RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/294
3 July 2001
(01-3309)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Kenya to the questions posed by Canada, the European Communities
and their member States, Japan, Switzerland and the United States
By means of a communication from the delegation of Kenya dated 19 June 2001, the
Secretariat has received the following responses to the questions posed by Canada, the European
Communities and their member States, Japan, Switzerland and the United States as circulated in
documents IP/C/W/261, 274, 258, 263 and 268, respectively.
_______________
CANADA
A. GENERAL PROVISIONS
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement and
throughout) have been implemented.
The courts with jurisdiction over the enforcement of IPR are determined by the nature of the
rights that form the subject of the action.
1. Under section 15(11) of the Copyright Act Cap 130 of the Laws of Kenya, the  High Court
has jurisdiction over civil actions for the infringement of copyright and related rights.
2. The copyright owners and the owners of related ri ghts have the right to file civil suits against
the alleged infringers according to section 13 of the Copyright Act.  The courts may at the request ofthe right-holder, order the alleged infringer to produce evidence.
3. Clause 37 of the Copyright Bill, 2001, before Pa rliament for enactment, provide for the Anton
Piller Orders whereby a copyright owner who has prima facie  evidence that his rights have been
infringed, can get ex-parte  orders from the court to secure the presentation of the alleged infringing
articles as evidence.
4. Under section 15 of the Copyright Act, the plaintiff is entitled to relief by way of damages,
injunction or other relief available in any corresponding proceedings in respect of infringement of
other’s protected rights.  He is also entitled to delivery up, to the plaintiff of any article in thepossession of the defendant which appears to the court to be an infringing copy or any article used or
intended to be used for making infringing copies.
Under the provisions of the Trade Marks Act, an owner of a registered trademark may sue for
infringement of his mark in the High Court of Kenya.  He may apply for an injunction, and sue fordamages.IP/C/W/294
Page 2
The owner of an unregistered trademark may take a passing off action.  Under section 58 C,
D, E & F criminal action may be taken against a person who forges a registered trademark.
Under section 58 C, any invoice or other document submitted or used by an importer or any
other person in connection with the importation of g oods in respect of which a prosecution is brought
under this part, may be produced in any criminal proceedings without calling the person who prepared
or signed it.
The magistrate’s court has jurisdiction on criminal matters relating to trade marks.  Under
section 58 H (1) of the Trade Marks Act, upon conviction of any person for an offence, the court may,
in addition to any goods in respect of or by means of which the offence was committed to be forfeited
to the Government.
Section 21 of the Act provides for opposition proceedings on trademarks.  Under section 35
of the Act any person who is aggrieved, by any entry wrongly remaining on the register may apply for
expurgement of such a trade mark.
Under section 110 of the Industrial Property Act, Cap 509, an owner of a patent, utility model
or industrial design may apply to the Industrial Property Tribunal for the following relief:
a) an injunction to prevent infringement where infringement is imminent, or to prohibit the
continuation of the infringement once infringement has started;
b) damages,
c) any other remedy provided for in law.
Section 113 of the Act provides that any infringement of a patent constitutes an offence
punishable by a fine not less than Kshs. 10,000.00 and not exceeding Kshs 50,000.00 or by
imprisonment for a term not less than three years and not more than five year or to both.
Under the Customs and Excise Act, Cap 472 of the laws of Kenya, section 14 and the Eighth
Schedule list the goods that are prohibited or restricted imports into Kenya.  The Eighth Schedule also
covers all goods the importation or exportation of which is prohibited by any other law in force in
Kenya.
Section 15 of the Customs and Excise Act empowers the Minister, to prohibit or restrict
importation of any goods or class of goods save if imported in accordance with conditions, which may
be specified.
Goods, which have been notified as being trade marked, patented or copyrighted, will be
gazetted by the Minister in accordance with section 15 of the Customs and Excise Act.  These goods
will then be deemed prohibited or restricted unt il the importer satisfies the customs authorities that
they have been imported in accordance with the conditions governing their importation.
With regard to plant breeders’ rights, under section 20 (1) of the Seeds and Plant Varieties
Act Cap 326, a holder of plant breeder’s right that is infringed may institute infringement proceedings
at the High Court for the following relief:
a) injunction,
b) damage, orIP/C/W/294
Page 3
c) taking of accounts.
On criminal matters, magistrate courts have jurisdiction. Under section 33 of the Act, a person
who is guilty of infringement of a plant breeder’s right, is liable to pay a fine not exceeding Kshs
3,000.00 or to a term of imprisonment not exceeding a period of three months or to both.
2. What protection does your Copyright le gislation afford to “foreign works”?
Section 18(1) of the Copyright Act, the Attorney General may extend the application of this
Act to a country, which is a party to a treaty to which Kenya is also a party, and which provides for
copyright in works to which the application of this Act extends.
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. G ENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health and
nutrition, and to promote the public interest in se ctors of vital importance to your socio-economic and
technological development as mentioned under Arti cle 8 of the TRIPS Agreement.  If yes, please
explain how such measures are consistent with the provisions of the TRIPS Agreement.
The answer to this question will follow in due course.
B. C OPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of authors
in relation to their literary and artistic works, as  specified in Article 9 of the TRIPS Agreement which
requires Members to comply with Articles 1-21 of the Berne Convention and the Appendix to the
Berne Convention (1971)).
Literary and artistic works are protected works under Section 3 of the Copyright Act Cap 130
of the Laws of Kenya.  Section 7 of the said Act grants authors of literary and artistic works exclusiverights to control their works.
The term of protection of the said works is fifty years after the end of the year in which the
author dies.  This is provided for under section 4 of the Copyright Act.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
By virtue of section 3(1) of the Copyright Act, Cap 130 of the laws of Kenya, computer
programs are eligible for copyright protection as literary works.
The proposed amendment to clause 2 of the Copyright Bill, 2001, includes both the object and
source code in the definition of a computer program.
Compilations of data including tables and compilations of data stored and embodied in a
computer or a medium used in conjunction with a computer are protected as literary works, under
clause 2 and 22 of the Copyright Bill.  This includes CD-ROMS.IP/C/W/294
Page 4
4. Please state whether your legislation provides for a rental right and, if so, the works to which
it applies.
Section 7 of the Copyright Act grants the copyright owners in respect of literary, musical or
artistic works and audio-visual works, inter alia , exclusive rental rights.  This includes the rental
rights relating to computer programs and cinematographic works.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organisations under your legislation.
Section 12 of the Copyright Act grants protection to performers in relation to broadcasts,
communication to the public, fixation and reproduction of his works.  Protection of the rights of the
performance subsists for fifty years after the end of the year in which the performance took place.
Section 9 of the Copyright Act grants protection to sound recordings.  This is the exclusive
right to control, prohibit reproduction, distribution, broadcasts and importation of works.  The
reproduction right includes reproductions made from broadcasts as well as digital transmission
(both transient and permanent form).
Section 10 of the Copyright Act grants protection to broadcasting organisations to control the
recording and the re-broadcasting of the whole or a substantial part of the broadcast and the
communication to the public.  The broadcasting organisations are also granted the right to prohibit
any fixation of their work. The term of protection of broadcasts is fifty years after the end of the year
in which the broadcast took place.
6. Please state whether your legislation provides for any limitation or exception in relation to
each of the rights described above in accordance with the relevant provisions of the Berne and Rome
Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Section 7 of the Copyright Act, sets the limitations and exceptions to the exercise of exclusive
rights by the copyright owner.  This includes, fair dealing for the purposes of scientific research,private use, criticism or review of reporting of current events subject to acknowledgement of the
source.
In the case of sound recordings, Section 9.1 states that the making of a single copy of the
recording for personal and private use does not constitute the infringement of the owner’s rights.
