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Venue: IndustrialProperty Tribunal, Nairobi
Case ID: 57 of 2008
Tribunal Panelists: George Weloba
            : Dr. MtanaLewa
            : David Kamau
Date of Decision 16th October, 2013
Applicants Chemserve Limited
Respondents: Sanitam Services
Keywords
Facts
Requestor lodged a claim on 14th April 2008 to revoke the Respondent’sAripo Patent Number AP773under Section 113(1)/. This claim is based on there being no inventive step, does not qualify under the definition of a patent, does not conform to the definition of an invention, the product is available in another place and the Respondent’s patent contained material misrepresentation. It brought his claim under the standing that the requestor had been importing the products described in the patent before granting of the patent.
The respondent averred that the claim brought is statute barred, the ownership of the patent is duly registered and as such there can be no interference with the patent and lastly that the product has an inventive step thereby being a new product in the market
Issues
1.    Whether the claim is statute barred
2.    Whether the patent had an inventive step


Ruling
The Tribunal ruled in favour of the respondent. The tribunal ruled that the application was time barred because the requestor in this case started the claim 2 years after being aware and as such did not ask for an extension of time before filing the request. The statute states that the claim should be brought before the lapse of 9month. Notwithstanding the time barred application then the application would fail on the ground of the requestor not discharging the burden of proof. Under the law he who alleges must prove. I was thus incumbent that the Requestor should present evidence to show that the product lacked an inventive step, the product existed and that the product was not novel. This should have been done through adducing of evidence. The products were not presented to the Tribunal to show the prior art in question. The requestor and only an affidavit was present.
Cases Cited
Sanitam East Africa Services and Rentokil Services ltd and another

RULING
The Requester by a claim lodged in the Tribunal dated 14th (sic) April 2008 but filed on the 12th April 2008 seeks revocation of the Respondents Patent number AP 773 under Section 113(1) of The Industrial Property Act on the grounds that:
(i)    It is not new and involves no inventive step as stipulated under Section
22 of The Industrial Property Act, 2001
(ii)    It does not qualify under the definition of patent as stipulated under
Section 21(1) of the Industrial Property Act, 2001
(iii)    It does not conform to the definition of an invention as stipulated under
Section 23(1) of the IPA as the product was already in existence before the alleged patent was granted to the Respondent
(iv)    The product was available elsewhere in other parts of the world as prior
art and therefore lacks novelty
(v)    The alleged invention was obvious in that it involved no inventive step
having regard to what was common knowledge in the art at the effective date of its application and the Requester had been using the foot operated sanitary bin since 1997, long before the Respondent applied for the patent
 
(vi)    The application for grant of the patent by the Respondent contained
material misrepresentations
The Requester filed a statement of particulars and an affidavit by one Ken Kalali the General Manager of the Requester sworn and filed on the 25th July 2008 on which they relied for detail of the claim. The affidavit and statement apart from rehashing the averments in the Request have gone ahead to aver that the "Company had been importing the said litter/ sanitary disposal bins 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"
He further depones that "By virtue of the Company's having been importing the said litter/sanitary disposal bin that constituted prior art and Patent No AP 773 was wrongly granted to Sanitam Services (EA) Limited's alleged invention"
The Respondent on the other hand filed a Reply to Claim and Counter Statement which raises the following contentions:
(i)    The Claim is statute barred under Section 103(2) of the Act
(ii)    The Respondent has legal ownership of the patent is dully registered by ARIPO and subsisting to date therefore is entitled to its protection under Sections 53 and 54 of the Act
The unique foot operated system patented under patent AP 773 is new
and has an inventive step that does not form part of prior art as envisaged under Sections 21, 22 and 23 of the Act.
Subsequent to the Reply and Counter Statement the Respondent then represented by the firm of Ngugi Mwangi & Mutiso Advocates filed a preliminary objection on the 10th August 2009 contending that:
 
