. 
(8) The rejection shall be declared by the Director. 
75. (l) Subject ,to subsection (2), the duration of protec­
tion conferred by a ceJ1tificate of registration for an industrial 
design 'shall expire at the end of the fifth year following the 
date of deposit of the application for registration. 
(2) 'Vhe regist'rali'on of a design may be renewed for two 
further consecutive periods of five years upon payment of a 
renewal fee the amount of which shall be fixed in the pres­
cribed manner. 
(3) The renewal fee for an industrial design shall be pa:id 
within the ,twelve months preceding expiration of ttTIe period 
of registration. 
76. 0) Where the protecti'on granted to an industrial 
deslgn has not been renewed due ItO circumstances beyond 
the control of 1he owner of the design, the 1atter or the persons IPINI1IKENIIII 
Page 40 
entitled may apply for its restoration against payment of the 
requisite renewal fees, as well as of a surcharge whose amount 
shall be fixed in the prescribed manner, within a period of six 
months from the date upon which the above-mentioned 
circumstances ceased to exist and, at the latest, within a period 
of one year from <the date upon .which renewal was due. 
(2) The application for the restoration for the above­
mentionedjndustrial design, together with documents proving 
payment of the fees and surcharge mentioned in subsection 
(1), shall be sent to the Director and s11a.11 contain a statement 
of the grounds on which the owner or the persons entitled 
consider the restoration justified. 
(3) The Director shall examine the reasons referred to 
above and shall either restore the design or reject the applica­
tion if it does not consider the grounds valid. 
(4) Restoration shall not entail prolongation of maximum 
duration of the industrial design. 
(5) Restored designs shall be published by the Director 
in the presc6bed form. 
77. (1) The specifications, drav,;ings and specimen of 
registered industrial designs shall be kept by the Office where 
they shall be communicated upon request. 
(2) Specimens of industpial designs shall be kept in the 
Office for a period of eight years and may bc. examined by 
any interested person. 
(3) After publication any person may obtain an official 
copy of the specifications, designs and specimens. 
(4) Subsections 0), (2) and (3) shall apply to oft1cial 
copies furnished by applicants seeking to avail themselves of 
the priority of an earlier deposit and to the documents 
enabling certain applicants to claim the priority. 
(5) The applicant for registration seeking to avail him­
self abroad of the priority of his deposit before registration 
of 111e industrial design may obtain an official copy of hi') 
application. 
78. (1) The Director shall publish the following details 
for each industrial design granted-
(a) the number of the industrial design; 
(b) the name and address of the owner of the design; Specifica tions. 
drawings. etc. 
PublicCltion of 
details of 
industrial 
designs. Reproduction 
of andustrial 
designs. 
Donation of 
industrial 
designs. 
Rights conferred 
by registmt10n 
of ind uslria 1 
de-signs, etc. IP/N/1IKEN/IIl 
Page 41 
(c) the name and address of the creator of the design, 
unless he has requested not to be mentioned on the 
certificate of registration; 
(cl) the name and address of the agent if there is one; 
(e) the date of filing of the application; 
(I) mention of priority, if priority has been validly claimed; 
(g) the date or registration of the design. 
(h) the title of the design. 
(2) The Director shall establish and determine the 
conditions of publication of .the specification of the model, 
any specimens or designs and the claims. 
79. 0) The Director shall reproduce the designs deposited 
at ·the Office. 
(2) Proof of tbe reproduction shall be a t the disposal of 
tbe public at the Office. 
(3) Proof regarding publication of the application shall 
be given to the applicant or his successors in title, as well as 
to any party engaged in legal proceedings concerning the 
design. 
80. vVhere designs have not been claimed by their 
O\vner \vithin two years following the expiration of the period 
of protection, they shall be donated to an educational or 
research or cultural institution determined 'by the Minister. 
81. (1) Registration of an industrial design shall confer 
upon its registered owner the right to preclude third parties 
from the following acts-
(a) reproducing ,the industrial design in the manufacture 
of Cl product; 
(b) importing, offering for sale and selling a product 
reproducing the protected industrial design; or 
(c) stocking of such et product for the purposes of offering 
j t for sale or selling it. 
(2) The rights conferred by .the registration of an in­
dustrial design shall extend only to acts done for industrial 
or commercial purposes and shall not extend to acts in respect 
of a product embodying the protected industrial design after 
the product has been lawfully importecl or sold in Kenya. 
(3) An industrial deSign m respect of which Kenya is a 
designated state registered by ARIPO by virtue of the ARIPO 
Protocol shall have 1he 'Same effect in Kenya as an industrial 
design Tegistered under this Act· unless ,the Director has IPlNllIKENIIIl 
Page 42 
communicated to ARIPO, in respect of application therefor, 
a decision in accordance with the provisions of the protocol 
that if a registration is made by ARIPO that registration 
shall have no effect in Kenya. 
82. (1) Rights subsisting in 'an industrial design shall be 
transferred in whole or in part. 
(2) Acts involving transfer of ownership or the grant of 
the right of exploitation or the assignment of such right, pledge 
or cancellation of a pledge in respect of a design shall, on 
pain of nullity, be established in writing. 
(3) The acts mentioned in the subsection (2) shall not be 
enforceable against third parties unless they have been entered 
in the special register of designs kept by the Director. 
