Even though the Court of Appeal, in Sanitam Services (E.A.) Ltd v Rentokil Kenya Ltd & another  eKLR (posted here), acknowledged the complexity of adjudicating intellectual Property disputes, the present case takes the meaning of the word "complex" a notch higher. Apart from his tirade generally directed at what he perceived to be shortcomings of the repealed Industrial Property Act, one cannot fail to observe how his Honour meticulously scrutinizes the abstract and decisively concludes that the invention is not novel.
The case is reproduced here in full.
REPUBLIC OF KENYA
IN THE HIGH COURT OF KENYA AT NAIROBI
MILIMANI COMMERCIAL COURTS
CIVIL CASE NO. 1898 OF 2000
SANITAM SERVICES (E.A) LIMITED………………….PLAINTIFF
ANIPEST KENYA LIMITED AND ANOTHER………….DEFENDANTS
It is not surprising either that African countries have sought to exert their own authority over patents but that only comparatively recently. It is a complicated area both legally and scientifically so it is hardly surprising that we have a few hiccups as will be seen from what follows:
I start with Kenya Industrial Property Act (CAP 509) which came into force on 2nd February 1990.
That contains in section 2 some definitions relevant to this case, although other definitions crop up haphazardly in the legislation as the draftsman needed them.
“ARIPO” means the African Regional Industrial Property Organization.
“ARIPO Protocol” means the protocol on patents and industrial designs adopted at Harare in December 1994.
“invention” means a new and useful art (whether producing a physical effect or not), process, machine, manufacture or composition of matter which is not obvious, or any new and useful improvements thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged inventions;
“Tribunal” means the industrial Property Tribunal established under section 118;
“utility model” means any form, configurations or disposition of elements of some appliance, utensil, tool, electrical and electronic circuitry, instrument, handicraft mechanism of other object or any part of the same allowing a better or different functioning, use, or manufacture of the same subject matter or that gives some utility, advantage, 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 effect.
It hardly helps understand the legislation that section 6(1) alters the definition of “invention” for the purposes of part III patentability.
“6(1) for the purpose of this part, “invention means a solution to a specific problem in the field of technology”. Does this mean that the solution no longer has to be new? The solution to that is in Section 7.
“7. An invention is patentable if it is new, involves an inventive step and is industrially applicable”.
Section 9 explains “inventive step” thus:-
“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 filing of application or, if priority is claimed, on the priority date validly claimed in respect thereof.”
Section 10 explains “industrially applicable”
“10. An invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry, including agriculture, fishery and services.”
It comes as no surprise to find that “new” does not mean new at all. In Section 8(1) “an invention is new if it is not anticipated by prior art; “prior art” is explained thus in Section 8(2).
“8. (2) For the purpose of this Act, everything made available to the public by means of written disclosure (including drawings and other illustrations) or by oral disclosure, use, exhibition or other non-written means shall be considered prior art provided that such making available occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof.”
Part VI deals with international applications and in Section 32 states:
“32 (1) The Office shall act as a receiving office where an international application is filed with it and the applicant is a national or resident of Kenya.
(2) The office shall act as a designated office in the case of any international application 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 Cat unless the Director communicates 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 shall have no effect in Kenya.”
Section 32(3) is relevant to a decision in this case.
The rights of an owner of a patent are set out in section 36 which states:
“36. The owner of the patent shall have the right to preclude any person from exploiting the protected invention by any of the following acts-
a) when the patent has been granted in respect of a product -
(i) making, importing, offering for sale, selling and using the product; or
(ii) stocking such product for the purposes of offering it for sale, selling or using the product;
(b) when the patent has been granted in respect of a process -
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a), in respect of a product
obtained directly by means of the process.”
Under Section 39(1) the life of a patent is seven years from the date for the application extendable upon application for two periods of five years making 7+5+5=17 years.
The Act goes [on] to provide for “utility models” and for “industrial designs”- the latter defined in Section 72(1).
“72 (1) For the purposes of this Act, “an Industrial design” means any composition of lines or colours or any three dimensional form whether or nor associated with lines or colours, provided that such composition or form fives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft.”
I have been unable to find what protection the registration of a utility model confers on the holder: the registered owner of an industrial design does get protection under Section 73(1) for 5 years plus 2 plus 2-total nine years.
Of course throughout the legislation there are decisions to be taken by the Kenya Industrial Property Office established under Section 3(1) but some of its decisions are appealable to the Tribunal.
No Tribunal has yet been appointed so the proper functioning of KIPO to that extent is stillborn 10 years after the Act became law.
So that is some, but by no means all of the legislative background. Suffice it to say it was a brave attempt but it needs fresh scrutiny to make sense of some of it.
