INNOVATION BENEFITS OF

SOFTWARE PATENTS IN KENYA

Josphat Ayamunda* and Ian K. Tum**

Abstract

Globally, it is generally accepted that the legal protection of creations of the

human mind, such as software, should contribute to technological innova-
tion. In Kenya, software is ordinarily regarded as literary work and therefore
protected by way of copyright. Recently, however, there have been sugges-
tions that software should be patented. This raises the problem of whether
and how the tension between copyright and patent protection of software
can be resolved in a manner that is just, fair and reasonably proportionate
to the highly desirable goal of incentivising production and dissemination
of technology. This study examines the extent to which software patents
in Kenya might be appropriate in light of both the nature of software and
the need to foster innovation. Using the capabilities approach as the basic
theory and comparative methods, the study finds that patents provide bet-
ter protection for the idea embodied in software than does copyright and
this is in exact accordance with the capabilities Kenyan’s would like the
protection to provide for them. It recommends that Kenya should consider
improving its intellectual property regime by making provisions for patent-
ability of software or some sui generis right akin to software patents in order
to aid in fostering innovation.

Keywords: Innovation, Software Patents, Copyright, Capabilities, Values

* MLitt in Law (Oxon), PGD (KSL), LLB (UON), Lecturer, Moi University, School of
Law.
** PGD (KSL), LLB (MU).

African Journal of Commercial Law 1 (2019/2020) 1-22

 Josphat Ayamunda and Ian K. Tum

1.0 Introduction

The State is obligated to protect and promote creations of the human mind
otherwise known as intellectual property. These creations include computer
programs and software. Computer software is a broader classification that
encompasses both computer programs and databases. Recently, however,
database protection has been viewed in a different protective spectrum
and, hence, this work deals with computer programs under the umbrella of
computer software as a series of instruction(s) that control or condition the
operations of a computer. There is, however, no universally agreed definition.
While there are numerous mechanisms for the legal protection of intel-
lectual property, computer programs and software in Kenya are mainly pro-
tected by copyright law. However, it is not entirely clear whether this form or
mechanism of protection is the most appropriate in light of both the nature of
computer programs and software and the fitness of copyright for the purpose
of fostering technological innovation. This work explores the extent to which
legal protection of computer programs and software in Kenya is adequate and
effective. It suggests that the idea of software patents might have some inno-
vation benefits that programs or software copyright lacks. Part 2 of the work
introduces the arguments for and against software patents. Part 3 gives an
overview of the basic theories behind the study. Part 4 presents the Kenyan le-
gal regime governing the protection of computer programs and software. Part
5 outlines the international policies and regulations while Part 6 canvasses
the comparative jurisprudence. Lastly, conclusions and recommendations are
made in Part 7.

2.0 Background to the Problem

Patenting in information technology industries and allied fields

has always been a matter of legal and intellectual controversy.1 This is
occasioned by the fact that there has been a great deal of legal debate as to
whether software and other computer related programs should be patented

1
Campbell-Kelly Martin, ‘Not All Bad: An Historical Perspective on Software Patents’
(2005) 11 Michigan Telecommunications and Technology Law Review 192.

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 Innovation Benefits of Software Patents in Kenya

or copyrighted.2 Traditionally, computer programs and software have been

protected by copyright law as they were viewed as literary works.3 However,
the rapid advancement in information technology law which calls for better
protection mechanisms4 pits the mainstream copyright law against emerging
ideas of software patents and the common law concept of trade secrets or the
law of confidence.5
Patents are a relatively novel field of intellectual property in Kenya and
software patenting is an equally emerging field.6 Patents ordinarily protect the
idea while copyright protects the expression of the idea. However, a literary
work is often a vehicle for ideas and as such where ideas have been expressed
in a literary work, they become an important part of that literary work. This is
more so with regard to situations where the essence of the work is scientific
in nature. In other words, where the scientific content of a work is of greater
importance than the precise mode of expression, there is likely to be a merger
of the idea and its expression. Computer programs and software provide a
good example of works for which there might be no clear delineation between
the idea and its expression. As such, once the ideas which relate to a computer
program and software are manifested in an outwardly perceptible form, it is
not only the form but the form together with the ideas that are entitled to
copyright protection.7 The idea in a computer program and software is the
source code or object code that is fed and executed by the computer to give
a desired result. The manifestation of the idea is the outlook or the feel of
the software. This poses the difficulty of protecting computer programs and
software by way of copyright if one were to apply the classical straight jacket
idea- expression dichotomy rule that there is no copyright in ideas. On the
other hand, if one were to go for software patents, they would get protection

2
Mambi J. Adam, ICT Law Book: A Source Book for Information and Communication Tech-
nologies and Cyber Law (Mkuki na Nyota Publishers 2010) 207.
3
Sega Enterprises v Richards (1983) FSR 73; Apple Computer Inc. v Computer Edge Pty Ltd
(1984) FSR 481; Apple Computers inc. v Mackintosh Computers Ltd (1990) 2 SCR 209, 71 DLR (4th)
95.
4
Reed Chriss & Angel John (eds), Computer Law (4th ed, Oxford University Press 2000) p
1-7.
5
Bainbridge David, Introduction to Computer Law (4th ed, Longman Pearson 2000) p 7.
6
Sanitam Services (E.A) v Rentokil (k) Ltd and Another (2006) eKLR. There is generally
minimal legislation and scanty jurisprudential corpus of software in Kenya.
7
Galago Publishers (pry) Ltd & Another v Erasmus 1989 (1) SA 276 (A) at 283-285; Peter
Ross v Ramesar 2008 JDR 060 (c).

