The much awaited National Intellectual Property Policy & Implementation Strategy for the government of Zimbabwe was officially launched today, June 28 2018. The colourful event held at Rainbow Towers Hotel in Harare was well attended by various stakeholders including industry, academic and research institutions and the civic society. The guest of honour was the Minister of Justice, Legal and Parliamentary Affairs Honourable Ziyambi Ziyambi accompanied by the Permanent Secretary in the ministry Ms Virginia Mabiza. Also in attendance was the Director General of the African Regional Intellectual Property Organisation (ARIPO), the former Director General Mr Gift Sibanda and the World Intellectual Property Organisation (WIPO) Regional Bureau for Africa representative Mr Sery-Kore.
Speaking at the event, the ARIPO Director General Mr Fernando Dos Santos said the launch of the IP Policy was a fruit of hard work and commitment. Similar sentiments were shared by Mr Gift Sibanda in his remarks who added that the generation, protection and commercialisation of IP would move the Zimbabwean economy forward. WIPO representative, Mr Sery-Kore called upon universities and the private sector to work together and enhance IP in the framework of the National IP Policy.
Presenting the background of the National IP Policy & Implementation Strategy, the Deputy Registrar of the Zimbabwe Intellectual Property Office (ZIPO) Mr Willie Mushayi highlighted that the journey had not been an easy one as it required regional bench marking. He also emphasised the urgent need for the review of some IP laws which are outdated.
Geographical Indications (GIs) by definition are signs used on products that identify them as originating from a particular place, where a given quality, reputation or other characteristics of the product are essentially attributable to its geographical origin. In order for a product to assume GI protection, the sign must identify the product as originating from a given place. In addition, the qualities or reputation of the product should essentially be attributed to the place of origin. Since the qualities are dependent on the geographical place of origin, there is a link between the product and its original place of production.
Geographical Indications act as a key element which helps producers to differentiate their products from competing products in the market and enabling them to build a reputation and goodwill around their products, which often fetch a premium price. A commonly used example is that of champagne which originated from a specific place in France and has been recognized as a product whose reputation for quality or authenticity is intimately linked to its geographical origin. The product has not only emerged as a major product in its export basket but also helps in the promotion of tourism and cultural heritage.
Considering the numerous potential geographical indications (GIs) in Ghana, it is high time that measures be put in place to implement the already existing Geographical Indications Act in order to protect specific products locally, regionally and internationally. A number of examples do exist, the cloth weaving patterns of Kente which (besides their symbolism, cultural and traditional meanings) are unique and attributed to the Akan group in the southern part of Ghana, the traditional beautiful Ghanaian Smocks associated with people in the northern part of Ghana, Shea butter (with host of medicinal benefits) and coffee, handicrafts such as beads, largely produced by the Krobos in the southeastern region of Ghana and local baskets and hats from the Bolgatanga region of northern Ghana.
All these must be considered under geographical indication protection to extract more economic value and benefits. The economic importance of these products cannot be underestimated in view of their significant contribution to the country’s GDP through exports and branding of our country in the international market. Ghana Export Promotion Authority has more statistics on the economic contribution of these potential geographical indication products. What needs to be re-emphasized and negotiated is the hastening of the process to provide a formal protection regime for these products to enjoy equal treatment as potential geographical indications, where their contribution can be appropriately recognized and also benefit the respective communities. A sound geographical indication system will not only protect the products from misappropriation but the country’s cultural heritage, traditional knowledge and innovative skills in making such unique products.
At a global level, the subject matter of geographical indication protection has gathered impetus with the recognition under the World Trade Organization’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) of GIs as a form of Intellectual Property Rights. This adequately enhanced the marketability of these products, and demonstrated that geographical indications have great potential to play a major role in trade between countries. This further increased the commercial significance of GIs which many developing countries including Ghana have not done enough to reap the economic benefits of GI protection.
Article 22 of the TRIPS Agreement, which forms the centrality of GI protection provides for a general level of cross-border protection of GIs in the course of trade. The same protection is extended to Ghana and other developing countries. However, what distinguishes developed countries from developing countries such as Ghana is the special provision under Article 23 of the TRIPS Agreement for the protection of GIs in the form of wines and spirits. The major proponents of this kind of protection were the European countries with their very long tradition in making of wines and spirits. This special treatment to wines and spirits appears to be developed country-centric. A group of developing countries, including Ghana, have raised this issue in the Doha Round of discussions and in the recent meetings at the WTO. They are advocating for the same higher level of protection for all products regarded as GIs as provided for under Article 23 for wines and spirits.
