Successful Defence of a Claim of Infringement of an Invention Comprised in a Utility Model

We successfully defended a leading Pan-African financial institution with presence in more than 30 countries across the Continent in an industrial property dispute where the Requesters/Claimants alleged infringement of an invention comprised in a utility model.

Our client, which operates a financial product that allows for automatic deposits of monies into a savings account from all transactions conducted by its customers using a predetermined percentage-based mechanism, was accused of infringing on the invention comprised in a utility model registered in the name of one of the Requesters/Claimants.  

We were, on behalf of our client, able to demonstrate that there was no such alleged infringement.

In the suit, the following key issues were canvassed before the Industrial Property Tribunal:

• Who can be described as a prior user of an invention and whether consideration of “prior usage” of an invention is restricted to a particular jurisdiction.
• What must be established for a successful claim of infringement of an invention to be upheld.
• The principle of novelty of an invention comprised in a utility model and its impact on a claim of infringement of said utility model.
• The question of whether computer programs and methods of doing business are protectable under the Industrial Property Act.
• The distinction between computer programs and computer processes.

The win by our Dispute Resolution team, and the above matter led by George Muchiri Mwangi, highlights the wide-ranging experience our advocates have across various areas of law and their adeptness in urging them in various for a, including quasi-judicial tribunals.