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 Josphat Ayamunda and Ian K. Tum

for the object code or the source code but not for the outlook or feel. The idea
of software patents, nevertheless, has not been readily accepted.8 Further, even
as software use, utility and viability become widespread and the commercial
value realised, it has been remarkably difficult to classify software within a
specific category of intellectual property protection.9
Another reason fuelling this intricacy on the idea of software patents
is the unabated fear of the monopolising effect of patenting software. Such
concerns are responsible for the development of denial symptoms towards the
idea of software patents. Even with the benefit of hindsight from the decision
of the American Supreme Court to the effect that ‘[i]t was never the object
of patent laws to grant a monopoly for every trifling device, every shadow
of a shade of an idea, which would naturally and spontaneously occur to any
skilled mechanic or operator in the ordinary progress of manufactures.’10 The
court here acknowledged the fact that such indiscriminate creation of privilege
tends to obstruct rather than encourage innovation, hence, the need to exercise
restraint in granting patents.11 This form of intellectual caution, however, has
not served much to break up the fear associated with patenting software. The
fear, therefore, of patenting what was viewed as literary works or an art rather
than an industrial process, which could mathematically be reduced so close
to abstraction,12 contributed to the flourishing of copyright law in this field.13
Other reasons for the sceptic reception of software patents include the
apparent absence of a technical character14 and the existence of computer
programs and software that merely perform mental acts on a purely software
base i.e. with no direct correlation with a hardware or machine aid.15 Some
legal scholars have argued that in determining patentability with pin-point

8
Campbell-Kelly (n1).
9
Gonza´lez Andre´s Guadamuz, ‘The Software Patent Debate’(2006) 1 Journal of Intellec-
tual Property Law & Practice 1.
10
Atlantic Works v Brady (1883) 107 US 192.
11
Atlantic Works (n10); Bainbridge (n5). ‘Patent nevertheless is seen as a desirable form of
intellectual property because it gives to the owner a certain monopoly of his invention, thereon en-
abling him to exploit the invention for a number of years to the exclusion of all others (subject how-
ever to the provisions designed to prevent abuse of the monopoly granted).’
12
Stephen Mason, ‘Electronic Signatures in Practice‘ (2007) 4 The ICFAI Journal of Cyber
Law 1, 8-22.
13
Lloyd J Ian, Information Technology Law, (Oxford University Press 2000) p 3006-3007.
14
Merril Lynch’s Application (1989) EPOR 561-606.
15
Ibid: Fujistu Ltd’s Application Case (1997) RPC 610; Re The Computer Generation of
Chinese Characters (1993) FSR 315.

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 Innovation Benefits of Software Patents in Kenya

accuracy, a critical attention must be paid to the technical effects or solutions

to a technical problem.16 Even in early machines that utilised software, the
question was whether the machine, without taking the computer program
into account, adds anything to the state of the art.17 In that regard, machines
embodying software were patented but the software was never patentable
per se.18 As demonstrated above, it is still unclear whether or not they should
be protected as literary works, artistic works, or, indeed, protected not by
copyright but by some other legal right (i.e. sui generis right) or simply
through contractual provisions.19
The foregoing concerns have always been discussed on the platform of
the nature of computer programs which utilise ‘machine code’ or ‘source code’
which the computer will understand. These are codes of electronic pulses in
unwritten form fed to into the Central Processing Unit to execute the desired
function.20 Such unique operation of software proves impossible to place it
within any of the mainstream categories of intellectual property law. Against
that backdrop, the World Intellectual Property Organisation has suggested
that software should be protected by a new separate category or a sui generis
right.21
In light of the existence of the abovementioned corpus of classical
literature that paint a clear trail of the perception of software patents and their
reception, this area has not come to terms with the reality that the realm of
technology is advancing faster than the law. This inadequacy of the law was
judicially demonstrated in an American Appellate Court thusly:
Generally we think that copyright registration, with its indiscriminating
availability - is not ideally suited to deal with highly dynamic technology

16
Bentley L and Sherman B, Intellectual Property Law (Oxford University Press 2002) 390-
391.
17
Bainbridge (n5).
18
Vicom Systems Incorporated’s Patent Application (1987) OJ EPO 14.
19
Cotter Anne-Marie Mooney (Ed) Intellectual Property Law (Cavendish Publishing Limited
2003) 75.
20
Cotter (n 19).
21
International IP Protection of Software: WIPO, available at www.google.com/url?sa=t&rct=
j&q=&esrc=s&source=web&cd=2&cad=rja&uact=8&ved=0ahUKEwj6jdCB_dLRAhVrCsAKHXv
fBlMQFgggMAE&url=http%3A%2F%2Fwww.wipo.int%2Fedocs%2Fmdocs%2Fcopyright%2Fen
%2Fwipo_ip_cm_07%2Fwipo_ip_cm_07_www_82573.doc&usg=AFQjCNH6Zi1HwrZOJZN0_Sc
UHlrZvXrV2g&sig2=ASfHyH90nnsX0VYtuty2Jw&bvm=bv.144224172,d.ZGg, accessed on 21st
January, 2017.

