Employee Invention and IP Assignment (Kenya)

An Employee Invention and IP Assignment in Kenya transfers the assignor's rights or interests to the assignee on the terms it specifies.

Section 42(2) of the Industrial Property Act No. 3 of 2001 creates an important exception: where an invention that belongs to the employer is of exceptional importance and the employee's reward under their contract is grossly inadequate in relation to the benefit derived by the employer from the invention, the employee may apply to the High Court of Kenya for an award of additional remuneration. This statutory right to additional compensation cannot be waived in advance by contract — it is a non-derogable protection that any Employee Invention Assignment executed in Kenya must acknowledge.

Copyright in works created by an employee in the course of employment in Kenya is addressed under Section 32 of the Copyright Act (Cap. 130), which provides that where a work is made by an author in the course of their employment under a contract of service or apprenticeship, the employer shall — in the absence of any agreement to the contrary — be the first owner of the copyright. An Employee Invention and IP Assignment typically reinforces this statutory default by expressly assigning copyright, providing a belt-and-braces protection particularly where the employment relationship is ambiguous or where work may have been created partly outside normal working hours.

Trade secrets and confidential information do not receive specific statutory protection in Kenya equivalent to patent or copyright protection; protection derives primarily from contract law, the Law of Contract Act (Cap. 23), and the equitable duty of confidence recognised by Kenyan courts following English common law principles. The Data Protection Act No. 24 of 2019, administered by the Office of the Data Protection Commissioner (ODPC), may also be relevant where confidential information includes personal data of customers or third parties.

An Employee Invention and IP Assignment differs from a standalone Copyright Assignment (ke-copyright-assignment) in that it covers the full spectrum of intellectual property — inventions, patents, utility models, industrial designs, plant variety rights, trade marks, trade secrets, and copyright — created within the scope of employment, whereas a copyright assignment typically addresses a single specific work. It also differs from a Non-Disclosure Agreement (ke-non-disclosure-agreement), which prevents disclosure of confidential information but does not transfer ownership. The Employee Invention Assignment is the thorough IP ownership transfer instrument, most critical for technology companies, pharmaceutical firms, agricultural research organisations, and any employer whose competitive advantage derives from employee-generated innovation.

An Employee Invention and IP Assignment in Kenya is needed whenever an employer's business depends on intellectual property created or likely to be created by employees in the course of their work.

When a technology startup registered with the Business Registration Service (BRS) hires software engineers, data scientists, or product designers, an Employee Invention Assignment is essential to confirm that source code, algorithms, user interface designs, and technical documentation vest in the company — not the individual developer — from the moment of creation. Without an express written assignment, the position under Kenyan copyright law (Copyright Act Cap. 130, Section 32) is that works made in the course of employment belong to the employer, but disputes about whether specific work was made "in the course of employment" are common and expensive to litigate before the High Court of Kenya.

When a pharmaceutical or agricultural research company registered with the Kenya Pharmacy and Poisons Board or the Kenya Plant Health Inspectorate Service (KEPHIS) employs research scientists and laboratory staff, an Employee Invention Assignment is required to confirm that all patentable inventions — new compounds, formulations, plant varieties, or biotechnology innovations — are assigned to the employer before patent applications are filed at the Kenya Industrial Property Institute (KIPI).

When an employer intends to raise venture capital from a fund licensed by the Capital Markets Authority (CMA), sell the business, or list on the Nairobi Securities Exchange (NSE), investors and acquirers will conduct IP due diligence. The absence of signed Employee Invention Assignments from all technical staff is a material finding that routinely delays or reduces the valuation in M&A transactions involving Kenyan technology or life sciences companies.

When an employee works on a project partly on employer premises and partly at home — a pattern accelerated by remote working arrangements post-2020 — the boundary between employer-owned and personally owned intellectual property becomes contested without a written assignment agreement specifying that all IP related to the employer's business belongs to the employer regardless of where or when it was created.

When an employer engages a consultant alongside permanent employees on a joint project, an Employee Invention Assignment for employees — combined with a separate IP clause in the consultant's service agreement — clarifies ownership of jointly developed work and prevents disputes before the Kenya Industrial Property Institute (KIPI) or the High Court of Kenya.