(1)    The Industrial Property Tribunal lacked jurisdiction to hear and
determine issues regarding an application to revoke a patent issued by A.R.I.P.0
(ii)    The Tribunal lacked jurisdiction under the Industrial Property Act to hear
and determine the issues raised by the Claimant.
This preliminary objection was heard on the 13th August 2009 and upheld in the Tribunal's ruling dated and delivered on the 1st October 2009. Subsequently the Claimant not being satisfied with the said ruling sought Judicial Review Orders in High Court Miscellaneous Application Number 661 of 2009 where in a considered ruling Justice Musinga on the 1st December 2010 quashed the decision of the Tribunal and held that it had jurisdiction and directed it to re-instate, hear and determine the application for revocation of patent No. AP773 filed by the Applicant.
Later still, and most no doubt after retaining services of new Counsel in form of M/s Nyamu & Nyamu Advocates, the Respondent filed yet another "Notice of Preliminary Objection" dated 17th January 2012 challenging the Claim on grounds that:
     The Tribunal has no jurisdiction over ARIPO registered patents
The Act only gives power to the Tribunal to revoke patents registered under the Act
Powers of the Tribunal under Section 58(5) of the Act do not involve revocation of ARIPO registered patents
The Managing Director of KIPI cannot revoke ARIPO patents and therefore any orders by the Tribunal revoking them would be unenforceable

As can be readily gleaned from the record, the issues raised under the latter preliminary objection dated 17th January 2012 especially regarding the Tribunal's jurisdiction were in our view adequately disposed by the Ruling of this Tribunal delivered on the 1st day of October 2009 and the subsequent judicial review ruling of Justice Musinga delivered on the 1st day of December 2010 in Miscellaneous Civil Application Number 661 of 2009 in The Matter of an
 
Application For Chemserve Cleaning Services For Leave to Apply for Judicial Review Orders of Certiorari and Mandamus which effectively confirmed that this Tribunal has jurisdiction over ARIPO registered patents and should hear the dispute.
It would appear that M/s Nyamu and Nyamu Advocates for the Respondents having come into the matter after the said ruling were not aware of these rulings at the time they filed the Preliminary Objection dated 17th January 2012 as it literally rehashes the grounds of the Objection that was subject of the rulings save for ground 6 regarding the time bar. That aspect of the preliminary objection is thus dismissed on grounds of res judicata.
in the premises therefore from the pleadings before us the issues that remain for determination under the Claim are basically two, namely,
1.    Whether the Claim is time barred under the provisions of Section 103 of the Act
2.    Whether the patent is valid regarding inventiveness, absence of prior art and novelty
Parties to the matter chose to rely on written submissions and the pleadings without calling any witnesses for reasons best known to themselves and so the Tribunal in keeping with the adversarial system of our dispute resolution mechanism shall address the matter within those confines as to all intents and purposes it was incumbent upon the parties to adduce any relevant evidence in support of their claim or defence before the Tribunal to afford the opportunity of testing its veracity and consistency with the prevailing law.
On the issue of time bar
It is the submission of the Respondent through its advocate Mr. Nyamu that the Request is time barred as it was filed more than nine (9) months from the date of publication as per Section 103(2) of the Act yet no leave has been sought for enlargement of time. No authorities or further submissions are made on this point as in our view the Respondent appears to take this as a pure point of law requiring no elaboration whilst being applied to the facts of the case at hand.
 
