Patenting the Un-Patentable: Lessons for African Patent Systems from a Review of Patent Subject Matter Exclusions in Kenya

South African Intellectual Property Law Journal

18 Pages Posted: 3 Aug 2017 Last revised: 23 Sep 2017

See all articles by Victor Nzomo

Victor Nzomo

University of Cape Town (UCT), Faculty of Law

Isaac Rutenberg

Strathmore University - Strathmore Law School

Date Written: September 22, 2017

Abstract

On 9th February 1994, Kenya Industrial Property Office (now known as Kenya Industrial Property Institute – KIPI) granted Kenya’s first patent under the post-independence patent system. This patent was for a protein derived from tick larvae suitable for the protection of grazing cattle from ticks. It appears that this patent was granted with claims to a method for treating animals, despite an express statutory exclusion from patentability of such inventions. 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, this article 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 article offers 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 the research described in this article will be of use to other African countries wishing to strengthen the value and effectiveness of their respective patent systems in the public interest.

Keywords: invention, patentable subject matter, patents, patent offices, patent law, Kenya, Africa

Suggested Citation

Nzomo, Victor and Rutenberg, Isaac, Patenting the Un-Patentable: Lessons for African Patent Systems from a Review of Patent Subject Matter Exclusions in Kenya (September 22, 2017). South African Intellectual Property Law Journal, Available at SSRN: https://ssrn.com/abstract=3012135 or http://dx.doi.org/10.2139/ssrn.3012135

Victor Nzomo (Contact Author)

University of Cape Town (UCT), Faculty of Law ( email )

Rondebosch 7701
South Africa

Isaac Rutenberg

Strathmore University - Strathmore Law School ( email )

P.O. Box 59857
P.O. Box 54668
Nairobi, Nairobi 00200
Kenya

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Downloads
71
Abstract Views
541
rank
395,948
PlumX Metrics