THE DUAL PATH TO PROTECTION: PATENT AND UTILITY MODEL IN KENYA

Abstract 

This paper examines the dual protection scheme of technological innovation in Kenya, which is regulated by the Industrial Property Act (IPA), Cap 509. The dual scheme protects Patents and Utility Models (UMs). While patents require stringent criteria of novelty, inventiveness, and industrial applicability, utility models offer an accelerated route for incremental innovations. According to the report, the Industrial Property Tribunal has an important role in patent application and protection. The essay will discuss key IPT decisions, including those on computer implementation inventions, which show how the IPT has strictly justified the “methods of doing business” exclusion for patents, as well as how it has strictly applied “absolute novelty” in revocation. Moreover, this research article explores the intricate handling of this exclusion in the  Utility Models, signifying a significant explanatory flexibility, which describes the environment  of protection on behalf of the rapidly growing FinTech sector in Kenya.  

1. Introduction 

The protection of technological innovation within the borders of Kenya can be seen as broadly regulated by a pivotal piece of legislation known as the Industrial Property Act (IPA), Cap 509. Through this all-encompassing Act, there are given two distinct types of intellectual property rights, denoted by the Patent and the Utility Model.1 The making of these rights happens on the foundations of internationally recognized standards drawn from various international agreements, including the famous Paris Convention of 1883, 2as well as other regional cooperative measures indicated by the Harare Protocol3. 

The onset of the digital revolution has seen the role of technological innovation right at the forefront of this global transformation. For Kenya, this climb has been steepest of all, making it an internationally respected center of excellence in the area of Financial Technology (FinTech) and computer-executed inventions, most renown of which remains mobile money4. The corresponding legal framework governing and promoting this increasingly dynamically expanding sector of the Kenyan economy is Industrial Property Act (IPA)5, Cap.509. 

This pivotal Act presents an overall dual regime of protecting technological innovation’s technological benefit in its dual IPR regime, consisting of the otherwise highly exclusive right of Patent protection, complemented by its inherently more less exclusive right of Utility Model. This fundamental safeguard is internationally grounded, predictably reliant on established international foundations of relevance, typifying the African intellectual property organizational framework of ARIPO.6 

This particular issue holds immense significance in the existing legal environment as the IPA, which was first created in the year 2001, faces an inherently difficult task of fitting vibrant or non tangible computer-implemented inventions (CIIs), software, or new-age business models into rigid legislative expressions. There has been an extremely critical area of uncertainty existing in this regard among all innovators relating to intellectual property protection in particular, in relation to the statutory exclusion provided in Section 21(3)(b), which explicitly states. Schemes, rules or methods of doing business, performing purely mental acts or playing games shall not be considered inventions7. 

The contours of applicability and enforceability of the IPA, therefore, in practice, cover not only its text but are carefully honed by the Industrial Property Tribunal (IPT). The IPT is the main quasi judicial agency entrusted with the task of giving effect to the stringent parameters of the Act by resolving tough disputes arising out of the grant, validity, or revocation of IP. It has evolved an important case law, which has become the determinant force on the subject matter of patents/utility models in Kenya8. 

The objective of this Article is to identify the legislative regime governing Patents and Utility Models within the framework of the IPA and critically examine the role of key decisions by the IPT in defining the boundary of the decisive methods of doing business exclusion in the existing technological state. The Article will specifically examine the Tribunal’s seeming inconsistency in its application of this exclusion vis-à-vis Patents in comparison with Utility Models on the supposition that this is the defining line of the twin track of intellectual property protection in Kenya.9 

However, it is pertinent to indicate that the applicability and process of registering Patentsin Kenya can be detailed and scrupulously honed by the corresponding specification decreed by the aforementioned IPA, as well as significant interpretations by the Industrial Property Tribunal (IPT)10, which carries considerable determinant influence on its enforceability. The objective of this research is the specification of the legislative mandate of Patents & Utility Models by the IPA, critically exploring how the significant case law of IPT has outlined its contours of exclusion, specifically on matters of exclusion on methods of doing business in the current technological paradigm. 

2. Legal Framework 

The foundation of the rights of both parties in the Kenyan legal system is defined and governed by  all-inclusive law, Industrial Property Act. 

2.1.Patent 

A patent is an exclusive and original right conferred on an invention, provided it satisfies three  harsh or aggressive criteria: 

∙ Section 23 states that the innovation must be novel, beyond what can be predicted in the  prior art. 

