INTRODUCTION

This brief paper attempt to outline what tools and options a Kenyan inventor may have if he/ she wishes to access patent information available in the country and in other countries around the world. I have given a brief background information of the patent system in Kenya. I hope that with this background the reader can compare and contrast patent system in Kenya with any other that the reader may be familiar with.

I have covered, in brief, the sources of information available, the storage format, options available for a Kenyan inventor and a comparative analysis of the search tools available in Kenya and those available in the United States. I have had a chance to use all the sources I have mentioned in this brief. Admittedly, I am not an expert searching, but I do believe that this brief is as objective as it can possibly be.

BACKGROUND

Administration of the patent law in Kenya is under the Kenya Industrial Property Office (hereinafter KIPO), a government department in the Ministry of Research Technical Training and Technology. The Office was established by Industrial Property Act, Chapter 509 (hereinafter CAP 509) of the Laws of Kenya, which was enacted in 1989, and came into force in 1990.

Prior to establishment of KIPO, Kenya, had a patent system that was dependent on the United Kingdoms patent system, owing to the fact that Kenya was a colony of Britain. Under that system, a patentee having protection in UK could apply for automatic registration of the patent in Kenya. The first patent to be registered in Kenya under the UK system was registered in 1914. Between 1914 and 1989, a total of 3920 patents were registered.

After the enactment of CAP 509, applications for patents are either filed directly to KIPO or through the African Regional Industrial Property Organization (hereinafter ARIPO) or as Patent Cooperation Treaty (PCT) application designating or electing Kenya. Kenya became a member of the PCT in 1994. Kenya is also a member of other conventions and treaties on intellectual property namely The Paris Convention, the Trade Related Aspects of Intellectual Property Rights (TRIPS) under World Trade Organization (WTO), World Intellectual Property Organization (WIPO) among others.

In addition to administering CAP 509, KIPO also administers the Trade Marks Act, Chapter 506 of the Laws of Kenya.

From this brief background information, it is clear that KIPO is a fairly new patent office, employing a modest number of technical and legal personnel. In this paper, I attempt to compare and contrast the research tools available in Kenya for a Kenyan Inventor with those available in the United States, a task that is every bit like comparing David and Goliath.

SOURCES OF TECHNICAL INFORMATION: .

Like many other patent offices around the world, the bulk of technical information in KIPO is from the patent documents; applications or granted patents. (I use the word ‘bulk’ in a somewhat conservative sense to refer to the constitution of the patent documents as a percentage of the Technical Information available in KIPO.)

Applications for patents are filed in KIPO are filed through four routes.

1. PCT application designating or electing Kenya.
2. Foreign application not filed under the PCT but otherwise an earlier priority under the Paris Convention.
3. Regional application, ARIPO application, designating Kenya.
4. Application filed directly in KIPO (otherwise referred to as the Local Applications.)

The patent applications filed through the PCT route have a search report (for applications filed under Chapter I) and a preliminary examination report (for applications filed under Chapter II). For these applications, patentability is determined on the basis of the International Search Report and the cited documents without the need to duplicate the search. For the foreign applications filed outside the PCT but claiming priority under the Paris Convention the Office may rely on the search done in the country of priority or may require that an independent search be done. Section 26 of Cap 509 provides that the Director of KIPO "may require that any application found in order as to form be the subject of International type search".

For the patents filed through the ARIPO route, the situation is slightly different. An applicant may file one application with the patent office of any of the member states, and designate any number of member states. The designated states are notified and a copy of the application is forwarded, but the applications searched and examined centrally, in Harare Zimbabwe. If the invention is patentable, designated member states are notified. A member state has up to six months to review the application and decision as to whether the invention will be protected in its territory. Thus for the ARIPO applications designating Kenya, the search and examination is done at the ARIPO headquarters.

A Kenyan inventor ( I am assuming an individual inventor) is unlikely to initially file his/her patent application as a PCT application or as an ARIPO application. A first filing with KIPO is desirable for 2 major reasons. First it is more desirable from an economic point of view especially if the inventor does not wish to file in a foreign country. Second, it secures the inventor a priority date plus 12 months within which to make the crucial decision of whether to file subsequent foreign applications.