Section 7 sets our the exceptions to the right of reproduction as hereunder:-(i) The right of reproduction of a broadcast if the production is intended to be used for
purposes of systematic instructional activities,
(ii) Reproduction of sound recordings which have been imported and fair compensation
has been paid to the right holder, and
(iii) Reproduction of a work by or under the direction or control of the Government.Note: - The limitations and exceptions do limit the normal exploitation of the works by their
owners.
7. Please state the terms of protection of each right described above and the work or subject
matter to which it applies.
Section 4 of the Copyright Act provides:IP/C/W/294
Page 5
- literary, musical and artistic works - fifty years after the end of the year in which the
author dies.
- Audio visual works and photography-Fifty years from the end of the year in which the
work was, first made available to the public, first published, whichever date is latest.
(Clause 23 of the Copyright Bill 2001).
- Sound Recordings - Fifty years after the end of the year in which the recording was
made.
- Broadcasts - Fifty years after the end of the year in which the broadcast took place.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
Section 19 of the Copyright Act protects the works made before the commencement of the
said Act (1966) and those made thereafter.  The protection is extended to all members of the Berne
Union and other treaties that Kenya is a party to  under Section 18 of Cap 130, and clause 49 of the
Copyright Bill, 2001.
C. T RADEMARKS
9. Please give the definition of a sign under your national legislation and explain under what
conditions it is protectable.
The Trade Marks Act does not use the word "sign" but rather the word "Mark" in section 2 of
the Trade Marks Act, which is defined to include a distinguishing guise, slogan, devise, brand,heading label, ticket, name, signature, works, le tter or numeral or any combination thereof whether
rendered in two-dimensional or three-dimensional form.
10. Please confirm whether or not services are a protectable subject matter in your trademark
law.  Please confirm if signs, such as trade names, are protectable.  Please describe if elements suchas sound, perfumes and containers are protectable.
The Trade Marks Act was amended in 1994 to incorporate the protection of service marks.
Trade names and containers are protectable but sound and perfumes are not protectable subject matter.
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
Use is not a mandatory prerequisite for registration however, under section 29 (1) of the Trade
Marks Act, a registered trade mark may be taken off the register in respect of any of the goods or
services in respect of which its is registered on application by any person aggrieved to the court or, at
the option of the applicant and subject to the provisions of section 53, to the Registrar, on the ground
that either:
(a) The trade mark was registered without any bona fide  intention on the part of the
applicant for registration that it should be used in relation to those goods or services
by him, and that there has in fact been no  bona fide  use of the Trademark in relation
to those goods or services by any proprietor thereof for the time being up to the dateone month before the date of the application: orIP/C/W/294
Page 6
(b) Up to the date one month before the date of the application a continuous period of
five years or longer elapsed during which the Trademark was a registered Trademark
and during which there was a registered Trade mark and during which there was no
bona fide  use thereof in relation to those goods or services by any proprietor thereof
for the time being.
Trademarks registered as defensive marks are not subject to this provision.
12. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Section 23 (1) protects a trademark for a period of seven years, but may be renewed from time
to time. A trademark is renewed after a period of fourteen years indefinitely.  Under the proposed
amendment to the Trade Marks Act, a trademark may be renewed after a period of 10 yearsindefinitely.
13. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
There are no special requirements except as provided for in section 29 indicated in the answer
to question 11 above.
D. G
EOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
Under clause 21 of part VI on special provisions concerning marks and exceptions, in the
Geographical Indications Bill, 2001, the Registrar of trade marks may, on his own motion or at the
request of an interested party, after hearing all the parties concerned, refuse or invalidate the
registration of a trade mark, which contains or consists of a geographical indication with respect to
goods not originating in the territory if the use of  the indication in the trademark for such goods in
Kenya is of such a nature as to mislead the public as to the true place of origin.
15. Please give the definition of a geographical indication in your legislation.
Clause 2(f) of the Geographical Indication Bill 2001, defines a geographical indication in relation to
goods or services, as a description or a representation used to indicate the geographical origin, in the
territory of a country or a region or locality in the territory, where a given quality, reputation or othercharacteristics of goods or services are exclusively or essentially attributable to geographical
environment including natural factors, human factor s or both.  Goods means natural or agricultural
products or products of handicraft or industry.
16. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
See answer to question number 15 above.
17. Please describe how additional protection is granted by your legislation to wines and spirits.
Please mention other types of products, if any, covered by this additional protection.
The Geographical Indication Bill, 2001, gives no special provision for additional protection
granted to wines and spirits.  Clause 2 (g) defines goods protected by geographical indications asIP/C/W/294
Page 7
natural, agricultural products, products of handic raft and industry.  This also includes protection of
wines and spirits.
Clause 2 (k) defines a producer of goods and services as:(i) Any producer of agricultural products or any other person exploiting 
natural products,
(ii) A manufacturer of products of handicraft, or industry, and(iii) Any trader dealing in the said products.
18. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
The exceptions will be provided for in the implementing regulations.
E. I
NDUSTRIAL DESIGNS
19. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
Designs dictated by technical features or functional consideration cannot be protected under
the provisions for protection of industrial designs.  Section 72(2) of the Industrial Property Act,
provides that the protection shall not extend to anything in an industrial design which serves solely toobtain a technical result.
There are no special provisions for the protection of textile designs separate from those of
industrial designs in general.
20. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
Under section 73 (1) of the Industrial Property Act, any creator of an industrial design or his
successors in title shall have the exclusive right to e xploit the design, to sell or cause to be sold for
commercial or industrial purposes the goods in which the design is incorporated, subject to theconditions of this Act. Without prejudice to the rights conferred by any other written law, the
registration of an industrial design shall extend only to acts done for industrial or commercial
purposes and shall not extend to acts in respect of a product embodying the protected industrial design
after the products has been lawfully imported or sold in Kenya.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
The Industrial Property Act and Industrial Property Bill, 2001, do not provide for compulsory
licensing of Industrial Designs.
22. Please indicate for what period of tim e your legislation grants protection for industrial
designs.IP/C/W/294
Page 8
Sections 75 (1) and  (2) of the Industrial Property Act provides that a registered Industrial
Design is protected for a period of five years beginning from the date of deposit of the design,
renewable for two consecutive periods of five years each.
F. P ATENTS
23. Please describe how your legislation defines the notions of: novelty, inventiveness and
industrial application.
Novelty:   Under section 8 of the Industrial Property Act an invention is new if it is not anticipated by
the prior art.  Under the same provisions, prior art is considered to be everything made available to the
public by means of written disclosure, by oral disclosure, use exhibition or other non-written means.
Such making available is only taken into account if it occurred before the date of filing of the
application or, the validly claimed priority. Ho wever, disclosure made within twelve months
proceeding the filing or priority date claimed is not considered in the assessment of novelty if it wasas a result of acts committed by the applicant or his predecessor in title or is an evident abuse of the
rights of applicant.
Inventiveness:  Under the section 9 of the Act an in vention is considered to have an inventive step, if
having regard of the prior art at the date of filing or at the validly claimed priority, the invention could
not have been obvious to a person skilled in the art.
Industrial Applications:  Under the provisions of Section 10 of the Act (same as Clause 25 of the bill)
an invention is industrially applicable if it can be made or be used in any kind of industry, including
agriculture, fishery and services. 
24. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how these
exclusions are applied in legal as well as practical terms.
Section 38 of Cap 509 provides that:
(i) The rights under the patent shall extend only to acts done for industrial or
commercial purposes and not to acts done for scientific research
(ii) The rights under the patent shall not extend to acts in respect of articles, which
have been put on the market in the country by the owner of the patent or with his
express authority.
(iii) The rights under the patent shall not extend to the use of articles on aircrafts, land
vehicles or vessels of other countries, which temporarily or accidentally enter the
airspace, territory, or waters of the country.
(iv) The rights under the patent shall be limited by the provisions on the patent terms.