The Requester on the other hand in its bid to overcome this barrier has submitted that the Industrial Property Act of 1989 under which the patent was registered did not provide for publication of the grant of the patent and therefore the time bar under The Industrial Property Act of 2001 cannot apply. This argument however has two problems in our view. Firstly the request for revocation is made pursuant to Section 103(1) of The Industrial Property Act 2001 under which the proviso for time flows. Secondly the Requester submits that "the raising of an objection within 9 months of the application being made was not possible because it was already using the bins and further the application was made outside the jurisdiction of Kenya unknown by the requester and so unable to do anything about it"
The question then becomes whether the Requester did not comply with the time bar of nine months because the law then applicable did not require publication of grant or because they were not aware of the existence of the patent. It is also of material importance whether the Requester can rely on the first part of the Section to seek revocation of a grant of patent and excuse themselves from the proviso of the latter part on the time within which such a request must be made. This is important because in our view, a party in a claim should not be allowed to probate and approbate at the same time.
The Requester submits that it only became aware of the existence of the patent on 23rd August 2006 when the Respondent's lawyers first wrote to them alleging infringement. It is therefore not contested that even if there was no requirement of publication or the patent was registered outside Kenya beyond the knowledge of the Requester, they became aware of it on that date and so we hold. It would therefore be material to consider the conduct of the Requester after becoming aware of the existence of the patent.
Section 103(1) of The Act provides that "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.
Section 103(2) of The Act provides that "An interested party may within a period of nine 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"
These two provisions in our view present two scenarios under which a request for revocation of a patent, utility model, industrial design can be made. One under Section 103(1) is where there are proceedings instituted and the other under Section 103(2) within nine months of publication of grant of a patent, utility model or industrial design.
It is noteworthy that the two sections are not continuous in application in the sense that each stands on its own. Whereas in Section 103(1) the act that initiates the right to request for revocation is the institution and pendency of proceedings, under Section 103(2) the act is the publication of the grant. No time limit is given under Section 103(1) as to what point in time the request should be made as the only inference to time can be drawn from the words "in the proceedings" which in common legal parlance extends to the time a final determination is made on the Claim.
In our view when the two sections are read together it becomes probable beyond peradventure that patents, utility models and industrial designs being commercial properties, the legislative intention 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 form of damages and accounts for profits. It also in our view sought to bring to the attention of the proprietor of the patent, utility model or industrial design the existence of a contest to its validity and thereby save them unnecessary expenses in commercializing it. This would imply that for instance, in an action seeking an injunction from commercializing intellectual property where no prayer has been made to inquire into its validity a party is not restricted to responding to the claim per se but can go further and question how it was issued in the first place.
 
The key words under Section 103 therefore are "institution of the suit" and "publication" which in our view could be read to literally mean "when did the party become aware of the existence of a grant of patent, utility model or industrial design". It consequently calls on any remedial measures being taken to take into consideration the conduct of the affected party and justification for orders sought.
The proviso on time on the other hand is a clear qualification of the right to seek revocation of a patent under Section 103. 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.
Intellectual properties are capable of ownership and are intended for corrmerciali7-.tion as culmination of research and industry on the part of the inventor and must therefore like all other properties be afforded protection of the law once granted procedurally for purposes of generating returns on investment in the process. In the premises it is the view of this Tribuna: that anybody claiming to have an invention must exercise vigilance on publications and existing products so that they can challenge what is not original. Similarly, a party commercializing products should take the precaution of ascertaining that his manufacturers are not infringing existing rights of inventors. It is in this light that the time limit of nine months gains relevance to mitigate losses.
Indeed the law in our view being alive to the possibility that a 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 these principles to the instant case, even if the Requester was not aware of the grant of the patent, the history of litigation on the matter shows that they did become aware of it as far back as 2006 but chose not to take action but continue trading in similar products until two (2) years later when they filed the Request. Indeed it appears from the letters of the Requesters clients that it is the action of the clients stopping to order their products that prompted them to come 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 upshot of the a foregoing is that regardless of the Requester's merits on the invalidity of the patent, having not taken up the statutorily available opportunity to seek extension of time either before filing the request or even belatedly in the request the objection on time bar must and is hereby upheld.
However, were we to find that the application was within time it would still fail on the other limbs for the following reasons;
Burden of Proof
In law the time tested maxim is that he who alleges must prove. It is therefore incumbent upon the Claimant to lay before the Tribunal such material or facts as sustain his claim on a balance of probabilities in order to succeed.
In the present case it therefore was incumbent on the Requester to adduce evidence to prove the following issues;
(a)    That the patented products lacked an inventive step
(b)    That the products existed in the market as part of prior art
(c)    That the products lacked novelty
The effect of the revocation sought by the Requester was to deprive the Respondent of its proprietary interest in the patent registered as AP 773 and all commercial gains accruing there from. It was also to nullify the decision of the
 
