By Raphael Ng’etich*

Expert determination is a form of alternative dispute resolution mechanism in which the parties agree to submit the dispute to an expert who makes a determination on it. The determination is normally binding but the parties can agree otherwise.
The main features of expert determination include: consensual – it works on agreement by the parties; expert selection – the parties choose the expert with the skills relevant to the subject matter at hand; confidential – the proceedings and the findings cannot be disclosed except on agreement by the parties or for the purpose of legal proceedings; and flexible – the parties together with the expert can determine the venue and time of the proceedings and there is therefore the benefit of an informal and expeditious process.

Expert determination is most suited for patent disputes since they are of a technical nature. Patents require scientific knowledge in their formulation. The lack of proper expertise in patent drafting is severely limiting the ability of the Kenya Patent Office in granting applications and consequently the investors are not able exploit intellectual property opportunities. He urges that it is necessary to build expertise in this area so that these opportunities are not lost.
Expert determination is therefore necessary to appropriately address any disputes arising for example, in the valuation of a patented asset, the establishment of royalty rates or the interpretation of the patent claims.
Application of expert determination in patent dispute resolution will ensure an expedient and appropriate resolution of disputes. The core issues underpinning the dispute are addressed since the person making the determination has a better understanding in the subject matter and is able to give the parties an appropriate finding.
Expert determination takes a shorter duration. The parties give their accounts and the expert inspects the subject matter and gives the parties a finding. The parties do not have to wait for longer durations which could be detrimental to their business activities.
Expert determination will also help preserve the relationship between the parties. The parties could be business partners who have different opinions as to the patent they deal with. Selecting expert determination over tribunal or court proceedings will help preserve the relationship between them. This is because expert determination is consensual in nature – the parties are not compelled to participate as in the other processes. Furthermore, the parties have the opportunity of choosing the expert who will determine the matter.
The parties have some control over the dispute resolution process as opposed to a tribunal or court proceedings which are run by the state. The parties have the opportunity to choose the expert they would like to determine their dispute. They further have the option of deciding whether the proceedings and the findings should be binding or not.
These features will ensure that the parties to a patent dispute are able to get an expedient and most appropriate process for resolving their dispute.
The current patent dispute resolution process is conducted by the court and the Industrial Property Tribunal. The Tribunal is specifically set to hear and determine intellectual property disputes in the country. It is established under Section 113 of the Industrial Property Act of 2001. Its membership consists of a chairperson and four individuals appointed by the cabinet secretary in charge of Industrialization and Enterprise Development.
The Tribunal was set up with the intention of resolving disputes in an expedient manner in order to encourage the IP right holders to enforce them. However, this objective has not been realized. The Tribunal works in the same manner as a court. It applies rules and procedures which have the ability to impede access to justice. The functioning of the Tribunal is further affected by the lack of continuity in the membership. The Tribunal has not been sitting due to the fact that the chairperson’s term ended and the cabinet secretary is yet to make an appointment. This is detrimental to IP rights holders.
An adoption of expert determination in Kenya can offer a better forum for IP rights holder to resolve their disputes. Internationally, the World Intellectual Property Organization (WIPO) has developed The WIPO Expert Determination Rules for the general guidance of the process. The rules outline the general steps in the process as follows: request for expert determination by the parties; response by the expert; appointment of the expert; inspection of the subject matter by expert; meeting with the parties; and giving of the determination. The WIPO Arbitration and Mediation Center offers alternative dispute resolution mechanisms including expert determination. These rules and practices can guide the development of a framework that is relevant and appropriate to the Kenya situation.
The application of expert determination can therefore enhance the realization of the access to justice provision contained in Article 48 of the Constitution of Kenya 2010 in resolving patent disputes. The technical nature of patents is able to be dispensed with in a shorter duration while addressing the core issues of the dispute.
**Stephanie Wanga is a Bachelor of Laws (LL.B.) student at Strathmore Law School.