(v) The rights under the patent shall be limited by the provisions of compulsory
licence for reasons of public interest or based on interdependence of patents and
by the provisions on state exploitation of patented inventions.IP/C/W/294
Page 9
25. Please explain whether your legislation provides for the exclusion of inventions from
patentability based on ordre public or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Section 11(b) of the Act provides for exclusion from patentability of inventions contrary to
public order and morality.
26. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your legislation and
explain its formulation.
Section 6 (3) (c) of the Industrial Property Act provides that methods for treatment of the
human or animal body by surgery or therapy, as  well as diagnostic methods, except products in
particular substances or compositions, for use in any of those methods shall not be regarded as
inventions and shall be excluded from patent protection; 
27. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
Plants, animals and essentially biological processes are excluded from patentability. Section
6(3)(a) states that "discoveries or findings that are products or processes of nature where mankind hasnot participated in their creation (including animal s, plants and micro-organisms) and scientific and
mathematical methods and theories".
28. Please describe how micro-organisms, non-essent ially biological processes, microbiological
processes and plant varieties are protected in your legislation. Please explain, in this respect, therelevant sections of your legislation.
Microorganisms, which occur naturally, are not patentable under the Act.  However, under
section 11(a) of the Act, where the micro-organism is a product of biotechnology, patent for them and
for products and processes that use them are patentable if they meet the criteria of patentability.  Non-
essentially biological processes are also patentable.  Plant varieties are protected under the Seeds andPlant Varieties Act, Cap 326, which gives a grant of Plant Breeders Rights.
29. Please explain how your legislation protects patent right holders against the importing and
against the offering for sale of a patented invention.
Under Section 36 of the Act, a patent holder is given the right to preclude any person from
exploiting the protected invention by making, importing, stocking, offering for sale, selling and using
the patented product.  Where the patent is in respect of a process, the patent holder has the right to
preclude any person from using the patented process or doing any of the acts mentioned above in
respect of products produced by means of the patented process.
30. Please state if your legislation provides for patent product protection of pharmaceutical and
agricultural chemical products.  In the affirmative, please indicate the legal reference.
Pharmaceuticals and agricultural chemical products fall within the meaning of patentable
inventions as indicated under section 6 of the Act and are therefore patentable.IP/C/W/294
Page 10
31. Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
Patent protection of a process covers the product obtained directly by the process.  This is as
provided for under the rights of a patent holder, section 36(a)(ii).
32. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TR IPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislations and describe the additional conditions in detail.
There are no additional conditions at present for disclosure of the inventions in Article 29 of
the TRIPS Agreement covering access to genetic material or prior informed consent to its use.
33. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
Section 38 of the Act provides that:
(i) The rights under the patent shall extend only to acts done for industrial or
commercial purposes and in not to acts done for scientific research acts
(ii) The rights under the patent shall not extend to acts In respect of articles, which
have been put on the market in the country by the owner of the patent or with his
express authority.
(iii) The rights under the patent shall not extend to the use of articles on aircrafts, land
vehicles or vessels of other countries, which temporarily or accidentally enter the
airspace, territory, or waters of the country.
(iv) The rights under the patent shall be limited by the provisions on the patent terms.
(v) The rights under the patent shall be limited by the provisions of compulsory
licence for reasons of public interest or based on interdependence of patents and
by the provisions on state exploitation of patented inventions.
34. Please explain whether or not your legislation provides for compulsory licensing. If so, please
explain in detail the conditions under which a compulsory licence may be granted.  In particular,
please explain how your national le gislation considers individual merits in the authorization of such
use.
Under sections 95, 96 and 97, of the Act compulsory licences are provided for.  Under this
section, the following are grounds for application for compulsory licences:
I. Non working of the invention
II. Working that does not meet the market demand
III. When working is hindered by lack or importation of the patented product
IV. Unreasonable terms of licensing by the holder of the patent
V. Unreasonable pricing of the patented product
VI. Interdependence of patents
VII. Vital importance to the public health scientific, economy, technological
advancement and environmental conservation.IP/C/W/294
Page 11
Compulsory licences are not automatically available but a petition will have to be lodged with
the Tribunal, which considers each case on its own merit.  Preconditions for the grant of a patent are
stated under section 98 of the Act.
35. Please explain how your legislation explicitly ensures that a proposed user has made efforts
to obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasonable period of time. In this context, how do you
define "reasonable period of time".  Please also explain how your legislation ensures that the use of a
compulsory licence shall be authorised predominantly for the supply to the domestic market of the
Member authorizing such use.
Section 98(a) of the Industrial Property Act provides that:
A compulsory licence shall not be granted unless the person requesting the licence:(i) satisfies the Tribunal that he has asked the owner of the patent for a contractual
licence but has been unable to obtain the licence on reasonable terms,
(ii) offers guarantee satisfactory to the Tribunal to work the relevant invention
sufficiently to remedy the deficiencies, which gave rise to his request.
Reasonable period of time means at least six months.
36. Please state if your legislation grants additional protection for innovations after the 20 years
of patent protection has lapsed.
There is no additional protection after expiry of the term of a patent.
37. Please explain how your legislation provides for the enhanced patent protection of patents or
patent applications pending on 1
st January 1995.
There is no enhanced protection for patents pending on 1st January 1995.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Under section 116 of the Industrial Property Act, the burden of proof lies wholly with the
plaintiff and reversal of that is null and void.  However, under clause 110 of the Bill the burden ofestablishing that an identical product was not made by the patented process shall be on the alleged
infringer.
G. L
AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects Topographies.
Existing Kenyan laws do not provide for the protection of Layout-Designs of Integrated
Circuits; but there is proposed legislation namely the Layout-Designs of Integrated Circuits Bill, 2001
that seeks to protect this category of Intellectual Property.IP/C/W/294
Page 12
40. Please explain what protection your national legislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies including
integrated circuits or other articles in which a topography is incorporated in accordance with Article
36 of the TRIPS Agreement.
The Layout-Designs of Integrated Circuits Bill, 2001 proposes to confer the following rights
in Section 8, which states that:
(1) Protection under this Act shall not depend upon whether or not the Integrated Circuit
that incorporates the protected Layout-Design is itself incorporated in an article.
Subject to subsection (2) and to section 18, the protection shall have the effect that the
following acts shall be unlawful if performed without the authorization of the right
holder:
(a) Reproducing, whether by incorporation in an Integrated Circuit or
otherwise, the protected Layout-Design in its entirety or any part thereof,
except the act of reproducing any part that does not comply with the
requirement of originality referred to in section 5;
(b) Importing, selling or otherwise distributing for commercial purposes the
protected Layout-Design of an Integrated Circuit in which the protected
Layout-Design is incorporated or an ar ticle incorporating such an Integrated
Circuit in so far as it continues to contain an unlawfully reproduced Layout-
Design;
(2) The effect of protection of a Layout-Design under this Act shall not extend to:
(a) Reproduction of the protected Layout-Design for non-commercial purposes
or for the sole purpose of evaluation, analysis, research or    teaching;
 
(b) the incorporation in an Integrated Circuit of a Layout-Design created on the
basis of such analysis or evaluation and which is itself original in the meaning
of section 5 or the performance of any of the acts referred to in subsection (1)
in respect of that Layout-Design;
 
(c) the performance of any of the acts referred to in subsection (1)(b) where the
act is performed in respect of a protected Layout-Design, or in respect of an
Integrated Circuit in which such a Layout-Design is incorporated, that has
been put on the market by, or with the consent of, the right holder;
 
(d) The performance of any of the acts referred to in subsection (1)(b) in respect
of an Integrated Circuit incorporating an unlawfully reproduced Layout-
Design or any article incorporating such an Integrated Circuit, where the
person performing or ordering such  an act did not know and had no
reasonable ground to know, when acquiring the Integrated Circuit or the
article incorporating such an Integrated Circuit, that it incorporated anunlawfully reproduced Layout-Design. However, after the time that such a
person has received sufficient notice that the Layout-Design was unlawfully
reproduced, that person may perform any of the said acts only with respect to
the stock on hand or ordered before such time and shall be liable to pay to the
right holder a sum equivalent to a reasonable royalty such as would bepayable under a freely negotiated licence in respect of such a Layout-Design;
orIP/C/W/294
Page 13
(e) the performance of any of the acts referred to in subsection (1)(b) where the
act is performed in respect of an identical Layout-Design which is original
and has been created independently by a third party.
