Patents
Akuon v Safaricom PLC & 2 Others (IPT ase 95 of 2020 [2022]
Facts
Dr. Peter Odero Akuon, the applicant, filed an infringement case against Safaricom PLC (1st Respondent), National Commercial Bank of Africa (2nd Respondent), and Kenya Commercial Bank (3rd Respondent). The applicant alleged that the respondents infringed his patent, titled "Mobile Virtual Bank Account Management" (KE 842), by offering the "Fuliza M-Pesa" service. This service is an overdraft facility available to M-Pesa customers, which the applicant claims operates using his patented system without his authorization.
The applicant sought several remedies, including an injunction to stop the infringement, an order for profits made by the respondents from the infringement, and damages for the unauthorized use of his patent. In response, the respondents denied the infringement, arguing that Fuliza M-Pesa operates differently from the patented invention and that the patent lacks novelty and inventive step. The respondents also filed a counterclaim seeking the revocation of the patent.
Issue
Whether the respondents infringed the applicant’s patent (KE 842) by offering the Fuliza M-Pesa product.
Whether the applicant’s patent (KE 842) is valid or should be revoked.
Rule
Infringement of a patent occurs when a party, without authorization from the patent owner, performs any of the acts exclusively reserved to the patent owner as defined in the claims of the patent. The validity of a patent can be challenged on the grounds of lack of novelty, lack of inventive step, and the invention being excluded from patent protection as per the Industrial Property Act, 2001.
Analysis
The Tribunal considered the claims of the applicant’s patent and compared them with the features of the Fuliza M-Pesa product. The applicant claimed that the Fuliza M-Pesa product mirrored his patented system, particularly in terms of providing an overdraft facility via a virtual bank account managed through a mobile network.
However, the respondents argued that Fuliza M-Pesa operates within the existing M-Pesa infrastructure and does not involve virtual bank accounts as described in the patent. The Tribunal noted several key differences between the patented system and Fuliza M-Pesa. For instance, Fuliza M-Pesa subscribers do not establish virtual bank accounts as claimed in the patent, and the product does not involve the transfer of virtual bank accounts between banking institutions.
Additionally, the Tribunal found that the features and processes described in the applicant’s patent were not new or inventive. Similar systems, such as M-Shwari and KCB M-Pesa, were already in use before the patent’s priority date, making the applicant’s claims lack novelty.
The Tribunal's decision to revoke the patent was well-grounded in the principles of patent law, particularly the requirements of novelty and inventive step. The presence of prior art, such as M-Shwari and KCB M-Pesa, demonstrated that the applicant’s invention was neither novel nor inventive. Furthermore, the Tribunal’s detailed comparison of the patented system and Fuliza M-Pesa effectively highlighted the lack of infringement. The decision serves as a reminder of the importance of clearly defining and demonstrating the novelty and inventive aspects of a patent to avoid revocation and dismissal in infringement claims.
Conclusion
The Tribunal ruled that the applicant failed to prove that the respondents infringed his patent. Moreover, the Tribunal found that the patent lacked novelty and inventive step, leading to its revocation. The infringement claim was dismissed, and the patent was ordered to be expunged from the register.
Judgement available here.