Thursday, 24 July 2014
IP Kenya blog and @IPKenya Twitter account -- which this blogger has followed for a long time -- have done a great deal to keep Kenya, and African IP issues, before the eyes of the world. Well done, Victor -- keep up the good work!
You can click on the links or visit this site to register:
- what are the benefits of offshoring?
- dealing with Africa's exchange control regulations
- preparing for exit, a valuation or analysing new opportunities or ... your competitor? This talk considers what IP audits are, why they are important and why they need not cost the earth.
- most business IP is locked up in knowhow. This talk discusses restraints of trade, confidentiality and their enforcement.
- generating sales and royalty streams? This talk analyses how best to leverage your IP
- to disclose or not to disclose - is that the question?
- when, what and why to patent
- Interbrand's erudite Jeremy Sampson explains the art of IP valuation and why it is critical to businesses
- the venture capital landscape for tech companies
- how basic steps in IP management can help secure funding and value on exit
- this talk considers how you can optimise your keyword advertising campaign without infringing trade marks of others, and perhaps by using them!
- canvassing pitfalls and IP strategies in places like Ethiopia, Angola, Namibia, Nigeria and Kenya
- the Zulu case study - five different IP business models for traditional communities, explained
Wednesday, 23 July 2014
According to the 2014 Global Innovation Index (GII), co-published by WIPO, Cornell University, and INSEAD, Sub-Saharan Africa is punching above its weight. As you may have already looked at the report, and found what you were after, the essence of this post is to simply show you their rankings since 2007.
What is the GII?
The authors explain: "The GII ranks the innovation performance of 143 countries and economies around the world, based on 81 indicators.The GII explores the role of the individuals and teams behind the innovation process. It sheds light on different aspects of human capital required to achieve innovation, including skilled labor; the intersection of human, financial and technological capital; talent retention; and the mobilization of highly educated people. Understanding the human factor in innovation is essential for the design of national and local policies that help promote economic development." [See pages 7 - 8 for a summary of what 'Innovation Inputs and Outputs' mean and how they arrived at the overall score/ranking. This Leo feels that the 2007 report best describes the GII]
What is innovation and how do you measure it?
Well, if we just focus on things like patent (and even trade mark) filings (found under 'knowledge & creativity' outputs), then we're on our own. In fact, the GII considered political stability/terrorism (see 1.1.1 here). Anyway, over at Managing IP, Peter Leung tries to make sense of it all using China and Hong Kong as case studies.
How have African countries performed since 2007?
To view this, click here.
Who are the standout performers or "innovation learners"?
Burkina Faso, Gambia, Rwanda, Malawi, and Mozambique. For a snapshot, click here.
Now you can see how your country (or country of interest) has performed over the past eight years. Similar to the 2007 report, this year's GII tells us that Sub-Saharan Africa significantly improved. The top five African countries for 2014, in order of ranking, are: Mauritius, Seychelles, South Africa, Tunisia, and Morocco. [South Africa was dislodged by Mauritius in 2013; can it regain the top spot in 2015?]
The secret to moving up the table might be as simple as considering the relevant and/or most feasible things others above (in one's income or nearest income category) have done or are doing.This Leo eyes, with keen interest, a recent piece by Reuters titled 'inventors struggle to protect patents in Africa'. Perhaps, the next table to put together should be the IP filings ranking.
Tuesday, 22 July 2014
|GI protection not a "cup of tea"|
Afro-IP learnt from Rooibos Limited's communications officer, Gerda De Wet, that they are "glad that is has come to this now". Rooibos has of course been struggling for over 20 years to secure protection against for the name. "At one point, we could not even export the tea to the US under the name "rooibos", we had to call it "red bush"" said Ms De Wet. That was surely a travesty.
Since the dispute in the States, settled in favour of South African interests, the Rooibos product has fought battles in Europe and specifically France (ironically known for its protection of the Champagne GI). The furore induced fellow blogger Jeremy Phillips to urge African nations to take stock of their national assets under the GI system, in this post here. Rightly so.