What are the facts. I start with what is before me which is an application by the plaintiff for an injunction under order 39 Rules 1 & 2 to restrain the defendants their servants or agents from:
-Trading in production of
Dealing in any way
Passing-off was not addressed in argument and was not pressed.
It is worth while referring back at this point to the protection granted a patent by Section 36.
What is given is the right to prevent any other person from
-offering for sale
I will return to this later. What patents does the plaintiff claim: He claims:
1. ARIPO patent registration certificate AP 773 dated 15th October 1999 having effect in 5 African countries including Kenya. Application No. 19980904 for Foot Operated Sanitary/Litter Bin but no priority date filled in.
Furthermore while then certificate does refer to Rule 20(3) of the ARIPO Regulations it is unclear for me who promulgated those and I have not seen all of them: what I have stops at Rule 18.
In terms of Section 32(3) the ARIPO patent has effect as if it were a patent registered in Kenya unless KIPO otherwise directs under Section 32(3). The abstract attached to the certificate reads as follows:
“A foot operated litter/sanitary disposal bin comprising a container (1) closeable by a cover (2), with a disposal lid (3) at the top, with the disposal lid being displaceable, by a foot operated pedal (4) and a lift level (5), to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container (1), waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
The claims and drawings are exhibited as are some photographs. I numbered the reverse of the photos 1-18: Nos 1-5 are of the bins in question. Nos 6, 7 & 8 are the bins in question hired out by the 1st defendant and Nos. 9-18 are other foot operated bins.
In addition the Plaintiff made an application to KIPO on 14th September,1997 and has an application number KE/AP/P797/00218. He exhibited a letter dated 7th November 1997 which includes the odd paragraph.
“Meanwhile you can go ahead and work the invention as it is assumed the invention is patentable until this office informs you otherwise after substantive examination”.
I have referred to Section 25 which sets out what the Director of KIPO does on receipt of an application. There is no basis in that section for the “assumption” that the invention is patentable as stated in the letter of 7th November 1997.
It is all very well having ARIPO as some sort of supra national authority but unless the domestic laws of participating countries mirror the international ones-which were not put before me- you have all the ingredients for catastrophic legal muddles. For example it is very unclear what would happen in this case if KIPO rejected a prospective patent which ARIPO had already registered: presumably KIPO would notify ARIPO under Section 32(3) that the ARIPO patent had no validity in Kenya.
Assuming as I do, that the ARIPO rules of patentability are the same as or very similar to those of Kenya, I return to the abstract to see what it tells me particularly about novelty.
“A foot operated litter/sanitary disposal bin comprising a container (1)[”:] nothing novel there;
“closeable by a cover (2)”: nothing novel there either: a disposal lid(3)”-still nothing novel:
“at the top, with the disposal lid being displaceable by a foot operated pedal (4)”: still nothing novel:
“and a lift lever (5)…” nothing novel,
“to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container, waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
I only have to look at this matter prima facie. Are all these attributes prima facie novel. Prima facie they seem to be to me on evidence many many years old: certainly they do not seem to me to be prima facie novel-which is all I have to consider.
There is one other point to consider. The 1st Defendant hires out bins to others who use them. It does not prima facie seem to me that it comes within the protection afforded by Section 36. That section may be inadequate but so is much of the Act.
The 2nd Defendant designed his own bin; applied on 18th August 1999 for it to be registered as an industrial design.
Registration was effected under Certificate No. 136 on 18th November 1999. The Act confers protection on a regisreed industrial design, but fails to specify what happens if the same object is the subject of a patent and an industrial design at the same time by different people. Priority appears to be accorded by date of application-in respect of Kenya applications: the ARIPO situation was not addressed.
I doubt that the plaintiff has a prima facie case and I doubt that it has probability of success. Further I consider that damages would be an adequate remedy. If it came to balance of convenience, I would consider that balance favoured the status quo. In the meantime perhaps the Government of Kenya can set up ‘the Tribunal”. ARIPO can reconsider sensibly what is “new” and the Plaintiff can re-assess whether the lid-the only part of the invention that just might be new would qualify as an “industrial design” or a “utility model”.
This application is dismissed with costs.
Dated at Nairobi this 16th day of March, 2001.
Kenya Industrial Property Act (CAP 509)
Central Kenya Limited vs. Tryst Bank Limited CA 215/1996.
Mohammed and Another vs. Haidara 1972 EA 166.
Brooke Bond vs. Chai Ltd 1971 EA 10
Giella vs. Cassman Brown 1973 EA 358.
Terrell: Law of Patents 14th Edition.
Beecham Group vs. International Products 1968 EA 398.