A valid Employee Invention and IP Assignment in Kenya must contain the following essential elements to be enforceable under the Industrial Property Act No. 3 of 2001, the Copyright Act (Cap. 130), and the Law of Contract Act (Cap. 23).

Parties and Employment Context: Full legal names, National Identity Card (NIC) numbers, and addresses of the employer and employee. The employee's job title, department, and the date of commencement of employment should be stated, confirming the employment relationship under which the assignment arises.

Scope of Assigned Intellectual Property: A thorough definition of the intellectual property being assigned, including: (a) all inventions — patentable or not — conceived or reduced to practice by the employee alone or jointly with others; (b) all patent applications and patents arising from such inventions filed at the Kenya Industrial Property Institute (KIPI) or the African Regional Intellectual Property Organization (ARIPO), to which Kenya is a member state; (c) all copyright works — software, literary works, artistic works, databases, and compilations — created in the course of employment under Section 32 of the Copyright Act (Cap. 130); (d) all industrial designs registered under Part IX of the Industrial Property Act No. 3 of 2001; (e) all trade secrets and confidential information relating to the employer's business, products, or customers; and (f) all utility models registered under Part III of the Industrial Property Act.

Course of Employment Clause: A definition of what constitutes work done "in the course of employment" — typically including work done during normal hours, work done using company resources (equipment, premises, or materials), and work that relates to the employer's actual or demonstrably anticipated business activities, even if done outside working hours. This clause must be carefully drafted to comply with Section 42 of the Industrial Property Act No. 3 of 2001, which limits employer ownership to inventions made pursuant to the employee's inventive duties.

Statutory Carve-Out for Exceptional Inventions: An acknowledgement of the employee's right under Section 42(2) of the Industrial Property Act No. 3 of 2001 to apply to the High Court of Kenya for additional remuneration where an assigned invention is of exceptional importance relative to the employee's contract remuneration. This carve-out cannot be excluded by contract and should be expressly acknowledged to avoid disputes.

Obligations to Disclose and Execute Documents: The employee's obligation to promptly disclose all inventions and IP to the employer in writing, to execute all documents (patent applications, copyright assignments, design registrations) necessary to perfect the employer's title at KIPI or ARIPO, and to cooperate in all IP prosecution and enforcement proceedings — both during and after employment.

Consideration: The monetary or non-monetary consideration provided by the employer in exchange for the assignment. Where the assignment is entered into at the commencement of employment, continued employment is sufficient consideration under the Law of Contract Act (Cap. 23). Where an existing employee is asked to sign the agreement mid-employment, additional consideration (a pay rise, bonus, or one-off payment) should be provided to avoid the agreement being challenged for lack of consideration.

Post-Employment Obligations: The employee's continuing obligations after termination — including the duty to execute any documents needed to complete registration of IP rights assigned during employment — and the employer's right to execute documents on the employee's behalf as attorney-in-fact if the employee is unavailable or uncooperative.

Excluded Inventions: A schedule of any pre-existing inventions or prior IP owned by the employee before the employment commenced, which are expressly excluded from the assignment. This schedule prevents the employee from later claiming that an invention developed during employment was pre-existing personal IP.

Governing Law and Dispute Resolution: Kenya law governs the Agreement. Disputes relating to patent ownership may be referred to the Kenya Industrial Property Institute (KIPI) or the High Court of Kenya (Intellectual Property Division). Disputes relating to employment obligations may be referred to the Employment and Labour Relations Court (ELRC) under Article 162(2)(a) of the Constitution of Kenya 2010.

Forms-legal.com provides this Kenya Employee Invention and IP Assignment template as a practical starting point for employers in technology, research, creative, and pharmaceutical sectors. Complex assignments — particularly those involving ARIPO filings, jointly developed inventions, or assignments from senior management — should be reviewed by an advocate with IP expertise admitted to the Roll of Advocates maintained by the Law Society of Kenya (LSK).

Under the Employment Act No. 11 of 2007, the Employment and Labour Relations Court (ELRC) adjudicates workplace disputes in Kenya. Section 35 of the Employment Act 2007 governs termination of employment. The National Social Security Fund Act No. 45 of 2013 mandates employer contributions to NSSF. The Social Health Insurance Fund (SHIF) replaced NHIF in 2024. The Kenya Revenue Authority (KRA) administers PAYE under the Income Tax Act (Cap. 470).