Observations of a Patent Lawyer in Kenya 6: Science Week

From 13-17 May the National Council of Science and Technology (NCST) held the second annual National Science, Technology, and Innovation Week in Nairobi. The theme was ‘Science, Technology and Innovation for the Realization of Kenya Vision 2030 and Beyond’.

The Thinker by Gibran Khalil Gibran

What a roller coaster of emotions/thoughts for a patent lawyer this event turned out to be!

First came a realization: the vast majority of the innovations at the show will likely never be patented. A variety of reasons explain this, but here is one example. Many of the inventors went to KIPI and filed an application, but most of the applications were likely written by the inventors due to the lack of patent drafting professionals in Kenya. KIPI will likely find many of the applications as lacking in one of the criteria for a patent (novelty, inventive step, written description, enablement, etc.). Indeed, KIPI issues only a dozen or so patents per year from locally filed applications.

Next came introspection: does it matter?  In other words, would patents be of any help to these innovators? Some of the patents would be simply too difficult to enforce because the likely infringers are not big companies but rather many small-scale “jua kali” (artisans working often without an official business, storefront, etc.). Some of the inventors have no intention of selling the same product for more than 18 months, which is the time it takes KIPI to publish a patent application and for provisional rights to attach (see my earlier post). For a handful of the inventions, patent protection made a lot of sense, but for many others, I found myself unsure of the value a patent would provide.

Finally came admiration: despite the above, Kenya clearly is not lacking in innovative people and ideas. I was thrilled by the novelty of some of the inventions (public phone with swap-able SIM slot), the creative of others (water hyacinth-based paper), and even the audacity of a few (transgenic fungal biopesticides, anybody?).

And now a word of caution!!  I met one inventor who filed a provisional application in KIPI in 2011. He didn’t realize that the application is now (in 2013) abandoned, and that he had no protection whatsoever. So by displaying his invention at the Science show, he had lost his rights in most countries to file a regular patent application! At least in Kenya there is a 1-year grace period so he can still file for local protection…

RSA: Appeal decision on the Swartkops v Cerebos passing off matter

Jeremy Speres has pointed out that the appeal decision on the matter between Swartkops and Cerebos was handed down on 10 May 2013.

Swartkops unsuccessfully sued Cerebos for passing off claiming that the get up of Cerebos' Buffalo braai salt was confusingly similar to its Marina braai salt (read the judgement here). As predicted by Afro-Leo in a post on the first ruling in this matter here, Swartkops took the matter on appeal.

Swartkops' appeal succeeded (read the judgement here). Commenting on the appeal decision, Jeremy writes that its most striking aspect  'is the full bench's criticism of the court a quo for undertaking a detailed comparison of the get-up of the products in question, rather than relying on the first and general impression of the products alone.  The court a quo justified its approach in para 26 by stating:

"In my view, in order for a Court to make an appropriate and correct finding, it must undertake such an exercise keeping in mind, of course, the relevant importance of the first and general impression. If a Court does not undertake that exercise and relies solely on a first and general impression, it runs the risk of failing to distinguish between unlawful passing off and lawful competition."

The court a quo relied on the approach of Harms JA in the Reckitt & Colman case, where Judge Harms said the following at pg 317:

"In assessing whether there is a likelihood of deception or confusion it is necessary to consider the whole get-up of the appellant and the whole get-up of the respondent…but it is difficult to do this exercise without having regard to its individual parts."

The full bench seems to have over-emphasised the requirement to consider get-ups as wholes and simply identified certain broad elements that appeared on both products, i.e. the similarities – see para 17. It’s refusal to consider the individual elements of each get-up, as per the court a quo, led to a failure to consider the significant dissimilarities and therefore to a conclusion that confusion was likely.  I’m not sure the court gave consumers enough credit here - I’d like to think I’m sufficiently conscious to distinguish between these two!'

Which of the two decisions do Afro-IP readers agree with?

A review of African official IP websites: no.45: South Africa

Today, we find ourselves in South Africa (SA) in search of any development since our visit back in April 2012. This Leo is pleased to report that SA's intellectual property (IP) office, CIPC, still lives online albeit experiencing difficulties with its billing system. On the face of it, the upside in this is the customer-focused manner in which CIPC has dealt with the problem i.e. by putting out an apologetic message on its website. 