(4) The Director shall furnish to any person who so 
requests a copy of the entries in the special register of indus­
trial designs, as well as the state of entries concerning indus­
trial designs which are the subject of a pledge or a certificate 
establishing the absence of such entries. 
(5) In the absence of any provision to the contrary 
between the parties, joint owners of a registered design may 
separately transfer their shares, use the design and exe,rcise 
the exclusive rights conferred by this Act, but may only jointly 
grant a licence to a third party to exploit the design. 
PART XII-RATIONALIZATION MODELS OR TECHNOVATIONS 
83. For the purposes of this Part, "rationc:dization 
model" means any solution of a technical character or relating 
to a technical organization which is capable of use ill a unit 
of the national economy but which does not have the charac­
teristic of an invention or a utility model and which relates 
in particular to-
(a) machines, installations and products; 
(b) methods of production; and 
(c) methods of measurements and verification. 
84. (1) A rationalization model shall be cons<idered new 
jf it has not previously been submitted for registration by 
another person within the same unit of the national economy 
or if it has not been used in that unit. 
(2) A rationalization model may be based on thc invcn­
tion or aclapta,tion of a known solution to the needs of a unit 
of the national economy. Transfer and 
assignment of 
industrial 
de.signs. 
Interpretation 
of Part. 
Presumption of 
novelty, etc. Certifica te to 
author of 
rationalization 
proposal. 
Register of 
rat.ionalization 
models. 
Rilg1l!ts o:f Ith'e 
licensee. 
Rights of 
lice.nsor to 
grant further 
licences and 
to use the 
invention. IP IN Il/KEN /Ill 
Page 43 
(3) Rationalization models which cannot be used in­
dependently of each other shall be regarded as forming part 
of one model. 
(4) Where a rationalization model submitted to a unit 
of the national economy is the same as one which has 
previously been submitted to the same unit by another person 
bu t which was not accepted for use at the time, the person 
who made the earlier submission shall be conscidered the 
author. 
85. (1) A rationalization certificate shall be issued to the 
author or co-authors of a rationalization proposal which has 
been accepted for use. 
(2) The rationalization certificate shall be issued by the 
unit of the economy in which it -is applied and any such 
certificates -issued shall be reported ,to the Director for 
registration in the register of rationalization models. 
(3) \Vhere it has been established that the subjeot of a 
rationa.lization model is protected in Kenya, the rationaliza­
tion certificate shall be declared invalid at the request of the 
interested party. 
85. (1) The DiTecto'r shall maintain a register in which 
shClJl be recorded all rationalization certificates registered 
under section 85. 
(2) The register may be consulted by any person, and any 
person may obtain extracts therefrom under the conditions 
prescribed in 'the Regulations. 
PART XIII-CONTRACTUAL LICENCES 
87. (1) In {he absence of any provision to the contrary 
in the licence contract, the licensee shall be entitled to do any 
of the acts referred to in section 36 in respect of the invention, 
utility model and industrial design without limitation as to 
time, in the whole of Kenya and in any field of use of the 
invention, utility model or industrial design. 
(2) In the absence of any provision to the contrary in 
the licence contract, -the licensee may not grant permission 
to any third person to do any of the acts referred to in section 
36. 
88. (l) In the absence of any provision to the contrary 
in -the licence contract, the licensor may grant permission to 
any third person to do, and may himself do, any of the acts 
which constitute exercising rights of ownership. IP/N/l/KENlIll 
Page 44 
(2) If the licence contract provides that such contract 
or the permission granted by it is exclusive, and unless it is 
expressly provided otherwise in the licence contract, the 
licensor may neither grant permission to any third person to 
do any of the acts referred to in section 36 and covered by the 
licence contract, nor do himself' any of those acts, and the 
licensee shall be considered an exclusive licensee for the pur­
poses of this Act. 
89. Where, before the expiration of the licence contract, 
any of the following events occurs with respect to any appli­
cation or patent referred to in that contract-
(a) the application is withdrawn; 
(b) ,the application is fmally rejected; 
(c) the grant of a patent is finally refused; or 
(cl) the patent is finally dedared invaLid, 
the court may make 2,ny order it deems reasonable under the 
circumstances for the repayment of the royalties, or the return 
of any cons'ideration, paid or given under ,the contract, directly 
relating to any such appEcation or patent. 
90. All licence contracts shall be in writing and shall 
be signed by the parties thereto otherwise they shall not be 
valid. 
91. (1) All licence contracts, including modifications 
thereof, shall be submitted to the Director for registration in 
the patent register. 
(2) A petition for registration may be made by any party 
to the contract. 
(3) The petition shall be accompanied by the documents 
prescribed by the regulations. 
(4) The petition shall be subject to the payment of the 
prescribed fee. 
(5) The Director shall issue to the applicant a receipt, 
which shall be proof of the fact of filing the petition and of 
the date on which it was filed; if no receipt is issued within 
fourteen days from the date of the petition, the petitioner may 
rely on other evidence to prove the fact and date. 
(6) Where-
(a) section 25 or subsect,ions (2) to (4) of this section, and 
tl1e 'rules relahng thereto, have not been compl'ied 
with; or Effects of 
patent not 
being granteD 
or being 
invalidated, 
Form of 
licence 
contracts. 