∙ There must be an inventive step in section 24, which is not obvious to a skilled person. ∙ Industrial Applicability (Section 25): The invention has to be capable of application in  industry or trade.11 

As was stated in section 21(1) of the IPA, the meaning of an invention refers to ‘the technique or  means of solving or resolving that particular issue which arises in the technological field’. In this  regard, it could refer to either the physical object or the process by which an attempt is made to  attain that end. The protection of patents can be renewed for 20 years. 

a) Utility Models 

Utility Models, which are also referred to as “petty patents,” protect technological inventions that  do not require a great deal of inventiveness in order to meet the criteria of full patent protection.  The patent protection applies to an invention that is considered new and useful12. The Certificate  of Utility Model is granted in Kenya for a definite, fixed, and non-renewable period of ten years  (Section 82(2), IPA)13.  

b) The Fundamental Exclusion: Section 21(3)(b) 

The role of the IPA is of immense significance and importance in regard to the exclusion of various kinds of subject matter from patentability.8 The section 21(3)(b) of the IPA clearly stipulates: “schemes, rules, or methods of doing business, performing purely mental acts, or playing games” fall outside the innovation category and thus do not come within the ambit of patentability. 

3. Judicial interpretation. 

The Industrial Property Tribunal (IPT) has been pivotal in providing broad explanations on the criteria of patentability of computer-implemented inventions, placing particular emphasis on the exclusion specified by Section 21(3)(b) along with the requirement of novelty14. 

a) John Kamonjo Mwaura v. Kenya Industrial Property Institute & others (2020). 

The patent application KE/P/2013/001836 is concerned with “A SYSTEM AND A COMPUTER IMPLEMENTED METHOD FOR SHORT-TERM ADVANCED CREDIT FINANCE ASSURANCE.” 

IPT Rationale 

The Tribunal upheld the rejection, finding that the nature of the invention was the processing of credit and transaction data, thus grouping it as a business practice. The mere implementation of this process through a computer system was not enough to circumvent the exclusion provision of Section 21(3)(b), IPA. 

Significance 

The significance of this case is that it upholds the position of the intellectual property regime in Kenya not to grant patents on business methods. 

b) Akuon v Safaricom PLC and two others (2022) 

Issue 

Application by cancellation of Patent No. KE 842, “Mobile Virtual Bank Account Management.”

IPT Reasoning 

The IPT highly valued the “essentially compulsory” element of “novelty” (Section 23). The Tribunal carefully analysed “prior art,” particularly focusing on well-known services already in existence in the market during the priority date, including M-Pesa, Mshwari, and KCB M-Pesa. 

Importance 

The Tribunal held that “the prior art. clearly disclose and anticipate the inventions.” The invention was not “new or novel on the claimed priority date,” establishing that a valid patent can always be challenged on revocation on not fulfilling the “stringent” standard of absolute novelty with regard to “the pre-existing body of public knowledge” 

d) Kibo Capital Group Limited & others v Safaricom PLC (2022) Utility Models (UMs 169 and 163) relating to biller integration and e-receipts challenged on the ground of “method of carrying on business” within Section 21(3)(b), resulting in issues of infringement and revocation. 

IPT Reasoning and Conclusion. 

Ultimately, the Tribunal denied both the infringement and revocation claims. Significantly, however, the ultimate decision did not reject the UMs on the grounds of the business process exclusion. Utility Models seem to offer more room of interpretation than Patents. Utility Models

protect “the form, configuration, or disposition of elements of some appliance or other object” (Section 82(1)), i.e., as indicated by the IPT’s decision, it seems that if a FinTech innovation relies on a specific physical or technological configuration 

Even if it pertains to a business process, it still could satisfy the business method exclusion as a Utility Model, but not as a Patent. 

4. Critical Analysis 

4.1The Business Method/Technical Innovation Dilemma 

The differing effects of the application of section 21(3)(b) in Patents and Utility Models, as seen in Mwaura and Kibo Capital, respectively, reveal an important uncertainty of the IPA, specifically with regard to Computer-Implemented Innovations in the FinTech sector. The Mwaura ruling is very stringent on patents15. For a CII, the “technical effect” encompasses more than just automating an administrative task. There seems to be a loophole in the argument proposed by Kibo Capital. An inventor could convince others that their technological innovation concerning business methods is an “unusual configuration or disposition of elements” of a technological environment. The method of protection by Utility Models is a plausible solution. 

Clarity for Innovators. 

The current state of jurisprudence prompts innovators to walk a thin line, often structuring their claims in a way that highlights physical or technical equipment characteristics despite the commercial concept itself being the essence16. 

IP integrity 

Even though flexibility measures benefit the UM, it is a problem that this flexibility could lead to various UM grants that consist of mere business methods hidden in technical speak, thus rendering the purpose of exclusion in Section 21(3)(b). 

5. Way Forward 

For a more transparent and predictable intellectual property regime in Kenya, particularly concerning CIIs, the following recommendations apply: 

1. The Kenya Industrial Property Institute (KIPI) and IPT must develop guidelines on what amounts to “technical effect” in order to satisfy the requirement of section 21(3)(b). The guidelines will indicate how there needs to be an interaction between the hardware and software. 
2. Harmonization of Exclusion where the Legislature can address the issue of applicability of exclusion in Section 21(3)(b) on Utility Models. If it’s an intention to protect small-scale technological installations involved in the business, this flexibility needs to be institutionalized, focusing on the requirement of a real and tangible setup or configuration. 

iii. Enhanced Prior Art Database: The Akuon case highlights the importance of the absolute uniqueness test. There definitely needs to be more investment by KIPI in searchable resources that will ensure there is a comprehensive library of prior art accessible not only to applicants but also examiners prior to granting intellectual property right applications17.