Many handicraft products such as baskets, ceramics, beads, hats, pottery, among others should be considered as GIs in Ghana. Many food products and agricultural products such as cashew nuts, dawadawa (African locust bean), and coffee could also be considered as well. It should be noted however that the benefits of geographical indication protection is actually realized only when these products are effectively marketed and protected against illegal copying and misappropriation. Effective marketing and protection requires quality assurance, brand creation, post-sale consumer feedback and support and most importantly monitoring and enforcement. Therefore, registration is only the initial step towards the creation of an economically valuable niche market for the GI products. Furthermore, significance of this protection has to be valued and recognized in the domestic market before international protection becomes relevant. However, for internationally recognized products like Darjeeling tea, which has an expansive export market, international protection is of crucial importance.
Geographical Indications have huge potential to be Ghana’s economic growth engine if properly constituted. Policy-makers need to pay more attention to this important aspect of industrial property and negotiate harder to accord Ghanaian GI products their true value both on the domestic and international market.
P. Muredzi, Harare Institute of Tech, Zimbabwe, O. Mkhali, Botho University, Botswana, Edited by AllThingsIP For Africa
Abstract— IP and its value is often not adequately appreciated. In the increasingly knowledge-driven economy, IP is a key consideration in day-to-day business decisions. New products, brands and creative designs appear almost daily on the market and are the result of continuous human innovation and creativity. Small and medium-sized enterprises (SMEs) are often the driving force behind such innovations.. Their innovative and creative capacity, however, is not always fully exploited as many SMEs are not aware of the intellectual property system or the protection it can provide for their inventions, brands, and designs.
This paper attempts to clarify the importance of IP for Small Medium Enterprises (SMEs), product development and demonstrates how IP can become an economic tool. The paper also delves into the challenges faced by SMEs in implementing IP system.
Keywords-Intellectual Property Rights (IPR’s), Small and Medium Enterprises (SME’s),Informal Sector (IS), Southern African Development Community (SADC), Research and Development (R&D), Complimentary Strategies
Various studies reveal that SMEs face a number of difficulties in using the IP system, such as a limited knowledge of the IP system, lack of clarity about its relevance to their business strategy, the system’s complexity, and from the perspective of SMEs – the system is expensive and/or time-consuming to use. Low awareness of the system limits the exposure SMEs have to the IP system and their ability to use effectively all the elements offered by the IP system, including not just patents but also utility models, trademarks, industrial designs, trade secrets, patent databases, copyright and other IPRs.
For a start, the biggest question seems to be whether the IP system is at all relevant to the SME’s. Certain forms of formal IP protection require a degree of “non-obviousness” and “novelty” that might not be easily met by actors in the SME’s. This is particularly so in the case of patent protection. For utility models, industrial designs, trademarks and copyright, formal protection requirements are less onerous. Nonetheless, ideas typically need to be new and different from those already on the market. Also, a single inventor needs to be clearly established in order to grant exclusive protection. Ideas in the SME’s might grow more organically or as in the case of herbal medicines in communities and over centuries. In these cases, assigning ownership of ideas to individuals or specific entities is particularly challenging.
Second, an important policy challenge will be to make SME’s aware of the possibilities that formal IPRs offer. This will require raising awareness levels of IP uses and potential costs and benefits. In the course of the project, we identified clear cultural and social barriers to potential IP uptake that will prove a further obstacle in the SME’s. Whether the barriers are real or whether they could be addressed through education and changing practices should be a matter for further study.
Third, SME’s might need to overcome a number of hurdles in order to access the IP system; notably, a lack of time to devote to IP matters, the need to acquire the necessary skills, and limited financial resources. Costs are significant, particularly when it comes to patenting and legal fees. Formal registration requirements might be an insurmountable obstacle to SME’s , either for reasons relating to distance (travel may be required to reach the IP office and SME’s may not have access to IP systems online, time or skills.
The SME’s Scenario in SADC
The development of SMEs lies at the core of economic growth worldwide. Research has revealed that across the world the SME sector employs one-half to two thirds of the labour force in developing countries and that the sector contributes significantly towards national incomes. SADC governments have adopted different policies, strategies and programmes to promote SMEs in their countries. On the whole, the policies and programmes have not been as effective as desired. The SADC-Development Finance Resource Centre (DFRC) aims to play a pivotal and catalytic role in this area through specially designed SME institutional support programmes to enhance direct foreign investments’ delivery capacity and SMEs support at enterprise level.
