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Draft an inter partes review petition for a patent challenge

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Introduction
Overview of Inter Partes Review (IPR)
Legal Framework for IPR in Kenya
Drafting an Inter Partes Review Petition
1. Petitioner's Information
2. Patent Information
3. Grounds for Challenge
4. Evidence and Supporting Documents
5. Relief Sought
Relevant Case Laws
Conclusion
TLDR

1. Introduction

Inter Partes Review (IPR) is a legal procedure that allows a third party to challenge the validity of one or more claims in a granted patent. This process is crucial for maintaining the integrity of the patent system by ensuring that only patents that meet the statutory requirements of patentability are upheld. In Kenya, the legal framework for IPR is governed by the Industrial Property Act, 2001, and the regulations made thereunder.

2. Overview of Inter Partes Review (IPR)

IPR is a post-grant proceeding conducted before the Industrial Property Tribunal (IPT) in Kenya. It allows any person to challenge the validity of a patent on specific grounds, such as lack of novelty, non-obviousness, or insufficient disclosure. The process is designed to be faster and more cost-effective than traditional litigation.

3. Legal Framework for IPR in Kenya

The Industrial Property Act, 2001, and the Industrial Property Regulations, 2002, provide the legal basis for IPR in Kenya. Key provisions include:

Section 103: Grounds for revocation of a patent.
Section 104: Procedure for filing a petition for revocation.
Regulation 55: Requirements for filing a petition for revocation.

4. Drafting an Inter Partes Review Petition

Below is a sample template for drafting an Inter Partes Review petition for a patent challenge in Kenya.

Petition for Inter Partes Review

[Your Full Name]
[Your Address]
[City, Postal Code]
[Email Address]
[Phone Number]

Date: [Date]

To:
The Registrar,
Kenya Industrial Property Institute,
P.O. Box 51648-00200,
Nairobi, Kenya.

Subject: Petition for Inter Partes Review of Patent No. [Patent Number]

1. Petitioner's Information

Name: [Your Full Name]
Address: [Your Address]
Email: [Your Email Address]
Phone Number: [Your Phone Number]

2. Patent Information

Patent Number: [Patent Number]
Title of the Patent: [Title of the Patent]
Patent Owner: [Name of the Patent Owner]
Date of Grant: [Date of Grant]

3. Grounds for Challenge

The petitioner challenges the validity of Patent No. [Patent Number] on the following grounds:

Lack of Novelty: The claimed invention is not new as it was anticipated by prior art. Specifically, [describe the prior art documents or references].
Non-Obviousness: The claimed invention is obvious to a person skilled in the art in light of [describe the prior art documents or references].
Insufficient Disclosure: The patent does not sufficiently disclose the invention in a manner that enables a person skilled in the art to carry it out.

4. Evidence and Supporting Documents

The petitioner submits the following evidence and supporting documents:

Exhibit A: Copy of Patent No. [Patent Number].
Exhibit B: Copies of prior art documents [list the documents].
Exhibit C: Expert affidavit from [Name of Expert], detailing the lack of novelty and non-obviousness.
Exhibit D: Technical analysis report on the insufficient disclosure.

5. Relief Sought

The petitioner requests the following relief:

An order revoking Patent No. [Patent Number] in its entirety.
Any other relief that the Tribunal deems just and equitable.

Signature:
[Your Full Name]
[Your Signature]

5. Relevant Case Laws

Case: Republic v. Industrial Property Tribunal & Another Ex Parte Peter Odhiambo Aguko [2016] eKLR
- Parties: Peter Odhiambo Aguko (Petitioner) vs. Industrial Property Tribunal & Another (Respondents)
- Outcome: The High Court quashed the decision of the Industrial Property Tribunal, emphasizing the need for fair hearing and proper consideration of evidence in IPR proceedings.
- Relevance: This case underscores the importance of procedural fairness and thorough evaluation of evidence in IPR petitions.
Case: Chemserve Cleaning Services Ltd v. Sanitam Services (EA) Ltd [2014] eKLR
- Parties: Chemserve Cleaning Services Ltd (Petitioner) vs. Sanitam Services (EA) Ltd (Respondent)
- Outcome: The court upheld the revocation of the patent on grounds of lack of novelty and non-obviousness.
- Relevance: This case illustrates the application of the grounds for revocation, particularly lack of novelty and non-obviousness, in IPR proceedings.

6. Conclusion

Filing an Inter Partes Review petition is a critical step in challenging the validity of a patent. It requires a thorough understanding of the legal grounds for revocation and the ability to present compelling evidence. By following the template provided and considering relevant case laws, petitioners can effectively navigate the IPR process in Kenya.

7. TLDR

To challenge a patent in Kenya, file an Inter Partes Review petition with the Kenya Industrial Property Institute, citing grounds such as lack of novelty, non-obviousness, and insufficient disclosure, supported by relevant evidence and documents.

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