41. Please explain how your legislation provides for the derogation from Article 36 as specified
in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds toknow when acquiring an integrated circuit or an article incorporating such an integrated circuit that
it contains an unlawful topography.
The Layout-Designs of Integrated Circuits Bill, 2001 proposes to derogate from Article 36 of
the TRIPS Agreement through Section 8. (2). (d) as follows:-
(d) the performance of any of the acts referred to in subsection (1)(b) in respect of an
Integrated Circuit incorporating an unlawfully reproduced Layout-Design or anyarticle incorporating such an Integrated Circuit where the person performing or
ordering such an act did not know and had no reasonable ground to know, when
acquiring the Integrated Circuit or the article incorporating such an Integrated Circuit,
that it incorporated an unlawfully reproduced Layout-Design.  However, after the
time that such a person has received sufficient notice that the Layout-Design wasunlawfully reproduced, that person may perform any of the said acts only with respect
to the stock on hand or ordered before such time and shall be liable to pay to the right
holder a sum equivalent to a reasonable royalty such as would be payable under a
freely negotiated licence in respect of such a Layout-Design; or
(e) the performance of any of the acts referred to in subsection (1)(b) where the act is
performed in respect of an identical Layout-Design which is original and has been
created  independently by a third party.
42. Please state the term of protection granted by your legislation to topographies.
Under clause 9, of the Layout-Designs of Integrated Circuits Bill, 2001 provides for the
commencement and duration of protection of topographies:
(1) Protection of a Layout-Design of an Integrated Circuit under this Act shall
commence on the filing date accorded to the application for the registration of theLayout-Design of an Integrated Circuit filed by the right holder whether the Layout-
Design of an Integrated Circuit has or has not been previously exploited
commercially anywhere in the world.
 
(2) Protection of a Layout-Design of an Integrated Circuit under this Act shall commence
on the date of the first commercial exploitation, anywhere in the world, of the Layout-
Design by or with the consent of, the right holder, provided an application forprotection is filed by the right holder with the Institute within the time limit referred
to in section 5(4).
 
(3) Protection of a Layout-Design under this Act shall terminate at the end of the tenth
calendar year after the date of commencement of protection.
H. P ROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
Kenya is in the process of drafting a new bill to protect undisclosed information.IP/C/W/294
Page 14
44. Please explain how your legislation defines undisclosed information.
Refer to the answer to question 43 above.
45. Please explain how your legislation defines da ta submitted to governments or governmental
agencies.
Refer to the answer to question 43 above
I. E NFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
1. The Industrial Property Act establishes a Tribunal under section 118, which has
jurisdiction over infringement cases.  The Tribunal is given powers to make any order
for the purpose of securing attendance of any person, the discovery or production of
any document, or the investigation or punishment for any contempt of court.  Under
section 110 the Tribunal is empowered to grant the following relief:
(a) an injunction to prevent infringement where infringement is imminent or to
prohibit the continuation of the infringement, once infringement has started,
(b) damages and
(c) any other remedy provided in law.
The Act also provides for criminal prosecution under section 113.  However, infringement of
industrial designs and utility models are not criminal offences under the Act, but the new Bill providesfor extension of civil and criminal remedies to the same.
Appeal from the decision of the Tribunal can be made in the high court as provided for under
section 120 of the Act.
Under the Copyright Act the High Court has jurisdiction over cases of Copyright
infringement. Section 15 thereof provides for civil remedies against the infringer.  The plaintiff is
entitled to relief by way of damages, injunction or other relief available in any corresponding
proceedings.  He is also entitled to deliver up of any article in the possession of the defendant which
appears to the court to be an infringing copy.
Criminal procedures are also available for infringement of copyrights under section 16 of the
said Act.  It is the Resident magistrate’s court and the High Court, which have jurisdiction over
copyright infringement cases. Criminal penalties include available custodial sentences and fines.
The Attorney General and the police department are public authorities for initiating criminal
proceeding.
Private persons may initiate criminal proceedings but they have to be granted the authority by
the Attorney General who is the Chief Public prosecutor in Kenya.
Under section 29(1) of the Seed and Plant Varieties Act, infringement of plant breeders rights
shall be actionable at the suit of the holder of such rights and in any proceedings for such an
infringement all such relief, by way of damages injunction, account or otherwise shall be available as
in any proceedings in respect of infringements of other property.IP/C/W/294
Page 15
47. Please explain whether or not your legislation provides for a mechanism to appeal to judicial
bodies of final administrative decisions.
Under the Kenyan legislation, there is provisi on for appeals right to the Court of Appeal.
48. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
Under the Civil Procedure Code, Judges have powers to order production of evidence by the
opposing party. Clause 37 of the Copyright Bill, 2001, provides making of orders to secure the
preservation of the documents, copies or things as evidence.
Under section 118 of the Industrial Property Act, the Tribunal is empowered to make orders
for the production of evidence by the opposing party.
49. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
This is provided for under section 110 of the Industrial Property Act as far as  patents,
industrial designs and utility models are concerned.
50. Please quote what provisions of your legislation authorize judges to order the payment to the
right holder of adequate damages to compensate the injury he suffered.
Relief is provided under section 110 of the Industrial Property Act.  Under section 110(b) the
Tribunal can award damages to the injured party.
51. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
Relief is provided under section 110(1)(c) of the Act, as any other remedy provided for in
Law.
52. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.
Section 58 H (1) of the Trade Marks Act, provides that upon conviction of any person for
forgery of a trade mark, any goods in respect of or by means of which the offence was committed maybe forfeited to the Government.
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
This issue is covered by the Civil Procedure Code - misuse of court processes.
54. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
The Tribunal is empowered to give injunctions to prevent infringement as provided for under
section 110 of the Industrial Property Act.  For imported goods one can obtain an injunction to
suspend the release of infringing goods as products subject of IPR are the subject of restricted goods
as provided under section 14, 15 and schedule 8 of the Customs and Excise Act.IP/C/W/294
Page 16
55. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.
The Commissioner of Customs and Excise.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
Procedures are available. This is governed by section 14(2) and 15(2)(a) and the eighth
schedule of the Customs and Excise Act.
57. Please quote what provisions of your legislation authorize the competent authorities to order
the destruction or disposal of infringing goods.
Sections 14(2), 15(2)(a) and the eighth schedule of the customs and Excise Act provide for
this. The offence procedures are provided for under section 185.
58. Please indicate whether or not your legislation provides for a de minimis imports exception.
This is covered by Section 38(1) of the Industrial Property Act.
59. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
This issue is covered by the answers to the questions posed by Canada.
JAPAN
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbou ring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
There are no exceptions or exemptions to the principle of national treatment and most
favoured nation treatment under the copyright Act.
SWITZERLAND
A. GEOGRAPHICAL INDICATIONS
1. Please explain in detail how your legislation provides protection for geographical
indications.
Kenya has now a draft Bill for Geographical Indications pending before Parliament.Clause 2 (f) of the Bill contains the following definition of a geographical Indication:-
“Geographical Indication” in relation to goods or services, means a description or a
representation used to indicate the geographical origins, in the territory of a country or a
region or locality in that territory where a given quality, reputation or other characteristics of
goods or services are exclusively or essentially attributable to geographical environment,
including natural factors, human factors or both”.IP/C/W/294
Page 17
Part III: Protection of Geographical Indications
4. Availability of Protection under this Act shall be available Protection regardless of
Registration presumption
(1) regardless of whether or not a geographical indication has been presumption
registered.  However, registration of a geographical indication under  Part II
of this Act shall, in any proceedings under this Act, raise a presumption that
such indication is a geographical indication within the meaning of section 2
(f); and
(2) against a geographical indication which, although literally true as to the
territory, region or locality in which the goods originate, falsely represents 
to the public that the goods originate in another territory.