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 Josphat Ayamunda and Ian K. Tum

of computer science…patent registration with its exacting up-front novelty

and non-obviousness requirements might be the more appropriate rubric of
protection of intellectual property of this kind.22

Over time, evolutionary practices have led to the recognition of

computer programs and software as integral to the computer industry.
With that evolutionary nature, the position of software patents has changed
internationally. At the international arena, the patentability of computer
programs and software is echoed under the Trade-Related Aspects of
Intellectual Property Rights (TRIPS) Agreement under article 27(1) to the
effect that ‘patents shall be available and patent rights enjoyable without
discrimination as to the place of invention, the field of technology and
whether products are imported or locally produced’ which seems to cure the
slippery slope posited by the wording of article 10 of the TRIPS Agreement,
hence, allowing nations to choose the best available method or the path to
take.23 This provision brings on board two types of patentable inventions - a
product invention and a process invention.24 This, however, has by no means
elevated the earlier position that computer programs were not patentable per
se, although, there have been cases in the United Kingdom, Germany, Japan
and in the United States where computer programs have been granted patents
indirectly, usually as being part of a machinery or an industrial process.25 In
Kenya, computer programs are deemed to be literary works and, therefore,
protected by copyright.26
Historically, software patents owe their origins to the early office
machine industry, the most direct ancestor of the software industry.27 Office
technologies like software were sequential and cumulative, but patents did not
inhibit innovation. Critics argued that patenting software or computer programs
impedes innovation; history has a different narrative altogether.28 They did,
nonetheless, impede non-innovative makers of clone products.29 As these

22
Computer Associates v Altai Inc (1992) 982 F 2d 693.
23
Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) signed in Mar-
rakesh, Morocco on 15th April 1994.
24
Bainbridge (n 5).
25
Gonza´lez (n9).
26
The Copyright Act, 2001, s 2.
27
Campbell-Kelly (n1), p 194.
28
Ibid, p 194.
29
Ibid, p 194.

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 Innovation Benefits of Software Patents in Kenya

changes took shape, in the history of development, majorly, software patents

owe their birth to two cases: Gottschalk v Benson30 and Diamond v Diehr31
which were premised in the controversy whether or not computer algorithms
constituted patentable subject matter. With that brewing controversy, spawned
the debate on what to consider when patenting software.
The Kenyan legal regime, interestingly, is not new to this otherwise thorny
debate. The Industrial Property Act does not recognise computer software as
patentable or as technological inventions.32 With this in mind, the position
laid down in the Copyright Act, 2001 is, therefore, sublime and evident that
the Kenyan software regime is under the grip of copyright law.33 However,
the Constitution of Kenya, 2010 gives impetus to promotion of human rights,
dignity and potential of the Kenyan people, thereby raising the concern on how
the country has incorporated modern trends to protect the intellectual property
of Kenyans.34 The stated constitutional obligations require that the State puts
in place adequate and effective measures for the protection of such creations
as computer software. Further, such protection should take into account the
objective to foster innovation as contained in such undertakings as the Vision
203035 and Sustainable Development Goals.36

3.0 The Changing Perspective

At the heart of software technology, is the cybersociety which faces the

greatest challenge of counterfeit trade both in Kenya and internationally.37
Many modern products and technologies run on software platforms and
some are wholly based on software. Therefore, with the advent of the
Internet, information technologies and cyber networking, the menace of

30
Gottschalk v Benson (1972) 409 US 63.
31
Diamond v Diehr (1981) 450 US 175.
32
Industrial Property Act, Cap 509, s 21.
33
The Copyright Act (n 26).
34
The Constitution of Kenya, 2010, Article 11 (1) (c), 40 (5), 69 (1) (c).
35
Republic of Kenya, The Kenya Vision 2030 (2007), no 8.
36
United Nations Development Programme, Sustainable Development Goals (2000) no 8.
37
Wekesa Moni and Sihanya Ben (Eds) Intellectual Property Rights in Kenya (Konrad Ad-
enauer Stiftung 2009) 235.

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 Josphat Ayamunda and Ian K. Tum

counterfeiting is prevalent.38 In light of these developments, the mainstream

realm of protection of literary works was applied to novel set of facts and
hence raising the question as to whether protection of software and computer
related innovations were watertight. This lacuna was accurately summed up
as follows:
The precise scope of what is a patentable invention is an important issue because,
traditionally, patents have been granted for industrially useful things such as
new machines, chemical compounds and materials and processes for making
such things or otherwise achieving a useful result. A computer program of itself
is not, to many minds, such a thing.39

The State is currently obligated to protect the intellectual property of

Kenyans. This obligation is somewhat couched in a human rights framework
based on the capabilities approach. This approach focuses on how intellectual
property can expand the capabilities of real people in real situations. In the
context of computer programs and software protection, the relevant question
would be what capabilities do Kenyans like the protection to create for them.
It is very likely that they would like intellectual property protection to foster
innovation that is beneficial to society as a whole. In changing gears, therefore,
it is imperative that one looks at the development of software protection
in Kenya, which will inform the shifting perceptions and the frontiers of
knowledge towards a patent regime for software in order to foster innovation.
The main purpose of any academic legal writing being to perceive
and portray patterns and relations in a body of legal rules so as to make it
manageable, teachable, comprehensible and usable,40 both to the legal and the
lay world, the purpose of this work, is to set in motion a course for the shifting
perspective. Such a shift is informed by the need to reward the fruits of the
author’s labour as espoused by John Locke in his labour theory which is the

38
David S Evans et al, Invisible Engines; How Software Platforms Drive Innovation and
Transform Industries (The MIT Press 2006) 1-5. “It is argued that there are modern industries or in-
novations that rely totally on computer software for technological advancement.”
39
Reed (n 4). P 119; Wekesa (n 37). ‘There is no clear legislation or policies on patenting e-
commerce related innovations in many countries.’
40
Jennings Roberts, in his foreword to Sands Philippe and Mackenzie Ruth, Principles of
International Environmental Law (3rd Ed, Cambridge University Press 2012) xxi.