But, CIPC is not yet on Twitter or facebook and one wonders why, in 2013, an office with one of the best (if not the best) IP office websites seen in the A-Z series is not yet using social media. (Afro Leo tells me that the responsible government department, the DTI, can be found on Twitter under @the_dti)

Another interesting finding is the National Intellectual Property Management Office (NIPMO). NIPMO's role - like seen in other countries e.g. here and here - is to ensure that those in receipt of public funds for research and development (R&D) protect and enable knowledge transfer for the benefit of the public in SA. ("About time", says this Leo)

Around the web for Africa IP-related news

New EPO-UNEP patents study reveals huge potential for Clean Energy Technologies (CETs) in Africa: Among others, this report notes the low patent application numbers in the field of CETs despite an increase in inventive activity within this area between 1980 and 2009. (This Leo is one of those who believe that African countries are better off with the likes of wind, solar and hydro-power than nuclear. As for the EPO, it seems that the office is taking a keen interest in the African market considering that he recently saw a targeted advert during a commercial break on CNN's Inside Africa programme). 

Anyway, he has picked out this paragraph from the EPO's press release on the report: "....patents can not be considered as a barrier to the access to CETs in Africa. On the contrary, the lack of these patents to protect their products also means that source companies may be reluctant to offer up their know-how to promote technology transfer." (Afro Leo welcomes readers' comments on this point) 

South Africa seeks to close drug patent loophole: Reuters reports that the SA government is planning to make life difficult for big pharmaceutical companies following the footstep of India. MacDonald Netshitenzhe, head of policy at the Department of Trade and Industry is reported to have said this: "We have a policy position that says 'Let us have a strong system that will not grant easy patents. Because if you grant easy patents, a weak patent, there will be people that take it a little bit forward and claim an extension on the original patent." (Again, comments welcomed)

--------------------------------------------------------------------

The DTI, apparently, reneges on its IP policy commitment, see here

For some research papers on climate change, IP rights and technology transfer, see here and here

For compulsory licensing under TRIPS, see here and for its incovenient truth, view here

Big pharmas cut price for emerging countries here and here but that would probably not be enough, see here

To see GSK's position on evergreening, click here

To debunk the myths of evergreening, try here

A view on Novartis' patent ruling in India, consult here 

Observations of a Patent Lawyer in Kenya 5: Frustrating Law

When an inventor comes to CIPIT seeking patent help, there is one part of the conversation that I always dread: section 55.

Sisyphus, Titian, 1549

Section 55 of the Industrial Property Act (i.e., the Kenyan patent law) deals with enforcement of rights, and states that the owner of a patent [i.e., an issued patent] has the right to enforce by means of injunctions and collecting damages. Section 55(c)(i) provides for provisional rights that can be enforced against someone infringing a claim of a published application, provided that the infringer has “actual knowledge that the invention that he was using was the subject matter of a published application” (emphasis mine).

Separately, section 42 states that publication of an application will occur after 18 months from the filing (or priority) date.

The effect of these two provisions is that a patent applicant has no legal right that s/he can enforce for 18 months after the filing date. So when I help the inventor file an application, s/he must wait 18 months before s/he can legally do anything in terms of enforcement.

In America it is possible to request for early publication, but there is no such provision in Kenya. This is an instance where the patent law does little to nothing to help an inventor, and several of my advisees have decided not to bother with a patent application because of this issue.

The best advice I can think of is that, sometimes, just being able to say “I have a patent application pending” is enough for an inventor to scare away some of the would-be copycats, or maybe force a competitor into licensing negotiations. But this is far from an ideal situation and is frustrating to inventors.

Any thoughts from our readers?

IP Policy in Africa: COMESA leads

The Africa IP Forum held in February this year put IP Policy firmly on the agenda for Africa (view the presentations here). Since then, IP Policy has been discussed in Tanzania at the African Conference on the Strategic Importance of IP Policies to Foster Innovation, Value Creation and Competitiveness. Two weeks ago, IP Watch reported that the Common Market for Eastern and Southern Africa (COMESA) had gone beyond discussing policy imperatives to preparing an IP Policy (read the full article here). 

The COMESA member states are Burundi, Comoros, DR Congo, Djibouti, Egypt, Eritrea, Ethiopia, Kenya, Libya, Seychelles, Swaziland, Madagascar, Malawi, Mauritius, Rwanda, Sudan, Uganda, Zambia and Zimbabwe. This is a significant grouping of African states and any IP initiatives originating from COMESA are noteworthy. Moreso because all the COMESA member states, except Libya, are members of the African Union (AU) where IP has come to the fore in the context of efforts to establish PAIPO. Therefore COMESA's IP Policy is probably a good indicator of what a PAIPO IP Policy might look like. It is also a foretaste of what the COMESA member states' national IP Policies might look like. 