Getting GI protection is not that simple especially if there is no dedicated reciprocal protection. This is illustrated by a Mining Weekly report published a few moments ago on the progress of the SADC EPA indicating that the quest for local GI protection was wrapped up in a complicated EPA negotiation that had been constipated since 2007.
"South Africa’s main concession in the EPA negotiations, meanwhile, related to an agreement to negotiate a protocol on geographic indications (GIs), which are place names used to identify products, such as Champagne, Feta, or Roquefort."
"Carrim said it was the GIs concession that had eventually unblocked the negotiations... "
Professor Jeanine Marnewick, head of the Oxidative Stress Research Centre at CPUT, who has conducted extensive research into some of the medicinal benefits of Rooibos, explains that clinical trials have shown Rooibos to have considerable preventative qualities for heart disease (see publication here, for example) and that its affect on helping to prevent some cancers, such as skin and liver cancer has been positive.
WIPO explains that between 1997 and 2007 demand for Rooibos increased 15 fold and be early 2011 Rooibos was experiencing an annual growth rate ot a healthy 6%. This, despite the fact that the Rooibos Council was apparently recently disbanded for lack of funding.
News of the GI may help unite the Council again because it effectively provides free protection in Europe albeit that there is a constant need for enforcement and vigilance which attracts costs. Putting a genie back in a bottle is, after all, no easy task.
The EPA still has to endure a "legal scrubbing process" before parliamentary approval and ratification. This process is expected to take place over the next 18 months according to Mining Weekly.
The journey to GI recognition both locally and elsewhere through GI systems has potential benefit to developing communities but arguably considerable benefit too, to the many more advanced brands and GIs already recognised in Europe. This article commissioned by the British High Commission and research by economist Dinga Fatman, is instructive.
Monday, 21 July 2014
‘China is Africa’s largest trading partner’ is no longer breaking news, as we all very well know. What could be regarded as ‘breaking news’ are efforts by Africa’s traditional trading partners to regain ground lost since 2009.
Considering that this blog covered the 4th EU-Africa Summit, sniffing for some IP, it’s only right to do the same for the United States of America. From the 4th to the 6th of August 2014, Washington DC will stage the U.S.-Africa Leaders Summit - the largest event that any U.S. president has ever convened with African heads of state or government. [When it comes to hosting African heads of state, China pretty much leads, with Japan, arguably, the pioneer]
Afro-IP is most concerned with the side dish event, the U.S.-Africa Business Forum ("The Forum") on the 5th of August, which is co-hosted by the Bloomberg Philanthropies and the U.S. Department of Commerce. The thematic areas of focus at the Forum are: Finance and Capital Investment, Infrastructure, Power and Energy, Agriculture, Consumer Goods, and Information Communication Technology. [Afro Leo can suss out that, at least, the last two would bring IP into discussion]
Why is Afro Leo suspecting that IP may be discussed?
(1) Secretary Penny Pritzker said during her visit to Nigeria, last May:
(1) Secretary Penny Pritzker said during her visit to Nigeria, last May:
“…But for U.S. businesses to come here, stay here, and help you achieve your full potential, Nigeria needs to take the tough steps that allow businesses to truly thrive. Our companies want to do business in countries that follow the rule of law, maintain ethical standards, abide by workplace safety, encourage workforce training, and protect intellectual property. These are the conditions that will increase trust and confidence among international and local business leaders and encourage further investment.”
(2) In another press release, about the Forum, Secretary Pritzker also said: “The opportunities for the United States and Africa to work together to achieve mutual prosperity for our countries and our people are growing. Africa is home to seven of the 10 fastest growing economies in the world, the middle class across the continent is expanding, and there is great potential for U.S. firms to sell their goods and services, and leverage their expertise, to help African countries meet their development goals…”
(3) Lastly, isn't this a good opportunity for the Department of Commerce to do its bit in furtherance of Goal III (for a summary, see pages 33 – 35) of the USPTO’s Strategic Plan 2014 – 2018?
