INTELLECTUAL PROPERTY (IP)

A. Introduction
Intellectual property (IP) recognizes, rewards, protects and promotes creativity - the product of the
mind. It can also facilitate access to the products of innovation and creativity by the public.
Allocating IPRs to the creator of a work balances the private interests of the creator, by ensuring
that s/he still has an incentive to create, against those of the society at large in having the
information available for its use.
Even though it does not diminish once it is shared, the role of IPRs is to ensure that information
providers do not lose rights to the information by disclosing it, since such information can be used
by an infinite number of persons simultaneously. Indeed, one of the philosophic underpinnings of
IPRs is to ensure disclosure of the information, the assumption being that lack of such right would
discourage information holders from sharing their information for fear of losing it. The fear of
losing exclusive rights to the information once shared is real because another person can use the
same idea without having recourse to the originator of the idea
B. Philosophy Of Property Ownership In The Western World
There are two schools of thought inform the Western philosophy to property ownership.
• The deontological school teaches that a person has a natural right to a person’s creation
irrespective of the consequences. Hereunder, an inventor is rewarded for working hard.
The main proponent of this scholar John Locke (1632-1704) tried to link natural rights to
a theory of property. Locke propounds that God gave the earth to mankind in common and
that each individual has ‘property’ in his/her own ‘person’ and the ‘labour’ of his/her body
and the ‘work’ of his/her hands. Indeed, with respect to IPRs, the production of ideas comes
from a person’s labour, the ideas themselves coming from a commons without getting
exhausted and that ideas can become property without being wasteful. Hence, those who
sacrifice to ‘labour’ should be rewarded with property rights.
• The consequentialist/utilitarian school (first propagated by Jeremy Bentham :1748-1832)
holds that IPRs are seen as an incentive to further technological advancement. IPRs are
thus granted to ensure that enough intellectual products are available to the larger
society….focus in the use not so much on the individual
In summary, John Locke ( natural rights theory) posits that the results of an individual’s labour
and ideas were part and parcel of his identity and were inalienable. Over time, this theory declined
in influence and a more utilitarian one influenced by Bentham took hold. Under the more current
utilitarian theory, patent rights are seen as creations by society for the purpose of serving the
economic interests of the society as a whole. This theory is premised on rewarding for their
creativity (incentives and rewards)—that creators are encouraged to invent by the promise of a
reward in the form of monopoly rights over their creation for a limited amount of time.

Put differently, it should be appreciated that the Western philosophy of property ownership (both
Lockean and Utilitarianism) emphasize individual ownership of property. It is the individual, who
would have worked out an idea who is then accorded exclusive rights to property.

