Patent Assignment Agreement (Kenya)
PATENT ASSIGNMENT AGREEMENT
Industrial Property Act No. 3 of 2001, Section 58 | Kenya Industrial Property Institute (KIPI)
THIS PATENT ASSIGNMENT AGREEMENT is made on [Agreement Date]
BETWEEN:
(1) [Assignor Name] (ID/BRS: [Assignor ID Number]), of [Assignor Address] (the "Assignor"); and
(2) [Assignee Name] (ID/BRS: [Assignee ID Number]), of [Assignee Address] (the "Assignee").
The Assignor and the Assignee are together referred to as the "Parties".
RECITALS
A. The Assignor is the registered owner of the patent or patent application described below and wishes to assign all or part of the rights in such patent to the Assignee.
B. The Assignee wishes to acquire the rights in the patent on the terms set out in this Agreement.
C. This Agreement is executed under Section 58 of the Industrial Property Act No. 3 of 2001 and shall be registered with the Kenya Industrial Property Institute (KIPI) under Section 61 of the Industrial Property Act No. 3 of 2001.
1. PATENT SUBJECT TO ASSIGNMENT
1.1 Patent/Application Number: [Patent Number]
1.2 Title of Invention: [Invention Title]
1.3 Filing Date: [Filing Date]
1.4 Grant Date: [Grant Date]
1.5 Scope of Assignment: [Patent Scope]
1.6 Partial Scope (if applicable): [Partial Scope Description]
2. ASSIGNMENT
2.1 In consideration of the sum of [Consideration Amount] (the "Consideration") paid or payable by the Assignee to the Assignor (receipt of which the Assignor hereby acknowledges), and subject to the terms and conditions of this Agreement, the Assignor hereby assigns, transfers, and conveys to the Assignee all of the Assignor's right, title, and interest in and to the patent identified in Clause 1, to the extent of: [Patent Scope].
2.2 The assignment includes all rights to: (a) exploit the patent commercially in Kenya and (where applicable) internationally; (b) apply for patent protection in any jurisdiction; (c) enforce the patent against third-party infringers; and (d) sub-license, assign, or otherwise deal with the patent.
2.3 Payment Method: [Payment Method].
2.4 Royalty Rate (if applicable): [Royalty Rate].
3. ASSIGNOR'S WARRANTIES
3.1 The Assignor warrants that: (a) the Assignor is the sole lawful owner of the patent with full right and authority to assign; (b) the patent is valid, subsisting, and not subject to any prior assignment, encumbrance, charge, or licence that would prevent this assignment; (c) no third party has a claim to inventorship or ownership that has not been disclosed to the Assignee; (d) no opposition or revocation proceedings are pending or threatened under Section 42 of the Industrial Property Act No. 3 of 2001; and (e) all KIPI annual renewal fees under Section 56 of the Industrial Property Act No. 3 of 2001 have been paid to the date of this Agreement.
3.2 The Assignor shall indemnify the Assignee against any loss, claim, or liability arising from any breach of the warranties in Clause 3.1.
4. KIPI RECORDAL AND MAINTENANCE
4.1 The [Recordal Party] shall file this Agreement for recordal with the Kenya Industrial Property Institute (KIPI) under Section 61 of the Industrial Property Act No. 3 of 2001 within [Recordal Deadline Days] days of the date of this Agreement. The Assignor shall execute any further documents required by KIPI promptly upon request.
4.2 An unrecorded assignment is void against a subsequent bona fide assignee or exclusive licensee whose interest is first recorded at KIPI under Section 61(3) of the Industrial Property Act No. 3 of 2001.
4.3 Responsibility for payment of KIPI annual renewal fees under Section 56 of the Industrial Property Act No. 3 of 2001 following the date of this Agreement shall rest with the [Renewal Fee Party].
4.4 Withholding Tax: Where the Assignor is a non-resident, the Assignee shall deduct withholding tax at [Withholding Tax Rate] under Section 35 of the Income Tax Act Cap. 470 and account for it to the Kenya Revenue Authority via iTax.
