AFRICAN UNIVERSITIES AND THEIR ROLE IN INNOVATION

Richard Branson once said that if you want to be a millionaire, start with a billion dollars and launch a new airline. Alternatively, you could start an Office of Tech Transfer at a University.

There are two schools of thought around IP and tech transfer in universities in Africa. The first is that tech transfer is irrelevant because most big research universities are public institutions and are therefore not allowed to acquire IP and control research output through the use of IP. The second is that IP acquisition and tech transfer would be a game changer, allowing universities to access the vast resources of global private industries through royalty payments. Neither view is entirely accurate, in general.

(Unfortunately, there's also a third view: what is an Office of Tech Transfer and why should we start one? Although this view is probably more common than the others, it isn't terribly relevant to this post.)

A good friend to this blogger recently pointed out this article about the failure by most Universities in Canada to transfer technologies from university labs to Canadian industries. The conclusion is that patents are not helpful enough, and cost too much, to justify the focus placed on them by universities.

To be sure, universities in Africa don't own very many patents. Even in Kenya, one of the most active countries in terms of patent filings, Kenyan universities own a very small (albeit growing) handful of patents.

This blogger is convinced that the solution to moving technology from African universities to African businesses is not by way of patents, but rather by way of direct partnerships. African universities have R&D resources (the three Ls: labs, labour, and literature) but like most universities around the world are not equipped to commercialize products. African companies don't generally do much R&D but are very aware of local needs/challenges, have some financial resources, and are relatively good at marketing solutions.

Patents are not needed for such partnerships. Ideally, private industry would work directly with university researchers to identify and solve local problems. Industry can cover some of the research expenses in exchange for access to the three Ls and first access to the research outcomes.

This model may not work in highly developed countries with universities that are very well equipped and very good at obtaining large research grants. But in Africa, where universities are available to do research but (very) rarely see the impact of that research, it may be a better model than the traditional OTT model we know from developed countries.

A perfect example of this model exists already - it's called BioInnovate and it is a successful example of industry/academia partnerships in Africa, mostly or entirely without patents.

This was first posted on Afro-IP

CONGRATS TO OUR OWN LEO, A NEW IPKAT

It appears to have so far gone unrecognised on this blog, but one of our very own is the first African correspondent over on the insanely busy extraordinary IPKat blog. See the announcement, here. Fittingly, Chijioke Okorie blogs on Afro IP as a lady leo, and is now perhaps the biggest cat on the block in Europe?

Congratulations!!

We look forward to reading more great posts on IPKat, now with more of an African perspective. 

'HAKUNA MATATA'? YOU'RE MISSING THE POINT.

Recently, there has been an uproar in Kenya initiated by this article about Disney's trademark for the phrase "Hakuna Matata". A reasoned response (here) clarified that the TM is valid only in the U.S., so no rights in East Africa are involved, and further argued that this is normal business behaviour and normal use of the TM system. Various articles have questioned the legality and morality of the TM (e.g., here), and the BBC ran a story about "unlikely" phrases that are trademarked.

Suffice to say a lot has been said about this. It's this blogger's turn!

Focusing on "hakuna matata" completely misses, excuse the phrase, the elephant in the room. Revenues from the movie (to date, including box office income and DVD sales, as reported here) are roughly 1.2B USD (that's more than 1% of Kenya's GDP). The Lion King musical has grossed substantially more - 8.1B USD to be exact (as reported here). So this single film (and the musical spin-off), a story taking place on the African Savannah, with African animals and African words/phrases, has grossed almost 10B USD for Disney, an American company.

So, while we are focusing so much energy on the TM (which truthfully provides extremely limited rights - only to the sale of T-shirts in America), we are losing sight of the bigger story. Disney's profit from African culture/imagery goes far, far beyond the simple two-word phrase. Could an African animation studio have produced a film like the Lion King? Possibly, although the marketing power of Disney is legendary and surely has much to do with the movie's success. Clearly, though, there was (and still is) a market for such entertainment. Can Africa capitalize on it? Shouldn't, perhaps, we engage more with the American market (and use the American intellectual property systems when doing so)? Millennials are craving anything "new" - experiences, culture, food, art - and Africans certainly can provide such things directly, rather than allowing an American company to reap all the benefits.

