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PILOT IP AUDIT IN KENYAPILOT IP AUDIT IN KENYA

OGADA TomOGADA Tom

WIPO National Roving Workshops on WIPO National Roving Workshops on Intellectual Property Strategy, Nampula, Intellectual Property Strategy, Nampula,

February 9-10, 2006February 9-10, 2006

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STRATEGIC MANAGEMENT STRATEGIC MANAGEMENT PROCESSPROCESS

Where we are now in terms of IPSituation analysisIP Audit

Where we want to be in 10 years timeIP vision, IP objectivesIP Audit

How to reach there in 10 years timeIP strategiesIP PoliciesIP programs

ImplementationMonitoring and Evaluation

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CONTENTSOF THE PRESENTATIONCONTENTSOF THE PRESENTATION

INTRODUCTION

METHODOLOGY

RESULTS

RECOMMENDATIONS

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• INTRODUCTION

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Assignment

In August 2004, WIPO Commissioned a Pilot IP Audit

5 Countries were involvedKenyaTanzaniaGhanaNigeriaSouth Africa

Objectives

Gain experience which would enable large scale IP Audit Exercise in several African Countries.

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Training

Two day Training in Dar-es-Salaam (15-16th August, 2004)

Points of agreement data collection instruments

coverage industry sector

duration of the exercise

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Research Team

One Lead Researcher

Six research assistants

Nairobi Region – 3 RAsMombasa Region – 1 RAEldoret Region – 2 RAs

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Audit Objectives

To assess the level of public awareness on IPTo identify bottlenecks on generation, protection and commercial exploitation of IP assets.To review the existing IP laws and policiesTo assess the provision of IP services both by the national IP offices and as a professional IP Service providerTo draw conclusions and make appropriate recommendations for National IP Policy or strategy

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METHODOLOGY

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Data collection instrumentsData collection instruments

Over 239 questionnaires

Reviewed relevant documents

Studied articles from print media for the last 5 years

Followed selected inventors for success stories

Conducted interviews

Made physical observations and verbal responses and comments

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QUESTIONNAIRESQUESTIONNAIRES

Set A for industries

Set B R&D institutions

Set C IP offices

Set for Inventor/IP experts

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ADMINISTRATION OFADMINISTRATION OF QUESTIONNAIRE QUESTIONNAIRE

Industry 200

Universities and R&D institutions 20IP offices

3Related government institutions 7Inventors/IP experts 9

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GOVERNMENT DOCUMENTS ONGOVERNMENT DOCUMENTS ON

Informal sector and SMEs

Industrialization

Science and Technology

Development Plans

Investments

Poverty Eradication

Technical Training

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SUCCESS STORIESSUCCESS STORIES

Inventors (9 individuals)

Captured from IP Offices

Industries (6)

Selected based on the information from the questionnaires

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ARTICLES FROM THE PRINT MEDIAARTICLES FROM THE PRINT MEDIAObtained 66 Articles (1999-2004)

Copyright infringementCounterfeits IP disputesIP and MedicinesIP and SMEsViews on TRIPS and strong IP regimeInventions and innovation

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SOME RESULTS OF THE KENYAN IP AUDIT EXERCISE

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GENERAL RESULTS – ISSUES COVEREDGENERAL RESULTS – ISSUES COVERED

Level of public awareness on IPCommercialization of IPProfessional services on IPNational IP officesOwnership of IP and capacity buildingViews on TRIPS and strong IP RegimeInfringement, Copyright and CounterfeitCreators of IP in the countryDuration of judicial processIP service delivery

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2.1. Level of awareness2.1. Level of awareness

Low IP awareness levelDifficulties in understanding various IP elementsNot knowing how and where to protectNo IP Management Office in industryTo much secrecy about IPWrong perception of IP

IP is complexIP is for lawyersSMEs and do not have capacity to invent

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2.2. Commercialisation of IP2.2. Commercialisation of IP

No link between inventor and investorIP asset not recognized as collateralIP valuation mechanism lackingInventor lack business skillsFear of exploitationLack of professional servicesInadequate enforcement of IP laws

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2.3. Professional Service providers2.3. Professional Service providers

Patent AgentsFew and found only in large citiesIP services not core businessPrices charged high and variesNeed for regulations of entire servicesPoor representation in court