Petition for 
registration. Pwhilbhed 
terms in 
licence 
contracts. IPINIlIKENIIIl 
Page 45 
(I)) the licence contract is unregistrable under section 92, 
tne Director shaH refuse to register the licence contraot, 
struting the reas'Ons for suoh refusal. 
(7) Before refusing to register the licence contract, the 
Director shaH notify the petitiorier and alJow the parties­
(a) to submit any observatiOns; 
(b) Ito 'Correc't :any defect in 1:be pe:tilr:ion; or 
(c) to amend any term, or to correct any defect, in the 
licence contract that has been declared by the 
Direotor to be a term or defect precluding registra­
tion, wiNlin forty-five days from tbe date of the 
notification. 
(8) A licence contract shall be void if -the registrat'ion 
has been refused by the Director in accordance with the pro­
visions of this Act. 
92. The Director may refuse to register a licence con­
tract if the effect of its terms 1S-
(a) to permit or require the importation of technology 
from abroad when su'bstantially s'imilar or equiva­
lent technology may be obtained on the same or 
more favourable conditions without importation 
from abfDad; 
(b) to require payment of a price, royalty or other con­
sideration which is disproportionate to the value of 
the teohnology to which the contract relates; 
(c) to requi're the llicensee to acquire any materials from 
-the licensor or from sources designated or approved 
by him, unless it is otherwise impossible, for aJI 
pract-ical purposes, to ensure -the reasonable quality 
of the produots to be produced; 
(cl) to prohibh the licensee from acquiring, or to restrict 
his acquisition of, any materials from any source, 
unless it ,is otherwise impossible, for aul practical 
purposes, to ensure the reasonable quality of the 
produot'S to be produced; 
(e) to prohihi,t the licensee from using, or to restrict his 
or her use of any mater,ja'ls which are not supplied 
·by the licensor or by sources designated or approved 
by him,· unless it is otherwise impossible, for all 
pracNoail purposes, to ensure 'the reasonable quality 
of 1he products ~o 'be produced; JP IN fllKEN fIll 
Page 46 
(f) to require the licensee :to sell products produced by 
him under the contract exclusively or pdncipally to 
persons designated by the licensor; 
.(g) to require the licensee to make available to the licensor 
without appropriate consideration any improvements 
made by the licensee with respect to the technology 
to which the contract relates; 
(11) to limit the volume of the products produced by the 
licensee with the he.lp of the technology to \vhich 
the contract relates; 
(i) to restrict or prohibi·t the export of the products pro­
duced by the licensee; 
(j) to require the licensee (0 employ persons designatecl 
by the licensor; 
(k) to impose restrict·ions on research or technological 
development carried out by the licensee to absorb 
or adapt the technology in conne.ction with new 
products, processes or equipment; 
(l) to prohibit or restrict the use by the licensee of any 
technology otber than the technology to which the 
contract relates; 
(111) to extend the coverage of the contract to technology 
not related to the lIse of ,the technology \vhkh is 
the main subject of the contract and to require con­
sidera;l:ion for such aclchlio'l1a'l coverage; 
(11) to fix prices for the sale or resale of the products 
produced by the licensee with the help of the tech­
nology to which the contract relates; 
(0) to exempt the licensor from any l-iabi:J.ity consequent 
upon any defect inherent in the technology to whic11 
the contract relates or restrict such liability; 
(p) to prohibit or to restrict the use by the l,icensee, after 
the expiration of the contract, of the technology 
acquired as a result of the contract, subject, how­
ever, to any right of the licensor under the patent; 
(q) to require that disputes arising from the interpretation 
or performance of the contract be governed by a 
law other than the law of Kenya or tha1. such dis­
putes be brought before courts located 1n a country 
other than Kenya; IPlNllIKENlIIl 
Page 47 
(r) to establish the duration of the contract for a period 
which is unreasonably long in relation to the econo­
mic function of 1he contract, provided that any 
period which does not exceed the duration of the 
patent to which the contract relates sha11 not be 
regarded as unreasonably long; 
(s) to require the hcensee to refra~in from challe.nging the 
validity of the technology claimed by the licensor 
in relation to 'legal protection, infringement suits, 
and third party claims; 
(t) to restrict the licensee from entering into sales, repre­
sentation or manufacturing agreements relating ,to 
simHar or competing technologies or products or to 
obtain competing teohnologies, when such restrictions 
are not needed for ensuring the achievement of 
'legitimate interest, particula~rly including securing 
the confidentiality of the technology transferred or 
best effort dishibution or promotional obligations; 
(u) to prevent the licensee from adapting the technology 
to local conditions or introducing innovations in ,it 
or change to alternative inputs, or which require 
the licensee to introduce unnecessary designs or 
specification changes, if ,the ~licensee makes adapta­
tions on his own responsibility and without using 
the licensor's name, trade or serv-ice marks or trade 
names, and except to the extent that this aciaption 
unsuitably affects those .products, or the process for 
their -manufaoture, to be supplied by the tlioensor, 
his designates, or his other licensees, or to be used 
as a component or spare part in a product to be 
supplied to his customer; 
(v) to impose acceptaJlcc of additional technology, future 
inventions and improvement's, goods or services not 
wanted by the Eoensee; 
()v) to -impose restFictions on terr,itories, quantities, prices, 
customers or markets arising out of patent pool or 
cross-licensirlg agreements or other ~nternat,ional 
technology t:ransfer interchange arrangements which 
unduly Jim,it a,ccess to new .fechnollogica:l develop­
ments or which would result ~n an abusing domina­
tion of an industry or market with adverse effects 
on the licensee, except ;for ,those restriotions appro­