Let's not ignore the larger issue...
(Image licensed under CC0 license)

A few final comments, just for the record:

A search of the USPTO TESS database for trademarks is fascinating. Eighteen results are returned for "hakuna matata", five of which are either pending or granted and alive. This includes Disney's TM but also an intriguing entry by a Chinese company, filed 13 November (just three weeks ago!), for use of the phrase on toys and balloons. The timing of this application, filed just two weeks before the beginning of the uproar mentioned above, is more than a little curious.

A wider search of the database reveals that many common Swahili words are trademarked (often by multiple companies), including "chakula" (food), "nzuri" (good), and "jambo" (hello).

Finally, the Lion King has been the subject of more than TM infringement - plenty has been said (e.g., here and here) about the purported copyright infringement vis-a-vis Kimba The White Lion.

This was first posted on Afro-IP.

CURIOSITIES IN KENYA'S TK LAW

Kenya's Protection of Traditional Knowledge and Cultural Expressions Act was passed in 2016 and commenced on 21 September, 2016. On this (approximately) 2-year anniversary of the Act, let us discuss three oddities of the Act.

1. Section 12 provides for compulsory licensing of tradition knowledge. The very notion that a community could be compelled to grant a license to their traditional knowledge is, to this blogger, a bit revolting, but the text of the provision is even more curious.

"12. Where protected traditional knowledge is not being sufficiently exploited by the owner or rights holder, or where the owner or holder of rights in traditional knowledge refuses to grant licenses for exploitation, the Cabinet Secretary may, with prior informed consent of the owners, grant a compulsory licence for exploitation subject to Article 40(3) (b) of the Constitution." (emphasis added)

What, exactly, does "prior informed consent" mean in the context of a compulsory license? If there is consent of the owners, doesn't that mean it's not a compulsory license? This blogger cannot think of any reasonable and sensible interpretation of this provision.

2. Communities/owners may assign their TK. Section 22(1) of the Act states: "The owners of traditional knowledge or cultural expressions rights shall have the right to assign and conclude licensing agreements."  Now, licensing is one thing, but assignment? What exactly does it mean to assign traditional knowledge?  The Act defines an owner of TK as "local and traditional communities, and recognized individuals or organizations within such communities in whom the custody or protection of traditional knowledge and cultural expressions are entrusted in accordance with the customary law and practices of that community". An assignment would mean that the owner transfers ownership to someone else - but how is that possible in this context? It seems that anybody who could be an owner (i.e., could receive an assignment), would already be an owner under the Act.

3. The Act makes numerous references to the "Cabinet Secretary", which in Section 2 is defined as the "Cabinet Secretary responsible for matters relating to Intellectual Property". Who is this? In Kenya, there is no such Cabinet Secretary, per se, but there are several possibilities: the copyright office, KECOBO, is in the Office of the Attorney General; the Plant Breeders' Rights office, KEPHIS, is in the Ministry of Agriculture; and the patent/trademark office, KIPI, is in the Ministry of Industrialization. Another possibility might be the Cabinet Secretary to the Ministry of Sports and Heritage. The identity of this "CS in charge of IP" is important, for example, because the funding for KECOBO's database of TK, required by the Act, would most likely come from that Cabinet Secretary's ministry.  Also, many decisions described in the Act (such as for compulsory licensing, as described above) must come from this mystery CS.

As with any newly enacted law, the Protection of TK Act has some kinks that require attention. Hopefully, these will be addressed in the near future.... 

This was first posted on Afro-IP 

ARIPO FORGES AHEAD WITH REGIONAL DATABASE

A new ARIPO Regional IP Database has been launched, and many bloggers and reporters have mentioned it (see here, for example). This blogger would like to add his two cents Shillings.