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 Innovation Benefits of Software Patents in Kenya

philosophy of the natural rights that ‘we all own the fruits of our labour.’41   As
a result, such human creations ought to be afforded the highest possible level
of protection. This is to enable the harmonious exploitation of the fruits of
their labour and thereon spur inventions and innovations due to the prospect of
gain and protection that patents afford. This theory is supported by economic
analyses of intellectual property which view patent protection of software as
promoting creativity by rewarding the creative authors while ensuring that
the users have access to the works by way of disclosure in return for the
patent.42 Safeguards in this manner prevent free riding by third parties.43 The
economic theory further postulates that property rights in creative works are
instruments that help in the achievement of economically efficient allocation
of information goods.44
Application of these two theoretical treatises brings forth a case that
maximises the overall social utility in the intellectual property market. While
economic analysis has become useful in making the costs and benefits of
intellectual property protection more explicit, it has not in practice proved any
more effective than natural rights approaches e.g. in establishing clear legal
limits for such protection. As such, the capabilities approach might help one
to better determine the most appropriate balance in order to attain the desired
innovation outcomes. The capabilities approach does not seek to dispel the
economic understanding of law. It recognises the role of economic analysis
but goes beyond economics to introduce additional values (values other than
market based values). However, its main objectors claim that in some cases it
might be too complex to be useful.

4.0 Applicable International Legal Rules

By dint of the constitutional provision that international laws shall be

part of the laws of Kenya, the international legal and institutional framework

41
Asmamaw Fekadu, Software Patents: Justifications and Arguments, 9 June 2015, avail-
able at www.abyssinialaw.com/blog-posts/item/1469-software-patents-justifications-a, accessed on
7th December, 2016.
42
Ouma Marisella, ‘The Role of Copyright in Economic Development: A Review from Ke-
nya’ (2012) NIALS Journal of Intellectual Property [NJIP] 68.
43
Ibid.
44
Towse Ruth, Creativity, Incentive and Reward: An Economic Analysis of Copyright and
Culture in the Information Age (Edward Elgar Publishing 2001) p 1-23.

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 Josphat Ayamunda and Ian K. Tum

in relation to intellectual property also form part of the laws of Kenya.45 In this
case, the Berne Convention for the Protection of Literary and Artistic Works,46
which requires the member states to protect in an effective and uniform a
manner as possible the rights of authors in their literary and artistic works.47
The import of this preambular provision is that it suggests evidence of the
concern the international community has placed on the realm of copyright and
the desire to give it the best possible form of protection. Literary and artistic
works are defined under the Convention to include every production in the
literary, scientific and artistic domain.48 This provision effectively brings the
subject of software into the protection of this Convention.
The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement sets out the minimum standards of intellectual property
which members of the World Trade Organisation (WTO) are required to
incorporate into their legal regimes to ensure compliance with the agreement.49
It came into force on January 1, 1995.50 The TRIPS Agreement incorporates
the Berne Convention in terms of its article 9.51 Significantly, the stated
objective of TRIPS is to incentivise creation and dissemination of information.
It is in this regard that the most appropriate national legal protection regime
for computer software should be one that seeks to exact balance desired by
TRIPS. Indeed, article 1 of the TRIPS grants states the autonomy to design an
implementation matrix as long as the chosen method of implementation does
not contravene the agreement.

45
The Constitution of Kenya (n 34), Articles 2 (5) and (6).
46
Official Website, WIPO-Administered Treaties, Contracting Parties - Berne Convention,
available at www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=15, accessed on 22nd January,
2017. Entered into force on June 11 1993.
47
Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886,
completed at Paris on May 4, 1896, revised at Berlin on November 13, 1908, completed at Berne on
March 20, 1914, and revised at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on
July 14, 1967, and at Paris on July 24, 1971.
48
Ibid, Article 2 (1).
49
Kameri-Mbote Patricia, ‘Community, Farmers’ and Breeders’ Rights in Africa: Towards a
Legal Framework for Sui generis legislation’ (2003) 1 The University of Nairobi Law Journal, 1.
50
World Trade Organisation (WTO) website, Overview: the TRIPS Agreement (WTO 2015)
available at: www.wto.org/english/tratop_e/trips_e/intel2_e.htm, accessed 22 January 2016; Gabriel
Kitenga, Introduction to Tax Law (LawAfrica 2010) 22 accessed on 1st Feruary, 2017.
51
Watal J, ‘Intellectual Property Rights in the WTO and Developing Countries’ (2001) 1 Klu-
wer Law International, 210.

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 Innovation Benefits of Software Patents in Kenya

Lastly, the World Intellectual Property Organisation (WIPO) Convention,

a constituent instrument of the World Intellectual Property Organisation, was
signed at Stockholm on July 14, 1967, entered into force in 1970 and was
amended in 1979.52 WIPO, as an intergovernmental organisation, became
in 1974 one of the specialised agencies of the United Nations system of
organisations. WIPO’s two main objectives are: to promote the protection
of intellectual property worldwide and to ensure administrative cooperation
among the Intellectual Property Unions established by the treaties that WIPO
administers.53 It provides a platform for the WTO to implement its policies
and to carry out administrative duties aimed at fostering the protection of
intellectual rights across the globe. In achieving these objectives, WIPO,
undertakes a number of activities, including: setting of norms and standards
for the protection and enforcement of intellectual property rights through the
conclusion of international treaties, legal and technical assistance to States in
the field of intellectual property, international classification and standardisation
activities, involving cooperation among industrial property offices concerning
patent, trademark and industrial design documentation, and registration
activities, involving services related to international applications for patents
for inventions and for the registration of marks and industrial designs and
engages in collaborative effort with other institutions for the promotion of the
desired goal. Recently, WIPO has been keen to push a development agenda
that requires the protection of intellectual property should foster innovation
for sustainable development.

5.0 The Kenyan Legal Regime

In Kenya, just like the world over, the creation of an adequate and
effective legal protection system for computer programs has been a difficult
process largely due to the novelty of the field.54 As demonstrated earlier,
a number of intellectual property rights regimes govern the area but at its
core is copyright law with relatively narrow but rich and noble history.55 As

52
World Intellectual Property Organisation, Summaries of Conventions, Treaties and Agree-
ments Administered by WIPO, (2011) World Intellectual Property Organisation 6.
53
Ibid.
54
Swinson John, ‘Copyright or Patent or Both: An Algorithmic Approach to Computer Soft-
ware Protection’ (1991) 5 Harvard Journal of Law and Technology 145.
55
Robin Jacob et al, Guidebook to Intellectual Property, (5th Ed, 2004) 147.

