What are the proper ways of protecting an application/software in Kenya?
In our last segment, we skimmed through an introduction to intellectual property and how to utilize it to spur growth. In our discussion, we hypothesized a situation where someone develops an app that facilitates video conferencing. A pandemic culminates into a stay at home order prompting large downloads of the application. Coincidentally, Mr. X realizes that he needs to accord protection to his innovation and but does not know about the options available for him to grant protection to his invention. The situation that Mr. X is in is a common problem facing many developers in Kenya. As such, to help Mr. X, today’s segment will focus on the various IP tools available to protect his software/application.
Mr. X can file for Copyright registration
The Copyright Act governs copyright matters. Ideally, The Copyright Act protects literary works, audiovisual works, musical works, sound recordings, and broadcasts. For the protection to qualify, the work must be original; there must be proof of the expedition of labor, and it must be fixated in a physical form such as reducing the work into writing. Copyright subsists in particular work for fifty years. Under the category of literary works are computer programs. The Act defines computer programs as “a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.” Therefore, the law protects the underlying computer program that brings about the application.
To apply for copyright, one should make an application for registration of the source code with the Kenya Copyright Board. Upon paying the prescribed fee (which usually is USD 10), KECOBO issues a certificate of registration of the software as a literary work.
In this case, Mr. X will apply to KECOBO for registration of the underlying code of his software. Upon successful registration, he will be issued a certificate of registration.
Copyright is a handy tool for the protection of software. For example, in 2017, a virtual reality video game publisher ZeniMax Media Inc. obtained a $500 million verdict against Facebook subsidiary Oculus VR Inc., $50 million of which has been attributed to the copying of software architecture.
It is noteworthy that copyright subsists in a computer program despite lack of registration. As such, if the parties opt not to register, parties should keep a record of the creation process to avert any future disputes.
A trademark is a name or symbol on a product that shows a company made it, and those other companies cannot use it without permission. In simple terms, a badge of trade used to distinguish between the goods of one proprietor with another. A trademark can be a wordmark, a device mark, or a combination of both. In Kenya, the Trademarks Act governs trademarks.
A trademark is a badge of trade used to distinguish between the goods of one proprietor with another.
For a mark to be eligible as a trademark, it ought to be distinctive, I.e. it is able to distinguish between the goods of one proprietor with another.
Trademarks can protect the name of the application, the graphical user interface, and any distinguishing marks of the app. Examples of brands include Coca cola®, Microsoft®, among others.
Kenya Industrial Property Institute (KIPI) deals with the application for trademarks. Trademark application involves searching, filing an application, examination, advertisement, and issuance of the registration certificate. Furthermore, when registering for a brand, one should specify the class of goods (the goods) that one is applying for protection. Typically, the process takes around eight months to two years, and each step involves the payment of a prescribed fee.
Upon registration, the term of protection is ten years and is renewable indefinitely. Also, trademark confers upon the registered proprietor with the right to exclude others from using the mark without your permission.
Similarly, Kenyan law protects unregistered trademarks through passing off. In this case, the law prohibits another entity from passing off another person’s goods and services as its own.
The trademark registration for mobile app developers applies when the value of the software increases due to increased consumer association with the brand. Most companies hinge their success on the value created by the brand. The companies will do everything they can to protect their brands, including protracted litigation. They do this because they understand the importance of a brand to a customer and the amount of money it takes to develop one. In most instances, courts have ruled in their favor and awarded them considerable sums in damages. For example, a Court ordered a publishing company in Russia to pay $60,582,000 as damages for trademark infringement.
Therefore, trademark protection is vital as a registered proprietor can suppress any attempts to register a similar confusing mark in the future by a different proprietor who may seek to ride on the reputable name of the proprietor.
An industrial design is generally the ornamental or aesthetic aspect of a product. It may consist of three‐dimensional features, such as the shape or configuration of an article, or two‐dimensional features, such as images, pictures, drawings, and so on that rely on patterns line or colors.
