1. 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

2. 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

3. 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

4. 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

5. 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

6. 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)

7. 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

8. 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

9. 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

10. 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

11. 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,

12. 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

13. 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

14. 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

15. 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

16. 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.

17. 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

18. 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

19. 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.

20. 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

21. 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

22. 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

23. 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

24. 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

25. 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

26. THANK YOU