5. GOVERNING LAW AND DISPUTE RESOLUTION
5.1 This Agreement is governed by the laws of Kenya, including the Industrial Property Act No. 3 of 2001, the Law of Contract Act Cap. 23, and the Income Tax Act Cap. 470.
5.2 Disputes shall be resolved by: [Dispute Resolution].
IN WITNESS WHEREOF, the Parties have signed this Agreement on the date first written above.
Assignor
________________
Signature
Assignee
________________
Signature
Witness
________________
Signature
What Is a Patent Assignment Agreement (Kenya)?
A Patent Assignment Agreement in Kenya records the assignment of rights, obligations or property from one party to another.
Section 58 of the Industrial Property Act No. 3 of 2001 provides that a patent or patent application may be assigned in whole or in part, with or without the goodwill of the business in which the invention has been worked. Section 60 of the Act requires that an assignment of a patent be in writing and signed by or on behalf of the parties to the transaction. Section 61 of the Industrial Property Act No. 3 of 2001 further requires that the assignment be recorded in the Patent Register maintained by KIPI. An unrecorded assignment is void against a subsequent assignee or exclusive licensee who acquires the patent without notice of the earlier assignment and whose interest is first recorded in the Patent Register.
Kenya is a member of the African Regional Intellectual Property Organization (ARIPO), established under the Harare Protocol on Patents and Industrial Designs of 1982. A patent granted by ARIPO under the Harare Protocol has effect in Kenya as if it were a Kenyan patent under Section 82 of the Industrial Property Act No. 3 of 2001, provided that Kenya is designated in the ARIPO patent application. An assignment of an ARIPO patent with effect in Kenya must also be recorded with KIPI.
Kenya is a signatory to the Paris Convention for the Protection of Industrial Property of 1883 (as revised) and the Patent Cooperation Treaty (PCT) administered by the World Intellectual Property Organization (WIPO). Patent rights granted under the PCT have national phase effect in Kenya after completion of the national phase before KIPI. Foreign patent owners seeking to assign their PCT patents with Kenyan national phase effect must register the assignment with KIPI.
The Kenya Revenue Authority (KRA) treats royalties and lump-sum payments received for the assignment of patents as income taxable under the Income Tax Act Cap. 470. Where the assignor is a non-resident, withholding tax under Section 35 of the Income Tax Act Cap. 470 is deducted at source by the Kenyan assignee at the rate prescribed under the relevant Double Taxation Agreement (DTA) or, in the absence of a DTA, at 20% of the gross royalty payment.
The legal framework governing the Patent Assignment Agreement (Kenya) in Kenya draws on several key statutes and regulatory bodies. Under the Companies Act No. 17 of 2015, the Registrar of Companies at the Office of the Attorney General maintains the register of Kenyan companies. Section 3 of the Law of Contract Act (Cap. 23) governs contractual obligations. The Competition Authority of Kenya (CAK) enforces the Competition Act No. 12 of 2010. The Kenya Revenue Authority (KRA) administers corporate tax under the Income Tax Act (Cap. 470). The High Court of Kenya has unlimited original jurisdiction under Article 165 of the Constitution of Kenya 2010. Parties executing a Patent Assignment Agreement (Kenya) in Kenya should confirm the document reflects current law, including any amendments enacted since the original drafting date. The Industrial Property Act No. 3 of 2001 sets the foundational requirements.
When Do You Need a Patent Assignment Agreement (Kenya)?
A Patent Assignment Agreement in Kenya is required whenever a patent owner wishes to transfer their rights in a patent or pending patent application to another person or entity, whether for commercial, strategic, or personal reasons.