pria:te and ancillary to co-operative arrangements 
such as co-operative research arrangements; lP/N/l/KEN/I/l 
Page 48 
(x) to impose restnctwns \vhich regulate advertising or 
publicity by the Ecensee except where restriction of 
such publicity may be required to prevent injury to 
the licensor's goodwill or reputation where the adver­
tising or publicity makes reference to the licensor's 
name, trade or service marks, tmde names or other 
identifying items; 
(y) to require payments or impose other obligations for 
continuing the use of industdal property rights which 
have been invalidated, cancelled or have expired 
recognizing that any other issue, including other pay­
ment obligations for technology, shall be dealt with 
by the appropf'iate applie&ble law and the terms of 
the agreement to the extent consistent with the 1aw; 
(z) to impose confidentiality after the expiry of the licence 
agreement or to impose unreasonably long period 
for secrecy following the commiss'ioning of manu­
facturing facilities using the licensed ,technology, or 
to impose measures which limit technological learning 
and mastery, except those which relate to industrial 
proper,ty rights; 
(aa) to impose requirements for payments even under con­
ditions of force majeure; 
(bb) to impose restrictions which prevent or hinder export 
by means of terr,itorial or quantitative limitations or 
prior approval for export or export prices of pro­
ducts or increased rates of payments for exportable 
products resulting from the technology licensed; 
(cc) to impose quality control methods or standards not 
needed or not wanted by the licensee, except to meet 
the requirement of a guarantee or when the product 
bears a trade mark, service mark or trade name of 
the licensor; 
(del) to require the licensee to provide equity capital or 
to allow the licensor to participate in the manage­
ment of the licensee's business as a condition for 
obtaining the technology; 
(ee) to restrict the licensee from taking measures that wiD 
enhance local technological capabihty and which are 
not prejudicial to the licensor's industrial property 
rights; 
(ff) to restrict the use of local expertise jn managemellt 
and consultancy and any other positions; Re gistra:tion 
of the contract 
llnd issue of 
ceTtiiica'te. IPlNlllKEN/I/l 
Page 49 
(gg) to require the payment of royalty for patents granted 
outside Kenya or whose owner is resident, domiciled 
or established abroad and which does not have the 
priority provided for -in a treaty ,to which Kenya is 
party; 
(hh) to apply dissimilar conditions to equivalent transac­
tions with other trading pa,rties, thereby placing the 
J;ice'l1'see all a compet,it'ive disadvantage; or 
(ii) to make the contract subject 'to acceptance of sup­
plementary obligations which, by their nature or 
according to commercial usage, have no connection 
with the sub3ect to 'Suoh contraots. 
93. (1) When the Director finds that the contract may 
be registered, he shaH register the contract and issue a certifi­
cate of ,registration to the petitioner. 
(2) If the Director fails-
(a) to notify the petitioner of defects in the petition or 
of terms or defects precluding registration of the 
'licence contraot, within ninety days of the date of 
the petition; or 
(b) to nofity the petitioner of his decision to refuse to 
'register the ,licence contract, within ninety days from 
the date of the notifications, 
the licence contract shall be deemed to have been 
registered and the Director shall issue a certificate of 
registration to the petitioner but if no certificate is issued 
within fourteen days from the expiration of the ninety 
days period, the petitioner may rely on other evidence. 
(3) The regis,trration shall take effect-
(a) if the petition was made within sixty days from the 
conclusion of the contract, on the date of the conclu­
sion of the contract; and 
(b) in all .other cases, on the clate of the petition. 
(4) When the petition is corrected or the licence contra,ct 
is amended the petition shall be deemed to have been made 
on the clate when the correction or amendment was made. 
(5) The registration of the certificate shall state-
(a) the name of the parties to the contract and of the 
licensee if he is not a party; IP/N/lIKEN/I11 
Page 50 
(b) the date of the petition; 
(c) the da,te of the registration; and 
(d) the registration number; 
all of which shall be published in the Gazette. 
94. An appeal against a decision of the Director may Remedies. 
be made to the Tribunal by the petitioner within two months 
of his refusal provided that the grounds of such an appeal 
shall be limited to the foNowing grouncls-
(a) that the elecis'ion of refusal contains no statement of 
the 'reasons for refusal; 
(b) that none of the rea.sons for refusal specified in the 
decision is a valid reason uncler this Act or was 
rightly applied to the pet'itioner or to the licence 
contract; or 
(e) that the procedure applied by the Director was irre­
gular and prejudicial to the rights of the petitioner. 
95. (1) At any time after four years from the filing date 
of an application or three years from the grant of a patent, 
whichever period last expires, or one year after the working 
of a pa'tent has been discontinued, any person may appJy for 
a licence to exploit the 'licence on any of the following 
arounds-o 
(a) that the patented invention, being capable of being 
worked in the country, has not been worked: 
(b) that the existing degree of working of the patented 
invention in the country does not meet on reasomvble 
terms the demand for the patented product on the 
domestic market or for the purposes of exportation; 
(c) that the working of the patented .jnvention in the 
country is being hindereel or prevented by the Im­
portation of the patented product; and 
(cl) that, by reason of the refusal of the owner of the 
patent to grant licences on reasonable terms, the 
esta:blishment or development of industrial or com­
mercial a.ctivities in the country, or the adequate 
export from the country under the right market 
c.oncii,tions, or environmental conservation cfTorts, 
are unfairly and substantially prejudiced; Compulsory 
licences for 
non-working 
and similar 
reasons. Compulsory 
licc:nces 
based upon 
inte.rdepede,nce 
of patents. 
