Patent Subject Matter Eligibility in Kenya: Forthcoming Research from CIPIT

On 9th February 1994, Kenya Industrial Property Office (now known as Kenya Industrial Property Institute – KIPI) granted the first Kenyan patent for a protein derived from tick larvae suitable for the protection of grazing cattle from ticks. This patent was granted with claims to a method for treating animals, despite an express statutory exclusion from patentability of such inventions.

In 2001, Kenya passed Industrial Property Act in order to comply with its various international treaty obligations, notably TRIPS. The Act authorises KIPI to maintain a corps of examiners with the scientific and legal expertise necessary for carrying out substantive examination of patent applications. Today, KIPI is one of the most active patent offices on the continent, and also one of the only national offices to carry out substantive (as opposed to formalities) examination of patent applications.  Section 22 of the Act provides substantive requirements for patentability: novelty, inventive step, and industry applicability. In addition to these requirements, Sections 21(3) and 26(a) and (b) of the Act contain two types of subject matter categories that are ineligible for patent protection. The first type of patent subject matter ineligibility relates to creations that are deemed not to be inventions.The second type of patent subject matter ineligibility relates to inventions that are deemed non-patentable. These are plant varieties and inventions contrary to public order or the like.
The patent system is built on a trade-off whereby, in exchange for a limited monopoly over a fixed period, an inventor discloses the knowledge embodied in an invention to the State in trust for the public. Key to this assumption is that society has a system in place in which experts in the respective fields to which the inventions pertain have the capacity to evaluate the merits of the claimed inventions in terms of statutory requirements, including subject matter eligibility. By limiting subject matter eligibility within the patent statutes, societal burdens stemming from grants of patent rights are minimized in targeted areas. This trade-off implicitly assumes the availability of granted patents tabulated in a substantive database of eligible patent subject matter. Deviations from such expectations risk the patent system becoming a rip-off rather than a trade-off.
Proceeding from this initial premise, our on-going research examines the origins of the subject matter categories excluded from patent protection from the 1624 Statute of Monopolies to the present day. Using Kenya as a case study, this research is intended to offer a preliminary review of patent data showing the number of patents having claims directed to subject matter excluded from patent protection in the operative law. It is hoped that this research will be of use to other African countries wishing to strengthen the value and effectiveness of their respective patent systems in the public interest.

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