A Patent Assignment Agreement is needed when a startup company in Kenya's technology or manufacturing sector assigns patent rights developed by its founders to the company itself. Without a formal assignment, the patent remains vested in the individual inventor as provided by Section 24 of the Industrial Property Act No. 3 of 2001, which states that the right to a patent belongs to the inventor or their successor in title. An employer seeking to hold patents in inventions made by employees in the course of employment must rely on a contractual assignment or on Section 25 of the Act, which vests employment-related inventions in the employer only where the employee's duties specifically involve inventive work.
A Patent Assignment Agreement is required when a Kenyan company is acquired or merges with another entity and the target company holds registered patents or pending applications at KIPI. The acquisition agreement will typically include or trigger a formal patent assignment to confirm the acquirer's ownership is recorded in the KIPI Patent Register under Section 61 of the Industrial Property Act No. 3 of 2001.
A Patent Assignment Agreement is needed when an inventor in Kenya wishes to sell a patent outright to a buyer, receiving a lump-sum consideration rather than ongoing royalties under a licence agreement. An assignment transfers full ownership permanently, whereas a licence retains ownership in the licensor and grants only user rights to the licensee.
A Patent Assignment Agreement is required when a research institution — such as a Kenyan university registered under the Universities Act No. 42 of 2012 or a research institute funded by the Kenya National Research Fund under the Science, Technology and Innovation Act No. 28 of 2013 — transfers commercially developed technology to a private company for commercialisation. The Technology Transfer Office of many Kenyan universities supports these transactions under technology transfer policies aligned with the Science, Technology and Innovation Act No. 28 of 2013.
A Patent Assignment Agreement is needed when an estate administrator dealing with the estate of a deceased inventor must formally transfer ownership of registered patents to the beneficiaries of the estate under the Law of Succession Act Cap. 160.
What to Include in Your Patent Assignment Agreement (Kenya)
A Kenya Patent Assignment Agreement under Section 58 of the Industrial Property Act No. 3 of 2001 must contain the following essential elements to be valid, recordable at KIPI, and commercially enforceable.
Identification of Parties: Full legal names, addresses, and identity details of the assignor (current patent owner) and the assignee (new owner). For corporate parties, the company name, Business Registration Service (BRS) number, registered office, and country of incorporation must be stated. For individual inventors, the National Identity Card (NIC) number and residential address are required.
Description of the Patent: The KIPI patent number (e.g. KE/P/xxxx), the title of the invention, the filing date, the grant date, and the current registration status. For pending patent applications, the application number and filing date are sufficient. For ARIPO patents with Kenyan effect under Section 82 of the Industrial Property Act No. 3 of 2001, the ARIPO patent number and Kenya designation must be stated. For PCT patents in national phase, the PCT application number and Kenya national phase entry date are required.
Scope of Assignment: Whether the assignment is of the entire right, title, and interest in the patent worldwide, or limited to Kenya only, or limited to a specific field of use or territory. A partial assignment under Section 58 of the Industrial Property Act No. 3 of 2001 may transfer rights for specific claims of the patent or for a defined territory.
Consideration: The amount of the purchase price (in Kenya Shillings, KES), whether paid as a lump sum or by instalment, and the payment mechanism. Where consideration is nominal (KES 1 or expressed as "love and affection" between related parties), this should be stated. Royalties payable post-assignment should be described with specificity including rate, basis, payment frequency, and the right to audit royalty accounts.
Warranties and Representations: The assignor warrants that: (a) the assignor is the sole and lawful owner of the patent; (b) the patent is valid, subsisting, and not subject to any prior assignment, charge, or licence that would prevent the assignment; (c) no third party has a claim to inventorship that has not been disclosed; (d) the patent application or grant has not been opposed under Section 42 of the Industrial Property Act No. 3 of 2001; and (e) the assignor has paid all renewal fees due to KIPI under Section 56 of the Act.
Recordal at KIPI: A provision requiring the assignee to file the assignment for recordal with KIPI under Section 61 of the Industrial Property Act No. 3 of 2001 within a specified period of execution (typically 30 days), and requiring the assignor to cooperate fully and execute any further documents required by KIPI. The KIPI recordal fee schedule under the Industrial Property Regulations 2002 specifies fees payable for recording assignments.
