IP Case Law library

Facts

Kibo Capital Group and its director Onyango jointly owned four registered utility models (UM 169 "Biller Integration and Receipting System", UM 163, UM 168 and UM 195, relating to electronic and mobile-money receipting) developed after discussions with Safaricom staff about a receipting partnership. When Safaricom launched its own "MPESA Bill Manager" product in January 2021, the requesters accused it of infringing all four utility models. Safaricom denied infringement and counterclaimed for revocation of all four.

Issues

Whether Safaricom's MPESA Bill Manager infringed UM 163, 168, 169 and 195, and whether the four utility models were validly registered, given challenges based on lack of novelty and the statutory exclusion of business methods from patent/utility-model protection.

Rule

Industrial Property Act 2001, ss.21(3)(b) (business methods excluded from being "inventions"), 34(5)-(6) (clarity of claims), 54, 81, 82, 103(1), 105, 106; Industrial Property Tribunal Rules 2002; the Tribunal also relied on IPT Appeal No. 21/2018 John Kamonjo Mwaura v KIPI and the UK case Halliburton Energy Services Inc's Applications [2012] RPC on business-method patentability.

Analysis

The Tribunal found the cited US and Japanese prior-art patents covered electronic receipt issuance but not the "tamper-proof" feature claimed, so it declined to revoke on novelty grounds. However, it held the utility models to a large measure related to methods of doing business through computer programs rather than to electrical or electronic circuitry, and per s.21(3)(b) and Halliburton, implementing a business method on a computer does not confer patentability. It also found the requesters had not shown the specific technical features allegedly copied by Safaricom's product.

Conclusion

Both the infringement claim and the revocation counterclaim were dismissed; each party bore its own costs.

Judgement available at kenyalaw.org.