While decision to grant or not to grant a patent is a determination ultimately made by the Office after examination of the application, an inventor can save time and money if he/she could get appraised of state of the art of the technical field to which his invention pertains. He she would be interested in knowing whether the invention is patentable in light of what is already publicly available; whether activities in which he/she is engaged constitute infringement of a valid patent; who has what technology, where; etc. The question then becomes: What options does the Kenyan Inventor have? In order to answer this question, it is important to first outline the documentation available in KIPO and its scope and coverage.

DOCUMENTATION

As stated above, patents and patent applications constitute most of the documentation available in KIPO. In 1996, the Office established Patent Information and Documentation Centre. One of the main objectives of the Centre is to provide access to technological information contained in patent documents in a manner suited to the needs of the users and to promote awareness of the role of patent documents in national development. The Patent Information and Documentation Centre also establishes links with scientific and research institutes, education institutions, industries, Government departments, the informal sector, (Jua Kali), and the public in general.

The PIDC has the following documentation which is available for search by the public. : (as of February 15 1998)

1. Full Text Kenya Patents granted since enactment of CAP 509. (the current patent law). This includes patents granted under the repealed UK patent system law which are still in force.
2. Full Text Kenyan Patents which have been abandoned or which have expired.
3. Bibliographic Data including abstracts of all African Regional Industrial Property Organization: ARIPO Patents. (includes patents filed with ARIPO which designate Kenya)
4. Full Text African Intellectual Property Organization: OAPI ( the organization is comprised of French Speaking African Nations)
5. Bibliographic data of European Patent Office, EPO, and Patent Cooperation Treaty PCT applications.
6. Full text PCT applications since 1978.
7. Full text United States applications since 1994.
8. Selected Bibliographic information from US patens issued form 1969 to present.
9. Japanese Patent Abstracts.
10. Korean Patent Abstracts.
11. JOPAL: Journal of Patent Literature.

In addition the PIDC also has the following trademark documentation:

1. Bibliographic information of the Federally registered US marks.
2. Bibliographic information of the marks pending in the USPTO.
3. USPTO Recordation of trademarks assignment

STORAGE FORMAT

With and exception of the Kenya and the ARIPO patents, all the other information is in CD-ROM format. The CD-ROMS are updated regularly. The Kenya Patents and the ARIPO patents designating Kenya are filed in paper form. The full text version of these patents is available in this format and a full text search can only be done manually. However, bibliographic information including the abstracts and the titles of the invention can be searched by computer. The data is entered into the computer using CDS-ISIS.

CDS-ISIS is an information storage and retrieval software developed by the United Nations Education Scientific and Cultural Organization, UNESCO.

The major features of the CDS/ISIS software are:

1. The handling of variable length records, fields and sub fields, thus saving disk space and taking it possible to store greater amounts of information;

2. Data base definition component allowing the user to define the data to be processed for a particular application;
3. Data entry component for entering and modifying data through user-created data base specific worksheets;
4. An information retrieval component using a powerful search language providing for field-level and proximity search operators, in addition to the traditional and/or/not operators, as well as free-text searching;

5. A powerful sort and report generation facility allowing the user to easily create any desired printed products, such as catalogues, indexes, directories, etc.;
6. A data interchange function based on the ISO 2709 international standard used by leading data base producers;
7. An integrated application programming language (CDS/ISIS Pascal), allowing the user to tailor the software to specific needs;
8. Functions allowing the user to build pseudo-relational data bases.

The software comes in 3 versions: MS-DOS version, UNIX version and the Windows Version. The PIDC uses the MS-DOS version of the software.

OPTIONS FOR AN INVENTOR.

From the aforementioned, it will appreciated that whereas the information available at the PIDC falls short of the extent of coverage necessary for carrying out a novelty search, it is sufficient in appraising the inventor of the state of the art in a particular technology. The PCT applications give the inventor access to information on technologies for which a world wide protection is sought. In this way, the inventor sought of gets the feel of what is the ‘cutting’ technology, whether it is worthwhile to invest time and money in developing a particular technology etc.

Before filing a patent application in KIPO, an inventor may opt to have a search done determine the state of the art. The search will normally be carried out on all or some of the above listed documentation, depending on the inventor’s request. For example, if the inventor wishes to find out whether an invention similar to his is protected in Kenya, the search will be confined to the Kenya Patents (i.e. applications for which were filed directly with the office), the PCT applications designating Kenya and the ARIPO patents in which Kenya is a designated state. If the Inventor wishes to know the state of the art, then all the documentation will be searched.

