Legislative Implementation of Flexibilities - Kenya
| Title: | Section 34 (1) (b) and (5), 38, 41 (7) (b) and (d) and (8), 43 (5) (a), 44 (3) (b) and (8) and 103 (3) (f) and (g) of the Industrial Property Act No. 3 of 27/07/2001 |
| Field of IP: | Patents |
| Type of flexibility: | Disclosure related flexibilities |
| Summary table: |  |
Provisions of Law
Application
34.-(1) An application for a patent shall be filed with the Managing Director and shall contain
(b) a description;
(5) The description shall disclose the invention and at least one mode for carrying out the invention, in such full, clear, concise and exact terms as to enable any person having ordinary skills in the art to make use and to evaluate the invention and that description shall include any drawing and relevant deposits as in the case of micro-organisms and self-replicable material which are essential for the understanding of the invention.
Information Concerning Corresponding Foreign Applications and Grants
38.-(1) At the request of the Managing Director, the applicant shall furnish him with the date and number of any application for a patent or other title of protection filed by the applicant with a national industrial property office of another country or with a regional industrial property office (in this Act referred to as a "foreign application"), relating to the same invention as that claimed in the application filed with the Managing Director.
(2) The applicant shall, at the request of the Managing Director, furnish him with the following documents relating 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 application;
(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 application or refusing the grant requested in the foreign application.
(3) The applicant shall, at the request of the Managing Director, furnish him with a copy of any decision revoking or invalidating the patent or any other title of protection granted by the applicant on the basis of the foreign application.
(4) The applicant shall, at the request of the Managing Director, furnish him with copies of any communication received by the applicant 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).
(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 Managing Director or in the patent granted on the basis of that application.
(6) The applicant shall have the right to submit comments on the documents furnished under this section.
(7) The details of the requirements under this section shall be prescribed by the regulations.
Filing date and examination of application as to form, etc
Article 41
(7) The Managing Director shall cause an examination to be carried out as to whether there are any of the following defects with respect to the application:
(b)the description, the claims and, where applicable, the drawings do not comply with the physical requirements prescribed by the regulations;
(d) the applicant has not complied with a request of the Managing Director under section 38; or
(8) If the Managing Director finds any of the defects referred to under subsection (7), he shall invite the applicant to remedy such defects provided that any corrections made to the application 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 Managing Director.
International type search
Article 43
(5) If it is apparent from the report on the international-type search or from the declaration on the non-establishment of the report, that:
a) the description, the claims or, where applicable, the drawings do not comply, in whole or in part, with the prescribed requirements to such an extent that no meaningful search could be carried out; or (…)
the Managing Director shall reject the application 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.
Examination as to substance
Article 44
(3) Where a request is filed under subsection (2), the Managing Director shall cause an examination of the application to be made as to whether:
(b) the application complies with the requirements of subsections (5) and (6) of section 34.
(8) Where, despite any observation or amendment submitted by the applicant, the Managing Director finds that any of the conditions referred to in subsection (2) are not fulfilled, he shall refuse the grant of a patent and notify the applicant accordingly.
Revocation or invalidation
Article 103
(3) The Tribunal shall revoke or invalidate the registration of the patent or the utility model or industrial design on any of the following grounds:
(f) that the patent does not fully describe and ascertain the invention and the manner in which it is to be performed;
(g) that the patent does not disclose the best method of performing the invention known to the owner of the patent at the time when the specification was lodged at the Institute;