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 Josphat Ayamunda and Ian K. Tum

originally intended, it was primarily for the protection of intellectual capital

and to provide a legal foundation for the innumerable transactions by which
owners of such capital are paid for their work; over time, however, it was soon
applied to the computer and software industry.56 Patents were never applied at
the initial states and have remained controversial ever since.

5.1.0 The Constitution of Kenya, 2010

Fundamentally, the Constitution of Kenya, 2010 has captivated both the

citizenry and jurists alike; it has been described as a transformative charter.57
It establishes the basis on which every action can be exercised.58 Integral to
it is the bill of rights which provides the framework for social, economic and
cultural policies.59 In protecting the property of Kenyans, the state is mandated
to afford protection to the intellectual rights.60 This denotes a departure
from the old dispensation where constitutional protection of property did
not explicitly encompass intellectual property and now the idea of software
protection can be duly discussed in the realm of human rights.61 Protection
of intellectual rights and capital is cognisant of the fact that other powerful
entities and persons other than the state can infringe on human rights.62The
thematic approach of the relationship between intellectual property and human
rights has not only been ignored in Kenya but the world over.63 Recently, the
judiciary demonstrated its willingness to secure such accruing rights in the
case of Anne Nang’unda Kukali v Mary A. Ogola and another where the court
stated:
I am satisfied that the Applicant has shown that in the event of her original work
being used by the 1st Respondent in her degree course approval, the Applicant

56
Robin (n 46).
57
Speaker of the Senate & Another v Hon. Attorney-General & Another & 3 Others [2013]
eKLR par 51.
58
The Constitution of Kenya (n 34) Article 2 (2).
59
Ibid, Article 19.
60
Ibid, Article 40, 260.
61
The Constitution of Kenya, 1963, s. 75 (The Repeal Constitution); Hoffmann Gretchen Mc-
cord, Copyright in Cyber Space 2: Questions and Answers for Librarians (Neal-Schuman Publishers
2005) 17;
See also The Constitution of the United States of America, Art 1, s. 8, Clause8.
62
See Oduor Maurice, ‘On the Tripartite Nature of Human Rights: A Reply to a Reply’ (2014)
1, The Journal of Law and Ethics 99.
63
Helfer R. Laurence and Austin W. Graeme, Human Rights and Intellectual Property: Map-
ping the Global Interface (Cambridge University Press 2012) 1.

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 Innovation Benefits of Software Patents in Kenya

is likely to suffer substantial loss due to violation of her intellectual rights. A

prima facie case has been made by the Applicant which justifies the granting of
the orders sought. The application is meritorious and I allow it as prayed with
costs to the Applicant.64

The foregoing decision discussed in the context of the constitutional

guarantee of human rights demonstrates the fact that the courts have an
elevated function in terms of constitutional guarantees and giving it a generous
and purposive interpretation.

5.2.0 The Copyright Act No. 12 of 2001

The Act classifies a computer program as a literary work and defines it

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.’65
Copyright in such a program subsists automatically and there is no formal
requirement for registration for its validity other than for evidentiary purposes.66
The definition of computer software rendered by the Copyright Act is wide
enough to cover both the ‘object code’ and the ‘source code’.67 Such protection
has been faulted by technologists and jurists alike for protecting only from
literal copying as it bars copying of non-literal elements such as the program’s
structure or “outlook and feel”. Critics have argued that, such protection leaves
the most critical innovations in the programs’ behaviour unprotected and fails
to provide sufficient incentive for investment in software development.68 This
challenge is equally pronounced and is not adequately addressed in Kenyan
law. The nature of digital technologies is indicative of its vulnerability that
the copyright regime is incapable of curing. Such a premonition raises the
question of whether the legal regime is realistically capable of securing the
interests of software developers and users as envisioned in the claim that

64
(2010) eKLR.
65
The Copyright Act, s 2.
66
Wekesa (n 37) 115.
67
Cotter (n19), p 75.
68
See Burk L Dan, ‘Patenting Speech’ (2000) 79 Texas Law Review 99; Koepsell R David,
‘The Ontology of Cyberspace: Law Philosophy and the Future of Intellectual Property’ (2000) 14
Harvard Journal of Law and Technology 325.

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 Josphat Ayamunda and Ian K. Tum

what is worth copying is prima facie worth protecting.69 The development of

digital technology has greatly impacted the regime of copyright and hence the
concern on the level of protection by copyright.70 Consequently, it has dawned
that copyright cannot protect computer software from practices like reverse
engineering which make copyright restriction circumvention possible and
thereby disadvantaging the legitimate owner of the software.71 However, such
flexibilities as the freedom to invent around an invention or reverse engineer
can be beneficial to society as they facilitate transformative creations.
Further, the Act espouses a teleological aspect in its broad definition of
a computer as an electronic or similar device having information processing
capabilities.72 This somewhat sweeping definition can be taken to mean the
wide array of telecommunication devices in the wake of micro and sensory
computing manifested in mobile telephony, smartphones and the ever-
fascinating era of personal computer and the internet. This definition read
together with that of the computer program earlier defined, effectively divides
the program into the process and the final result and, therefore, the dilemma of
the subject of protection, expression of the idea or the idea itself constituting
the process. The integral part of the software is the code which is the idea and
not the expression of the idea in the outlook and feel of the software. This
then reveals the inadequacy of copyright to protect the code that is fed into the
computer to produce the desired result because it constitutes the idea and not
the expression of the idea.73
An interesting phenomenon is, however, alluded to by section 26(3)-
(6). In the preceding provisions, in relation to other literary and artistic
works, the case of fair dealing seems to be absolute, subject only to sufficient
acknowledgment of the author.74 On the anti-thesis, however, the case is
different as it suggests an intention to afford computer programs a different
level of protection. Further, in the spirit of collective management, the Act
recognises the existence of software organisations and their right to sit on the
board responsible for the streamlining of intellectual capital in copyright.75

69
University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch 601.
70
Mambi (n 2), p 199.
71
Ibid p. 167.
72
The Copyright Act (n 26).
73
Sega Enterprises Ltd v Richards (1983) FSR 73.
74
The Copyright Act (n 26), s. 26 (1), (2).
75
Ibid, ss 3, 6.