The following constraints have been identified as facing SMEs in the SADC region:
On the financing side
- Lack of medium to long-term finance for start-ups and expansions;
- inappropriate terms and conditions for short-term credit or trade finance;
- insufficient financing and other instruments to support the SME sector;
- low capitalization and lack of collateral; and
- poor record keeping or financial management
On the Business Support Side
- low-level investment in infrastructure that has the potential to stimulate SME activity;
- complex and cumbersome laws and regulations that control and govern the setting up and development of SMEs;
- regulations that favour only big business and discourage SME start up and operation;
- inability to market SME products and services;
- absence of appropriate environmental management systems (EMSs) that meet international standards; and
- a dearth of programmes and, where they exist, uncoordinated programmes that support entrepreneurship with marginal support to women entrepreneurs.
As a consequence of these constraints the region has witnessed a proliferation of informal sector activity which needs to be transformed into formal businesses and integrated into the formal (taxable) economy.
SADC Economies and Intellectual Property Rights.
Although the SADC economies have not been entirely passive in the generation of new IPs (as evidenced by their sporadic filing for world-wide for patent protection), by international standards, they are mainly users than creactors of such IPs as patents, copyrights etc. Also, to the extent that they are the sources of new inventions, they usually lack the financial capacity and information network to effectively protect their rights on both local and international markets.
In this regard, the various real and potential creators of IPs in the SADC region present potential beneficiaries of functional international IP market, regulated by internationally mandated protection of IPRs. Therefore, the development of effective IPRs regime at the national and regional levels, and the harmonization of the same with various conventions administered by the WIPO is consistent with pursuit of national and regional development goals of the SADC economies individually and as a group.
SADC Economies and Global IPRs Initiatives
At the global level, the engagement of the SADC economies in the protection of IPRs fall under the WIPO and WTO. Individually, all the 14 SADC economies are members of the WIPO. Notably all SADC states participate in at least one WIPO organs, while with the exception of Angola and Seychelles, they also participate in at least one organ of the several conventions administered by WIPO. Also, with the exception of Seychelles, all are members of the WTO as well (while Seychelles had already applied for membership).
The SADC economies also collectively acknowledge their commitment to effectively participate in the protection of IPRs. In this context, Article 24 of the trade protocol of the SADC stipulates that member states shall adopt policies and implement measures within the community, for the protection of intellectual property rights, in accordance with WTO agreement on trade related aspects of intellectual property rights (TRIPS Agreement).
SADC Economies and Regional IPRs Initiatives
So far, the SADC does not have a policy framework or regime for the protection of IPRs. Nevertheless, there exists a regional co-operation on patent and trademark for 19 Anglophone African states, in the form of African Regional Intellectual Property Organisation (ARIPO). However, only six SADC states (i.e. Botswana, Lesotho, Malawi, Tanzania, Zambia and Zimbabwe) are members of ARIPO. Currently, there are 18 States, namely Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe that are signatory to the Harare Protocol on Patent and Design Protection. Likewise, only 10 ARIPO members (i.e., Botswana, Lesotho, Liberia, Malawi, Namibia, Sao Tome and Principe, Swaziland, Uganda, Tanzania, Zimbabwe) are signatories to the Banjul Protocol on Protection of Trademarks.
On the ground, the enforcement of the protection of IPRs remains in most of the countries in Africa South of the Sahara, including in the SADC economic space. Of the 14 SADC economies, currently only Botswana and South Africa are categorized as broadly TRIPs-compliant. Also, only two more economies from Africa South of the Saharan, i.e., Kenya and Senegal fall into this category. Therefore, the new impulse towards more stringent implementations of IPRs and presents a major challenge for the SADC economies.
Compliance with International Obligations
Agreements like TRIPs presents developing economies of the caliber of most SADC countries with serious implementation challenges. Notably, in addition to the universal provisions pointed out above, there are provisions of special interest to the SADC economies, as they focus at the specificity of developing economies. These include:
- Transitional arrangement (from 1 January 1995). They mean one year delay in implementation for all signatories; five year delay in implementation for developing countries (which include six SADC economies, i.e., Botswana, Mauritius, Namibia, Seychelles, Swaziland, and Zimbabwe); 11 year delay of implementation for the least developed countries (which include seven SADC economies, i.e., Angola, DRC, Lesotho, Malawi Mozambique, Tanzania and Zambia).
- Commitment of industrial countries to provide technical and financial assistance to help developing countries to prepare and enforce domestic IPRs legislation.
