THE CONCEPT OF UTILITY MODELS IN KENYA

By Ameli Inyangu & Partners, Advocates

In Kenya, utility models provide an efficient and accessible way for inventors to protect innovations that may not meet the rigorous patentability criteria. Often referred to as “petty patents” or “innovation patents,” utility models are tailored for inventions of an incremental nature, focusing on practical utility rather than groundbreaking novelty.

This article explores the key characteristics, benefits, and registration process of utility models, providing a comprehensive guide for innovators in Kenya.

What Are Utility Models?

A utility model grants an inventor exclusive rights to prevent others from commercially using their innovation without authorization. Unlike patents, utility models offer a less stringent, faster, and more affordable path to intellectual property (IP) protection.

Key Characteristics of Utility Models

1. New Technical Features: The innovation must have technical features that are novel and capable of industrial application.
2. Novelty: The invention must be new but does not need to be absolutely novel worldwide. It only needs to be novel within Kenya.
3. Inventive Step: While an inventive step is required, the threshold is lower than for patents, making utility models accessible for incremental innovations.
4. Industrial Application: The invention must be usable in any industry, including agriculture.
5. Unity of Invention: A utility model application must focus on a single invention or a unified concept. Multiple inventions require separate applications.

Differences Between Utility Models and Patents

Utility models differ from patents in several significant ways:

• Lower Requirements for Registration: Utility models are ideal for incremental innovations that may not qualify for patents.
• Shorter Duration: Protection lasts up to 10 years, with no option for renewal, compared to patents, which typically last 20 years.
• Simpler Registration Process: The examination for utility models is less rigorous and faster than that for patents.
• Lower Costs: Utility models are more affordable to obtain and maintain, encouraging local inventors to utilize them.
• Scope of Protection: Utility models cover products but not processes, focusing on physical items or designs.

Rights Conferred by Utility Models

Once registered, the owner of a utility model enjoys the following rights in Kenya:

1. Exclusive Reproduction Rights: Preventing others from reproducing the industrial design in manufacturing.
2. Commercial Control: Prohibiting unauthorized importation, sale, or distribution of products using the protected design.
3. Stocking Restrictions: Restricting others from stocking the product for sale without authorization.

Registration Process for Utility Models

To obtain protection under a utility model, the following steps must be completed:

STEP 1: Application Submission

The application must include:

• A request (Form IP3).
• A detailed description of the invention.
• One or more claims defining the scope of protection sought.
• Drawings (if applicable) illustrating the invention.
• An abstract summarizing the innovation.

STEP 2: Examination

The Kenya Industrial Property Institute (KIPI) examines the application to ensure compliance with the requirements. The application may be rejected if:

• The submission lacks essential documents like an abstract.
• Prescribed fees are unpaid.
• The claims or descriptions fail to meet statutory requirements.

STEP 3: Publication

If the application passes examination, it is published in the Kenya Gazette or the Industrial Property Journal, and the applicant pays the publication fees.

STEP 4: Certification

Once approved, a utility model certificate is issued. The certificate remains valid for up to 10 years from the date of registration and is non-renewable.

Conversion Between Patents and Utility Models

Applicants have the flexibility to convert a patent application into a utility model application—and vice versa—at any point before the grant or rejection of the patent. This is particularly useful if an invention does not meet the patentability criteria but qualifies as a utility model.

Important Note: An application can only be converted once in either direction.

Advantages of Utility Models

• Accessibility: With lower costs and faster processing times, utility models are ideal for small and medium-sized businesses and individual inventors.
• Protection for Incremental Innovations: Utility models cater to improvements and modifications that may not qualify for patents but are valuable in the market.
• Flexibility: The ability to convert applications allows inventors to adapt their IP protection strategy.

Challenges and Limitations

While utility models offer significant benefits, there are a few limitations to consider:

• They apply only to products, not processes.
• The protection period is shorter and non-renewable.
• It may take up to 18 months to receive the certificate, potentially delaying enforcement.

CONCLUSION

Utility models are a valuable tool for Kenyan innovators seeking quick and cost-effective IP protection for incremental innovations. By understanding their features, benefits, and registration process, inventors can leverage utility models to safeguard their creations and capitalize on their commercial potential.

For tailored advice on intellectual property law and guidance on registering utility models, contact us at Ameli Inyangu & Partners Advocates.

Contact Us:

• Email: [email protected]
• Phone: +254 722 367647