5. In the case of homonymous geographical indications for goods, geographical
protection shall be accorded to each indication subject to section 4 (2).  Indications for the Registrar,in cases of permitted concurred use of such indications, goods shall determine the practical conditions
under which the homonymous indications in question will be differentiated from each other, taking
into account the need to ensure equitable treatment of the producers concerned and that consumers are
not misled.
6. The following shall not be protected as geographical indications:
(1) Indications which do not correspond to the definition in section 2 (f)(2) Indications, which are contrary to public order or morality;
(3) Geographical indications which are not or cease to be protected in their
country of origin, or which have fallen into disuse in that country”.
B. PATENTS
2. Does your legislation grant patent protection to all categories of products or are there any
exceptions?  If so, please explain in detail what kind of exceptions exist and how they comply with
Article 27 of the TRIPS Agreement.
Section12 of the Industrial Property Act provides for temporary exceptions by the Minister
but this has been excluded under the Industrial Property Bill 2001.
3. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of the
TRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing, if a product is being imported)?
Yes.  The Bill in accordance with Article 27.1 in combination with Article 31 of the TRIPS
Agreement considers importation as "working" a patent and therefore precludes compulsory licensing,
if a product is being imported.  This is taken care of by clauses 72 to 74 of the Industrial Property Bill,
2001.IP/C/W/294
Page 18
4. Does your legislation make the granting of a compulsory license subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of law.
Yes.  The Bill makes the granting of a compulsory licence subject to all the conditions set out
in Article 31 of the TRIPS Agreement.  Clauses 72 to 78 of the Bill takes care of this issue.
5. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.
Yes.  The Bill provides for the principle of the reversal of burden of Proof in a process patent
litigation.
Clause 110 of the Bill provides -"110 For the purposes of proceedings, other than criminal proceedings, in respect of the
infringement of the rights of the owner of the patented patent, where the subject
matter of the patent is a process for process obtaining a product, the burden of
establishing that an identical product was not made by the patented process shall beon the alleged infringer, if either of the following conditions is fulfilled:-
(a) the product is new; or
(b) a substantial likelihood exists that the identical product was made by the
process and the owner of the patent has been unable, through reasonable
efforts, to determine the process actually used"
C. PROTECTION OF UNDISCLOSED INFORMATION
6. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
a pharmaceutical or of an agricultural chemical product is protected against disclosure and against
unfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the fi rst applicant, when applying subsequently for market
authorisation for his own product.  Does your legisl ation provide for exceptions to this? If yes, under
what conditions would such exceptions apply?  Does your legislation set a specific term of protection
for undisclosed test or other data of the first applicant?
Kenya is now in the process of drafting a Bill on Protection of Undisclosed Information.
D. ENFORCEMENT
7. Please indicate remedies provided by your legislation, which constitute effective deterrents to
infringements of intellectual property rights.
The Industrial Property Act, and the Trade Marks Act provide for civil relief including
injunction, award of damages, and in particular section 58 H(1) of the Trade Marks Act provides that:
"On conviction of any person for an offence und er this Part, the court in addition to any
sentence passed, declare any goods in respect of or by means of which the offence was committed to
be forfeited to the Government, unless the owner of the goods or any person acting on his behalf, or
any other person interested in the goods shows cause to the contrary.”
In addition to these provisions, the Civil Procedure Code, Cap 21 of the Laws of Kenya
contains provisions for award of injunctions, damages and taking accounts.IP/C/W/294
Page 19
Relief is provided for under Section 110 of the Industrial property Act.
These include:(a) an injunction to prevent infringement where infringement is imminent or to prohibit
the continuation of the infringement once it has started,
(b) damages and(c) any other remedy provided for in law.
8. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.
The proposed amendment to the Trade Marks Act, have increased penalties for infringing
trade marks from a maximum of Kenya shillings ten thousand (Ksh. 10,000.00) to Kenya shillings
two hundred thousand (KShs. 200,000.00).
     Under the proposed Copyright Bill 2001, the fine for infringement of Copyright is increased
from Kshs.200,000 to a sum not exceeding 800,000 and the imprisonment term has been increased to
a maximum of 10 years. The Bill also seeks to introduce the Anton Pillar orders.
Previously under the Industrial Property Act in fringement of Industrial Designs was not a
criminal offence, however under the proposed Bill it will be a criminal offence to infringe a registered
design punishable the same way as infringement of patents.
Under the proposed Geographical Indications Bill, 2001, infringement of a geographical
indication shall constitute both a criminal and civil wrong.  The Tribunal under clause 19(2) of theBill will have powers to issue injunctions and aw ard damages and grant any other civil relief as it
shall deem fit.  The proposed penalties for criminal offence are a fine not exceeding 100,000 or
imprisonment not exceeding 5 years.
UNITED STATES
A. GENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which nation treatment and most
favoured nation treatment are provided to nationals of other WTO Members.
There is no discrimination for non- citizen in the intellectual property legislation in Kenya.
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain how the copyright law of Ke nya  protects computer programs as literary
works  and complications of data as required by Article 10 of the TRIPS Agreement.
By virtue of section 3(1) of the Copyrigh t Act Cap 130, of the laws of Kenya computer
programs are eligible for copyright as literary works.
The proposed amendment to clause 2 of the Copyright Bill 2001, includes both the object and
source code in the definition of a computer prog ram.  Compilation of data including tables and
compilation of data stored and embodied in a com puter or a medium used in conjunction with aIP/C/W/294
Page 20
computer are protected as literary works, under clause 2 of the Copyright Bill and clause 22 of the
same Bill.  This includes CD-ROMS.
3. Article 11 of the TRIPS Agreement requires that rental rights for computer programs and
cinematographic works be available.  Please cite to the corresponding provision of the copyright law
of Kenya.
As computer programs are protected as literary works, the nature of copyright in literary
works and audio-visual works is covered in section 7 of the Copyright Act Cap 130 which grants the
copyright owners in respect of each category of works, inter alia, the exclusive rental rights.
4. Please describe the protection the copyright law of Kenya provides for performers, and the
term of the protection.
Section 12 of the copyright Act grants protection to performers in relation to broadcasts,
communication to the public, fixation and reproduction of their works.  Protection of the rights of the
performance subsists for fifty years after the end of the year in which the performance took place
5. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to enjoy the
right to authorize or prohibit the direct or indirect reproduction of their phonograms.  Article 14.2
requires that producers of phonograms are to have the right to authorize or prohibit the commercial
rental to the public of originals or copies of their phonograms.  Please describe how the copyright
law of Kenya implements these obligations  and indicate the term of protection.
Section 9 of the copyright Act provides protection to sound recordings is granted exclusive
rights to control the direct or indirect reproduction in any manner or form, the distribution to the
public by way of sale, rental etc. the term of protection is fifty years after the end of the year in which
the recording was made.
C. TRADEMARKS
6. Please describe the subject matter that can comprise a trademark under the trademark law of
Kenya.
Under the Trademarks Act Cap 506 of the laws of Kenya, a trademark includes a
distinguishing guise, slogan, device, brand, heading label, ticket, name, signature, work, letter or
numerical or any combination thereof whether rendered in two-dimensional or three-dimensional
form.
7. Please provide the length and terms of protection the trademark law of Kenya provides for a
trademark.