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 Innovation Benefits of Software Patents in Kenya

While this may be speculated as inherently prophetic as to the status of

software in the future constituting its own empire, it is hardly sufficient
to clothe it with special quality. Additionally, with the advancement of
technology in the digital age, mechanisms embodying the latest developments
in digital technology are being created to form the infrastructure for electronic
copyright management.76 The question as to whether this will culminate in the
acceptance of software patents is still grey.
Lastly, it is noteworthy to observe that the Kenyan law on copyright
enacted in 2001, is fairly new and it is based on international standards
evolving fast in the institutional framework.77 It has come up with laws that
are based on international conventions, treaties, protocols, etc and, therefore,
do not reflect the local conception due to external pressure.78 Consequently,
Kenya was pressured to come up with laws but not policies. It was not until
early 1990s that discussions regarding the policy on IP began.79 This means
that the laws developed were not linked to policies guiding the development
of the country.80 It is then upon this ground that it is ripe to rethink the software
policy applicable in Kenya and the possibility of incorporating a more robust
protection measure i.e. through patents or incorporating patents and copyright
in protecting different software components.

5.3.0 The Industrial Property Act, 2001

The Act provides for the promotion of inventive and innovative activities,
facilitation and acquisition of technology through the grant and regulation
of patents, utility models, technovations and industrial designs.81 To effect
that, it establishes the Kenya Industrial Property Institute82 and bestows upon
it the function of considering applications and granting industrial property
rights; screening technology transfer agreements and licences; providing to

76
World Intellectual Property Organisation (WIPO), Intellectual Property Handbook, policy,
law and use, (WIPO 2004, second edition, reprinted 2008), 388.
77
Wekundah M. Joseph, ‘A Study on Intellectual Property Environment in Eight Countries:
Swaziland, Lesotho, Mozambique, Malawi, Tanzania, Uganda, Kenya and Ethiopia’ (2012) African
Technology Policy Studies Network, Working Paper Series No 66, 29.
78
Wekundah (n 68).
79
Ibid.
80
Ibid.
81
Industrial Property Act (n 32), preamble.
82
Ibid, s 3.

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 Josphat Ayamunda and Ian K. Tum

the public, industrial property information for technological and economic

development; and promoting inventiveness and innovativeness in Kenya.83
Under the Act, innovation is defined as a new and useful art (whether
producing a physical effect or not), process, machine, manufacture or
composition of matter which is not obvious, or any new and useful improvement
thereof which is not obvious, capable of being used or applied in trade or
industry and includes an alleged invention.84 Conditions for patentability are
that it must be new, involve an inventive step, and is industrially applicable or
is a new use.85 Undoubtedly, computer software programs qualify as patentable
per se as some espouse all the requirements for grant of patent. However, the
Act specifically excludes certain creations from patentability. These include
discoveries, scientific theories and mathematical methods; schemes, rules
or methods for doing business, performing purely mental acts86 or playing
games; methods for treatment of the human or animal body by surgery or
therapy, as well as diagnostic methods practised in relation thereto, except
products for use in any such methods; mere presentation of information;
and public health related methods of use or uses of any molecule or other
substance whatsoever used for the prevention or treatment of any disease
which the Minister responsible for matters relating to health may designate
as a serious health hazard or as a life threatening disease.87 These exclusions
might be explained and justified on the basis of the compelling social need to
take into account broader public interests.
The import of the above exception is that it specifically eliminates
computer software that performs mental tasks from patentability. Akin to this
is the case of Raytheon Co’s Application88 where patent to computer software
was denied simply because it performed mental tasks. The fact that it was used
to identify ships by comparing the silhouette of an unknown ship with the
databases of ship’s silhouettes was held to be a mental task similar to that of
the human mind even though it used algorithms and performed it in a totally
different way.

83
Ibid, s 5.
84
Ibid, s 2.
85
Ibid, s 22.
86
See Re The Computer Generation of Chinese Characters (1993) FSR 315.
87
Industrial Property Act (n 32), s. 21 (3).
88
Raytheon Co’s Application (1993) RPC 427.

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 Innovation Benefits of Software Patents in Kenya

From the above provisions of the Act, it is clear that patentability of

software faces innumerable challenges. Historically, software patents were
exclusively outlawed from patentability by statute.89 The position has not
changed much since some of the processes that computer software performs
are still within the exclusion of the Act, which then raises the concern whether
the much anticipated idea of software patents as a viable option for Kenya is
forthcoming.