C. Main types of Intellectual property

Initially, the term “intellectual property” did not exist as the focus was on “industrial property”.
With the dawning of the “post-industrial” era i.e. the age of technological advancement, the
boundaries between the industrial and artistic blurred, and the inclusive term “intellectual property”
became commonly used to refer to the results of creative human endeavor protected by law.
Intellectual property has various aspects:
a) Patent
A patent is a bundle of rights and obligations conferred or imposed, respectively, on an
innovator. It provides an innovator with exclusive control of the innovation in exchange
for disclosing it to the public through the patent office.
Patent protects and promotes high technology inventions rather than lower level
innovations, fabrications, improvement, modifications or “discoveries.”
An invention embodies scientific intervention or a qualitative leap in technology. It may
involve substantial modification or improvement. A patent may be granted for a product or
a process or both. A patent may also be granted for a technological improvement especially
in a case where the patent term is about to lapse. In Kenya the grant is for 20 years upon
application made by the inventor or beneficiary to the Kenya Industrial Property Institute
(KIPI).
For a patent to be awarded four main standards must be achieved, namely:
 • Newness- not mere low-level innovations, fabrications, improvement,
modifications or “discoveries.”
• Inventive step (or non-obviousness)- This means that the invention should not be
obvious to a Person Having Ordinary Skill In The Art (PHOSITA). An invention
need not be complex for it to constitute an inventive step; it may be simple but not
obvious.
• Industrial application (or utility) - the doctrine of utility; unless the prototype or
model or a pen can be (mass manufactured), it would have no or limited utility
except perhaps as a museum piece or an object of intellectual curiosity.
• Reproducibility - This means that one should be able to reproduce the product or
process so that many can use it. This requirement is related to the one on usefulness.
• Moreover, the invention must not be excluded by statute. Certain kinds of
invention may be excluded by Statute for reasons such as national security; for
instance ballistics.
b) Trade mark (TM, ®) Service Marks (SM) and domain name system (DNS)
Trade mark (TM) largely deals with the second level of innovation, which consists of going
to market. Trade/service marks and trade names comprise symbols, words, phrases, or
designs used to distinguish the goods or services of one person from those of others. They
guard against unfair competition and serve as advertising tools.
Trade mark more directly seeks to answer the question, “what is in a name, a symbol, a
sign, a mark, etc” TM is an IP right granted in order to distinguish the goods or services of
one trade mark proprietor or licensee from those of the competitor. The cognate expression
is service marks. For example, Windows is a service mark for Microsoft; University of
Nairobi (UoN) and Jomo Kenyatta University of Agriculture and Technology (JKUAT),
are service marks for the respective universities; Safaricom, the Hilton, are other examples.
Trade mark serves the following four purposes:
• To identify, or indicate the source or origin of the goods, services or technologies,
by linking a product to the source;
• To protect the goodwill or investment by the trade mark proprietor,trader, or
corporation;
• To limit or eliminate confusion of consumers.; and
 • To confirm consumer expectation.
A trade mark must be registered for it to be protected. Trade marks can exist
intermittently, and are protectable in Kenya for a renewable period of 10 years.
However, sec.. 5 and 15A of the Trade Mark Act Cap. 506 protect and promote
unregistered marks where good will has developed to the benefit of an individual or an
enterprise (hence passing off under sec. 5), or where the mark is well known, famous
or notorious in the relevant industry or market (under s. 15A).
Trade mark is a common feature in commerce as it constitutes the interface between
invention and packaging or marketing. Various companies have registered trade marks
which feature in e-commerce.
c) Copyright and related rights
Copyright and neighbouring or related rights provide protection for the expression of ideas.
Copyright protects the original expression of thoughts or ideas and not the ideas
themselves. It guards against copying of literary, musical and artistic work which includes
writings, music, works of the fine arts, such as paintings and sculptures, and technology
based works such as computer programs and electronic databases, broadcasts, audio-visual
works, sound recordings.
Copyright is protectable and enforceable where the work is original, and expressed in a
tangible or fixed form.
Under the Kenyan Copyright Act, 2001 copyright subsists in a literary, musical and artistic
work if “sufficient effort has been expended on making the work to give it an original
character” and “the work has been written down, recorded or otherwise reduced to material
form.” Copyright law exists to protect and promote the expression of ideas (information,
facts, knowledge or concepts) reduced into tangible form. It protects the intellectual
standing and economic livelihood of creators and publishers of literary, dramatic, artistic,
musical, electronic and audio-visual works.
Copyright law works under various principles or doctrines. First, it seeks to enhance
creativity and provides incentives for it. Second, it seeks to achieve a balance for creativity
and rewards on the one hand, and for securing freedom of expression and public interest
on the other.
Copyright subsists automatically immediately the work is reduced into a tangible form, for
example a book (literary), sculpture (artistic) or music.
The Kenyan Copyright Act, 2001 provides for the following categories of copyrightable
works: (a) literary work, (b) musical works, (c) artistic works, (d) audio visual works, (e)
sound recordings; and broadcasts.
The subject matter of copyright branding consists of primary and secondary works
• Primary or “original” works; comprise literary, artistic and musical works. It is
instructive to note that a dramatic work such as a skit falls under performance when
staged whereas published play is a literary works. Original works also include audio-
visual works and photographs, sound recordings and broadcasts.
• Secondary (or derivative) works. Derivative works are developed or derived from
other works especially, primary work. They may also be derived from other
derivative works. They include audio-visual works, films, broadcasts and cable casts.
Derivative is more of an American term. These works are granted rights known as
related, allied or neighbouring rights which are separate from traditional copyright.
It is instructive that the conventional distinction between primary or original rights and
related or neighbouring works is breaking down because of at least two reasons. First,
many secondary works are “original”; many additional works are original components
and are not derived from primary works. In Kenya, USA and even in Europe (where the
distinction used to be rigid) the two sets of works are governed by a single Copyright
Act.
Broadly, copyright confers two forms of rights: economic or material rights, and moral
rights.
• Moral rights consist of four categories, namely, the right to be named (or the
right to paternity); the right to integrity; the freedom from false attribution and the
right to privacy.
• Economic rights are associated with copyright (or the right to a copy). It is also
an entrepreneur’s right to secure economic and financial benefits from investing
in a work. It relates to innovation in the second sense; that is marketing the work
and benefiting from it as opposed to creating the work in the first instance.
 Economic rights constitute a critical aspect of contracts relating to the exploitation of
copyright, folklore, and rights in performances. Economic rights protect an author of
a book from having their work sold, copied, etc. without permission or a contractual
license. Economic rights seek to secure the material or financial benefits from
innovation or creativity. These include the right to:
o Reproduce a work (copy by hand, photocopy, scan, print…)
o Communicate to the public
o Broadcast a work or distribute it (lend, rent, sell, offer for sale…)
o Develop a derivative or adapted work from an original work.
Economic rights are transferable. They may be assigned or licensed. They survive the
author and benefit his or her estate, unlike moral rights that live and die with the
author.

d) Trade secret (TS)

Trade secrets are protected where they consist of confidential information with commercial
value (for example the secret Coca Cola formula has proved to be of immense value), and
there is an obligation to keep the information secret. Secrets without commercial value may
be covered under the laws on defamation, privacy and the right of publicity, among others.
Trade secret law recognises that products of the mind may not be effectively protected by
patent, copyright, trade mark or any other traditional IP doctrine.
Trade secrets are protected in order to protect and promote technological or commercial
know-how that may not be effectively governed by other IP regimes. For instance, under
the Kenya intellectual property regime, a way of doing business is unpatentable. Thus any
e-commerce related innovation may be protected as a trade secret. However, the law of
trade secrets is not very reliable because of a number of limitations. These include the fact
that it may be very difficult to establish the right; competing enterprises may have similar
trade secrets. The enforcement and protection of trade secrets is equally problematic. For
instance, policy questions arise since the concept of confidentiality may be considered
unacceptable for exchange of information and technological progress: disclosure in
exchange for protection underpins most IP doctrines in Kenya. Trade secrets related to e-
 commerce may include formulas, processes, patterns, software designs, customer lists,
customer preferences and internal business and marketing plans.
e) Industrial designs- Granted for novel/new designs establishing rights on the
ornamental/decorative/attractive visual aspects (such as shape, color codes)that give
something special appearance as opposed to purely functional aspects of an article/product..
f) Geographical indication (GI)- identifies a good as originating in the territory of a
particular country, or a region or locality in that country, where a given quality, reputation
or other characteristic is essentially attributable to its geographic origin. GI guard against
misleading the public on the geographic origin of goods.
g) Mask work or layout design of integrated circuits- Provide protection of designs of
integrated circuits used for telecommunications and the internet
h) Unfair competition (UC)