Compulsory 
licences for 
produots 
and 
processes 
decla'red to 
be of vita1 
impoq-tance. IJ>~/IJl(J;~/I/l 
Page 51 
(e) that products from the patented invention are not 
being made available to the public at a reasonable 
pnce. 
(2) Where the patented invention ~s a process, "patented 
product" ,in subsection (1) mean'-s a product obtained directly 
by means of the process. 
(3) A compulsory licence shall not be granted in respect 
of a patent if the owner of the patent satisfies <the court that 
the patent has not been worked ·because of force majeure. 
96. (1) Where a patented invention cannot be worked 
without infringing rights derived from an earlier patent, the 
owner of the later patent may request the Tribunal at any 
time for the gra,nt of a compulsory licence wi,tll respect to 
the earlier patent to ,the extent necessary for the working of 
his invention if the invention-
(a) serves industrial purposes different from those served 
by the invention which ,is the subject of the earlier 
patent; or 
(b) constitutes substantial 'technical progress in relation 
to the last-mentioned invention. 
(2) If the two inventions mentioned in subsection (1) serve 
the same industria'l purposes, a compulsory licence may be 
granted under that subsection only on condition that a com­
pulsory :licence sha.I:l also be granted in respect of :the 'later 
patent to the owner of the eadier patent if he so requests. 
(3) In this section, "earlier patent" means a patent grant­
ed on an earlier application or benefiting from an earlier valid­
ly c1a'imed .priority date, and "later paltent" shall be construed 
accordingly. 
97. (1) The Minister may, by notice on the Gazette, 
direct that, for patented inventions concerning certain kinds 
of products, or processes for the manufacture of such products, 
declared in the direction to be of vita'l impor'tance for the 
defence or the economy of 1he country or for public health, 
or scientific (lnd technologica:l advancement, or for environ­
menta.l conservation compulsory licences may be granted. 
(2) Compulsory licences with respect :to any products or 
processes specified in the di'rection referred to ,in subsection 
(1) may be requesteel at any t.ime after the grant of ,the relevant 
patent. IPINIIIKENIJI1 
Page 52 
98. A compulsory licence shall not be granted unless 
the person requesting the licence-
(a) satisfies the Tribunal that he has asked the owner of 
the patent for a contractual licence but has been 
una:ble to obtain the licerice on rea-son; or 
(b) offers guarantees satisfactory to the Tribunal to work 
the relevant invention sufficiently to remedy the 
deficiencies (or to satisfy the requi'rements) which 
gave fi.se to his request. 
99. (1) In considering a request for a compulsory licence, 
the Tribunal shall decide whether a compulsory licence ma0' 
be granted and shaH then, if it decides in favour of the grant 
and taking into account any terms agreed by the parties pro­
ceed to fix the terms, which shall be deemed to constitute a 
valid contract between the parties and shaH be governed by 
the provisions of contractual licences. 
(2) In fixing the terms under subsection (1), the Tribunal 
shall ensure that the compulsory licence-
(a) entiHes the licensee to do any act mentioned in section 
36, except importation; 
(b) does not entitle the licensee to grant further licences, 
wi;thout the consent of the owner of the patent; 
(c) ,is non-exclusive; and 
(d) provides for the payment to the owner of the patent 
of remuneration which is equitable with due regard 
to all the circumstances of the case. 
100. A compulsory licence may be transferred only 
within the industrial undertaking in which the relevant inven­
tion is used, and no such transfer shall be valid untliJ the 
consent of the Tribuna:l has been obtained. 
101. (1) On the application of the owner of the patent, 
the Tribuna.l may cancel a compulsory licence if-
(a) the licensee fails to comply with the terms of the 
licence; or 
(b) the conditions which justified the grant of the licence 
have ceased to exist; 
so however that in the later case a reasonable time shall be 
given to the licensee to cease working the relevant invention 
if an immediate cessation would cause him to suffer substantial 
damage. Preconditions 
to grant of 
compu]S{)ry 
licences. 
Grant and 
terms of 
compuls-ory 
licences. 
Transfer of 
compulsory 
licences. 
Cancellation 
of compul­
sory licences. Registration 
of gra:nts, 
cancdlati:on 
or variMiDn. 
Licences 
of right. IP/N/lIKENIIIl 
Page 53 
(2) On the application of the owner of the patent or the 
licensee, the Tribunal may vary the terms of a compulsory 
licence if ncw facts justify the variation and in particular 
(without prejudice to the generality of the foregoing) if the 
patentee has granted contractual licences on morc favourable 
terms. 
102. Where the Tribunal grants, cancels or varies the 
terms of a compulsory licence, the Tribunal shall inform the 
Director, who shall register without fee in the register the 
grant, cancellation or variation. 
103. (1) The owner of a pa.tent may request the Director 
to make an entry in {he register to the effect that licences under 
the patent are to be availab:le as of right. 
