This piece is intended to reply to the allegations made by the Anti-Counterfeit Agency (ACA) Executive Director, Mallowah, that the Anti-Counterfeit Act (the Act) of 2008 does not ‘ENFORCE PATENTS!’ (Follow the debate here: http://cipitlawstrath.wordpress.com/2013/10/04/tellacaboss-online-debate-balancing-protection-of-public-health-and-intellectual-property-in-kenya/).
The ACA boss was responding to an article written by this blogger claiming that the review process of the Act had failed to reconcile intellectual property (IP) and public health concerns (See the article here: http://cipitlawstrath.wordpress.com/2013/10/02/anti-counterfeit-review-meeting-fails-to-reach-a-consensus-on-protecting-intellectual-property-and-public-health/).
In April 2012, the High Court clearly acknowledged the conflict between intellectual property and public health in the Act (See the decision here: http://ipkenya.files.wordpress.com/2012/04/aca-petition-no-409-of-2009.pdf).
First, I am glad this conversation is taking place. It has been long overdue. The conversation has been limited within the health activists with minimal participation from other stakeholders including the private sector and the government.
Second, I will address one issue that I think is at the centre of this debate, patent linkage. I have five points to deal with it.
One, the definition of ‘counterfeiting’ under section 2 of the Act is stated as follows:
‘taking…functions without the authority of the owner of intellectual property right subsisting in Kenya or elsewhere in respect of protected good’ (my emphasis)
Second, intellectual property right has subsequently been defined to include ‘(d) any right protected under the Industrial Property Act.’
Third, the Industrial Property Act of 2001 protects a range of IP rights including patents.
Fourth, section 32 creates an offence of counterfeiting based on the above definition which includes patents and by extension also criminalises generics.
Last, section 34 of the Act empowers the Commissioner to seize and detain all suspected counterfeit goods.
To remedy the situation, the review process must achieve at least two results.
To begin with, the Act must delete Industrial Property Act under its scope. Moreover, it should attempt to define ‘counterfeiting’ in the manner defined by the TRIPS Agreement which is willful counterfeit trademarks on a commercial scale.