On the whole, in order to effectively respond to the challenges, national IPRs regimes need to be revitalized or developed from scratch. Concretely, this means among other things:
- The establishment of administrative procedures.
- The enactment of laws in such new areas of IPRs protection, as biotechnology and origin specifications, as well as related areas of trade secrets and competition.
- The building capacity to administer the various IPRs regimes. This will further require the training experts in different disciplines related to IPRs (e.g., Lawyers, trade economists, engineers, etc.).
- The establishment of dispute resolution mechanisms, etc.
The Case of the African Informal Sector
A critical weakness with the “informal” setup is the fact that the SMEs themselves do not keep proper accounting records of their activities. Keeping accounts is seen as a waste of time, money and effort, and is also avoided as a means of ensuring that there is no track record of what the proprietor would have done, in the event that any government agency comes to visit. Bank accounts are also shunned for the same reason, with transactions occurring on a cash basis. While this approach may work in good times, it is when the bad times strike that the weaknesses emerge. The lack of formal records means that the proprietor is unable to recognize when sales start slowing down, or costs start to rise unacceptably. Corrective measures cannot be taken in time if there is no timely recognition of problems, and this leads to poor, unguided decision-making and ultimately bankruptcy. Forward planning is also not feasible where current performance is unknown.
The significance of IP
If left unprotected, a good invention or creation may be lost to larger competitors that are in a better position to commercialize the product or service at a more affordable price, leaving the original inventor or creator without any financial benefit or reward. Adequate protection of a company’s IP is a crucial step in deterring potential infringement and in turning ideas into business assets with a real market value. Taking full advantage of the IP system enables companies to profit from their innovative capacity and creativity, which encourages and helps fund further innovation. Its potential for providing opportunities for future profit is widely underestimated by the SMEs. IP can become a valuable business asset if it is legally protected and there is a demand for the IP related products or services in the marketplace. IP may generate income for the SME through licensing, sale or commercialization of the IP products or services that may significantly improve SME’s market share or raise its profit margin (Idris, 2003).
Two indicators are often used for measuring national technological activity: research and development as a share of national income, and the number of scientists and engineers engaged in research and development. Another measure of technology is the number of International Standards Organization 9000 certificates obtained by the country. Such certificates are given to service firms and institutions, not just manufacturers; nevertheless, they are a good indicator of competitiveness because they are particularly important for export activity.
Furthermore, IP rights may enhance the value or worth of SME in the eyes or investors and financing institutions. Hence, in the event of sale or merger or acquisition, IP assets may significantly raise the value of the enterprise. Traditionally, physical assets have been responsible for the bulk of the value of a business entity and largely responsible for determining the competitiveness of an enterprise in the market. However, these scenarios have changed as a result of the revolution of the information technologies, intangible assets ranging from human capital such as know how to ideas, brands, designs and other intangible assets from the creative and innovative capacity are often today become more valuable than the physical assets (Idris, 2003).
The strategic utilization of IP assets can, therefore, substantially enhance the competitiveness of SMEs. SMEs should make sure that they are ready to face the challenge and take measures to exploit their IP and protect it wherever possible. Like physical assets, IP assets must be acquired and maintained, accounted for, valued monitored closely, and managed carefully in order to extract their full value. But before this can be done, SMEs must first acknowledge the value of IP and begin to see it as a valuable business asset.
A crucial point about legal protection of intellectual property is that it turns intangible assets into exclusive property rights, albeit for a limited period of time. It enables SME’s to claim ownership over their intangible assets and exploit them to their maximum potential. In short, IP protection makes intangible assets “a bit more tangible” by turning them into valuable exclusive assets that can often be traded in the market place. If the innovative ideas, creative designs and powerful brands of SME’s are not legally protected by IP rights, then these may be freely and legally used by any other enterprise without limitation. However, when they are protected by IP rights, they acquire concrete value for SME’s as they become property rights which cannot be commercialized or used without SME’s authorization. Increasingly, investors, stock market brokers and financial advisors are becoming aware of this reality and have begun to value IP assets highly. Enterprises worldwide are also more and more acknowledging the value of their IP assets, and, on occasions, have included them in their balance sheets. Many enterprises, including SMEs, have begun to undertake regular technology and IP audits. In a number of cases, enterprises have realized that their IP assets are in fact worth more than their physical assets. This is often the case for companies operating in knowledge intensive and highly innovative sectors, or companies with a well-known brand name.