Under Section 23(1) of the Trademarks Act, the registration of a trademark shall be for a
period of seven years, but may be renewed for a period of fourteen years indefinitely
According to the proposed amendments of the Trademarks Acts, the term of the trademark
remains seven years, but the renewal of the much shall be every ten years from the date of expiration
of the original registration or of the last renewal  of registration, as the case may be
8. Please describe in detail how well-known marks are protected under the laws of Kenya.
The Trademarks Act Cap 506 of the laws of Kenya has no provision for the protection of
well-known marks. The proposed Trademarks Amendments provides for the protection of Well-
known marks under  section 15B.IP/C/W/294
Page 21
Section 15B of the proposed amendments provides that:
1. Reference in this Act to a trade mark which is entitled to protection under the Paris
Convention or the WTO Agreement as a well-known trade mark are to a mark which
is well known in Kenya as being the mark of a person who:
a. is a national of a Convention country, or
b. is domiciled in, or has a real and effective industrial or commercial
establishment in a convention country whether or not that person carries on
business, or has any goodwill in Kenya.  Reference to the proprietor of such a
trademark shall be construed accordingly.
2. subject to the provisions of section 38 B, the proprietor of a trade which is entitled to
protection under the Paris Convention or the WTO  Agreement as a well known trade
mark is entitled to restrain by injunction the use in Kenya of a trade mark which, or
the essential part of which is identical or similar to his in relation to identical orsimilar goods or services, where the use is likely to cause confusion.
3. nothing in subsection (2) affects the continuation of any bona fide use of a trade mark
began before the commencement of this section.
4. a trade mark shall not be registered if that trade mark or an essential part thereof is
likely to impair or dilute in an unfair manner the distinctive character of the well
known mark or the use of that trade mark would take unfair advantage of the
distinctive character of the well known trade mark.
D. GEOGRAPHICAL INDICATIONS
9. Please describe in detail how the laws of Kenya provide for the recognition and protection of
geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications so protected.
In January 2001, Kenya drafted a Bill entitled  "The Geographical Indications Bill, 2001".
Clause 2(7) of the Bill contains the following definition of a geographical indications:-
"Geographical Indication" in relation to goods or services, means a description of a
representation used to indicate the geographical origins, in the territory of a country or a
region or locality in that territory where a given quality, reputation or other characteristics of
goods or services are exclusively or essentially attributable to geographical environment,including natural factors, human factors or both".
Under clause 2(7) natural or agricultural pr oducts or products of handcraft or industry are
examples of geographical indication protected under the Act.
10. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Ag reement is implemented, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications for such products.
Under the Geographical Indications Bill 2001, there is no special provision for higher level of
protection for wines and spirits.  The wines and spirits are protected under, clause 2(9) as agricultural
products or products of industry.IP/C/W/294
Page 22
11. Please explain whether pre-existing trademarks are protected against usurpation by
geographical indications.
Under Part (VI) on special provisions concerning marks and exceptions of the Geographical
Indications Bill 2001. Clause 23 provides for exceptions regarding prior users.  The clause provides:
(1) Nothing in this Act shall prevent continued and similar use in Kenya of a particular
geographical indication of another country identifying wines, spirits by any national
or domiciliary of Kenya who has used that geographical indication in a continuous
manner with regard to the same or related goods or services in the territory of Kenya
either:
(a) for at least 10 years preceding 15th April, 1994; or
(b) in good faith preceding that date
(2) Where a Trademark has been applied for or registered in good faith, or where rights
to a Trademark have been acquired through use in good faith either;
(a) before the date or entry into force of this Act; or
(b) before the geographical indication is protected in its country or origin, this
Act shall not prejudice the registrability or the validity of  the registration of a
trademarks, or the right to use a trademark, on the basis that such aTrademark is identical with, or similar to, a geographical indications.
(3) Nothing in this Act shall apply in respect of a geographical indication of any country
with respect to goods or services for which the relevant indication is identical with
their term customary in common language as the common name for such goods orservices in Kenya or in respect of a geographical indication of any other country with
respect to products of the wine for which the relevant indication with the customary
name of a grape variety existing in Kenya as of 1st January, 1995.
(4) Any request for relief made under Part III of this Act is connection with the use or
registration of a trademark must be presented within five years after the adverse use
of the protected indication has become generally known in Kenya or after the date of
registration of the Trademark in Kenya, provided that the trademark has been
published by that date, if such date is earlier that than the date on which the adverse
use become generally known in Kenya and provided that the geographical indications
is not used or registered in bad faith.
(5) This Act shall in no way prejudice the right of any person to use, in the course of
trade, that person’s name or the name of that person’s predecessor in business, except
where such name is used in such a manner as to mislead the public.
E. INDUSTRIAL DESIGNS
12. Please describe the procedure that must be followed to obtain protection for textile designs
and cite to the relevant provisions of law or regulation.
There are not special provisions for the protection of textile designs separate from those of
industrial designs in general.IP/C/W/294
Page 23
F. PATENTS
13. Please describe in detail the way in which the patent law of Kenya implements Article 27 ofthe TRIPS Agreement, indicating any exceptions provided for, and including details regarding the
protection for micro-organisms and non-biological and microbiological processes and plant varieties.
Please cite to the relevant provisions of the law.
Under section 7 - 10 of the Industrial Property Act, patents are available for any
inventions whether products or processes, which are new, involve an inventive step and are
industrially applicable.
Section 11 of the Act provides exceptions from patentability  which include:
(a) plant varieties as provided for in the Seed and Plant Varieties Act, but not
parts thereof or products of biotechnological processes;
(b) inventions contrary to public order,  morality, public health and safety,
principles or humanity, and environmental conservation;
Section 11 of the Act provides that the fo llowing shall not be regarded as inventions
for the purpose of  patent protection:-
(a) discoveries or findings that are products or processes of nature where
mankind has not participated in their creation (including animals, plants and
micro-organisms) and scientific and mathematical methods and theories;
(b) methods for treatment of the human or animal body by surgery or therapy, as
well as diagnostic methods; except products, in particular substances or
compositions, or use in any of those methods.
Micro organisms per se  are not patentable under the Kenya laws, but as stated under section
6(a) of the Industrial Property Act, micro-organism s as found in nature are treated as discoveries,
where mankind has not participated in their creation, and therefore not patentable.  This includes
also animals and plants.
Section 13(1) of the Act on patents relating to living matter, an invention concerns a
microbiological process or the product thereof and involves the use of a micro-organism or self-replicable material is patentable.  In this case, the microbiological process is patentable or the product
thereof is patentable, but not micro-organisms involved in the process in their natural state.
Non-biological processes are patentable in Keny a provided they are new, involve an inventive
step and are industrially applicable and the inventions do not fall under the exceptions to patentability
mentioned above.
New plant varieties, are protected under the Seeds and Plant Varieties Actof the laws of
Kenya. Section 17 of the Act grants plant breeders rights to new plant varieties that meet the threecriteria for protection that is distinc tiveness, uniformity and stability (DUS).
Section 11 of the Industrial Property Act excludes plant varieties from patentability, except
parts thereof or products or biotechnological processes.IP/C/W/294
Page 24
14. Please describe in detail the rights provided patent holders under the patent law of Kenya
and cite to the relevant provisions of law.
Under section 36 of the Industrial Property Act, a patent holder has the right to preclude any
person from exploiting the protected invention by any of the following acts; making, importing,
offering for sale, selling and using the patented product.  Where the patent is in respect of a process,the patent holder is granted the right to preclude any person from using the patented process or doing
any of the acts mentioned above in respect to products produced by means of the patented process.
15. Please describe in detail any provisions in the laws of Kenya permitting unauthorized use of a
patent, citing to the relevant provisions of law, and describe in detail the conditions under which such
use can occur.
Unauthorised use of a patent is permitted under:-(i) Compulsory licence under section 95 to 101 and:
(ii) Government use under section 104.