5.4.0 Other Relevant Statutes

5.4.1.0 The Anti-counterfeit Act

The Anti-counterfeit Act which seeks to combat trade in counterfeits in

Kenya90 also affects the software industry. Today, even government entities
use counterfeit software.91 Counterfeiting is defined under the Act to include
imitation of the original brand, packaging in misleading brands and producing
unauthorised copies.92 Software is prey to a number of these counterfeiting
challenges, especially the making of unauthorised copies. This not only
has the effect of depriving the genuine software owners of their economic
privilege but also exposes the users of the software to vices in the cyberspace
like cybercrime and related crimes. In Kenya, this problem is majorly
attributed to the weak package of laws surrounding the software protection
platform.93This Act, however, is not directly connected and neither does it
have a direct bearing on the issue of software patents. It only seeks to enforce
the applicable law that subsists in the form of software copyright. The efforts
of such anti-counterfeit bodies can be made possible and effective if the
necessary protection mechanisms are put in place to promote their fight against
counterfeiting. Once the option of software patents is availed, anti-counterfeit
agencies can carry out awareness to ensure that software developers maximise
the use of their software and effectively protect it from counterfeiting.94

89
See The Industrial Property Act, 1990, (Repealed by Industrial Property Act, No 3 of 2001)
s 6.
90
Anti-Counterfeit Act, 2008, preamble.
91
Wekesa (n 37) p. 211; Ngugi Brian, Software Piracy in Kenya Costs Sh 12.8 Billion; The
Kenya Copyright Board Says that Illegal Installations in the County stand at a staggering 78 Pc,
Business Daily, 7 April, 2016.
92
Anti-Counterfeit Act (n 81), s. 2.
93
Ngugi (n 82).
94
Anti-Counterfeit Act (n 81), s. 4.

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 Josphat Ayamunda and Ian K. Tum

5.4.2.0 The Competition Act

The Competition Act, 2010, was established to safeguard and promote
competition in the national market and to protect customers from misleading
market conduct as well as to establish the necessary institutional framework.95
This Act has some desirable features that can be used to foster competition
which include the aspect of extraterritorial application.96 The enforcement
of such elaborate apparatus set out in the Act is, however, hampered by the
inadequacies of copyright law and perhaps patents might give an easier avenue
for enforcement of competition laws as espoused in the Act.

5.4.3.0 The Trademarks Act

Trademark is equally available for those who want to register marks
associated with their products and services.97 The main purpose of trademark
law is to serve as an indicator of trade origin, thus, business goodwill and
reputation is protected but this has a secondary effect of protecting the buying
public from deceptive practices.98 The law of passing off is also instrumental
in the protection of computer programs and software from illegal copying
or exposure to trade in counterfeits. However, this is subject to the proof of
goodwill in the product.99 In registering a trademark, the owners of the software
will have evidentiary leverage in instances of passing off or counterfeiting of
the product. Registration requirements are provided for under section 12 of
the Trademark Act. In conclusion, the regime of trademarks would offer a
comprehensive way of protecting computer products only in reference to the
problems of public confusion and counterfeiting.

6.0 Comparative Jurisprudence

The longest standing, best known and arguably economically most

valuable form of protection of rights provided by the law of intellectual property
comes in the form of patents.100 Such developments have been sustained

95
See Competition Act No. 12 of 2010, preamble.
96
Ibid, s.6.
97
The Trademark Act, Cap 506, see the preamble, s. 2.
98
Bainbridge (n5), p. 12.
99
Bainbridge (n5).
100
Torremans Paul, Holyoak and Torremans Intellectual Property Law (6th Ed Oxford Univer-
sity Press 2010) 14.

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 Innovation Benefits of Software Patents in Kenya

and developed worldwide over a very long period of time.101 However, in

relation to software, the world outlook is still varied and controversial. This is
illustrated by the fact that there have been varied outcomes of litigation across
the globe and mixed feelings on when patents can be granted. The global
perception, however, has changed as espoused in Aerotel v Telco102 in which, in
the words of Lord Justice Jacob, the court demonstrated the willingness of the
United States authorities to grant patents for software-related innovations and
thereby ushering an ‘arms race in which the weapons are patents’.103 Indeed,
the acceptance of software patents has been treated differently in jurisdictions
including the United States, Japan and the United Kingdom.
The first United Kingdom cases involving the eligibility of software-
related inventions for patent protection arose under the Patents Act, 1949.104
The Genentech Inc’s Patent105 case demonstrated a move from initial judicial
hostility to acceptance of the need for and desirability of bringing the embryonic
software industry within the scope of the patent system.106 Incidentally,
however, it is noteworthy that the United States, generally regarded as the
jurisdiction most friendly towards issuing patents for software-related
inventions - the patent law in force dates back to 1952 and is based upon
similar principles as those found in the United Kingdom’s Act of 1949.107 The
cold attitude in the UK in relation to software has since subsided as espoused
by later decisions as in the case of International Business Machines Corpn’s
Application108 that readily granted patents to computer software.
In the United States in the 1970s, the Supreme Court twice examined
whether inventions containing computer software were patentable, but
both times, the Supreme Court answered in the negative.109 In Gottschalk
v. Benson,110 the Supreme Court struggled with the question of whether an

101
Ibid, p 42.
102
Aerotel v Telco (2006) ECWA Civ 1371.
103
Ibid.
104
Lloyd Ian J, Information Technology Law (6th Ed Oxford University Press 2011) 306.
105
Genentech Inc’s Patent (1989) RPC 147.
106
Lloyd (n 104), 306- 307.
107
Ibid.
108
International Business Machines Corpn’s Application (1980) FSR 654.
109
Bitlaw, The History of Software Patents:  From Benson, Flook, and Diehr to Bilski and
Mayo v Prometheus available at www.bitlaw.com/software-patent/history.html, accessed on 16th Feb-
ruary, 2016.
110
(1972) 409 U.S. 63.