It is indeed promising to see countries, with manufactured goods/services to sell or natural resources to purchase, going on the charm offensive to win over the hearts and minds of African governments. These countries include Brazil (also here), India (also here), and the European Union. Their relationships will always attract criticisms – China currently taking the heat e.g. here and here – but it’s the responsibility of the African governments to bargain well.
To the African heads of state and business leaders: don't be surprised if you hear a thing or two about IP.
How should African countries deal with
South Africa confident that it can build a ‘brand’ in China here
Sino-Africa Relations at Government level can be found here
What the U.S. doesn't understand in the Sino-Africa Relations is here
Friday, 18 July 2014
|Grab a copy here|
Before signing off for the weekend, this Leo would like to draw your attention, in case you’ve not already seen it, to this interesting blogpost titled: The Top 14 TED Talks for Lawyers and Litigators 2014. [Afro Leo loves eye-catching titles beginning with ‘The Top 10’, ‘5 Top’ and so on, but he’s unsure if it’ll work for this blog]
The author, Ken Lopez, describes the videos as relevant to lawyers, particularly those in litigation practice. Mr Lopez writes: “…Even though lawyers engage in persuasion all the time, and it is at the core of the work we do, persuasion is something most are street-smart about, not book-smart. In other words, most people's knowledge of how to persuade tends to come naturally or is attained by observing how other talented persuaders behave…” [Indeed, lawyers do this subconsciously. Mediators do it as well - not that they would like to be forthright about it]
No need to watch all 14; a couple will be enough to drive home the message. This Leo only watched the first one, embedded below, and immediately found it relevant, from several angles including IP. [Afro Leo says that government and policymakers, in particular, will learn a lot from this video] As you'll discover, Steve Martin used case studies on crime prevention and the environment to demonstrate how we can influence behaviour change [Sounds like what advertisers do]. One of these was that a signage at the Petrified Forest, which warned visitors against stealing from the park, resulted in an increase in theft incidents in contrast to when it was replaced with a more positive message urging visitors to recognise the value of the park to others. As Mr Martin concluded, a well-intentioned crime prevention strategy inadvertently promoted the crime. Can IP stakeholders, including government and policymakers, learn from this? [The guess is that some are already using this communication strategy]
Essentially, Mr Martin’s suggestion is that if we want others (be it a client, government, or other persons) to do what we want them to do, we should try and tell them about what others, ‘most similar to them’, are doing or have done. He tells us that the reason why this can be effective is that "these people" will most likely follow others "most similar to them". So, for this Leo, simple IP-related examples could be: (a) subtly advising an e-commerce client that its competitor has recently instructed a law firm to look after its online brand image and corporate reputation - a service you also have on offer; or (b) lobbying an African government to change its IP legislation or policy, citing that a neighbouring country (or another in the region) has already done so with positive results. [The latter example is relevant to this Leo as he often refers to other countries (from least-developed to developed) in most of his blogposts]
The key lesson for this Leo is this: attempt to use the subject’s nearest neighbour to persuade the subject. Now that's a difficult one to follow. [Afro Leo also reminds me that “no one size fits all”]
Have a nice weekend. :-)
Video 1: TEDxWarwick Speech by Steve Martin
Video 2: Secrets From The Science of Persuasion
Update (19/07/2014): This Leo has just spotted video 2, which is even more instructive. Further food for thought!
International IP Enforcement Summit, discusses the need to ‘change the narrative’ here
The Science and Technology Committee (UK House of Lords) Report on Behaviour Change is here
Thursday, 17 July 2014
news release from the Talal Abu-Ghazaleh Intellectual Property Group, citing information received from Lysaght & Co., brings news that the South Sudan Ministry of Justice has taken a decision to be guided by the Sudan Trade Marks Act of 1969, relying on Article 198 of the Transitional Constitution of the Republic of South Sudan 2011. This latter Act states that
"All current Laws of Southern Sudan shall remain in force and all current institutions shall continue to perform their functions and duties, unless new actions are taken in accordance with the provisions of this Constitution".A draft Trade Marks Bill is reported to be currently before Parliament. However, until it is passed, the provisions of the old Sudanese Trade Marks Act are being followed, and it is now possible to file applications with the Ministry of Justice. Since any trade marks filed now will be enforceable when the new law comes into force, it is recommended that anyone wishing to protect their trade marks in South Sudan should do so as soon as possible.