(2) The 'request shall be not'ified by the Director to 1he 
licensees under the patent. 
(3) Any licensee may, within the prescribed time limit, 
object ,to t,he entry requested, on the ground that ,the owner 
of the patent is, by the relevant lice.nce contract, precluded 
from granting further licences. 
(4) \Vhere the Director receives no objection under sub­
section (3) or considers an objections made to be unfounded, 
he shaM make the requested entry in the register and shall 
publish the entry. 
(5) While a patent is the subject of an entry under this 
sect'ion, any person may require the owner of the patenC to 
grant him a non-exclusive licence under the patent on terms 
which, in ,the a'bsence of agreement between the pa'f,ties, sharll 
be fixed <by the Tribunal. 
(6) The amount of the annual fee.s with respect to a patent 
which is the subject of an entry under ,this section, falling due 
after the date of t11e entry, shall be reduced by half. 
(7) The owner of the patent may at any time -request the 
Di-rector to cancel an entry under this section; atIld the Dj'rector 
shall cancel the entry after payment of the balance of all 
annmlll fees which would have been payable if no entry had 
been made. 
(8) Section 101 shall apply mutatis 111lltandis where the 
terms of a licence granted under subsection (5) have been fixed 
by the court. IP/N/l/KEN/IIl 
Page 54 
PART XIII-ExPLOITATION OF THE PROTECTED INVENTION 
BY THE GOVERNMENT OR BY THIRD PERSONS AUTHOlUZED 
BY THE GOVERN.MENT 
104. (1) Where a vital public ,interest, in particular, nation­
al security, education, environmepta.l conservation, health or 
the development of vital sectors of the public economy re­
quires that one or more acts be performed with respect to 
protected invention, the Minister may decide that the protect­
ed invention shall, even in the absence of the authorizat.ion 
of the owner of the right, be exploited by a Government 
agency or by a third person designated by the Minister, 
subject to the payment of remuneration to the owner of the 
right. 
(2) The Minister shall take this decision after consultation 
with the Director and after a hearing ,to which the owner of 
the right and any licensee, in particular, shaH be invited. 
(3) Once the decision of the Mini'ster has been taken, 
the Di'rector shall fix the amount of ,the remuneration to be 
paid to the owner of the patent, such remuneration being 
eq uitable with due regard to 31111 the circumstances of the Cc'lse. 
(4) The owner of the pa,tent may apply to the court 
against the decision of the Director fixing the amount of remu­
neration; and the appeal shall not suspend the effects of the 
decision referred to in subsection 0). 
PART XIV-SURRENDER, INVALIDATION AND REVOCATION Explo'ftation of 
the protected 
inven'tion 
byl!he 
Government 
or by l!hird 
persons 
authorized 
by the 
Governmenl 
105. (1) A patent, utility model or industrial design may Surrender. 
be surrendered by its owner. 
(2) The surrender may be limited to one or more claims 
of the patent, utility model and industr,ial design. 
(3) The surrender shall promptly be recorded in the. 
register and published by the Director and ,the surrender sba-1I 
be effective only aiter it has been published. 
(4) If a lice.nce has been recorded in the register, sur­
render of the patent, utility model and industrial design shall 
only be registered upon the submission of a declaration by 
which the licensee consents to the surrender, unless the latter 
has expressly waived this right in the licence contract. 
106. (1) Any interested person may, in proceedings insti- Invalidation. 
tuted by him against the owner of a patent, utility model and 
industria'! design or in proceedings instituted a,gainst him by 
the owner, request the Tribunal to invalidate the patent, utility 
model or indust,riaI design. Effeots of 
invalidation. IP/N/lIKENlIIl 
Page 55 
(2) T'he T'rrihunal sflaJl inva1'idate the patent, utility model 
and industrial design on any of thc following grounds-
(a) that any of the conditions 'referred to in section 27 (2) 
were not fulfilled, that j::;-
(i) that the claimed invention is not pa,ten1able 
wi,thin the meaning of this Act; 
(ii) that the claimed invention is not excluded from 
protection; or 
(iii) that the description and the claims comply with 
the .requirements prescribed by sect·ion 18 (3) 
and (4) and Ithe rules pertaining ,thereto; or 
(b) tha.t the person Ito whom the patent was granted had 
no !right to the patent, utHity model and industrial 
design, provided ,that the patent has not been assign­
ed to the persons who has the right to the patent. 
(3) Where the provisions of subsection (2) apply only 
to some of ,the claims or some parts of a claim, those claims 
or parts of a claim shall be invalidated by the Tribunal. 
(4) The Tribunal may require the owner of the patent to 
submit the paotent for the purpose of examination, 'Publica,tions 
and other documents showing the prior :art which have been 
referred to eiolher cin 'connection wi,th an applli:cation for a pateht, 
uti:lity model, and industrial design or other title of protection 
filed, for the same or essentially the same invention, by the 
owner of the pa>tent, with any other national or regional 
industrial property office, or jn connection with any proceed­
ings .relating to the patent or other title or proteotion granted 
upon 'Such application. 
(5) Notice of the request referred to in subsection (1) 
shall be served on any licensee under the patent, utility modell 
and industrial design who shall be entitled to join in the pro­
ceedings in the absence of any provision to the contrary in tbe 
licence contract. 