Maintenance Obligations: Confirmation of which party is responsible for paying KIPI annual renewal fees under Section 56 of the Industrial Property Act No. 3 of 2001 after the assignment date. Failure to pay renewal fees within the prescribed period results in lapse of the patent under Section 57 of the Act, and restoration requires a separate application.
Governing Law and Dispute Resolution: The agreement is governed by the laws of Kenya, including the Industrial Property Act No. 3 of 2001. Disputes may be referred to the Industrial Property Tribunal established under Section 103 of the Act, to arbitration before the Nairobi Centre for International Arbitration (NCIA) under the Arbitration Act No. 4 of 1995, or to the High Court of Kenya Intellectual Property Division. The forms-legal.com Kenya Patent Assignment Agreement template includes all required KIPI recordal provisions under Section 61 of the Industrial Property Act No. 3 of 2001 and the Industrial Property Regulations 2002.
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title = {Patent Assignment Agreement (Kenya) (Kenya)},
year = {2026},
howpublished = {\url{https://forms-legal.com/kenya/business/intellectual-property/patent-assignment-agreement-kenya}},
note = {Free legal document template}
}Also available for these jurisdictions:
Frequently Asked Questions
Under the Industrial Property Act No. 3 of 2001 in Kenya, a patent assignment and a patent licence produce fundamentally different legal outcomes. An assignment under Section 58 of the Act transfers full ownership of the patent from the assignor to the assignee permanently. The assignor loses all rights in the patent after the assignment, and the assignee becomes the new owner with all the exclusive rights provided by Section 54 of the Industrial Property Act No. 3 of 2001 — the right to make, use, offer for sale, sell, or import the patented product in Kenya. A licence under Section 62 of the Act, by contrast, grants the licensee permission to exploit the patent while ownership remains with the licensor (patent owner). A licence may be exclusive (no other licensee can be granted rights) or non-exclusive, and may be limited to a specific territory, field of use, or period. The choice between assignment and licence has significant tax implications under the Income Tax Act Cap. 470: a lump-sum assignment payment is typically treated as a capital receipt, whereas royalties under a licence are treated as income. Both types of transactions must be recorded with the Kenya Industrial Property Institute (KIPI) under Sections 61 and 62 of the Industrial Property Act No. 3 of 2001 respectively.
To record a patent assignment with the Kenya Industrial Property Institute (KIPI), the assignee must file an application for recordal under Section 61 of the Industrial Property Act No. 3 of 2001, supported by the following: the original signed Patent Assignment Agreement (or a certified copy); a certified copy of the patent certificate or patent application number confirmation; proof of identity of the assignor and assignee; the completed KIPI recordal form available from the KIPI offices at Utalii House, Upper Hill, Nairobi; and payment of the prescribed recordal fee under the Industrial Property Regulations 2002. KIPI examines the documents and, if satisfied, enters the assignment in the Patent Register and issues an updated patent certificate in the name of the assignee. An unrecorded assignment is void against a subsequent bona fide purchaser under Section 61(3) of the Industrial Property Act No. 3 of 2001. KIPI also accepts recordal applications online via the African Regional Intellectual Property Organization (ARIPO) IP Portal for ARIPO patents with Kenyan effect. Where the assignment is of a PCT patent in national phase, KIPI applies the same recordal requirements.