Tuesday, 15 July 2014
Afro-IP has learnt that LegalWeek, in collaboration with CLASA, will be hosting the Corporate Counsel Forum Africa (CCFA) and the African Legal Awards (ALA) in October 2014. The CCFA convenes in-house lawyers, company officials, and industry experts to discuss the dynamic role of the modern in-house counsel, whilst the ALA does what it says on the tin!
When and where?
Date: Thursday, 30 October 2014
Venue: Balalaika Hotel Sandton, Johannesburg, South Africa
Who should attend?
It will be attended by leading general counsel, senior in-house lawyers and company secretaries from across Sub-Saharan Africa. The listed titles are:General counsel, Chief legal officer, Head of legal, Legal director, Company secretary, Corporate counsel, In-house lawyer, Legal counsel, and Legal manager. [Does it mean that if you don't have any of these titles, you won't be allowed to register?]
How do I book my place?
Click here for the details
AWARDS, AWARDS, AWARDS!
When you're done with the CCFA, your attention can then shift to the ALA. The organisers say that this awards ceremony provides a unique opportunity for lawyers to gather together to network and celebrate the profession's achievements. There are over 10 awards to be won! You can't win it if you're not in it! To nominate your firm or legal department, or others for this award, click here.
When and where?
Date: Friday 31 October 2014
Venue: The Wanderers Club, Johannesburg, South Africa
Who should attend?
Date: Friday 31 October 2014
Venue: The Wanderers Club, Johannesburg, South Africa
Who should attend?
The good news is that there isn't an exclusive list for this one; everyone is cordially invited, as it appears. However, the organisers have this to say to those expecting to win something: "... it is not possible to give finalists forewarning of whether or not they have won. CLASA and Legal Week respectfully request those firms and legal departments who only intend to attend the awards on this basis to refrain from entering".
How do I book a table?
Click here for the details
How do I book a table?
Click here for the details
Both events are fantastic initiatives which further promote Africa's growing legal services market. The only moot point is that this Leo hopes to, one day, witness a similar annual event which directly involves the corporate/commercial lawyer associations across the continent, or, at least, those from Egypt, Kenya, Nigeria, and South Africa (for regional purposes). The hosting of such an annual event would be rotated among the selected countries. Just a thought.
Monday, 14 July 2014
That patent litigation (reported here, here, and here) was meant to be continued, and Nigeria’s civil justice system must not encourage “patent trolls”, reports Afro-IP’s friend, Chukwuyere Izuogu, solicitor at Streamsowers & Köhn. Thanks, Chukwuyere, for sharing this thought-provoking piece.
|Nigerian patent troll|
On Tuesday, 28 January 2014, the court, in the case of Bedding Holding Limited v. INEC & others, found the Independent National Electoral Commission (INEC) liable for infringing the patents belonging to Bedding Holding Limited (BHL). [Afro Leo couldn't find a website for this patent holder] The patents, granted under the Patent and Designs Act of 1971 (the Act), relate to the process and application of Direct Data Capture (DDC) machines for the compilation and collection of various biometric information.
Background and facts
BHL sued INEC and five others at the Federal High Court (the Court) alleging infringement of Patent No. RP16642 (relating to Electronic Collapsible Transparent Ballot Boxes) and Patent No. RP NG/P/2010/202 (in respect of Proof of Address System/Scheme) (PASS). Both patents will be collectively referred to as the “patents”.
|Harry Potter patent troll|
The court held that the defendants infringed the patents and consequently made a declaration inter alia that BHL is entitled to 50% of the total contract sums, amounting to N17, 258, 820, 000. 00 (Seventeen Billion, Two Hundred and Fifty Eight Million, Eight Hundred and Twenty Thousand Naira Only) as the minimum reasonable royalty accruable for the infringement committed by INEC and the other defendants. [Folks, that’s around $106 million, if Afro Leo’s calculator is right. Says Afro Leo: Good luck with enforcement! And, what sort of healthcare or education can that buy?]
