Symposium of Intellectual Property Authorities Services for Access to Knowledge in Promoting Innovation and Creativity Narrowing the Knowledge Gap: Strategic use of Patent Information by R&D, Companies and Inventors for competitive edge MBOYA R. Symposium of Intellectual Property Authorities Geneva, September, 23rd, 2011

PRESENTATION OUTLINE Patent Landscaping and Strategic use of Patent Information Use of Patent Information by Universities/R&D Institutions and SMEs for innovation: Kenyan Experience :- KIRDI’s Experience Patent intelligence and Business Strategy for SMEs Strategies for better access and utilization of Patent Information

1. Patent Landscaping and Strategic use of Patent Information i) Functions of the Patent System a) Exclusivity Function Exclusive right to an invention in exchange for full disclosure of the invention provide protection to the inventor Protection for a given period of time (20 years, patents) Protection means NO commercial production, sale and distribution, importation without owners consent The rights are enforceable by law Protection reward inventor/creator- recoup investment

Functions of patent system b) Information Function “Full disclosure requirement Very important for the continuous development of the technology. Each publication of an IP Application ( patent, design) is the base for new developments by other inventors/creators. it acts as a catalyst for the commercialization of IP Assets (inventions) and their transfer to productive use Majority of patents, industrial design are improvements to existing works patented inventions. This contributes to economic and social development. Patents are published before grant or rejection

ii) Contents of Patent document Contains information on: Applicants (person, company, university or research organization) Inventor Title of the invention Contact addresses of the applicants and the inventors Description of the invention Drawing, plans and diagrams Claims

iii) Patent Landscaping BUSINESS STRATEGY Grouping patent DATA according to area of interest INTELLIGENCE (Strategic Decision Making ) RESEARCH STRATEGY Analyzing data and deriving useful INFORMATION POLICY STRATEGY (Institutional, National)

iii) Patent Landscaping Processing application: time:- challenges faced by patent offices Patent Filing: Trends and Grants by offices and countries of origin Field of Tech. 2005,computer tech (144,594), telecommunications (116,770), PATENT LANDSCAPING Patents in Force: Country of origin, Age of Approx 6.1 million, 2006 Use of utility models: as an alternative to patent

2. Use of PI by Universities and R&D Institutions for Innovation: Linking PI to R&D at KIRDI Universities and R&D institutions carry out research- New Products, process, equipments or improvement of the same: This leads to technological development Some Challenges facing researchers in Africa Believe that every technical problem require R&D Limited information on alternative solutions Duplication of R&D Activities

2. Linking Patent Information to R&D at KIRDI Mandate of KIRDI First to undertake industrial research and development in all industrial and allied technologies including mechanical, civil, electrical, chemical engineering, energy, environment and commodity technologies (food, leather, textile, ceramics). Second to disseminate and transfer of the knowledge generated to the society through extension services

i).Providing technological information for research Patents valuable sources of technical and scientific information in the world More than 70 million patents filed Majority are first and only publication eg Baird television Disclose the invention and how it can be worked out. Provide the most current information on the Technology Television by Baird took five years to be disclosed in other forms of literature KIRDI uses patent information for literature review

ii) Identifying Solutions to Technical Problems Patent documents often discuss the difficulties of a particular process or design, advantages of a particular process or design. A search in Patent Literature can potentially identify solutions to technical problems KIRDI researchers use IP information as potential source of solution to technical problems Example A method of extracting artemisinin from Artemisia annua,(2007)Technology not protected in Kenya Botswana pharmaceutical company focuses on technology not protected in the country,

iii). Searching for Information in Specific Field Knowledge of technology in a specific field can be gained through a search of the relevant literature. Valuable information may be provided concerning raw materials, procedures, processes or by-products Choose the most favorable conditions under which to implement a new solution or an established solution to a slightly different problem. KIRDI researchers use this avenue when working on their research projects

iv) Evaluating Specific Technologies offered for Acquisition Evaluation of technology available for licensing and offered for acquisition. In choosing between two or more technologies A review of patent documents provides information A review of both present and past technology currently used and unused, in similar and unrelated fields, can also be evaluated. For instance in the artemisinin case