(6) Where, before or during the proceedings, it is aIieged, 
or it appecvrs 10 the Tribunal, that the right to the patent be­
longs to a person who is not a party 10 the proceedings, notice 
of the request .referred to in subsection (1) shall be served on 
that person, who shall be ent.itled to join ~n ,the proceedings. 
107. (1) Any inva1idated patent or claim or part of a 
claim shall be rega·rded as null and void from the date of the 
grant of the patent. IPIN/l/KEN/IIl 
Page 56 
(2) As soon as ,the decision of the Tribunaol is no longer 
subject to appeal, the chairman of the Tpibunal shaH inform 
the Director who shall register it in the patent register and 
publish i,t as soon as possible. 
108. (1) A patent right shall obe revoked if it is not work- RC\·ocnl;on. 
ed within two years of being granted. 
(2) A patent right may be revoked where the title does 
not correspond to its real subject maHer. 
(3) A patent may be revoked if it does not conform to 
the provisions of disclosure. 
P ART XV-INFRINGEMENT 
109. Subject to sections 38, 39 (5), 95, 97 and 98, any 
act specified in section 36 and performed by a person other 
than the owner of the patent and without the authorization 
of the owner of the patent, in relation to a product or a pro­
cess fal'ling within the scope of a validly granted patent, shall 
const'i,tute an infringement of the patent. 
110. (1) On the request of the owner of the patent, utility 
model and industriall design, the Tr,ilbunal shall grant the 
following relief-
(a) an injunction to prevent infringement where infringe­
ment is imminent or to prohihit the continua,t,ion of 
the infringement, once infr,ingement has started; 
(b) damages; or 
(c) any other remedy provided for in law. 
(2) Infringements proceedings in relation to utilirty models 
shall be instituted by the Di'rector on behalf of the owner. 
111. (1) Subject to subsect'ion (2), any person showing 
a legitimate interest may request the Tribunal to declare 
that the performance of any specific act does not .infringe the 
patent and the owner of the patent and any 1icensee under the 
patent shall have the right to be defendant in the proceedings. 
(2) No declaration under subsection (1) shall be made­
(a) if the acts to which the request reilates are already the 
subject to infringement proceedings; or 
(b) <if the person making ,the request is unable to prove 
that he has previously demanded from the owner 
of the patent a written acknowledgment of the law-Acts 
constituting 
infringement. 
Relief. 
Dec1amtion 
of nOD­
infringemen t. Threat of 
infringement 
proceed ings. 
Crjminal 
proceedi ngs. 
Presumption 
'Of use of 
pMented 
process. 
Lega:l 
proceedings 
by licencee. 
Burden 
of praof. IP/N/lIKENlI/l 
Page 57 
fulness of the aots referred -to and that the owner of 
the patent has refused such demand or has fai·led to 
reply within reasona,ble time. 
112. (1) Any persol1 threatened with infringement pro­
ceedings who can prove ,that ,the' acts performed or -to be per­
formed by him do not constitute i'tlf~ingement of the pa·tent, 
utility model anclindustrial des'ign may request the court to 
grant an injunotion to prohibit such threats and to award 
damages for financial loss resulting from the threats. 
(2) The mere notifica,tion of the existence of a patent, 
utiLity model and industFial design shall not constitute a threat 
of infringement. 
113. (1) Any infringement of the patent shaH const·i-tute 
an offence. 
(2) Such an offence shall be punishable by a fine not less 
than ,ten thousand shiHings and not exceeding fifty thousand 
shillings or by imprisonment for a term not less than three 
years and not more than five years or.to both. 
114. If a patent relates to a process for the manufacture 
of a produot showing novel features, rhe produot sha'11, in the 
absence of the proof to the contrary be presumed to have 
been manufactured by that process. 
115. 0) Any exclus'ive licensee within the meaning of 
section 32 (2) may, by registered letter, request the owner of 
the patent to institute Jegal proceedings for a specific relief 
w~th respect to any infringemenit speoified by lihe licensee. 
(2) The !licensee may, if the owner of the patent refuses 
or fails -to institute the legal proceedings within three months 
from the request, after giving notice -to the owner of the patent, 
institute such proceedings in his own name; and the owner 
of the patent may join in the proceedings. 
(3) Even before the end of the three month period refer­
red to ~n subsection (2), the Tribunal may, on the request of 
the licensee, grant an appropriate injunotion to prevent in­
fringement or to prohibit its continuation, where the licensee 
shows that immediate act-ion ·is necessary to avoid substantia.! 
damage. 
116. The burden of proof in matters relating to ·in­
fringement of industr,ial property :fights shall lie with those 
who claim {heir rights have been ,inf.ninged and any proceedings 
using a reversal of the burden of proof shall be nllll and void 
under ·the provisions of this Act. IP/N/1/KENITlJ 
Page 58 
P ART XVII-INDUSTRIAL PROPERTY TRIBUNAL 
117. Where under this Act provision is made for appeals 
from the decisions of the Director, all such appea,ls shall be 
made to the Industrial Property Tribunatl in accordance with 
the prov:i'S'iorrs of this Part. 
118. (1) For the purposes of hearing and determining 
appeals in accordance with section]] 7 and of exercising the 
other powers conferred on it by this Act, there is hereby 
establ'ished an Industrial Property Tribunal whioh shall consist 
of chairman and four members a PPOli'll!ted by !the M1nislte:r. 