Under sections 95, 96 and  97 of the Act compulsory licences are available on the following
grounds:-
(a) non-working of the invention both locally and by importation of the patented
products;
(b) working of patent does not meet the market demand;(c) Unreasonable terms of licensing by the patent holder and interdependence of patents.
The Industrial Property Tribunal issues compulsory licences.
Clause 72(1) , (2) of the Industrial Property Bill 2001, on compulsory licences for non-
working and similar reasoning:-
(a) At any time after four years from the filing date of an application or three years from
the grant of a patent, whichever period last expires, any person may apply to the
Tribunal for a licence to exploit the patented invention of the grounds that a market
for the patented invention is not being supplied on reasonable terms in Kenya;
(b) A non-voluntary licence shall not be granted if the owner of the patent satisfies the
Tribunal that circumstances exist which justify the fact that the market for the
patented invention is not being supplied, or is not being supplied on reasonable terms
in Kenya.
Compulsory licences based upon interdependence of patents, clause 73(1) - (4) of the
Industrial Property Bill 2001, state:-
1. Where a patented invention cannot be worked without infringing the rights derived
from an earlier patent, the owner of the latter patent may request the Tribunal at any
time for the grant of a compulsory licence wi th respect to the earlier patent to the
extent necessary for the working of his in ventions, if the invention constitutes an
important technical advance of considerable economic significance in relation to the
invention claimed in the earlier patent.
2. The owner of the first patent shall be entitled to a cross-licence on reasonable terms to
use the invention claims in the second patent.IP/C/W/294
Page 25
3. The use authorised in respect of the first patent shall be non-assignable except with
the assignment of the second patent.
4. In this section, “earlier patent” or “first patent” means a patent granted on an earlier
application or benefiting from an earlier validity claimed priority date, and “laterpatent” or “second patent” shall be construed accordingly.
Clause 74(1) of the Bill provides that, a compulsory licence shall not be granted unless the
person requesting the licence,
(a) satisfies the Tribunal that he had asked the owner of the patent for a contractual
licence but has been unable to obtain the licence on reasonable commercial terms and
within a reasonable time; and
(b) Offers guarantees satisfactory to the Tribunal to work the relevant invention
sufficiently to remedy the deficiencies or to satisfy the requirements, which gave rise
to his request.
The above requirements shall be varied in the case of a national emergency or other
circumstances of extreme urgency, provided the owner of the patent shall be so notified as soon as isreasonably practicable.
Clause 75(1) of the Bill, in considering a request for a compulsory licence, the Tribunal shall
decide whether a compulsory licence may be granted and shall then, if it decides in favour of the grant
taking into account any terms agreed by the parties, proceed to fix the terms which shall be decried to
constitute a valid contract between the parties and shade be governed by the provisions of contractuallicences.
In fixing the terms the Tribunal shall ensure that the compulsory licence:-
(a) is limited, in scope and duration, to the purpose for which it was authorised, and in
the case of semi-conductor technology, shall only be for public non-commercial use
or the remedy a practice determined after a judicial or administrative process to beanti-competitive;
(b) is limited predominately for the supply of the domestic market;(c) does not entitle the license to grant further licences, without the consent of the owner
of the patent;
(d) is non-exclusive; and(e) provides for the payment to the owner of the patent of remuneration which is
equitable with due regard to all the circumstances of the case, including the economic
value of the licence.
Under clause 76 of the Bill, the compulsory licence  is transferable and only with that part of
the industrial undertaking or its goodwill, in which the relevant invention is used and no such transfer
shall be valid until the consent of the Tribunal has been obtained.
Clause 77 of the bill provides that, a compulsory licence may be cancelled:-IP/C/W/294
Page 26
1. on application of any interested party, the Tribunal may cancel a compulsory licence
if:-
(a) the licensee fails to comply with their terms of the licence; or(b) the conditions which justified the grant of the licence have ceased to exist and
are unlikely to recur; provided that the legitimate interests of the licensee are
adequately protected.
2. On the application of the Minister, or on the application of the owner of the patent,
the Tribunal may, cancel the compulsory licence if, within two years from the grant
of the licence, the licensee has not taken the necessary steps to work the relevant
invention sufficiently so as to remedy the deficiencies or to satisfy the requirementswhich give rise to his application for the said license.
3. On application of the owner of the patent or the licensee, the Tribunal may vary the
terms of a compulsory licence if new facts justify the variation and in particular if the
patentee has granted contractual licence or more favourable terms.
16. What term of protection does the patent law of Kenya provide for patents?  Please describe
any provisions for extension of the term of protection and cite to the relevant provisions of the law.
According to Section 39 of the Industrial Property Act Cap 509, a patent term is seven years
from the date of filing and may be  extended for  two terms of five  years each.
However, under clause 60, of the Industrial Property Bill 2001, the term of a patent shall be
20 years from the date of filing in conformity with Article 34 of the TRIPS Agreement.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
17. Please describe in detail the protection for layout-designs of integrated circuits providedunder the laws of Kenya, including the term of protection, and cite to the relevant provisions of law.
Kenya has no law on the protection of layout-designs for integrated circuit.  The layout -
designs of integrated circuits Bill, 2001, has been drafted.
The object of the proposed Bill on layout designs of integrated circuits is to encourage
investment, provide incentives for creation and to encourage advancement of technology progress
through acquisition of foreign technology and for connected purpose.
The Registrar of layout-designs of integrated circuits shall register original layout-designs
upon the application for registration by the right holder.
A layout-design is considered to be original if it is the result of its creator’s own intellectual
effort and is not common place among creators of layout-design and manufacturers of integrated
circuits at the time of its creation.
Registration may only be applied for if the layout-design has not yet been commercially
exploited, or has been commercially exploited for not more than two years, anywhere in the world.
Protection under this Act shall not depend upon whether or not the integrated circuit, which
incorporates the proposed layout-design, is itself incorporated in an article.IP/C/W/294
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The protection under this Act shall have the effect that the following acts shall be unlawful if
performed without the authorization of the right holder:-
(a) Reproducing, whether by incorporation in an integrated circuit or not,
(b) importing, selling or otherwise distributing for commercial purposes the protected
layout-design of an integrated circuit in which the protected layout-design is
incorporated, or an article incorporating such an integrated circuit in so far as itcontinues to contain an unlawfully reproduced layout-design (clause 8 (1)  of the
Bill).
The effect of protection of a layout-design under the layout-design Bill does not extend to acts
done for non-commercial purposes or for the sole pu rpose of evaluation, analysis, research or teaching
(clause 8 (2)).
Protection of a layout-design shall be 10 years after the date of commencement of protection.
(clause 9 (3) of the Bill).
H. 
PROTECTION OF UNDISCLOSED INFORMATION
18. Please describe in detail how the laws of Kenya provide for the protection of undisclosed
information as required by Article 39.2 of th e TRIPS Agreement and provide citations to the
relevant provisions of law.
Kenya is in the process of drafting a bill to protect undisclosed information
19. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical products submitted to the government in order to obtain
marketing approval in Kenya and cite to the relevant provisions of law.
The Pharmacy and Poisons Act, Cap 244 of the laws of Kenya, has provisions for the
Registration of Drugs or Pharmaceutical products.
Test data submitted to the Registrar is handled confidentially.
The Pest Control Products Act, Cap 346 of 1982, revised in 1985 regulates the importation,
exportation, manufacture, distribution and use of products used for the control of pests and of the
organic function of plants and animals and for connected purpose.
The Pest Control Products Board administers the Act.  Under sections 3 and 4 of the Act, the
information submitted to the Secretary of the Board for registration of Chemical Products is notaccessible to any third party without the authority of the owner.
Under section 12, any person who contravenes the provisions of section of 3 and 4 on
confidentiality of information shall be guilty of an  offence and shall be liable to imprisonment for a
term not exceeding two years.
