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

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

i) Functions of the Patent System

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

Contains information on:Applicants (person, company, university or research organization)InventorTitle of the inventionContact addresses of the applicants and the inventorsDescription of the inventionDrawing, plans and diagramsClaims

ii) Contents of Patent document ii) Contents of Patent document

iii) Patent LandscapingGrouping

patent DATA according to

area of interest

Analyzing data and deriving useful

INFORMATION

INTELLIGENCE

(Strategic Decision Making )

POLICY STRATEGY

(Institutional, National)

RESEARCH STRATEGY

BUSINESS STRATEGY

iii) Patent LandscapingPatent Filing: Trends and Grants by offices and countries of

origin

Field of Tech. 2005,comput

er tech (144,594),

telecommunications

(116,770), PATENT

LANDSCAPING Use of utility

models: as an alternative to patent

Patents in Force: Country

of origin, Age of

Approx 6.1 million, 2006

Processing application: time:- challenges faced by patent offices

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

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

2. Linking Patent Information to R&D at KIRDI

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

i).Providing technological information for researchi).Providing technological information for research

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,

ii) Identifying Solutions to Technical Problems

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

iii). Searching for Information in Specific Field

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

iv) Evaluating Specific Technologies offered for Acquisition

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

v). Identifying the Patentability potential of R&D activities at earlier

stages

v). Identifying the Patentability potential of R&D activities at earlier

stages

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

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.

vii) Avoiding the Risk of Duplication of R&D

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

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.

x). Providing Assistance during Development

and Marketing of New Products

Technology Transfer DepartmentIP Office (Patent Information)Research and DevelopmentReverse Engineering and Upgrading of MSME productsIncubation ServicesPrototype development policy

xi). Infrastructure in place for utilization of Patent Information to R&D at KIRDI

3. Patent intelligence and Business Strategy for SMEsi). 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

1.Finance2.Market 3.Management skills4.Technological:-equipment, product,

process

iii). Challenges facing SMEsiii). Challenges facing SMEs

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

PATENT

INFORMATION

IDENTIFYING, MONITORING

COMPETITORS IN THE MARKET

SOLUTIONS TO TECHNICAL PROBLEMS

IDENTIFYING TECHNOLOGIE

S IN PUBLIC DOMAIN

OBTAINING ADDITIONAL REVENUE

IDENTIFYING ALTERNATIVE TECHNOLOGIE

S

ESTABLISHING STRATEGIC

ALLIANCE

iv).Patent Analysis and Business Strategyiv).Patent Analysis and Business Strategy

BUSINESS STRATEGY

SOURCE OF TECHNOLOGICAL INFORMATION ENHANCED REPUTATION

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

4. Strategies for better access and use of Patent Information

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 YOUrsmboya@yahoo.com