PILOT IP AUDIT IN KENYA OGADA Tom

WIPO National Roving Workshops on Intellectual Property Strategy, Nampula, February 9-10, 2006 1

STRATEGIC MANAGEMENT PROCESS

Where we are now in terms of IP Situation analysis IP Audit Where we want to be in 10 years time IP vision, IP objectives IP Audit How to reach there in 10 years time IP strategies IP Policies IP programs Implementation Monitoring and Evaluation 2

CONTENTSOF THE PRESENTATION

INTRODUCTION METHODOLOGY RESULTS RECOMMENDATIONS

3

•

INTRODUCTION

4

Assignment In August 2004, WIPO Commissioned a Pilot IP Audit 5 Countries were involved Kenya Tanzania Ghana Nigeria South Africa Objectives Gain experience which would enable large scale IP Audit Exercise in several African Countries.

5

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 6

Research Team One Lead Researcher Six research assistants Nairobi Region Mombasa Region Eldoret Region – 3 RAs – 1 RA – 2 RAs 7

Audit Objectives

To assess the level of public awareness on IP To identify bottlenecks on generation, protection and commercial exploitation of IP assets.

To review the existing IP laws and policies To assess the provision of IP services both by the national IP offices and as a professional IP Service provider To draw conclusions and make appropriate recommendations for National IP Policy or strategy 8

METHODOLOGY

9

Data 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 10

QUESTIONNAIRES

Set A for industries Set B R&D institutions Set C IP offices Set for Inventor/IP experts 11

ADMINISTRATION OF QUESTIONNAIRE

Industry Universities and R&D institutions IP offices Related government institutions Inventors/IP experts 200 20 3 7 9 12

GOVERNMENT DOCUMENTS ON

Informal sector and SMEs Industrialization Science and Technology Development Plans Investments Poverty Eradication Technical Training 13

SUCCESS STORIES

Inventors (9 individuals) Captured from IP Offices Industries (6) Selected based on the information from the questionnaires 14

ARTICLES FROM THE PRINT MEDIA

Obtained 66 Articles (1999-2004)

Copyright infringement Counterfeits IP disputes IP and Medicines IP and SMEs Views on TRIPS and strong IP regime Inventions and innovation 15

SOME RESULTS OF THE KENYAN IP AUDIT EXERCISE

16

GENERAL RESULTS – ISSUES COVERED Level of public awareness on IP Commercialization of IP Professional services on IP National IP offices Ownership of IP and capacity building Views on TRIPS and strong IP Regime Infringement, Copyright and Counterfeit Creators of IP in the country Duration of judicial process IP service delivery 17

2.1. Level of awareness

Low IP awareness level Difficulties in understanding various IP elements Not knowing how and where to protect No IP Management Office in industry To much secrecy about IP Wrong perception of IP IP is complex IP is for lawyers SMEs and do not have capacity to invent 18

2.2. Commercialisation of IP No link between inventor and investor IP asset not recognized as collateral IP valuation mechanism lacking Inventor lack business skills Fear of exploitation Lack of professional services Inadequate enforcement of IP laws 19

2.3. Professional Service providers Patent Agents Few and found only in large cities IP services not core business Prices charged high and varies Need for regulations of entire services Poor representation in court Judiciary Lack IP awareness by court prosecutors and judges is a major handicap Competent Patent Drafters Few and thus high rates of abandonment and rejection Technology Managers Non existent 20

2.4. National IP Offices Not adequately known Registration process complex and long Decentralization of Services proposed Unrealistic expectation on IP Offices Provision of drafting services Policing of IP rights Enforcement of laws Financing of commercialization Rewarding of inventors Waiving of fees One stop shop for IP recommended IP Office to adopt private sector work culture 21

2.5 Generators of IP

Up to end of 2001

SMEs Industry R&D Institutions Individual from universities University Secondary school 116 45 14 2 1 1 22

2.6. Plant Breeders Rights

1997-2003 275 applications filed by Kenyans 336 applications fil;ed by foreigners 108 Granted • Impact of Plant Variety Protection Increased investment in breeding and commercialization Increased collaboration locally and internationally Increased number and range of improved varieties available for farmers 23

2.7. Copyright

Copy right Act 2001 Kenya Copyright Board Kenya Copyright Tribunal 24

2.8. Counterfeits

• Biggest problem Music Industry Creativity being killed Kenya loosing 60 million US$/a Publishing and Book Trade Piracy a big problem Economy loosing 4 million US$/a Movie industry Computers Pirated a major problem 77 % rate of piracy 25

2.10. Duration of Court Cases Court cases takes too long Blue Band Vs Gold Band Trademark dispute 5 years 26

3

RESULTS FROM INDUSTRIES

27

3.1.Profile of Industries

3.1.1. Number respondents 3.1.2. Company Categories Micro Small Medium Large 3.1.3. Legal Status Limited companies Informal 3.1.4. Company Type Manufacturing 68 18 13 19 18 40 14 53 28

3.2. Results

3.2.1. Legal protection of IP Those who have protected 3.2.2. Main Reasons for NOT protecting Not having IP to protect Lack of awareness Inadequate enforcement 3.2.3. Most utilised IP Trademark 3.2.4. Industry maintains IP register 3.2.5. Having IP Policy 42 % 15 % 1 29

RESULTS

3.2.6. Incorporation of IP non-disclosure Agreements – With employees 21 – With business partners 15 3.2.7. Agreement with IP protection With 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% 30

RESULTS

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 Performance Increase sales and reduce costs 3.2.13.

Trade on IP – Only a few Companies have acquired IP from other generators 31

3.3.SUCCESS STORIES

3.3.1. Company A Active in generation and protection of IP Has an IP Policy Uses patent agent and own services Commercializes IP Has IP non-disclosure agreements Maintains IP register 3.3.2. Company B Considers IP integral part of business strategy Has filed 16 trademarks and 9 industrial designs Has non-disclosure agreements Commercializes its IP 3.

32

SUCCESS 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 33

LOCAL 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 34

RECOMMENDATIONS made 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 35