- Strong market position and competitive advantage. IP gives enterprises the exclusive right to prevent others from commercially using a product or service, thereby reducing competition for their innovative product and enabling the enterprise to establish its position in the market as a pre-eminent player.
- Higher profit or returns on investment .If an SME has invested a significant amount of money and time in R&D, using the tools of the IP system is important to recover the SME’s R&D investments and obtain higher returns on its
- Additional income from licensing or selling (assigning) IP. IP owner may choose to license or sell the rights to other enterprises in exchange for lump sum payments or royalties, in order to generate additional income for the enterprise.
- Creating bargaining power .Owning IP assets that are of interest to others may be useful when SME’s are seeking authorization to use the IP assets of others. In such cases, enterprises often negotiate cross-licensing agreements, which are agreements by which each side authorizes the other enterprise to use its IP assets in the manner specified in the licensing contract.
- Enhanced ability to acquire finance at reasonable rates of interest .In some circumstances, SME’s seeking to commercialize a new technology may be able to more easily raise capital, based on their IP assets, for example, by including information about their IP assets in their business plans while approaching investors, financial institutions, government agencies, etc.
- Credibly threaten or take action against imitators and free-riders .To effectively carve out the exclusivity provided by an IP asset, it may occasionally be necessary to litigate, or at least to threaten to litigate with enterprises that are infringing on the SME’s Owning IP assets will improve the SME’s ability to take successful legal action against imitators and free riders.
- Positive image for SME’s. Business partners, investors and shareholders may perceive IP portfolios as a demonstration of the high level of expertise, specialization and technological capacity within an SME. This may prove useful for raising funds, finding business partners and raising the SME’s profile and market value.
IP for Product Development
IP assets accrue to their owners through its business development and strategies: from product development to design, from service delivery to marketing, and from raising financial resources to exporting or expanding its business through licensing or franchising. IP instills trust, confidence and loyalty to the consumers it markets.
Furthermore, IP provides a distinct identity, image and reputation (Urwin, 2008). For most small and medium-sized enterprises (SMEs), marketing products or services is a major challenge. A marketing strategy should establish a clear link between your products or services and your SME, as the producer or provider of such products or services. That is to say, customers should be able to distinguish, at a glance, between your products or services and those of your competitors and associate them with certain desired qualities.
IP, when efficiently used, is an important tool in creating an image for your business in the minds of your current and potential customers and in positioning your business in the market (Perbadanan Harta Intelek Malaysia, 2013). IP rights, combined with other marketing tools (such as advertisements and other sales promotion activities) are crucial for differentiating your products and services and making them easily recognizable and diversifying your market strategy to various target groups including marketing the products or services in foreign countries.
However, not all IP may be relevant or applicable to agro-based product (Mohd Noo, March 2011). One IP would be very much relevant is trademark. Brand is something that is unique and is able to attract people towards a certain product or service. It is an intangible asset that is more powerful than the real product or service. It is an intangible asset that is more powerful than the real product or service. Today, it is much easier to sell brand instead of selling the real product. Consumer will tend to be influenced by brand instead of product or service.
To register a brand, entrepreneur must have knowledge on trademark. Trademark is a distinctive sign which identifies certain goods or services. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours used as distinguishing features. A trademark is used as a marketing tool to enable customers in recognising the product of a particular trader (Perbadanan Harta Intelek Malaysia, 2013).
Trademark has multiple functions. Trademark can be serving as origin function in which it helps to identify the source and those responsible for the products and services sold in market. For example, Selangor Pewter, Tenom Coffee and Genting. A trademark also enables consumers to choose goods and services with ease while shopping. Furthermore, trademark may also serve quality function as it describes the product for its known quality. Importantly, trademark plays a significant role in advertising and consumers are greatly influenced by advertisement. An established trademark can be a valuable asset to the owner as it can be licensed or franchised such as Kentucky Fried Chicken, McDonald, Starbucks Coffee and Tea etc.
Millions of trademarks are in use all over the world. A lot of new marks are registered everyday around the world. Therefore, it is becoming more and more difficult to find a new mark, especially a word mark, which is not identical with, or similar to, an existing mark in use on identical or related products. So, before using or planning to register a mark, SME’s should clear a proposed mark by doing or getting done a proper trademark search.
Trademark searches must be made in 3 areas
- Firstly, in registers of all countries of interest of identical or similar marks for similar goods and services.
- Secondly, in all the relevant market places to verify whether an identical or similar mark is already in use for similar goods or services
- Thirdly, in domain names as a mark can be used in a domain name or the other way around, that is, a domain name may be used as a mark, or as a trade name, and thus become an obstacle for the proposed mark.