20. Are other applicants for marketing approval for their own versions of a previously approved
pharmaceutical or agricultural chemical products pe rmitted to rely on data submitted by the earlier
applicant?  If so, how long a period of exclusivity is given the earlier applicant before such reliance
becomes possible.
Under the two Acts mentioned in No19 abov e, the Pharmacy and Poisons Act and Pest
Control Products Act for the Registration of Pharmaceutical and Agricultural Chemical Product inIP/C/W/294
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Kenya, third parties do not have access to information previously submitted for approval for the
marketing of pharmaceutical or agricultural chemical products.
I. ENFORCEMENT
21. Please describe in detail the manner in which the laws of Kenya provide for effective action
against infringement of intellectual property rights as required by Article 41 of the TRIPS Agreement.
Please also explain any delays that may be associ ated with the enforcement of intellectual property
rights.
he Commercial Division of the High Court deals with matters relating to intellectual property.
This division was set up two years ago in order to expedite hearing and determination of commercial
cases. Heavy workload at times causes delay that ma y be associated with enforcement of intellectual
property rights.
22. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order production
of evidence necessary to substantiate a party’s claims where that party has been unable to obtain
such evidence from the opposing party.  Please de scribe how the laws or regulations of Kenya
provide this authorization, citing to the relevant provisions of law or regulation.
Section 119 of the Industrial Property Act gives the Industrial Property Tribunal powers to
make orders for the purposes of securing the attendance of any person , the discovery of production of
any document, or the investigation or punishment for contempt of court , which the court has power to
make.
Clause 37 of the Copyright Bill 2001 provides for Anton Piller orders, which may be granted
ex parte  and basically prevent the other party from destroying any evidence.
23. Please describe in detail all of the civil remedies that are available to right holders under the
laws of Kenya, citing to the relevant provisions of law or regulation.
Section 110 of the Industrial Property Act , section 5 of the Trade Marks Act and section 15
(2) of the Copyright Act set out the civil remedies available to rights holders such as injunctions ,
damages, taking of accounts, etc
24. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of Kenya, citing to the relevant provisions of law and regulation, and indicate anycondition under which a right holder may avail itself of those procedures and remedies.
Section 110 (1) (a) of the Industrial Property Act provides that the Industrial Property
Tribunal may issue an injunction to prevent infringement where such infringement is eminent .
Clause 37 of the Copyright Bill 2001, provides for issuance of Anton Piller orders, basically
to prevent destruction of any evidence.
J. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES
25. Please describe in detail the procedures under the laws of Kenya that provide for border
enforcement at least for trademark counterfeiting and copyright piracy, identifying the competent
authority and citing to the relevant provisions of law or regulation.
Goods which are copyrighted, trademarked or patented are considered to be restricted and
would therefore be governed by Section 14(2) a nd 15(2)(a) and the Eighth Schedule of the CustomsIP/C/W/294
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and Excise Act. These can also be gazetted by the Minister in accordance with the provisions of
section 15 of the Customs and Excise Act.
The competent authority is the Customs and Excise Department.  Under the Customs and
Excise Act, the Commissioner of Customs and Excise has powers to impound goods that are
prohibited or restricted under any law for the time in  being in force in Kenya.  By the right holder
applying to the Commissioner of Customs and Excise giving details of the consignment suspected tobe infringing, the Commissioner, can suspend release of the goods on the basis of the said provisions.
Section 185 contains provisions for the offences on this category of goods.
26. Please indicate if border enforcement is avai lable to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
The relevant provisions of the law governing all forms of intellectual property are sections 14
and 15 of the Customs and Excise Act as prohibited or restricted goods.
The procedure to be followed should be determined by the Competent Authority appointed by
the Minister but in all cases, the Commissioner of Customs and
Excise should be notified of the existence of the rights.
Under section 185, the offender is liable to a fine not exceeding five hundred  thousand
shillings or imprisonment for a period not exceeding three years or both.
27. Article 58 of the TRIPS Agreement specifies pr ocedures to be followed where the competent
authorities can act ex officio.  Please explain whether the competent authorities in Kenya are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
The Eighth Schedule to the Customs and Excise Act empowers the Commissioner to deal
with all prohibitions under any law for the time being in force in Kenya, although there are no special
provisions applicable to ex officio actions.
All forms of intellectual property provided for under the laws of Kenya can be treated as
prohibited or restricted goods provided for under sections 14, 15 and the Eight Schedules of the
Customs and Excise Act.
K. CRIMINAL PROCEDURES
28. Please describe in detail how the laws of Ke nya implement Article 61 of the TRIPS Agreement
that requires Members to have criminal proce dures and penalties, including imprisonment and/or
monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark counterfeiting and
copyright infringement on a commercial scale.  Please cite to the relevant provisions of law and
regulation.
Under section 58 of the Trade Marks Act, forging a Trademark or sale or importation of
goods or performance of services with forged regist ered Trademark constitute an offence liable to a
fine not exceeding Ksh.10,000.00 and or to imprisonment for a term not exceeding five years.  Underthe proposed Trademark Amendments the fine has been increased from Kshs.10, 000.00 to
Kshs.200,000.00.
Under section 16 of the Copyright Act, anybody  who makes for sale or hire any infringing
copy, distributes an infringing copy or imports into Kenya otherwise than for his private and domesticIP/C/W/294
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use is guilty of an offence punishable by a fine not exceeding Kshs.200,000.00 and/or imprisonment
for a term not exceeding five years.  Under the Copyright Bill, 2001, the penalty has been increased to
Kshs.800, 000.00.  The term of imprisonment has been increased to ten years.
29. Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of Kenya that provide
for such remedies, and describe the circumstances in which those remedies would be imposed, citing
to the relevant provisions of law or regulation.
Under section 58H(1) of the Trade Marks Act, provides that the court may declare any goods
in respect of or by means of which the offence was committed to be forfeited to the Government
unless the owner shows cause to the contrary.  Th e police also have power to seize any infringing
goods under the inserted section 58H(2) of the Trade Marks Act.
Under section 16(7) of the Copyright Act, the court before which a person is charged with
Copyright infringement, is required to order that any article in the possession of the infringer which
appears to the court to be an infringing copy or to be an article used or intended for to be used formaking infringing copies be destroyed or delivere d up to the owner of the copyright, or otherwise
dealt with as the court may think fit.
Penalties, forfeitures and seizures are also provided for under the Customs and Excise Act,
section 195-204.
30. Article 61 also indicates that Members may provide for criminal procedures and penalties in
cases of wilful infringement of other forms of intellectual property.  Please describe any provisions of
the laws of Kenya that provide for such procedures and remedies, citing to the relevant provisions of
law or regulation.
Under section 113 of the Industrial Property Act, infringement is a criminal offence
punishable by a fine of not less than Ksh.10,000 and not exceeding fifty thousand shillings and or
imprisonment for a term not less than three years and not more than five years.  There are no
provisions in the Act that make infringement of Industrial designs or utility models a criminaloffence.  However under the proposed Industrial Property Bill, 2001, infringement of an industrial
design or utility model will be punishable like infringement of a patent as provided under clause 109
of the Bill.
L. STATISTICAL QUESTIONS
31. Please provide statistical information related to civil copyright, trademark, geographicalindication, industrial design, patent, integrated circuit layout-design, and trade secret enforcementfor 2000, including the number of cases filed;  injunctions issued;  infringing products seized;
infringing equipment seized;  cases resolved (i ncluding settlement); and the amount of damages
awarded.
Although a number of cases were filed in court in  the year 2000, the exercise of compiling the
requested statistics is not yet complete. The requisite information will be provided as soon as the
information is available.
32. Please provide statistical information related to  criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,convictions, and the amount of fines and/or jail terms (including whether the fines were paid and
whether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.IP/C/W/294
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Although a number of cases were filed in court in  the year 2000, the exercise of compiling the
requested statistics is not yet complete.  The requisite information will be provided as soon as the
information is available.
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