Kenya: Unlocking the power of utility models

Understanding utility models under Kenyan law

Kenya’s legal framework provides two primary forms of protection for technical inventions, patents and utility models (which are sometimes referred to as petty patents or innovation patents). A utility model is a form of intellectual property protection granted for minor inventions or innovations that may not meet the stringent inventiveness threshold required for a patent but still offer technical utility or functional improvements. While both aim to protect inventors’ rights, utility models offer a faster, less complex, and more cost-effective route, making them particularly suitable for incremental innovations.

In Kenya, utility models are protected under the Industrial Property Act, Cap 509 Laws of Kenya (the Act). A utility model covers innovations that improve how something works, is used, or is made. This could be a new design for a tool, gadget, electrical circuit, handicraft mechanism, micro-organisms, genetic resources, or herbal or even nutritional formulations. In this article, we explore the legal framework, practical considerations, and implications of utility models in Kenya.

Registration process: Simplicity as a feature, not a flaw

Compared to patents, the utility model registration process is significantly streamlined. The steps include:

• Application – the process begins by applying to the Kenya Industrial Property Institute (KIPI) using the prescribed form. The applications include: a registration request, a description of the utility model, claims, relevant drawings (if applicable), an abstract and payment of the prescribed fees.
• Formal examination – KIPI then conducts a formal examination to ensure the application adheres to procedural guidelines. This includes examining the application for compliance with the filing date and formality requirements.
• Grant and publication – after the examiner confirms that the application meets all formal requirements, it is published in the KIPI Journal. If no objections are raised, KIPI proceeds to grant and issue a Utility Model Certificate (UMC) to the applicant.

A fundamental characteristic of a utility model is that it must have a physical form that enables its function or technical effect. In the case of Evans Mwene Kerina v. Airtel Kenya Limited & Others, the Industrial Property Tribunal (IPT) analysed the statutory definition under the Act, emphasising that a utility model must possess a tangible structure. Consequently, inventions lacking a physical form or discernible configuration may be deemed ineligible for protection, as they are considered mere methods or abstract ideas, which fall outside the intended scope of utility models under the Act.

Considerations when registering utility models

• No substantive examination stage: In 2014, KIPI issued a directive discontinuing substantive examinations of utility model applications. It is important to note that the grant of a UMC can be challenged and revoked if it can be satisfied that the application for the utility model does not contain concise and clear terms of how it is to be operated or performed, in line with Section 34 of the Act.
• Protection period: Under the Act, a utility model is granted protection for a non-renewable period of 10 years from the filing date. An innovation qualifies for a utility model certificate if it involves an inventive step, is new, has not been disclosed to the public anywhere in the world before the filing date and can be practically applied in areas such as manufacturing, agriculture, or similar industries.
• Conversion of patents to utility models and vice versa: The Act provides applicants with strategic flexibility through a conversion mechanism, allowing an application for a patent to be converted into a utility model application and vice versa where it becomes apparent that the invention does not meet the criteria of the originally chosen protection route. However, such a conversion is permitted only once per application, ensuring that inventions are not denied protection solely due to misclassification while maintaining procedural efficiency and legal certainty.

Advantages of utility models vis a vis the traditional patents

Conclusion

Utility models offer an accessible and cost-effective means of protecting incremental innovations. Their simplified registration process and reduced cost make them particularly advantageous for independent inventors and small and medium-sized enterprises (SMEs). Thereby, fostering a more inclusive innovation ecosystem. Nevertheless, applicants must ensure their innovations satisfy the requirements of novelty and industrial applicability and carefully weigh the strategic merits of pursuing utility model protection versus a standard patent.

It is also important to consider broader policy discussions around the credibility of UMCs. In their research article “Utility Model Protection in Kenya: The Case for Substantive Examination” Isaac Rutenberg and Lillian Makanga raise valid concerns regarding the KIPI 2014 decision to discontinue substantive examination of utility model applications. They argue that the move to a registration-only system has contributed to an increase in granted certificates with formal and substantive deficiencies, thereby, diminishing legal certainty and enforceability. To strengthen the integrity and value of utility models in Kenya, the authors advocate for the reinstatement of substantive examination. Ultimately, while utility models present an important opportunity for innovation protection, a robust framework that balances accessibility with quality assurance is essential to ensuring they contribute meaningfully to Kenya’s innovation landscape.

At Bowmans Kenya, we assist clients in navigating utility model registration and broader intellectual property strategy. Whether you are developing a new device or improving an existing process, our team can help you secure your innovation.