Complementary, or alternative, strategies employed by SMEs include a number of approaches, such as: secrecy; capitalising on first mover advantages and innovating faster than competitors; building complexity into products and processes, making them difficult to imitate; defensive publishing; focusing on achieving a large market share in niche markets; building strong brand recognition; and creating strong commercial channels and relationships with customers (Friesike 2011; Neuhäusler 2012).
Certain alternative approaches to appropriating, and thus maintaining competitive advantage, can be viewed as substitutes for formal, registered IPRs. For instance, the more complex a technology solution, the less likely it is that a competitor will succeed in replicating it. Patents and design complexity may sometimes be considered interchangeable in the sense that both methods make imitation less likely. It is thus hardly surprising that innovative SMEs operating in know-how intensive sectors, which tend to produce complex products that are harder to reverse engineer, generally find it less necessary to rely on registered IPRs such as patents (Thomä & Bizer 2013). Some innovative SMEs may choose to emphasise a defensive strategy to protect their niche and ensure FTO, relying, for instance, on the strategy of defensive publication. Through the disclosure of an enabling description of the invention, defensive publication destroys novelty and hence prevents competitors from patenting it. Similarly, a firm may rely on a defense of prior user rights in some countries, through proper recordkeeping, to limit the applicability of patents procured by a competitor. Needless to say, these approaches are most effective where there is an IP office that systematically conducts the necessary research on novelty. Secrecy is relatively more important for innovative SMEs than for larger firms (Neuhäusler 2012). A strategy emphasising secrecy is reliant upon a type of unregistered intellectual property right, ‘trade secret’, which can be used in many jurisdictions to protect any valuable, confidential information.
Certain strategies, such as product complexity and reliance on lead time advantages, can be considered a form of trade secret protection. Depending on the jurisdiction, trade secrets are often less expensive to use than IPRs that require registration or other formalities. The firm must invest in efforts to keep the confidential information secret, for instance by executing non-disclosure agreements with employees and vendors, and investing in the security of systems and facilities (Dupré & Smith 2011). National laws that protect trade secrets can encourage sharing and partnering, by ensuring that parties who learn of a trade secret, either legally through collaboration or by criminal means, cannot appropriate the information – provided reasonable measures to maintain secrecy have been employed by the owner. At the same time, it must be noted that trade secrets are not exclusive rights and do not protect against independent discovery. If independently derived by a competitor, the subject matter of a trade secret can lose it economic value (Dupré & Smith 2011). Also, trade secret laws vary significantly between countries and may be insufficient in certain places to adequately protect innovative SMEs.
Trade secrets are a critical tool for SMEs
Trade secrets are often the default mode of protection for SMEs, which tend to rely on a small group of individuals to innovate and commercialise, maintaining secrecy within the group. While there are differences across jurisdictions, trade secrets generally require no registration or other formalities, and they can be used to protect a wide variety of information for a potentially unlimited duration as long as the information remains confidential. Moreover, trade secrets can be used to protect inventions that do not meet the criteria for patentability. Especially at the early stages of product development, trade secrets may be useful as solutions materialise. A drawback of reliance on trade secrets is that, if discovered independently, another entity may use the subject matter of the trade secret. Thus, trade secrets are generally not the best strategy to protect inventions that can be readily reverse engineered. Examples of information that may be protected by trade secrets, depending on the jurisdiction:
- Manufacturing processes, formulas and recipes, blueprints;
- Repair techniques, software source code, databases;
- Marketing strategies, customer lists and business forecasts. Business context, market environment, degree of research intensity, and type of innovation are prime considerations in the formulation of an IP management strategy, including the extent to which secrecy and other complementary strategies will be relied upon (Neuhäusler 2012). For instance, where knowledge is tacit, secrecy may be the method of choice – as opposed to patenting, which requires disclosure (Dupré & Smith 2011; Thomä & Bizer 2013).
In some cases, it may be judicious for an innovative SME to combine several complementary protection measures. For instance, defensive publication can be used in relation to a core invention, together with secrecy to protect the technological details that can optimize the solution. This approach could prevent competitors from patenting the same invention while also protecting the part of the invention with the most important know-how. In other cases, one complementary strategy could suffice, for example, building strong networks with customers that understand the superiority of the product and therefore will not accept substitutes from competitors (Friesike 2011). Combining such an approach with formal IPRs may help further convince customers of such an advantage.
