Many Kenyan businesses often find themselves in disagreements over who owns the Intellectual Property (IP) rights to the inventions, creative works or product designs. Intellectual property rights are categorized into two, these being Copyright and Industrial Property. Copyright protects literary and artistic works such as books, photographs, art, paintings, software, music, films, videos, etc. Industrial property on the other hand covers: Patents, which protect processes, products, machines/apparatus etc.; Utility Models; Trademarks, which protect logos, shapes, words, numbers, letters, sounds, colors, smells or a combination of all these; and Industrial designs which protect the aesthetic appeal of a product.
It is therefore important to understand who owns the IP rights to be able to commercially exploit them and even enforce where a 3rd party uses/utilizes them without permission.
First ownership of IP
For Copyright works, under Section 31 of the Copyright Act of Kenya, copyright vests in the author of the work. If you create a novel, song, art, painting, video, photograph, software etc., you are the owner of that work.
For Patents and Utility Models, under Section 30 of the Industrial Property Act of Kenya the right to a patent/utility model belongs to the inventor. The person who invents the machine, method, apparatus etc. has the right to apply for a patent/utility model and be named as the owner of that invention.
For Industrial designs, the person who created the Industrial design is the owner of the Industrial design.
Where the IP is created within the course of employment
Subject to any contractual agreement between the parties, IP rights created within the course of employment automatically belong to the employer. The terms of the contract and the job description are to be taken into consideration when deciding who owns the IP rights. This is because, if the IP is created outside the scope of the employment contract, using the employee’s private resources, data, means, materials or equipment, then it belongs to the employee.
With regards to inventions, if an invention is of exceptional importance and the employer receives monetary benefits from it, the employee should receive equitable remuneration taking into consideration the salary and the benefits derived by the employer from the said invention.
Where a business Commissions another party to create IP
Where one commissions another party to create or invent something on his or her behalf, the IP rights will be owned by the person who commissioned unless there was a contract between the parties that stipulated otherwise. A good example of such a scenario is where one engages the services of a painter to have his portrait created. The Copyright in the painting will belong to the person who paid for the portrait to be created and not the painter unless there is an agreement that the painting will be owned by the painter.
Since it is common for Kenyan businesses to consult or hire others to do some work for them, it should be common practice to sign IP Transfer Agreements. This is where IP experts/IP Consultants/IP Lawyers come into play to help you draft comprehensive IP Transfer Agreements.
Where two or more businesses/people come together to create the IP
There are several instances where two or more people/businesses come together and create or invent something. In such situations, the IP rights belong to them jointly. An example of this can be where two people work together and invent a self-driving car. The patent to the self-driving car will be owned by both of them.
Where the owner/co-owner of the IP rights dies
Where the owner of the IP rights dies, the rights will pass in accordance to his/her will where he/she had written a will or to the beneficiaries of his/her estate under the rules of intestacy where there is no will as stipulated in Kenya’s Law of Succession Act. Where a co-owner in joint ownership dies, his/her IP rights pass to the beneficiaries of his/her estate under the rules of intestacy if he/she had no will, but if he/she had a will, it will pass in accordance with the will.
You need to include how you want your IP rights to be distributed upon your death in your will. A good example of how your IP rights will benefit your survivors is Marvin Gaye. He was a famous singer, songwriter and producer. He died in 1984 but his estate still benefits from his copyrighted works, up to date.
Where the IP is created by a Minor
Some minors are inventors, artists, musicians, photographers, designers etc. Under Kenyan law, a ‘minor’ is an individual who has not attained the age of 18 years. IP laws do not have age restrictions. Any person can own IP rights irrespective of their age. However, since a minor has no capacity to enter into legal transactions, he/she cannot explore/commercialize or enforce his/her IP rights. Minors should therefore be represented by their guardians until they are of age, as they may not fully grasp the consequences of certain contracts such as the licensing agreements, IP assignment agreements among others and cannot sue for infringement where their IP rights are infringed.