Since patent decisions are relatively infrequent in Africa, we at the BRIC Wall have decided to report when new decisions are issued.  Specifically, near the end of 2013, the Industrial Property Tribunal (Tribunal) in Kenya decided Chemserve Cleaning Services Limited(Chemserve; the Requester) v. Sanitam Services (East Africa) Limited(Sanitam; the Respondent).  This case involved Sanitam’s ARIPO (AP) Patent No. 773 claiming a foot operated sanitary bin registered on October 15, 1999.  Chemserve learned of the patent in August 2006 (when it received a letter from Sanitam’s lawyers alleging infringement); however, it waited until April 2008 to file a request for revocation.  Specifically, Chemserve alleged that the patent was invalid because the claimed products:

1.  Lacked novelty and inventive step; and

2.  Existed in the marketplace before the filing date of the patent thus forming part of the prior art.

The only evidence submitted by Chemserve in support of its request was an affidavit and statement by the company’s General Manager in which he averred that:

“Company had been importing the said litter/sanitary disposal binds before the patent was granted by ARIPO and I am advised by my advocates on record and which information I verily believe to be true that under s. 23(2) of the Industrial Property Act, 2001, everything made available to the public anywhere in the world 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.

 By virtue of the Company’s having been importing the said litter/sanitary disposal bin that constituted prior art and Patent No. AP 777 was wrongly granted to Sanitam Services (EA) Limited’s alleged invention.”

In response, Sanitam argued:

1.  The request for revocation was not timely filed pursuant to Section 103 of The Industrial Property Act, 2001 (Act); and

2.  The unique foot operated system patented under AP Patent No. 773 was new, possessed inventive step and did not form part of the prior art.

Revocation under Section 103 of the Act

In Kenya, revocation of a patent is governed by Section 103 of the Act.  Specifically, section 103 provides:

(1)  Any interested party may in the proceedings instituted by him against the owner of a patent, or a registered utility model or industrial design or in proceedings instituted against him by the owner, request the Tribunal to revoke or invalidate the patent, utility model or industrial design registration.

(2)  An interested party may within a period of 9 months from the date of publication of the grant of a patent, utility model or industrial design request the Tribunal to revoke or invalidate the patent, utility model or industrial design registration.

Chemserve argued that the request for revocation was timely filed because the patent was registered under the Industrial Property Act of 1989 which did not provide for publication of the grant of a patent.  Thereupon, it argued that the “time bar” of 9 months as recited in Section 103(2) did not apply.  The Tribunal disagreed.

In its analysis, the Tribunal recognized that Section 103(1) provided no time limit as to when a request for revocation should be made and that the only inference regarding time could be drawn from the phrase “in the proceedings” which, in the Tribunal’s opinion, extended the time for filing a revocation until a final determination was made in such proceedings.  However, the Tribunal concluded that when reading the two sections of Section 103 together, it was likely that the legislative intent was to “prevent a situation where a party becomes aware of a patent, industrial design or utility model and then literally sits on the right to revoke it until a later date for commercial convenience in the form of damages and accounts for profits.” 

Thus, according to the Tribunal, the proviso or time bar in Section 103(2) was a clear qualification of the right to seek revocation of a patent under this section.  Specifically, the Tribunal stated:

“Parliament in its wisdom placed that caveat to the said right and unless a contrary intention or provision exists such provision should and must be given its place in enforcing the law. 

…Indeed the law in our view being alive to the possibility that party may for bonafide reasons not be aware of the existence of the patent within the limited time has provided a leeway under Rule 33 by allowing for extension of time for the challenge.  Such extension of time is naturally discretionary and will afford the Tribunal an opportunity to examine the bonafides of the party and the reasons for the delay before exercising it judiciously.

The law should and in our view cannot come to the aid of an indolent party and it must be demonstrated that they were diligent and proactive in presenting their case.”

Applying the above principles, the Tribunal held that even if Chemserve had not been aware of the grant of the patent, it learned of the patent in 2006 but chose not to take any action while continuing to trade in similar products until 2 years later when it filed the request for revocation.  According to the Tribunal, “The Requester chose to selectively invoke Section 103(1) on the issue of revocation without complying with its proviso on time under 103(2) and now urges the Tribunal to wish it away.  To do so would in our view be discriminatory and amount to a miscarriage of justice on the part of the Respondent who deserves equal protection of the law as the Requester.”  The Tribunal also noted that Chemserve failed to file for an extension of time under Rule 33 at the time it filed the request for revocation or even belatedly. 

Invalidity

The Tribunal further held that even if the request for revocation had been timely filed, Chemserve failed to meet the burden of proof required to establish that the patent was invalid.  Specifically, the Tribunal stated that the burden (of proof) was on Chemserve to demonstrate that the claimed products (1) lacked novelty and inventive step; and (2) existed in the marketplace before the filing date of the patent and thus formed part of the prior art.  The Tribunal noted that both parties chose not to produce any evidence other than the affidavit and statement by Chemserve’s General Manager.  The Tribunal found the affidavit not helpful because it related to transactions of similar products manufactured by third parties who were not called as witnesses.  Additionally, the “similar products” were not provided to the Tribunal nor was any attempt made to demonstrate the similarity between these products and the claimed products.  In the end, the Tribunal appeared frustrated by the lack of evidence stating:

“In the end the Tribunal was denied an opportunity to make any substantive findings on the allegations of prior art and inventiveness so as to review the decision of the registrar in granting the patent.  Such a finding in our view requires substantive proof and more diligence than has been exercised by the Requester.  It may very well be possible that the Requester’s assertions are true but in the absence of testimony to the extent and in light of the certificate of registration granted to the Respondent and their counter argument that the products met the legal requirements the balance of probabilities tilts in favor of the Respondents which we so find.”

Nicky Garnett and Nthabi Phaswana of Adams & Adams also contributed to this post.