In this article, I will set out why I do not agree with this decision. I conclude that it will encourage patent trolls, which will negatively impact on Nigeria’s nascent tech-ecosystem. [To read about some developments in the ecosystem, see here, here, and here]
1. BHL did not identify the particular claims contained in the patents that were allegedly infringed
Whether or not a patent is infringed depends on the identification of the claims contained in the patent, in accordance with Section 6 (2) of the Act. Section 6 (2) of the Act provides that: The scope of the protection conferred by a patent shall be determined by the terms of the claims; and the description (and the plans and drawings, if any) included in the patent shall be used to interpret the claims, accordingly the question of patent infringement will ultimately depend on the identification of these claims.
According to Lord Russell in Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23, “the function of the claims is to define clearly and with precision the monopoly claimed so that others may know the exact boundaries of the area in which, if they venture therein, they will be trespassers”. In Codex Corporation v Racal-Milgo Ltd  RPC 369 at page 381, the Court of Appeal held that one should not look only to the essence or principle of a patent in suit to find an infringement merely because the essence or principle has been made use of by the alleged infringer.
The importance of the claims in patent infringement proceedings has also been reaffirmed by the Nigerian case of James Oitomen Agboronto v. Grain Haulage [1997-2003] 4 I.P.L.R 177, where the court stated that a plaintiff who desires to succeed in a patent claim has to show inter alia that the act of the infringement has been covered by a valid claim of the plaintiff’s patent (underlined for emphasis).
My review of the decision indicates that BHL did not identify the particular claim(s) contained in the patents that were allegedly infringed. It is my view that the failure to identify the particular claims allegedly infringed makes it impossible to determine the exact scope of the protection granted by the patents, not to mention of reaching a definite legal conclusion that the said patents were actually infringed.
2. BHL did not make a clear showing that the allegedly infringing DDC machines applies the same process protected by his patents
BHL averred in paragraph 19 of its statement of claim that it is “not claiming to have a patent over the voter’s register per se or the DDC Machines, but the process of the application of the said DDC machines...and application of the said products to produce the Voter’s Register”.
Further, at paragraph 20 of its statement of claim, that: ...inasmuch as the end result is to provide the names, age, sex, photographs, address, unit, ward, town, local government, state etc of voters, the process and the combined application of the means of achieving this, serious infringes on the said process and application of the Plaintiff’s patents for the compilation and production of the Voter’s Register.
These averments by BHL brings the patent infringement allegations against the defendants within the scope of the first part of Section 6 (1) (b) of the Act which states that: A patent confers upon the patentee the right to preclude any other person from doing any of the following acts where the patent has been granted in respect of a process, the act of applying the process. In other words, in this case, the process patents owned by BHL can only be infringed by the act of applying the process.
Beyond the “formulaic recital” of the basic elements of infringing a process patent under the Act, BHL did not show by material facts supported by “clear and convincing” evidence on how the defendants’ applied the patented process in the deployment of the DCC machines for the election process, or how the defendants’ conduct in deploying the DCC machines for the election process is identical to the patented process. Thus, BHL failed to plead the infringement of his patented process with sufficient detail.
The Court of Appeal in the case of Arewa Textiles Plc & Others v. Finetex Limited (2003) 7 NWLR 322 at 351 – 352, had this to say concerning the infringement of a process patent: The claim herein being one of process or method and not one of product, it is incumbent on the [plaintiff] to adduce evidence showing that the first [defendant] adopted a process similar to its own...
In the absence of such material facts backed by evidence in this regard, I do not see how the court could have rightly held that: The plaintiff has established by overwhelming evidence that his patents rights have been infringed on.
