Employees Entitlement to Intellectual Property Rights developed for the Company
A. What are Intellectual Property Rights?
Intellectual property rights are rights granted to a creator of invention, artistic and literary works, designs and symbols and names and images used in commerce. These rights are protected by law through patents, copyrights and trademarks.
B. What are technovation rights?
Technovation rights are a type of intellectual property rights that protects employees and are governed by the Industrial Property Act No.3 of 2001 (the “IPA”).
Section 94 of the IPA defines technovation rights as a solution to a specific problem in the field of technology, proposed by an employee of an enterprise in Kenya for use by that enterprise, and which relates to the activities of the enterprise but which, on the date of the proposal, has not been used or actively considered for use by that enterprise. For example, in the case of Samson Ngengi vs Kenya Revenue Authority, Samson who was an employee of KRA claimed that he developed the Geo-Spatial Revenue Collection Information System (GEOCRIS) a software that maps property location, ownership, building details and tax status of a taxpayer providing an effective tool for collecting revenue. KRA won an award for developing GEOCRIS. KRA also advertised tenders for development of a system similar to GEOCRIS. Samson sued KRA and applied for orders to stop KRA from developing a similar system on the grounds that he was entitled to the technovation rights in respect of GEOCRIS. The matter was referred to Arbitration for settlement.
An employee who develops a technovation is entitled to a technovation certificate. The IPA defines a technovation certificate as a document issued by the enterprise to an employee who develops a technovation.
C. When is a technovation certificate issued?
An employee is entitled to a technovation certificate on the date that the employee makes a proposal.
Where the employee’s job involves creating and proposing technovations that is technological solutions, they are not entitled to a technovation certificate for technovations which relate to their job description unless the level of creativity surpasses what would normally be required of the employee while carrying out his/her duties.
Where two or more employees develop a technovation and they both request for a technovation certificate, the employer shall issue the technovation certificate to the employee who requested for the certificate first but if the request is made at the same time, the technovation certificate shall be issued in the joint names of the employees.
D. Process of Issuance of a Technovation Certificate
An employee is required to make a request to the employer for a technovation certificate in writing.
Once the employer receives a request for a technovation certificate, the employer shall issue a receipt to the employee acknowledging that a request has been filed and indicating the date on which it was filed.
If the employer is satisfied that the requirements for issuance of a technovation certificate are met, the employer will issue a technovation certificate within 3 months from the date of the proposal. An employer shall not issue a technovation certificate where the requirements for issuance of a technovation certificate are not met. If a technovation certificate is not issued, the employer shall provide the employee with reasons for non-issuance within 90 days from the date of the proposal.
E. Use of Technovation
Upon issuance of a technovation certificate:
- the employer shall notify an employee in writing on whether it intends to use the technovation; and
- the employee shall not communicate his technovation to anyone other than the enterprise and shall not use it.
If the employer however, declares that it does not intend to use the technovation or if the employer does not use the technovation within 6 months from the date it declared it’s intention to use it, the employee shall not be obliged to keep the technovation in confidence provided that the employee’s communication shall not entail the communication of any know how or other knowledge acquired by the employee from the enterprise.
F. Remuneration for Technovation
Where the enterprise uses the technovation or communicates it to a third party, the employee shall be entitled to a remuneration. The amount and method of payment shall be fixed by mutual agreement between the technovator and the enterprise.
Intellectual Property rights also protects employees who develop technovation to the extent that the development is not part of the employee’s duties and if it is, the level of the employee’s creativity ought to surpass what would normally be required of the employee while carrying out his/her duties.
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