Pfizer Inc vs Cosmos Limited Case No 49 of 2006

Kenya has shown that it is way ahead of its counterparts in enforcement of IP rights.

Pfizer Inc successfully enforced its Aripo Patent in Kenya (a designated territory) against an infringing party, Cosmos Limited in this 2008 decision delivered by the Industrial Property Tribunal. We believe this decision will be useful to all holders of patents registered in Kenya in terms of the viability of enforcement of their Patents in Kenya.

The issue was whether its ARIPO patent was valid at the time when the respondent (Cosmos) was alleged to have infringed it. The Patent was registered locally and Kenya was designated. Kenyan law on lapse and restoration of Patents was also examined in detail. The question raised by the Respondent was that for a period of 3 years the renewal fees at ARIPO had not been paid (as evidenced on the particular Kenyan file) therefore no patent existed on the register.However the tribunal found that the ARIPO protocol provides for the procedure for removal of a patent from the register. There was no evidence to show that the patent had lapsed due to non payment of renewal fees and was subsequently removed from the register at any one point. It was held that the Patent was valid and had not lapsed in Kenya. KIPI cannot remove a patent registered with ARIPO ( where ARIPO is the registering authority) as it is not involved with the administration of the patent as such except to the extent of localizing its effect UNLESS ARIPO advises it to do so, either because it has lapsed or is not registrable in Kenya. If for any other reason KIPI deemed it fit to remove the patent from its register, it would have to refer to ARIPO as the registering authority.

One of the contentions raised by the Respondent was that the patent had expired in the United States of America. This was dismissed by the Tribunal and in doing so it was affirmed that patents are territorial and the expiration of that patent in that country does not affect its validity in Kenya where it is registered.
Issues of public interest exceptions as the patent in question related to a drug for the treatment of HIV/AIDS which was asserted to be a national pandemic was discussed. The respondent relied on Section 58(2) of the Industrial Property Act which provides for exploitation of a patent without the authority of a patent holder where the articles containing the patent have been legitimately been imported into Kenya. ( Parallel Importation). The Tribunal were of the view that this section was included to protect acts done by third parties who are not patent holders but who are allowed to deal with the patented products in any of the exceptions and flexibilities as provided under the Act. Interpreting Section 58(2) in such a manner as to provide a blanket protection for anyone to deal with patented products without the patent holder's authority would defeat the very intention of the Act. The aim of the Act was to promote innovation through invention and to facilitate acquisition of such technology and for protection of right holders. This is why there was made provision for the acquisition of patent rights via licenses and other means of exploitation of patented products and there was a need for a balance between the rights of patent holders vis a vis those of the public and third parties. Therefore the respondent was not entitled to use section 58(2) to justify its acts of patent infringement.

The tribunal granted an injunction in favour of Pfizer against Cosmos, a n order for delivery up and destruction of the finished products only and not unfinished products (as this would be prejudicial to the respondent in its manufacture of other products that do not infringe the Patent!), and an order for the applicant to elect the remedy of account of sales and profits or damages based on the profits.

For more information, kindly contact John Syekei who heads the Intellectual Property Department at MMC Advocates on jonsyekei@wakili.com.

John is a member of the International Trade Mark Association and his practice covers all aspects of Intellectual Property law including prosecution and enforcement of IP rights,Patent, Trade mark and Copyright litigation as well as anti-counterfeit matters in Kenya.