3. The Court misconstrued the meaning of “new” or “novelty” in the Act
The 1st, 2nd and 4th defendants, in their respective statements of defence, set out facts challenging the novelty of the patents. They also adduced evidence of prior art and canvassed legal arguments to sustain this challenge. Accordingly, the novelty of the patents was thrown up for determination before the court.
Section 1 (2) (a) of the Act states that an invention is new if it does not form part of the state of the art. Section 1 (3) defines the “art” to mean the art or field of knowledge to which an invention relates and “the state of the art” means everything concerning that art or field of knowledge which has been made available to the public anywhere and at any time whatever (by means of a written or oral description, by use or in any other way) before the date of the filing of the patent application relating to the invention... Therefore, novelty is really a question of whether the invention is “new” or has been “anticipated” for example, by a previous patent, or by publication or use.
In resolving this issue, the court, in my humble opinion, wrongly proceeded to affirm the novelty (validity) of the patents because BHL was able to establish that it owns the patents, whereas the defendants failed to prove otherwise. In this regard, the court misconstrues novelty to mean proof of existence (or ownership) of a patent rather than whether the invention (or process) protected by the patent is new, or is anticipated by prior art.
The precedent set by this decision, if not challenged, will give rise to a new breed of patent trolls (Wikipedia defines a patent troll as “…a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees….) who will apply to patent just about anything patentable under the sun in other to claim ownership to the invention, rather than proving novelty. This is particularly possible because the Act does not require patent examiners to conduct substantive examination as to whether the invention (contained in the patent application) is in fact patentable. [Yes, also South Africa, not so in Kenya for petty patents] This gives patent trolls the ability to “game” the patent system in Nigeria. Such scenario occurring in Nigeria is likely to retard innovation.
On this basis and for the reasons stated above, it is necessary that the decision of the court is reviewed by a higher court and that the Act is urgently reformed to support innovation and protect the nascent tech-ecosystem in Nigeria.
Leos' questions and commentary
First, is the continent, generally, ready for substantive patent examination? And, is it a good idea in its current stage of development?
What is the difference, if any, between a “patent troll” and a non-practicing entity (NPE)? Do you consider them to be a Friend or a Foe? Do they really matter? [This is funny: Afro Leo thinks they do matter because there is a law module at Stanford Law School on ‘patent troll litigation’. On a more serious note, he points at a recent study which suggests they’re “killing start-ups” and/or slowing innovation]
However, this Leo doesn't quite feel that “patent trolls” will be springing up or flooding into Nigeria anytime soon. To his mind, South Africa, where he understands that third party litigation funding is pretty decent, seems to be the place for hunt. So, good luck to any “patent troll” thinking of making easy money or gaining other strategic advantage from litigating patents under the current civil justice system in Nigeria. [Afro Leo understands that a reform is overdue – not least, at the Federal High Court level, where IP disputes are litigated]
More importantly, it’s time for Nigeria to emulate South Africa, with a specialist profession. This would create a pool of specialist lawyers to pick from when appointing the IP judges of the future. If that happens, then the next step could see the creation of a specialist court for resolving IP disputes. Again, Nigeria might wish to copy Thailand (also here) or even the UK. Anyway, that’s food for thought for a future civil justice reform in Nigeria. [Afro Leo is wondering whether there is enough IP work around to warrant such a move. He suggests reviewing Nigeria's law school curriculum/system to ensure that IP law and practice is studied well]
Lastly, this Leo just found out, by himself, that Chukwuyere will be speaking at this year’s NigeriaCom conference scheduled for 17 – 18 September. You can also pursue Chukwuyere on Twitter @NairaSolicitor.
Readers, over to you.
European Commission’s study on NPEs coming soon
A “patent troll” is hit with legal costs here
Tools to stop “patent trolls” are here
What others can learn from America’s “patent troll” experience here
How Nigeria can beat “patent trolls” using the EU formula found here
Wondering why "patent trolls" go to Texas? Answer is here