(2) The chairman of the Tribunal shaLl be a person who­
(a) has been a judge of the High Cour,t of Kenya; or 
(b) js and has been, for ITot Iess than seven years 
qualified and entitled to practise as an advoc(l.te. 
(3) The Tribunal shall sit at such times as it may appoint. 
(4) They shall be paid to the chairman and the members 
of the Tribunal such remuneration and aillowances as the 
Minister may determine with the approval of the Minister 
responsible for finance. 
(5) The Minister shall appoint a public officer to be secre­
tary to the Tribunal. 
119. (1) The Tribunal shall have power to make any 
order for the purpose of securing the attendance of any person, 
the discovery or production of any document, or the investi­
ga,tion or punishment for any contempt of court, which the 
court has power to make. 
(2) Upon any appeal to the Tribunal under this Part, the 
Tribunal may-
(a) confirm, set aside or vary the order or decision in 
quesrta1on; or 
(6) exercise any of the powers which could have been 
exercised by the Director in the proceedings in con­
nection with which the appeal is brought; or 
(c) make such orders as to costs as i{ may think fit. 
120. (1) Any pa,rty to proceedings before the Tribunal 
may a ppe.n 1 in accorci:mce wi:lh rules made under this Part 
from any order or decision of the Tribunal to the court. Appeals. 
Industrial 
properly 
tribunal. 
LiN. 45/1'991. 
Powers \ 
the tribu,,,,,-
Appeals to 
cOllrt. Assessors. 
Rules. 
Reference to 
the tribunal 
by the 
Director. 
Regulations. IPlNllIKEN/IIl 
Page 59 
(2) Upon the hearing of an appeal under this section, 
the court may-
(a) confirm, set aside or vary the order or decision in 
question; 
(b) remit the proceedings to the Tribunal with such in­
structions fO'r further consideration, report, proceed­
ings or evidence as the court may think fit to give; 
(c) exercise any of the powers which could have been 
exeroised by the Tribunall in proceedings in connec­
tion wi-th which the appeal is brought; or 
(d) make such order as it may think just as to -the costs 
of the appeal or of earlier proceedings in the matter 
before the Tribunal. 
121. The chairman of the Tribunal may appoint any 
person with special expert knowledge to act as an assessor 
in an advisory capacity in any case where i<t appears to the 
Tribunal that such knowledge is required for the proper 
determina,t-ion of the case. 
122. The Minister may make rules for regulating gene­
rally the practice and procedure of the Tribunal. 
123. (1) When any matter to be determined by the Direc­
tor under this Act appears to him to involve a point of law 
or to be of unusual importance or complexity, he may, after 
giving notice to the paT{ies ·refer the maNer to the Tribunal 
for a, general direction and sha:ll, thereafter in relation to such 
matter, act in accordance with the general direction of the 
Tribunal or any direction substituted thereafter on appeal to 
the court. 
(2) Wbere any matter has been referred to the Tribnnal 
in terms of subsection (1), the Director and the parties thereto 
shaH be entitled to be heard by the Tribunal before any deci­
sion is made in such matter and may appear or be represented 
by an advocate. 
P ART XIX-MISCELLANEOUS PROVISIONS 
124. The Minister may make regulatiDns presor.ibing 
anything which under -this Act is to be prescribed by the regu­
lations and generally for the better carrying out of the objects 
and purposes of this Act or to give force or effect to its pro­
visions or for its better administration. JP/NIlIKENIll 1 
Page 60 
125. The Patents Registration Act and the United King­
dom Industrial Designs Act (hereinafter referred to as the 
"former patent laws") are repealecl. 
126. (1) Where a patent l:as been registered in tile 
country uncler the former patent laws and the privileges and 
rights conferred by the registration were effective immediately 
before the commencement of this Act then-
(0) subject to the fol:lowing paragraphs, the patent shall 
be treated in Kenya as if it had been granted under 
this Act; 
(b) the patent shall expire as regards Kenya when those 
rights could have expired if this Act hacl not been 
enacted; 
(c) the patent may bt~ invalidated only where those pri­
vileges and rights could be declared as not having 
been acquired in the country if this Act had not 
'been enacted; 
(d) the certiflcate of registration, or a certiAed copy there­
of, shall be admissible as prima facie evidence of 
the date and the fact of registration: and 
(e) an action for infringement shall lie under this Act 
only if the alleged infringement occurred on or after 
the commencement of this Act, and in other case may 
be instituted :1I1d disposed of as if this Act had not 
ibeen enacted. 
(2) So f8,r as is necessary for the purposes of subsection 
0)' ,the register of paten1ts under 'the former pal tents laws 
shall be maintained as nearly as may be, and sihaN be 
regarded and dealt with, as if it were part of the register 
uncler this Act. 
(3) Section '-1-! shJll not appJy to licence contracts and 
ccmtracts assigning the right to a patent or assigning applica­
tions or patents. provided that the s::1id contracts vv'ere con­
cluded before the commencement of this Act and a re sub· 
mitted for registration under this Act. 
(4) Within t\',:elve months from :the commencement 'of this 
Act, the Artorney-GeneTal may, by mder, make any further 
tr2,nsitional or saving provisions (not inconsistent with thi~ 
section) which app·;::ar to him to be necessary or desirable. Ropeals. 
Cap. 508. 
Cap. 510. 
Transitional 
and saving 
provisions.