JudiciaryLack IP awareness by court prosecutors and judges is a major handicap

Competent Patent DraftersFew and thus high rates of abandonment and rejection

Technology Managers- Non existent

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2.4. National IP Offices2.4. National IP Offices

Not adequately knownRegistration process complex and longDecentralization of Services proposed Unrealistic expectation on IP Offices

Provision of drafting servicesPolicing of IP rightsEnforcement of lawsFinancing of commercializationRewarding of inventorsWaiving of fees

One stop shop for IP recommendedIP Office to adopt private sector work culture

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2.5 Generators of IP2.5 Generators of IP

Up to end of 2001

SMEs 116

Industry 45

R&D Institutions 14

Individual from universities 2

University 1

Secondary school 1

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2.6. Plant Breeders Rights2.6. Plant Breeders Rights

1997-2003

275 applications filed by Kenyans336 applications fil;ed by foreigners108 Granted

• Impact of Plant Variety Protection

Increased investment in breeding and commercializationIncreased collaboration locally and internationallyIncreased number and range of improved varieties available for farmers

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2.7. Copyright2.7. Copyright

Copy right Act 2001

Kenya Copyright Board

Kenya Copyright Tribunal

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2.8. Counterfeits2.8. Counterfeits

• Biggest problem

Music Industry Creativity being killedKenya loosing 60 million US$/a

Publishing and Book TradePiracy a big problemEconomy loosing 4 million US$/a

Movie industry Pirated a major problemComputers 77 % rate of piracy

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2.10. Duration of Court Cases2.10. Duration of Court Cases

Court cases takes too long

Blue Band Vs Gold Band

Trademark dispute 5 years

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RESULTS FROM INDUSTRIES

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3.1.Profile of Industries3.1.Profile of Industries

3.1.1. Number respondents 68

3.1.2. Company Categories

Micro 18

Small 13

Medium 19

Large 18

3.1.3. Legal Status

Limited companies 40

Informal 14

3.1.4. Company Type

Manufacturing 53

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3.2. Results3.2. Results

3.2.1. Legal protection of IPThose who have protected 42 %

3.2.2. Main Reasons for NOT protectingNot having IP to protectLack of awarenessInadequate enforcement

3.2.3. Most utilised IP Trademark3.2.4. Industry maintains IP register 15 %3.2.5. Having IP Policy 1

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RESULTSRESULTS

3.2.6. Incorporation of IP non-disclosure Agreements– With employees 21– With business partners 15

3.2.7. Agreement with IP protectionWith business associates less than 20 %

3.2.8. Use of professional advice in processing IP– Yes 25 %

3.2.9. Budget allocation to IP– Less than 10 % of budget 80%

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RESULTSRESULTS

3.2.11. Main Obstacles to development and utilization of IP– High R&D costs– Unawareness of IP benefits

3.2.12. Impact of ownership on Business PerformanceIncrease sales and reduce costs

3.2.13. Trade on IP– Only a few Companies have acquired IP from other

generators

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3.3.SUCCESS STORIES3.3.SUCCESS STORIES

3.3.1. Company AActive in generation and protection of IPHas an IP PolicyUses patent agent and own servicesCommercializes IPHas IP non-disclosure agreementsMaintains IP register

3.3.2. Company BConsiders IP integral part of business strategyHas filed 16 trademarks and 9 industrial designsHas non-disclosure agreementsCommercializes its IP

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SUCCESS STORIESSUCCESS STORIES

3.3. Company C

Spends t10-25 % of budge on IP

Has 15 industrial desigm and 293 trademarks and service marks

3.3.4. Company D

Has 218 trademarks

3.3.5. Company E

Has 58 trademarks, 1 Patent

Acquired license to product ARVs

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LOCAL INVENTORSLOCAL INVENTORS

THE FOLLOWING INVENTIONS FROM LOCAL INDIVIDUALS HAVE BEEN COMMERCIALISED

Cockroach Killer Paste from waste material

Rotating TV Aerial

Condom dispenser

Fertilizers mixture branded phymix

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RECOMMENDATIONSRECOMMENDATIONSmade onmade on

1. IP awareness

2. IP Service Delivery

3. Strategies for promotion of Commercialization of IP

4. Professional IP service Providers

5. IP Training

6. IP Capacity building

7. Fighting counterfeits

8. Special Courts on IP disputes

9. National IP Strategy and Policy