Navigating the Legal Landscape of Employee Inventions in Kenya

In the dynamic world of employment, especially within technology-driven sectors, the creation of innovative solutions and inventions often lies at the heart of progress. In Kenya, as in many jurisdictions, the rights and ownership of these inventions are governed by a complex interplay of constitutional provisions and statutory laws. Understanding the legal position on employee inventions is crucial for employers and employees.

Kenya’s Constitution guarantees the right to intellectual property under Article 40 (5) and mandates the state to support, promote, and protect these rights. However, the situation is quite intricate when it comes to inventions created during employment. Section 30 of the Industrial Property Act lays down the fundamental principle that an invention belongs to the inventor, who possesses the right to patent it. Nevertheless, this principle is subject to exceptions, particularly in the employer-employee relationship, as Section 32 of the Act outlines.

Under Section 32(1), unless specified otherwise in a contract, the right to a patent for an invention made during the period of employment belongs to the employer or the entity commissioning the work. However, if the invention is deemed of exceptional importance, the employee is entitled to equitable remuneration, factoring in their salary and the benefits accrued by the employer from the invention. This provision seeks to balance the interests of both parties, recognising the contributions of employees while safeguarding the interests of employers.

Furthermore, Section 32(2) extends this provision to situations where an employee, not explicitly required to engage in inventive activities, creates an invention using resources provided by the employer. In such cases, the employer retains rights to the invention, with the employee entitled to equitable remuneration. This provision acknowledges the potential for employees to utilise employer-provided data or means in generating innovative solutions, thereby necessitating a fair allocation of rights and rewards.

The Act further clarifies that inventions made without the use of employer resources solely belong to the employee (Section 32 (5)). This provision safeguards the rights of employees to inventions conceived independently of their employment duties and resources.

In cases where disputes arise regarding remuneration, Section 32 (4) empowers the Industrial Property Tribunal to adjudicate and determine equitable compensation in the absence of an agreement between the parties. Additionally, Section 32 (6) extends the application of these provisions to governmental and other organisational contexts, ensuring uniformity in treatment across different sectors.

The case of Makate v Vodacom in South Africa underscores the significance of comprehensively addressing issues pertaining to employee inventions. In this case, an employee’s idea led to the development of the ‘please call me’ product for Vodacom, sparking a contentious dispute over equitable remuneration. The Court found that the employee was entitled to compensation and ordered Vodacom to negotiate in good faith and determine a reasonable compensation for the employee.

The case serves as a poignant reminder of the potential complexities and implications surrounding employee inventions, particularly in cases where innovations yield substantial financial gains for employers.

The Supreme Court of Kenya addressed a similar issue in the case of Samson Gwer & 5 others v Kenya Medical Research Institute & 3 others [2020] eKLR. In this case, the petitioners argued that they had created innovations while working at KEMRI, which the organisation used without their consent, violating their property rights. They contended that these innovations were developed outside their employment with KEMRI, meaning, according to Section 32 of the Intellectual Property Act, they were not KEMRI’s property. However, the court ruled that the petitioners failed to prove that they had created innovations unrelated to their employment with KEMRI and that KEMRI had unlawfully utilised them.

In light of these legal provisions and practical considerations, we would advise employers to adopt proactive measures to manage employee inventions effectively. This includes:

  1. Inclusion of Provisions in Employment Contracts: Employers should incorporate clauses in employment contracts that explicitly address ownership of inventions created during the course of employment. These clauses should outline both parties’ rights and obligations, including remuneration provisions as determined by the employer.
  2. Establishment of Company Policies on Intellectual Property: It is imperative for employers to establish clear and comprehensive policies on intellectual property, outlining the ownership rights of employee inventions and procedures for protecting organisational interests. These policies should be communicated effectively to employees to ensure compliance and understanding.
  3. Formulation of Separate Agreements for Significant Inventions: In cases where employees generate inventions of exceptional importance, employers should consider entering into separate agreements to delineate the terms of equitable remuneration. These agreements should be drafted meticulously to avoid ambiguity and facilitate fair compensation for employees.

By adopting these proactive measures, employers can navigate the complexities of employee inventions while fostering an environment conducive to innovation and collaboration. Likewise, employees can gain clarity regarding their rights and entitlements, ensuring equitable treatment and recognition for their contributions.

In conclusion, Kenya’s legal framework governing employee inventions demands careful consideration of contractual provisions, statutory laws, and practical implications. By adhering to established legal principles and adopting proactive measures, employers and employees can navigate this terrain effectively, fostering a conducive environment for innovation and growth.

Researched and compiled by Nicholas Weru, Senior Advocate. For further advice on any matters raised, please feel free to contact Nicholas 

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