The Industrial Property Act provides for the protection of industrial designs. For an object to qualify for protection as industrial design, it should be new; not only in Kenya, but also in the entire world, and should not merely serve as a technical purpose. The law protects industrial designs for five years, and one can extend the term for two further consecutive periods of five years upon payment of the prescribed fee. Design law will protect the Graphical User Interface Mr. X’s App.
Trade secret protection
A trade secret protects a specific form of confidential information that is commercially valuable, and a company treats it as a secret. Examples of the trade secrets include the Cocacola® recipe, the Google® Search Algorithm, among others.
Trade secrets protect commercially valuable confidential information
Kenya does not have a specific law governing trade secrets. However, international law, that is, The Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), provides for the protection of trade secrets. For TRIPS to apply, the information must not be readily available to parties that deal in such details; parties must have taken reasonable steps must have to keep that information confidential, and it must have commercial value. TRIPS applies in Kenya under Article 2(5&6) of the Constitution, which allows for the application of international law in Kenya.
TRIPS does not specify how to enforce trade secrets. Thus, in practice, parties enter into non-disclosure agreements (NDA) to protect their trade secrets. Contract law governs the transactions. Trade secrets do not have a finite period of protection and may continue to apply unless the parties willfully disclose the information or leaks at neither fault of the parties. They also do not require any form of registration. For example, Tesla obtained a settlement against a former employee for theft of confidential information. The Court ordered the employee to pay $100,000 to Tesla.
Trade secrets can protect the code and algorithms. In this case, Mr.X will identify commercially valuable information, enter into an NDA with his employees, and will ensure that the parties reveal the information on a need to know basis.
A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected device, without his authorization, for a limited period. It is an improvement to an existing patent. An example of a utility model can be a hydro-powered generator. The inventor has improved a current generator; thus, he will apply for protection under utility model law and not a patent.
The utility model should new and industrially applicable and does not require one to prove an inventive step, unlike a patent where an applicant must meet all the three qualifications. It is valid for ten years, and one should pay an annual fee. KIPI receives applications for utility models.
Utility models can be used to protect mobile applications where they improve existing inventions. The problem with this mode of protection is that it still has high thresholds like patent law as such can be prohibitive. Besides, utility models are associated with mechanical inventions. Thus, KIPI may reject your application.
The patent question
Some people have recommended the use of patents to protect inventions. Whereas they can be available to developers, they have strict thresholds, are expensive, and it takes a lot of time to obtain one. A study by WIPO noted that:
“Nevertheless, some respondents considered patent protection very ineffective for mobile apps. According to KECOBO, the high threshold of grant requirements, in particular inventive step, is difficult to satisfy in relation toDr. Naom Shemtov,
software, making patents an inappropriate form of protection. Furthermore, SMEs might not have the financial resources to meet the costs associated with a patent application, rendering patents less attractive. Although no legal representation is required to file for a patent, drafting a patent claim often requires expert know-how, which in turn involves additional costs.”
IP law presents several tools for the protection of mobile applications. Copyright protects the source code; trademarks protect the GUI, name, and design, design law protects the appearance of the app, trade secret law protects confidential information of commercial value, and utility models deal with the app itself. Deploying all these tools could prove as a useful tool to ring-fence inventions against potential infringement. Concurrently, implementing these tools at once might prove difficult for an impoverished inventor. Consequently, developers can deploy these tools tactfully, and as more financial resources come in, developers can implement all. It is wise to use copyright protection, trade secret, and trademark protection first as they are cheap and relatively easy to obtain. As the invention grows, the developers can then deploy other tools.
“There is a Pirate in every one of us”Kalyan C. Kankanala
Looking at the current market, IT companies are some of the most valued companies in the world. The main reason for this is because they have been able to deploy IP tools to protect their inventions and have achieved exponential growth. There is an opportunity for Africans, so long as they appreciate the value of IP and apply it. If we do not, someone else will take our place as was opined by Kalyan C. Kankanala, “There is a Pirate in every one of us.”
In our next segment, we shall look at how IP can be used as security to obtain loans.