Developing a regional IP database is no small accomplishment, and ARIPO deserves hearty and numerous congratulations. The interface is convenient and easy to use. The coverage is broad, including patents, designs, and trademarks listed separately and segregated for each ARIPO member nation. It is therefore quite clear what sort of data are available (and what data are not available!) for searching, and this in itself helps us to see what types of IP are popular, and where they are popular.

Data available in ARIPO Database

REGIONAL NOVELTY IN ARIPO. WAIT.... WHAT??!

A previous post explored the possibility of a sui generis right for importation of a known technology into Kenya (or anywhere else, really) - a so-called "importation right" that would require only local novelty but would provide a very limited time period of exclusivity.

This blogger was very surprised to learn that ARIPO may have implemented (almost) exactly what was hypothesized. At a recent training session in Nairobi, sponsored by ARIPO and hosted by KIPI, an ARIPO official explained that Utility Model applications (of which there are, he admitted, very few) are subjected to a substantive examination, but that the novelty requirement is only based on a regional search of the prior art. If this is really the case, then anyone can obtain patent-like protection for up to 10 years for a technology that is well known outside of the region.  Insert appropriate surprised cat lion image here!

Excuse me? Did I hear correctly?
Source: Wikipedia (public domain)

Section 3ter of the Harare Protocol (implementing UMs in ARIPO, downloadable here) makes no mention of the scope of search for evaluation of novelty during examination. Similarly, in the Guidelines for Examination at ARIPO (see prior link), this blogger could not find any indication that novelty should be regional for UMs. It would be appreciated if any official from ARIPO, who might be reading this blog, could verify the situation (preferably on the record!). Or perhaps a reader has experience - e.g., has filed a UM application to a technology known elsewhere but not regionally?

One theoretical situation to consider. Imagine an inventor in the US or EU files an application on day X, and discloses the invention to the public in the US or EU on day X+1. Then a competitor, having seen the disclosure, files a UM application in ARIPO on day X+2. The inventor, following the normal PCT and national phase procedure to obtain ARIPO patent protection, would likely wait well over 3 years to receive any ARIPO patent. The competitor, however, would likely have obtained UM protection by then. How would this situation be reconciled?

This was first posted on Afro-IP

TIME FOR A SUI GENERIS TECHNOLOGY IMPORTATION RIGHT?

A previous post explored the possibility of a sui generis right for importation of a known technology into Kenya (or anywhere else, really) - a so-called "importation right" that would require only local novelty but would provide a very limited time period of exclusivity.

This blogger was very surprised to learn that ARIPO may have implemented (almost) exactly what was hypothesized. At a recent training session in Nairobi, sponsored by ARIPO and hosted by KIPI, an ARIPO official explained that Utility Model applications (of which there are, he admitted, very few) are subjected to a substantive examination, but that the novelty requirement is only based on a regional search of the prior art. If this is really the case, then anyone can obtain patent-like protection for up to 10 years for a technology that is well known outside of the region.  Insert appropriate surprised cat lion image here!

Excuse me? Did I hear correctly?
Source: Wikipedia (public domain)

Section 3ter of the Harare Protocol (implementing UMs in ARIPO, downloadable here) makes no mention of the scope of search for evaluation of novelty during examination. Similarly, in the Guidelines for Examination at ARIPO (see prior link), this blogger could not find any indication that novelty should be regional for UMs. It would be appreciated if any official from ARIPO, who might be reading this blog, could verify the situation (preferably on the record!). Or perhaps a reader has experience - e.g., has filed a UM application to a technology known elsewhere but not regionally?

One theoretical situation to consider. Imagine an inventor in the US or EU files an application on day X, and discloses the invention to the public in the US or EU on day X+1. Then a competitor, having seen the disclosure, files a UM application in ARIPO on day X+2. The inventor, following the normal PCT and national phase procedure to obtain ARIPO patent protection, would likely wait well over 3 years to receive any ARIPO patent. The competitor, however, would likely have obtained UM protection by then. How would this situation be reconciled?

This was first posted on Afro-IP.