Transcript 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.

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
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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
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Exclusive right to an invention in exchange
for full disclosure of the invention
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provide protection to the inventor
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Protection for a given period of time (20
years, patents)
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Protection means NO commercial
production, sale and distribution,
importation without owners consent
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The rights are enforceable by law
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Protection reward inventor/creator- recoup
investment
Functions of patent system
b)
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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
Analyzing data
and deriving
useful
INFORMATION
INTELLIGENCE
(Strategic
Decision
Making )
RESEARCH
STRATEGY
POLICY
STRATEGY
(Institutional,
National)
iii) Patent Landscaping
Patent Filing:
Trends and
Grants by
offices and
countries of
origin
Patents in
Force: Country
of origin, Age
of Approx 6.1
million, 2006
Processing
application:
time:challenges
faced by
patent offices
PATENT
LANDSCAPING
Field of Tech.
2005,computer
tech (144,594),
telecommunica
tions
(116,770),
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
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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
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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)
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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
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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)
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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
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)
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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
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KIRDI’s main mandate is to carry out
research,
Use of a patent search to establish the stateof 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
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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
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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
and Marketing of New Products
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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
1. Finance
2. Market
3. Management skills
4. 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
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iv).Patent Analysis and Business Strategy
BUSINESS STRATEGY
IDENTIFYING,
MONITORING
COMPETITORS IN
THE MARKET
SOLUTIONS TO
TECHNICAL
PROBLEMS
IDENTIFYING
TECHNOLOGIE
S IN PUBLIC
DOMAIN
PATENT
IDENTIFYING INFORMATION
ESTABLISHING
ALTERNATIVE
STRATEGIC
TECHNOLOGIE
ALLIANCE
S
OBTAINING
ADDITIONAL
REVENUE
SOURCE OF TECHNOLOGICAL
INFORMATION
ENHANCED REPUTATION
4. Strategies for better access and
use of Patent Information
Reasons for underutilization of patent system
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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
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