Under Section 25 of the Industrial Property Act No. 3 of 2001 in Kenya, the ownership of an employee's invention depends on the circumstances in which it was made. Where an employee was engaged in inventive work — research, development, or design — as an explicit part of their contract of employment, and the invention arises from that work, the patent right vests in the employer. Similarly, if the employee used the employer's resources — laboratories, equipment, confidential information, or working time — to develop the invention, the employer may claim ownership. In all other cases, the right to the patent belongs to the employee under Section 24 of the Industrial Property Act No. 3 of 2001, which vests the right to a patent in the inventor or their successor in title. Kenyan employers wishing to ensure ownership of all employee inventions should include a detailed intellectual property assignment clause in employment contracts and execute a Patent Assignment Agreement at the time any invention is made. The Industrial Property Tribunal established under Section 103 of the Act adjudicates ownership disputes between employers and employees, and may order an employee to assign a patent or application to the employer where the employer's claim under Section 25 is established.
Under Section 55 of the Industrial Property Act No. 3 of 2001, a patent in Kenya is granted for a term of 20 years from the filing date of the patent application. Annual renewal fees must be paid to the Kenya Industrial Property Institute (KIPI) in advance for each year of the patent's life after the grant date, in accordance with the fee schedule under the Industrial Property Regulations 2002. If an annual renewal fee is not paid by the due date, KIPI grants a 6-month grace period during which the fee may be paid with a surcharge under Section 56(2) of the Act. If the fee is not paid within the grace period, the patent lapses under Section 57(1) of the Industrial Property Act No. 3 of 2001 and the invention falls into the public domain. Any person may then exploit the invention without the patent owner's consent. Restoration of a lapsed patent is possible under Section 57(2) within 2 years of lapse, upon application to KIPI showing that the failure to pay the renewal fee was unintentional and upon payment of all outstanding fees and penalties. After restoration, the rights of any person who began exploiting the invention during the lapse period are protected under Section 57(4).
When a patent is assigned in Kenya, the tax treatment under the Income Tax Act Cap. 470 depends on whether the consideration is a lump-sum payment or ongoing royalties, and whether the assignor is a Kenyan resident or non-resident. A lump-sum payment for a patent assignment is generally treated as a capital gain under the income tax provisions applicable to intangible property. Capital gains from the disposal of property situated in Kenya are taxed under the Capital Gains Tax provisions introduced under the Finance Act 2023, at a rate of 15% on the net gain (proceeds less cost). Where the consideration is structured as royalties payable over time rather than a single lump sum, the royalties are treated as income taxable under Section 7 of the Income Tax Act Cap. 470 at the applicable rate. For non-resident assignors receiving a lump-sum payment or royalties from a Kenyan assignee, withholding tax is deducted at source by the Kenyan payer under Section 35 of the Income Tax Act Cap. 470 at 20% of the gross amount, subject to reduction under any applicable Double Taxation Agreement (DTA) between Kenya and the non-resident's country of residence. The Kenya Revenue Authority (KRA) requires the assignee to account for the withholding tax on the iTax portal and remit it within the prescribed period.
Yes. Under Section 42 of the Industrial Property Act No. 3 of 2001, any person — including a third party who is not a party to the assignment — may apply to the Kenya Industrial Property Institute (KIPI) for the revocation of a patent on the grounds that: (a) the claimed invention is not patentable under Section 21 of the Act (it lacks novelty, inventive step, or industrial applicability); (b) the patent was obtained by fraud or misrepresentation; (c) the specification does not disclose the invention clearly and completely enough for a person skilled in the art to work it; or (d) the claims of the patent go beyond the original application. A revocation application may be filed with KIPI at any time during the life of the patent. Additionally, under Section 104 of the Industrial Property Act No. 3 of 2001, the Industrial Property Tribunal has jurisdiction to revoke a patent on application. A revocation order annuls the patent retrospectively, as if it had never been granted. For this reason, a patent assignment agreement should include a warranty by the assignor that no revocation proceedings are pending or threatened, and an indemnity in favour of the assignee should the patent be revoked. Standard freedom-to-operate searches conducted through KIPI and the ARIPO online database before executing the assignment help identify invalidity risks.
This template is provided for informational purposes only and does not constitute legal advice. Laws vary by jurisdiction and change over time. Consult a qualified attorney for advice specific to your situation.Full disclaimer
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