A search in Patent Literature will : v). Identifying the Patentability potential of R&D activities at earlier stages A search in Patent Literature will : help determine whether the development is likely to be novel (for patenting) Usually the case before filing any application at KIRDI. The researcher is informed accordingly

vi). Monitoring the success of Funded R&D vi) Monitoring the success of Funded R&D activities at early stages of development Patents are used as a measure of the success of funded research and development programs. The nature and number of patents filed and granted, indicates the level of success of a program. KIRDI has filed more than 10 applications For instance a research with no patent applications is likely to be a duplication of existing work

vii) Avoiding the Risk of Duplication of R&D KIRDI’s main mandate is to carry out research, Use of a patent search to establish the state-of the-art for a new research is important. To ascertain the novelty of research Alert the scientist or researcher of previous research in the area (e.g Production of bio diesel from algae), Universities and R&D not to spend money carrying out research already existing.

viii). Identifying Rights in the Public Domain Patents have duration of protection Territory of protection This facility is very important in African countries where the informal sector and small and medium-sized enterprises are considered major engines for industrial transformation. Invention on artemisinin was in the public domain Method for processing fish leather also in public domain, KIRDI transferred it to a company

ix). Technology Scanning and Reverse Engineering RE RE a process of dismantling an existing technology with a view to learn and copy in order to produce similar technology This method is cumbersome and time consuming. It is common in the SMEs sector Most universities and research institutions use reverse engineering in developing technologies Use of patent information is valuable Since most technologies not protected in Africa, reverse engineering to be used

x). Providing Assistance during Development x). Providing Assistance during Development and Marketing of New Products Patent searches important in the process of initiating, developing and marketing a new product or process. They are useful for: Identifying companies which are end-users of a particular product or equipment; Analysis of the patent holdings of specific inventors within a narrow research area can be used as an aid to recruitment, since it can identify a major player in the field, whose services could then be sought.

xi). Infrastructure in place for utilization of Patent Information to R&D at KIRDI Technology Transfer Department IP Office (Patent Information) Research and Development Reverse Engineering and Upgrading of MSME products Incubation Services Prototype development policy

3. Patent intelligence and Business Strategy for SMEs i). Importance of SMEs Employment Creation, Wealth Creation, Industrialization, Value addition, Contributes to the GDP (20% in Kenya) ii). Characteristics of SMEs products Low quality, Less attractive in appearance Low efficiency and effectiveness Lack of standardization of products Products that are not protected and have no trademarks Nevertheless MSMEs are known to be very innovative. The today’s MSMEs would be tomorrow's multinational companies

iii). Challenges facing SMEs Finance Market Management skills Technological:-equipment, product, process Difficulty in accessing the Market for SMEs Products Lack of Competitiveness SMEs are innovative and most of the technical needs they provide by themselves but through trials and errors 22

iv).Patent Analysis and Business Strategy IDENTIFYING, MONITORING COMPETITORS IN THE MARKET IDENTIFYING TECHNOLOGIES IN PUBLIC DOMAIN SOLUTIONS TO TECHNICAL PROBLEMS PATENT INFORMATION ESTABLISHING STRATEGIC ALLIANCE IDENTIFYING ALTERNATIVE TECHNOLOGIES OBTAINING ADDITIONAL REVENUE SOURCE OF TECHNOLOGICAL INFORMATION ENHANCED REPUTATION

Reasons for underutilization of patent system 4. Strategies for better access and use of Patent Information Reasons for underutilization of patent system Thus a large percentage of world patents are available for free in Africa Africa not utilizing effectively this avenue Lack of knowledge of existence of such resourceful data bases by key stakeholders Lack of technical capacity to interpret the patent Lack of directed efforts from IP offices to provide this information to stakeholders Lack of skills in searching patent databases

Strategies for better access and use of Patent Information cont… Use of PI should be integral part of R&D Business can use patent documents as source of technical, legal and business information Capacity building of IP offices to start providing this services in addition to other service Establishing of pilot technology innovation centre in other institutions such as universities and research institution to provide the services Public awareness creation on availability of this resources Mechanisms on reverse engineering should be developed at national level as part of research policy

THANK YOU rsmboya@yahoo.com