What constitutes infringement?
The infringement can be strict/narrow or purposive/broad. In our Act we look at primary and secondary infringement. Primary is where one counterfeits a process e.g. where Smithkline has panadol another person makes a paracetemol and calls it paranol this is outright infringement. Secondary is where one actually encourages someone else to use a process that has already been patented. In the case of Catnic. Secondary infringement is where there is already a registered patent or a patent waiting to be patent and another person wants to patent the same kind of product.
REMEDIES/DEFENCES & SANCTIONS
More often than not these are clearly set out in the IP Act of 2001 and there are civil, criminal remedies. The first thing a person does is to get an injunction either interim or permanent. Permanent if the infringement is found to be subsisting.
Under Section 106(b) of the IP Act of 2001 the main purpose of granting damages is to compensate the Plaintiff done by the patent infringor, punitive damages are only awarded where the act amounts to criminal activity but courts usually give compensatory damages. The plaintiff is entitled to any other remedy provided by the law.
Delivery up – is when the infringer is ordered to deliver all the counterfeit or infringing material to the court and the court disposes the infringing material as it deems fit.
This are all available under the IP Act and in Kenya what we have for example the find of KShs. 50,000/- the amount the infringer makes is much more than the fine and therefore it does not seem to be a deterrent. One of the issues that have been raised in this regard is that the fines and the sentences which are between 3-5 years don’t act as a deterrent. This is an Act passed in 2001 and we hope KIPI will address this issue.. it is noteworthy that a lot of jurisdiction do not criminalize Intellectual Property but in Kenya there has always been criminal sanctions for infringement. There is a big problem however with the enforcement of these rights probably because of the intangible nature if Intellectual Property.