Registrar of patents at ARIPO by finding fault in the process of registering the patent. These two eventualities are not matters to be taken casually as on the one hand they translate to loss of income and research investment and on the other call into question the diligence and reliability of the registrar in his decisions. This is in the face of the clear provisions of the Act that the certificate of grant of a patent is prima fade evidence of a good title which deserves protection,
The evidence adduced
It therefore was in our view incumbent upon the Requester to call witnesses or tender by documentary form evidence sufficient to demonstrate the three issues which would have been appropriately tested under cross-examination and evaluation for authenticity so as to Enable us come up with a finding that is adequately supported. Regrettably however, as already stated, for reasons not offered both parties chose not to adduce any evidence other that the affidavit of Mr. Ka!al!. Further, that affidavit was not very helpful    it relates to transactions
in similar products manufactured by third parties who were not called as witnesses. The said similar products were not availed in the Tribunal nor was an attempt made to describe within any degree of consanguinity the similarities between them and the product in question. It is our belief from the letters adduced that the suppliers to the Requester have been trading with them and are therefore known to them and the products in issue within their reach. In the premises it was not clear why they were never called or produced respectively. 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 that 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.
 
The Requester cited the authority of Civil Appeal Number 228 of 2004 Sanitam Services (EA) Ltd and Rentokil (K) Ltd and Another in a bid to demonstrate prior art and the lack of necessity to publicize. We have two problems with this citation. One is that the matter is at an appellate level where the Court did not have the opportunity to examine the products purported to be patented. indeed the Court of Appeal only makes passing reference to the High Court's finding that the products were long in the market. The difficulty here is whether the High Court was equipped with the technical knowhow to make such a finding. The Court in arriving at its decision was relying on the existence of at least eight agreements between Rentokil and various entities for the supply of the bins which predate the appellant's application for patent" and evidence that the "technology Rentokil borrowed from the Malaysian design was in existence since 1994." However the same court after finding that the Appellant was subsequently granted a patent in the year 1999 proceeds to hold at page 22 as follows "Ultimately the Court found for the Appellant on that issue and it was logical that injunctory relief which the Appellant sought in the amended Plaint should have been given. In concluding that ground of appeal therefore, we would grant an injunction to last the life of the patent with effect from 16th December 1999, in terms of prayer (a)(i),(ii),(iii), (iv) and (v) of the amended plaint .............it is evident from what we have said that if there was any infringement of the appellant's patent, then it could only have occurred after 16th December 1999. Did the appellant who has the sole onus of proof, place evidence before the superior court to establish the infringement? We are afraid not, and once again we cannot fault the learned judge for so finding."
This case can be distinguished from the present one before us on the grounds that
(I)    It relates to a claim for infringement before the registration of the
patent as opposed to this one where there exists a registered patent
(ii)    It restates the jurisdiction of the Tribunal as the best placed body to determine the intellectual property disputes
(iii)    It firmly places the burden of proof on the person asserting
 
(iv)    It eventually recognizes the patent and proceeds to issue injunctive
orders to protect it.
The other authorities cited by the Requester namely "Terrel on The Law Of Patents" and "Black's Law Dictionary" are quite accurate in defining prior art as "anything in tangible form that may be properly be relie d on by the patent office in patent cases in support of rejection on matter of substance, not form, or claim in pending application for patent" and "Public use does not mean a use or exercise by the public, but a use or exercise in a public manner". However these definitions do not in our considered view oust or shift the burden of proof from the Requester who must demonstrate in tangible form and not just by mere allegations that indeed the patent should be rejected. We have already stated that this threshold has not been met by the Requester in the present case and therefore these authorities may not be of much assistance to them.
In the premises it is the considered finding of this Tribunal that the Request is time barred by reason of Section 103 (2) and that even if it wasn't the Requester has not demonstrated through the evidence before us that the patent forms part of prior art and the Claim is hereby dismissed with costs to the Respondent.

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