Intellectual Property2024-07-17T10:54:26+00:00

Intellectual Property law in kenya

Our specialist intellectual property and technology lawyers work closely with clients to develop, protect, promote and enforce their intellectual property rights. We advise on all aspects of the exploitation and use of intellectual property rights and the acquisition and use of information technology products and services. We work for companies in a variety of industries and our specialist intellectual property expertise ensures that we are able to provide cost effective advice that is commercially sound and practical. Our lawyers are also experienced in both contentious and non-contentious enforcement of intellectual property rights relating to expungement, infringement and opposition proceedings in respect of patents, plant breeders rights, unregistered and registered designs, copyright and database rights, image rights, domain names, trade marks and the law of passing off. We handle and advise on registration of various IP rights through local, regional and international registries. We also advise on legal issues arising from parallel importation of goods.

We offer particular expertise in relation to acquisition of rights, transactions involving licensing and the transfer of technology, technology joint ventures, research and development and franchising agreements.Our practice and expertise also extends to advising on intellectual property questions arising in connection with mergers and acquisitions and establishment of new businesses. We also advise on regulatory and liability questions on and arising from the introduction and use of transgenic materials in the local market. WTT Lichuma Advocates LLP operates the oldest and one of the largest trademark practices in Kenya.

Intellectual Property Scenarios

A business owner retained us to examine a competitor’s use of the business owner’s name in a nearby city. Investigators snapped pictures showing the offending use. The competitor refused to back down and suit was filed for trademark infringement. We succeeded in receiving an injunction for our client against the competitor’s use of the name, requiring the competitor to change the name.

A business owner retained us to examine actions of former employees who had left the company and taken up similar positions with another company. Further, evidence existed that the employees had transferred vendor and customer and pricing information from their work computers to disks and removed the disks from the work place. Through quick action we secured a temporary restraining order, later converted to a preliminary injunction against the employee working for the competitor, and against use of the confidential client information.

INTELLECTUAL PROPERTY LITIGATION

We offer particular expertise in relation to acquisition of rights, transactions involving licensing and the transfer of technology, technology joint ventures, research and development and franchising agreements.

Our practice and expertise also extends to advising on intellectual property questions arising in connection with mergers and acquisitions and establishment of new businesses. We also advise on regulatory and liability questions on and arising from the introduction and use of transgenic materials in the local market. WTT Lichuma Advocates LLP operates the oldest and one of the largest trademark practices in Kenya.

Intellectual Property Litigation

Patents

The Firm’s Patent Practice includes the handling of utility and design patents. We prepare and prosecute patent applications domestically and internationally. Our patent prosecution practice covers a broad range of industries. We cover a variety of arts that include the electrical, computer, software (including smartphone an tablet apps), connected devices, mobile technology, wireless, chemical, manufacturing and material sciences, among others. We have prepared and prosecuted applications for patents in areas such as mechanical objects, software applications, mobile device applications, computer processing and circuits, quality assurance procedures, manufacturing methods, chemical objects and processes, chemical compositions, board games, explosive devices, motor vehicle apparatuses, medical and dental instruments, and gear activated devices, among others.

Our skills in patent prosecution are tempered by trial experience. Having stood before juries, we recognize the need for a readable patent. We understand the difficulty of drafting patent applications over complicated arts with claims that can be understood by the typical juror. We know that if the jury doesn’t understand your invention and can’t read your claims, your patent value decreases.

We identify the core of your invention, and we protect it. We help clients develop and execute patent strategies, from the preparation and filing of patent applications to appeal, reexamination, reissue and interference. We provide freedom-to-operate opinions, non-infringement and invalidity opinions, intellectual property due diligence, and support for mergers and acquisitions. We counsel clients on how to exploit their patent assets, including negotiating and drafting licenses and other contracts. We handle an array of patent needs.Our attorneys help clients obtain, maintain, and enforce patents. Additionally, we assist clients with patent prosecution and enforcement strategy, portfolio management, and evaluation of a competitor’s patent position.

COpyrights

Our Copyright Practice covers all aspects of copyright registration and enforcement. International law provides protection to artists and authors to prevent others from copying works set down in a tangible media.The computer and the internet have fundamentally altered the limits of copyright protection, allowing copyright registration in the areas of software, databases, and websites, as well as in traditional areas such as literature, arts, and music, among others.

Our practice aims at securing the greatest protection for our clients property, regardless of the medium and form that it takes. Our practice includes accelerated applications for special handling when known infringers exist. Representation also includes registration of copyrights for software programs that may be submitted concurrently with patent applications directed to software inventions to provide the greatest breadth of protection.

TRADE SECRETS

Our comprehensive intellectual property practice includes counseling in the handling and licensing of trade secrets, as well as lawsuits to protect those secrets when misappropriated. We review trade secret controls to see if there are adequate controls and agreements in place to identify and maintain trade secret status of proprietary information.

We have secured court injunctions from the use and dissemination of misappropriated trade secrets. In one of our recent cases, a sales person with access to trade secret customer lists and vendor lists, and pricing, jumped ship and signed on with a new competitor and started making sales to those very customers, at lower prices. A quick law suit against the employee for misappropriation of trade secrets was able to secure an injunction of further use of the confidential information. Coupled with a notification letter to the new competitors, the activity was curtailed.

Why WTT Lichuma Advocates To Protect Your Intellectual Property

FAQ’s on Intellectual property in Kenya

What is Intellectual Property (IP)?2024-07-05T11:40:23+00:00

Intellectual Property (IP) refers to creations of the mind, such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce. IP law provides legal protection for these creations, giving the creators exclusive rights to use and benefit from their work.

What types of Intellectual Property are recognized in Kenya?2024-07-05T11:41:43+00:00

Kenya recognizes several types of IP, including:

  • Patents: Protection for new inventions.
  • Trademarks: Protection for distinctive signs, logos, and names used in commerce.
  • Copyright: Protection for literary, artistic, and musical works.
  • Industrial Designs: Protection for the visual design of objects.
  • Geographical Indications: Protection for products that have a specific geographical origin and possess qualities or a reputation due to that origin.
  • Trade Secrets: Protection for confidential business information.
How can I register a trademark in Kenya?2024-07-05T11:42:34+00:00

To register a trademark in Kenya, follow these steps:

  • Search: Conduct a trademark search to ensure your trademark is unique.
  • Application: File an application with the Kenya Industrial Property Institute (KIPI) including details of the trademark and its use.
  • Examination: KIPI examines the application to ensure compliance with legal requirements.
  • Publication: If approved, the trademark is published in the Kenya Gazette for opposition.
  • Registration: If there are no oppositions, or if oppositions are resolved in your favor, KIPI registers the trademark and issues a certificate.
What are the penalties for IP infringement in Kenya?2024-07-05T11:43:22+00:00

Penalties for IP infringement in Kenya can include:

  • Civil Remedies: Injunctions, damages, and account of profits.
  • Criminal Penalties: Fines and imprisonment for offenses such as counterfeiting and piracy.
  • Seizure and Destruction: Infringing goods can be seized and destroyed. The specific penalties depend on the type of IP and the nature of the infringement.
How long does IP protection last in Kenya?2024-07-05T11:45:00+00:00

The duration of IP protection varies by type:

  • Patents: 20 years from the filing date, subject to payment of annual fees.
  • Trademarks: 10 years from the filing date, renewable indefinitely for further 10-year periods.
  • Copyright: Life of the author plus 50 years after their death for most works.
  • Industrial Designs: 5 years from the filing date, renewable for two additional 5-year periods.
  • Geographical Indications and Trade Secrets: Protection is indefinite as long as the conditions for protection are maintained.
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