Alternative protection methods have the advantage of being relatively resource-effective. They are often the default strategy for innovative SMEs, whether due to resource constraints or because the SME’s leadership lacks a clear strategy for its IP management (OECD 2010; Friesike 2011). Key shortcomings, however, include their limited formal enforceability and the generally more precarious protection they offer, especially if used alone or exclusively with other alternative approaches. In addition, precisely because of their generally informal character, such approaches often cannot be used to signal the value of an R&D project to potential investors or partners. The exception may be trade secret protection, as trade secrets can be licensed and effectively enforced in certain jurisdictions. In general, exclusive reliance on alternative approaches may not represent the best appropriation strategy for innovative SMEs.
To offset their limited resources and relative lack of non-core expertise, innovative SMEs tend to engage in various forms of cooperation to accelerate growth. In order to attract the right partners, as well as extract value from their innovations and partnerships, innovative SMEs must develop adequate IP management strategies drawing from these categories: formal, registered intellectual property protection; alternative strategies including secrecy; and hybrid strategies.
There is a need to strengthen interaction between IP offices, SME support institutions, business associations, national, regional and local governments and other relevant institutions with a view to better identifying the IP needs of entrepreneurs and SMEs and the barriers to a more effective use of the IP system by entrepreneurs and SMEs. In addition, government and policy makers may promote a more effective use of the IP system by entrepreneurs and SMEs by enhancing awareness and knowledge of all elements of the IP system, including not just patents but also trademarks, geographical indications, industrial designs, utility models, trade secrets, copyright and related rights, new varieties of plants, non-original databases and relevant aspects of unfair competition law, among entrepreneurs and business advisers within public and private SME support institutions (N.P. Louwaars, 2005).
Actions to improve the formal IP system and to make it more accessible to smaller firms can support SMEs in more effectively capturing the value of their intellectual assets. Governments can:
- Take steps to improve patent quality, which can increase legal certainty and help to ensure that IPRs can be used to signal value to potential investors, partners, and competitors;
- Ensure that IPRs are available and enforceable at reasonable cost, including by reducing official fees for patent filing, prosecution, and maintenance by SMEs;
- Facilitate patent filing and prosecution by SMEs, including by providing for expedited review of applications from SMEs;
- Institute outreach and training programs for SME business leaders, in order to raise awareness about the importance of sound IP management, improve SMEs’ intellectual asset management, and increase opportunities for them to engage with IP officials;
- Consider enacting policies that support the provision of insurance for SMEs to offset the costs associated with defending their IP positions in litigation, which represents a significant risk for smaller firms; and
- Enact modern trade secrets laws to bolster the protection afforded by resource-effective secrecy strategies, which are often the default protection mode adopted by innovative SMEs.
In addition, governments that provide subsidies for innovation can direct funds towards solutions that have been appropriately protected and managed in accordance with a sound IP strategy. This can help ensure that funds are wisely invested in those inventions that are best positioned for further development and commercialization.
To catalyse innovation interactions, partnerships, and the sharing of knowledge, governments can:
- Support the establishment of clusters and innovation networks, on their own or together with industry groups, whether directly or indirectly through incentives;
- Develop frameworks that enable patenting and subsequent licensing of publicly-funded research, and that enhance collaboration in general between the private sector and public research institutes; and
- Support the creation of incubators, whether government-run or for-profit, which can deliver access to services that innovative SMEs need, such as coaching on business skills and IP management strategies.
M. Mudzvatangi, African IP Expert, Germany, Edited by AllThings IP For Africa
My view is that to discuss the Validation issue, we need to be very careful not to build fences and argue from the other side (e.g Africa as a victim). Validation of patents is not about Europe gaining or Africa losing out, it is a principle premised on a plethora of founding rules, and we can only be very clear about it if we argue on a more global front. To make it shorter, I chose to put my view on three important factors.
- Trade & Economics
- Politics & Sovereignty
- Technology/Innovation Matrix
Trade and Economics
Europe is a block and acts as a single “community” when it comes to trade. European Union Trade block is the largest of such blocks accounting for roughly 18% of world imports and exports. One of the challenges of the past decade for the EU has been the massively increasing intellectual property (IP) violations currently accounting for billions of dollars (US$) in lost revenues and thousands of lost jobs. To protect the trade/economic interests there is need to make sure that there is protection both in the export and import countries. We must consider that 65% of Tunisia and Morocco’s trade is carried out with the EU and the rest with China, USA and generally the Middle East and North Africa (MENA) Region. If we factor in the Bilateral Agreements both the EU and (Morocco & Tunisia) and other partners such as USA and China hold, then we have a labyrinth of rights at risk or potentially open to commercial uplift. Morocco in particular through its Minister for Industry, Commerce, Investment and the Digital Economy specifically highlighted (in 2015) that this decision (to validate) could allow more FDI to flow to Morocco and safeguarding national and foreign investors.
