Intellectual Property, Technology and Data Protection

Products, technologies, brands and goodwill require immense resources to create and only thrive if they are protected and safeguarded though international, regional and domestic laws on intellectual property (IP) rights. Moreover, public, private and commercial entities are currently collating, utilising, transferring and sharing business and personal data for economic and social purposes. As we progress further in technology, it is becoming increasingly necessary to protect business and personal information from unauthorized, irregular and illegal access by individuals and entities, and to remedy any such breaches through recourse to the law.
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Our firm regularly advises clients on protection and enforcement of diverse forms of IP rights and interests originating from various legal sources and in multiple forms such as patents, utility models, design rights, trademarks, passing off, copyrights, rights in performance, trade secrets, confidentiality and non-disclosure obligations, database rights and domain names rights.
We assist clients to navigate novel legal and regulatory challenges as well as the opportunities brought about by rapid changes in technology. We counsel clients to avoid pitfalls associated with unclear regulatory framework in e-commerce, e-procurement, mobile telephony and digital services. We have assisted clients in navigating problems arising under cybercrime and cybersecurity law. We are at the forefront of offering advice on measures that can be taken to limit risks that can arise from wrongful use of data and have assisted entities in developing data protection regulations, policies and manuals on handling and use of data.
  • Intellectual Property: The Firm is constantly engaged in making applications for the protection of diverse forms of innovations and creative works, including but not limited to patents, utility models, industrial designs, trademarks and copyrights with the relevant agencies and institutions whether in Kenya or regionally such as through the Africa Regional Intellectual Property Organisation (ARIPO) office. We have also been engaged in structuring and reviewing mechanisms for the protection of trade secrets, and in drafting confidentiality and non-disclosure agreements.
  • We advise on and structure appropriate licensing, assignment, agency, sponsorship, branding, endorsement and royalty agreements for diverse forms of innovations, creations, works, technological innovations, business activities and social events for our clients. As websites progressively become core aspects of branding for businesses and investments, we are focused on safeguarding our clients’ domain names rights and other internet related aspects of IP. We also advise and represent clients in protecting and enforcing IP rights incidental to the media, entertainment and sports industry. The Firm’s expertise has been sought in representing clients at the Industrial Property Tribunal and in Courts.
  • Technology: We have advised clients on issues incidental to information, communication and technology; cyber security and cyber-crime. In particular, we are involved in advising on, structuring and reviewing internet medium based agreements and contracts including but not limited to cloud computing contracts, e-commerce and e-procurement. We are conscious of emerging opportunities for transnational investment and business as increasing globalisation render cross-border commercial transactions and services indispensable, and are constantly advising clients to efficiently navigate the applicable domestic, regional and international legal and regulatory mechanisms. As the cyber space provides novel opportunities for business and corporate branding while presenting new risks of legal liability, we are developing computer and social media use manuals and policies for clients both in the private, public and commercial sectors. We are also engaged in drafting and reviewing software licensing agreements, and developing terms of use of software and websites as well as FinTech.
  • Data Protection: The Firm is engaged in advising on and developing data protection and privacy policies and manuals for public, private and commercial entities. We also advise and guide our clients on legal and regulatory issues relating to big data and data mining, and draft web-hosting agreements.

Select matters undertaken by the firm in IP and ICT fields include:

  • Advising Bank of China with regard to the protection of IP in the form of trademarks and handling registration aspects
  • Acting for an undisclosed client in brokering an agreement for compensation pursuant to copyright infringement
  • Acting for a software development company in a dispute involving millions of USD dollars in a suit filed against a state corporation in a case relating to unauthorised use and release of source codes
  • Advising a large software developing company on a software development contract with one of the largest banks in Kenya that included clause pertaining to proprietorship of IP, training and support, maintenance, user obligations, warranties, among others
  • Supporting a company in developing an information technology policy that conforms to the best policies, standards and ethics of data protection.
  • Advising undisclosed client on the Kenya’s policy, legal and regulatory framework for the protection of plant breeders’ rights, including associated IP rights aspects
  • Consulting for an online e-commerce company with African wide operations on the incidental legal and regulatory issues including those relating to operating a pay gateway
  • Assisting a software solutions and technology company in drafting, reviewing and standardising end-user agreements.