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 Josphat Ayamunda and Ian K. Tum

algorithm to convert binary-coded decimal numbers into true binary numbers

was considered patentable.111 The Court felt that a patent on this concept would
pre-empt the entire mathematical algorithm.112 Since mathematics could be
considered an abstract idea, which is generally not patentable, the Supreme
Court held that the algorithm in question was not patentable.113 This position
then took root and was subsequently applied in cases like Parker v Flook and
was applied in a way to defeat the idea of software patents. This position,
however, did not apply for long. Soon it was overturned by the advancement
of technology. The breakthrough came in the case of Diamond v Diehr114
where the court said that ‘[b]ecause we do not view respondents’ claims as
an attempt to patent a mathematical formula, but rather to be drawn to an
industrial process for the moulding of rubber products, we affirm the [validity
of the patent].’115 This decision ushered in the regime of patenting software
and other information technologies making software a subject of patentability.
Amazingly, the US statutory regime contains no reference to computer
programs and the approach taken by the US Patent and Trademark Office and
the US Federal courts has fluctuated somewhat over the years.116 Even though
there exists bars to what is patentable, the current position in the United
States is to exclude only a narrow range of claims from patentability.117 These
exclusions, however, have been watered down by the courts in subsequent
decisions and now there exists a thin sheet of restrictions.118 That being the
position, it must be borne in mind also that in the United States there are no
statutory exclusions to worry about, let alone one for computer programs.119
This is probably the main reason why the scope of what is patentable in the
United States is wider in many aspects than in Europe and other jurisdictions
across the globe.120

111
Ibid.
112
Ibid.
113
Ibid.
114
(1981) 450 US 175.
115
Ibid.
116
Reed (n 4).
117
Ibid.
118
In Re Bilski (Fed Cir 2008) 545 F 3d 943; see Julie E Cohen & Mark A Lemley, ‘Patent
Scope and Innovation in the Software Industry’(2001) 89 California Law Review, 1.
119
Reed (n 4), 139.
120
Ibid.

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 Innovation Benefits of Software Patents in Kenya

Notable on the Japanese front, is the liberal approach of what is adopted as

invention and what is patentable. This has exalted it to the global limelight in the
realm of software protection.121 Majorly, the development or the improvements
of methods of protection of technology by countries have been geared towards
protecting their companies and fostering the advancement of technology and
striving towards global domination and economic viability.122 A case in point
is Matsushita v Justsystem123which dealt with the elusive issues of indirect
infringement, inventive step and prior art search.124 Matsushita Electronic
Industrial Co. Ltd., a large multinational manufacturer of electronic products,
components and parts, was granted a patent for an invention known as the ‘help
function’, which claims that the user can drag and drop an icon to receive on
screen instructions.125 Matushita then filed a case of infringement against the
Justsystem and another company Sotec Company Ltd who objected claiming
it lacks the inventive step and prior art.126 The court decided that ‘a computer
on which Justsystem’s products are installed’ satisfies the constituent features
of the invention described and hence constitutes an invention of a process.”127
It also found that Justsystem was not liable for indirect infringement under
Patent Law Article 101(4) that stipulates that the “act of producing, assigning,
etc. any product” constitutes patent infringement when the process described
in the invention can be worked using the said product, because Justsystem was
manufacturing and selling only Justsystem’s products used for manufacturing
personal computers rather than manufacturing or selling said computers
themselves.128
Such expanded scope of patentability shows that from comparative
jurisprudence, there is a great deal of advancement as opposed to the Kenyan
conception where even by statute, some aspects of the software are still locked
away from the subject of patentability.

121
Hamilton L Pamela, ‘Protections for Software under US and Japanese Law: A Comparative
Analysis’ (1984) 7 Boston College International & Comparative Law Review 2, 353-354.
122
Ibid.
123
Justsystem Corporation v. Matsushita Electric Industrial Co. (2005) Heisei 17 (NE) 10040.
124
Ibid.
125
Ibid.
126
Ibid.
127
Anne Nang’unda (n 55); ibid.
128
Ibid.

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 Josphat Ayamunda and Ian K. Tum

7.0 Conclusion and Recommendations

7.1.0 Conclusion
From the foregoing exploration of the idea of software patents, it is
clear that while software patents are becoming acceptable, copyright law
reigns supreme. Further, with the advancement of technology, there have
emerged other forms of technological developments. Such concepts include
biotechnology and nanotechnology that operate using very complex pieces of
robotic machinery that perform remote surgery and involve the coordination of
numerous complex functions that are controlled by sophisticated software.129
Consequently, copyright law might be inadequate and/or ineffective.
Patent or a sui generis regime could offer more appropriate alternatives to
foster innovation that is beneficial to the society. Not only is the duration
for patents shorter, patents do not suffer from the idea-expression dichotomy
difficulties. Trade secrets protection would inhibit transfer of information and
as a common law concept is difficult to prove.130 However, the concept of
a criterion for determining what is patentable in software is still alien and
calls for a proper delimitation on what constitutes patentable software. This
will instil certainty and encourage the formation of a definite instrument of
protecting software. The delimitation of the criterion should be guided by the
stated objective of fostering innovation for the overall social utility.

7.2.0 Recommendations

This study recommends that the intellectual property framework in

Kenya should be changed to include computer programs and software as
unequivocally patentable. On the other hand there is the concept of developing
a sui generis right for protection of software as suggested by WIPO. In Kenya,
this can be achieved by borrowing from the American and the Japanese models
that embody a liberal aspect of software as a subject of patentability. In line
with that, policy and legal guidelines should provide a certain and definite
criteria of what should be considered patentable software. Such arrangements
will go a great way to create a conducive environment for securing the desired
human rights and sustainable development outcomes.

129
Boucher M. Patrick, Nanotechnology: Legal Aspects (CRC Press 2008) 127.
130
Kewanee Oil Corp vs Bicron Corp, 416 [1973] US 470, 481; Szabo HK, ‘International Pro-
tection of Computer Software: The Need for sui generis Legislation’ (1986) 8 Loyola of Los Angeles
International and Comparative Law Review 511, 526.

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