If a patent application has been filed, a novelty search may be done by ARIPO in Harare, Zimbabwe. The inventor files the application in the office which in turn transmits the application to ARIPO. In other cases the inventor may wish to file a PCT application. The inventor will have the option of appointing any of five International Searching Authorities, ISA designated by the Office to carry out the novelty search. The five ISA’s are: The Swedish Patent Office, The European Patent Office, The Chinese Patent Office, The Australian Patent Office. An inventor may request that his/her application be subject to the International - type search even it is not a PCT application. The ISA will carry out the search and forward the search report to KIPO including copies of the prior art deemed relevant. From this prior art the Office makes a patentability determination.

COMPARATIVE ANALYSIS.

1. Patent information in Kenya is only available in KIPO. This is unlike the case in the US where there are many private vendors in addition to the USPTO and the Patent and Trademarks Depository Libraries. An inventor in the US can choose the data provider or vendor based on cost, reliability, extent of coverage, accuracy of the information, flexibility of the software (especially for the on-line databases providers) etc.

 Scope and Extent of Coverage

2. The scope of coverage of information in PIDC is not extensive to provide for determination of patentability of the invention. It is not disputed that even best of the patent searchers may not uncover all the prior art in a particular art owing to the impossibility of documenting every invention around the world. Patent Offices which carry out novelty searches often have technical information documentation from various countries going to decades of years. This information is not limited to patent documents, but to any other technical printed publication. The PCT lays down the minimum documentation that an office should have in order to be considered an International Searching Authority. The documentation available in the PIDC falls short of the requirements.

Format and Delivery tools

3. The documentation in PIDC is available in paper form, computer and CD-ROM. A person requesting for search would have to go to the office in person, or send the request by mail. The search result is mailed to the requester in paper form. This is unlike in the US where, in addition to paper and CD-ROM, vendors like Questel-Orbit®,, Dialog®,, WestLaw®, Lexis-Nexis ®, etc. provide the information on-line. Additionally, there are internet database providers like the IBM®, patent server, Dialog®,, etc. A searcher utilizing on-line or internet services is able to get the search results in a matter of minutes.

Flexibility of Software

4. Though it is possible to search CDS-ISIS using descriptive search terms, connectors, and by restricting the search to a particular field, the software does not provide the ‘building blocks’ approach where separate and discrete sets can be designed and combined. Dialog and Questel-Orbit®, do provide such flexibility. However, WestLaw®, and Lexis-Nexis®, databases do not and they cannot be said to be better in this regard.

UPDATING AND ACCURACY

5. The data in PIDC is entered manually by typing the bibliographic information including the abstract directly from the patent application or patent. In some instances, the abstract is carefully edited to give the best synopsis possible (where the abstract maybe long and unclear). Entering the information manually is a more accurate approach as opposed to scanning the information as in the latter some optical characters may be lost. The Office approach is to update the database on a rolling basis. If a patent on a particular application is granted, the information on that application is updated; i.e. the patent number, the date of grant, etc. For the application filed through the PCT and the EP application, the updated CD-ROMS are sent to the KIPO every 2 weeks (i.e. the full text). These are received in the Office in 2 to 3 weeks the delay being caused by the time taken in shipping. I would say that the database in PIDC is fairly current. Needless to say on-line databases are far more current and the information is available to a searcher in a shorter period of time.

CONCLUSION

Since its inception in 1990, the Kenya Industrial Property Office has grown steadily and has made great strides in promoting Intellectual Property awareness among people of the Republic of Kenya. In so doing, the Office has endeavored to provide the public with access to patent information and other technological information from other countries around the world. As stated at the beginning of this paper, the information in the Office might appear to be modest in comparison with other industrialized countries. Nevertheless, it does give an inventor an idea of what is the latest technology in the field of his/her endeavor, at a cost that is unbelievably affordable.

ACKNOWLEDGEMENT

I would like to acknowledge the following people who in one way or another provided information that went into putting is brief together:

Evan Misati: Kenya Industrial Property Office.

David Njuguna: Kenya Industrial Property Office (for the countless hours you’ve spent in front of the work stations).

John Maina Kenya Industrial Property Office. (for the promptness in sending me the information)

Information about the features of the CDS-ISIS was downloaded right out of the UNESCO web site.