       6. Conclusion 

The intellectual property scenario in Kenya is driven by the stringent legislative framework of the Industrial Property Act, influenced by the filtering effect of interpretations from the Industrial Property Tribunal. The IPT’s regulations provide an absolutely clear environment within which individuals practicing innovation must operate. ‘Patents need inventions that meet global uniqueness, lack obviosity, and explicitly preclude business models. Meanwhile, Utility Models create an additional expedited route for concepts that meet ‘novelty’ and ‘industrial utility’18. 

However, the key to comprehension is that, all types of intellectual property undergo exhaustive rigorous scrutiny in regard to the element of originality vis-à-vis existing prior art. Significantly, the line dividing a mere business approach from technological innovation continues to play an important role in the effective protection of inventions within the Kenyan scheme of values, most specifically those involving the use of computer technology. Going forward, there will be a need for clear definitions of technological innovation as opposed to business approach from both legislation and the judiciary in the development of a stable IP environment in the framework of the nation’s evolving digital society. 

Bibliography 

Legislation 

Industrial Property Act, Cap. 509 (Laws of Kenya). 

International and Regional Instruments 

African Regional Intellectual Property Organization (ARIPO), https://www.aripo.org (accessed  Oct. 25, 2025). 

Harare Protocol on Patents and Industrial Designs within the Framework of the African Regional  Intellectual Property Organization (ARIPO), Dec. 10, 1982, entered into force Apr. 25, 1984. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as last revised July 14,  1967. 

Case Law 

Akuon v. Safaricom PLC & Two Others, [2022] eKLR (Kenya). 

John Kamonjo Mwaura v. Kenya Industrial Property Institute & Another, [2020] eKLR (Kenya). Kibo Capital Group Ltd & Another v. Safaricom PLC, [2022] eKLR (Kenya). Books 

1. Rutenberg, Utility Models in Kenya, in J. L. Contreras (ed.), Sub-patent Innovation Rights:  Utility Models, Petty Patents and Innovation Patents around the World 255 (Cambridge Univ.  Press 2025). 

Journal Articles 

1. Rutenberg & J. Mwangi, Do Patents and Utility Model Certificates Encourage Innovation in  Kenya? 12 J. Intell. Prop. L. & Prac. 206 (2017). 
2. Rutenberg & L. Makanga, Utility Model Protection in Kenya: The Case for Substantive  Examination, 19 Afr. J. Info. & Comm. 19 (2016). 
3. Otieno Odek, The Kenya Patent Law: Promoting Local Inventiveness or Protecting Foreign  Patentees? 38 J. Afr. L. 79 (1994).

1I Rutenberg and J Mwangi, ‘Do Patents and Utility Model Certificates Encourage Innovation in Kenya?’ (2017)  12(3) Journal of Intellectual Property Law & Practice 206. 

2 Paris Convention ,1883 

3 Harare Protocol on Patents and Industrial Designs within the Framework of the African Regional Intellectual Property Organization (ARIPO),1984

4J Otieno Odek, ‘The Kenya Patent Law: Promoting Local Inventiveness or Protecting Foreign Patentees?’ (1994)  38(2) Journal of African Law 79. 

5Industrial Property Act (IPA),2022 

6 African Regional Intellectual Property Organization (ARIPO) 

7I Rutenberg and L Makanga, ‘Utility Model Protection in Kenya: The Case for Substantive Examination’ (2016) 19  African Journal of Information and Communication 19. 

8Industrial Property Tribunal (Kenya); John Kamonjo Mwaura v Kenya Industrial Property Institute and another  [2020] eKLR.

9 Kibo Capital Group Ltd and another v Safaricom PLC [2022] eKLR. 

10 Industrial Property Act, Cap 509 (Laws of Kenya), 2022 

11 Industrial Property Act, ss 23–25.

12 I Rutenberg, ‘Utility Models in Kenya’ in Contreras (ed), Sub-patent Innovation Rights (CUP 2025).

13 Industrial Property Act,2022, s 82(2). 

14 Industrial Property Act, s 21(3)(b); Industrial Property Tribunal (Kenya).

15 Industrial Property Act, s 21(3)(b); J Otieno Odek (n 7) 

16 Kibo Capital Group Ltd and another v Safaricom PLC [2022] eKLR; I Rutenberg and L Makanga (n 10).

17 Akuon v Safaricom PLC and two others [2022] eKLR. 

18 Rutenberg and J Mwangi (n 2).