A detailed analysis of existing bilateral agreements is also necessary to guide our view on the decisions by these countries to validate European patents.
Politics and Sovereignty
Morocco and Tunisia have a colonial connection to Europe, especially Spain and France. The Moroccan and Tunisian governments enjoy political and economic connections. The connections link to trade and economic decisions. There are other factors at play in the matrix, for example arms trade with Morocco and Tunisia as gateways to other French speaking countries from EU and USA countries. There is always political leverage from complying with some of these partners.
On Sovereignty, the validation does not encroach into sovereignty; each country still has to decide on its own accord the relevance and essence of accepting a patent. Decisions are based on the country not on political affiliation. The Political landscape does not have a bearing to acceptance of a patent.
Validation is a system just like the Patent Cooperation Treaty (PCT), though confined to fewer countries. If validation is a bad idea, then of course the PCT is equally suppressive of technology from an African point of view. Africa needs a better view, a view not blinkered by boundaries and past politicking. I will not delve much on this because there are other studies that have been conducted and showed that there is a better chance of acquiring knowledge from a perspective of a smaller national joining validation system. Morocco and Tunisia would likely get more applications in their system, a very good basis for the innovation policies they are pursuing. The university science hubs – OpenLab projects, the MENA science projects, automobile and energy industry, agriculture innovations etc). Another major point and question is, does validation add extra prior art if we are to look at it in that regard? The answer is No. Prior art has always been universal. Nothing changes with regards to prior art by accepting to validate patents if you have a substantive examination system.
Is Africa at risk in pursuing Validation Agreements?
In my view, absolutely not! The world is global and the patent system is heading towards a world system. This will not dent African innovation at all, but provide an opportunity to increase the body knowledge in various industrial sectors. The onus is on African governments to create better environments for technology adoption. We just lack the IP infrastructure fundamentals within our African systems. Having laws is just not enough.
I look forward to working on another detailed article analyzing various aspects including but not limited to bilateral agreements, patent prosecution and translation costs as well as other variables that will help us as Africans to have a holistic view of the patent validation issue.
The 18th of January 2018 marked the start of a unique journey where the African Intellectual Property and innovation story is told by Africans themselves. The project was launched through a Facebook Live broadcast in Dubai which featured two IP Experts from Zimbabwe namely Miss Brenda Matanga, Managing Partner at BMatanga IP Attorneys and current President of Zimbabwe Institute of Patents and Trademark Agents and Mr Moses Nkomo, Senior Partner at Donsa-Nkomo & Mutangi IP Attorneys who is also an Intellectual Property Lecturer at the University of Zimbabwe.
The pair had attended the just ended IIPLA 4th Dubai IP Congress and World IP Forum respectively as panelists and Resource Persons. The inaugural live broadcast set a foundation of a seemingly interesting and engaging dialogue on intellectual property and related issues in Africa. A number of issues were discussed during the live broadcast the key ones being the current status of intellectual property laws in Africa and the perception of the outside world regarding the current status, the challenges as well as the recommendations for the way forward.
The panelists also put up a challenge to fellow African Experts to tell a positive story about the African continent as more resident African Experts are expected to feature on AllThingsIP For Africa’s regular live broadcasts as Resource Persons.
The AllThingsIP For Africa project will be launched on the 18th of January 2018. The online project is focused on establishing Intellectual Property-related dialogue across Africa and creating access to IP-related information, legal guidance and mentorship for African innovators. In addition, the project also looks at discussing and promoting issues related to innovation in Africa and creating an opportunity for African need based ideas and innovations that do not get enough attention, recognition and commercialization.
The launch, which will be streamed live on AllThingsIP For Africa’s Facebook Page and website is going to take place at 5pm Central African Time in Dubai just after the conclusion of the World IP Forum and IIPLA 4TH DUBAI IP CONGRESS. The Facebook Live launch discussion will also feature some African IP Experts who had attended the two global events as Resource Persons.
After the launch, weekly interactive Facebook Live discussions with various African IP Experts will be held through the AllThingsIP For Africa Facebook Page. The same discussions will also be streamed on the AllThingsIP For Africa website www.allthingsipforafrica.com