The COMESA IP Policy  (available in full here) is presented in two parts. Part A is entitled ‘COMESA Policy on Intellectual Property Rights’. It emphasizes the link between IP and economic development particularly in relation to promoting innovation in developing countries. It also considers the relationships between IP and trade, the cultural industries, TK, expressions of folklore and ICTs. Such broad coverage is indicative of the appreciation of the cross-cutting nature of IP. What is missing is an express statement of the need to calibrate IP policy and law to the current socio-economic status of COMESA member states. Part B is entitled ‘The COMESA Policy on copyright and copyright related industries’ and focuses on the need ‘to encourage and promote copyright protection for socio-economic development’. Its stated objectives include increasing capacity to commercialise copyright works; creating ‘public awareness on the importance of copyright protection’ and encouraging research on copyright and socio-economic development.  The need to curb piracy and copyright infringement is rightfully mentioned but is not tempered by the mention of the imperative to promote a balanced copyright system that facilitates access to knowledge and learning materials. Such access is essential to the provision of education, which, in turn, contributes significantly to the quality of people’s lives. However, the promotion of research is laudable as the resultant research outputs will provide evidence which can be used in iterative policy and legislative processes. It is heartening to see such concrete attempts to formulate IP Policy in Africa and I hope that Afro-IP readers will read the COMESA policy and comment on it below. 

When Freedom of Expression and Copyright Meet

Last month, the organization Article 19 released a report called The Right to Share: Principles on Freedom of Expression and Copyright in the Digital Age. (Available here in multiple languages.)  It took this Little Leo awhile to get through the 28-page document because, despite her experiences in copy-left circles, she found some of it a bit hard to swallow.

The report discusses a number of issues relevant to Africa and developing countries in general.  It’s main focus is the importance of freedom of expression and how intellectual property law interacts with this freedom and it lists 15 principles related to this.  The report does a great job of looking at some side-effects of international standards and intellectual property laws and pulling together connections that are often talked about but not explored.  Little Leo was most impressed with the reports use of very US and UK-centric language and ideas to make points very much opposite of what these countries (or at least the US) usually propose.

Concerns

The report also makes some great leaps and claims in its underlying premises. It begins with a reinforcement of the importance of “the right of freedom of expression,” which is supports with references to unspecified UN and regional human rights instruments.  The report then goes on to describe freedom of expression in a very broad way, including the “the right not only to impart but also to seek and receive information.” (Principle 1, emphasis added.)  This definition bring freedom of expression from beyond a freedom to express to a freedom to consume.  This definition has great implications for how copyright interacts with the freedom of expression.

Half the basis for Copyright

As it explores the interaction of freedom of expression and copyright, the report frequently looks at how copyright laws fit balance freedom of expression and the goal of copyright.  This type of comparison is very reminiscent of US Supreme Court jurisprudence, especially when it uses language like, “least restrictive means available” and “chilling effect.”  While Little Leo likes the idea of balancing competing human needs or desires, this approach felt very disingenuous here because the report uses the US Constitution purpose for copyright as the underlying goal of all copyright law - “promote the progress of science and the arts.”  That approach is very different than Continental Europe’s traditional copyright reasoning and ignores all Author’s Rights aspects.  It focuses solely on the benefits to society.  As a continent with countries encompassing both UK and Continental approaches, this assumption of purpose could alienate a good portion of the countries in Africa.

Ranking of Rights

Also having a great effect on how freedom of expression and copyright interact is the value placed on the right to freedom of expression as one of the most important rights humans have, placing freedom of expression above the right of property.  (Principle 3.)  The report claims that freedom of expression can only be restricted on “grounds specified by international law,” and more forcefully, “No restriction on freedom of expression on the ground of protection of the rights of others, including copyright, may be imposed…”  (Principle 1.)  There is an unless, the balancing test with the definition of copyright mentioned above.  The Principle also suggests that states are responsible not only for refraining from interfering with freedom of expression themselves, but that they also must prevent others from interfering.

Little Leo found these claims a bit concerning.  Property rights are also important and are often focused on by human rights organizations as an important path to development and the ability to obtain a certain standard of living.  The lack of property rights is often cited as an impediment to development in many African communities.  To say that one right is more important than the other as a matter of fact seems very presumptuous and quite possibly erroneous.  In addition, the assertion of such a multitude of “rights,” such as the “right to personal enjoyment of cultural goods” and “the personal right to read, listen to, view and browse cultural goods without copyright restrictions” (Principle 7) starts to undermine the concept and value of “rights” like the boy who cried wolf’s repeated cries undermined the value of the content of such cries.

Is the Burden really balanced?

Although the report stresses balance, there are some places where its principles seem to have missed that mark.  Principle 10 addresses intermediary liability and content removal.  One of the proposals suggests that intermediaries should only remove content when ordered to by a court or tribunal.  This would involve a huge amount of expense and time on behalf of the copyright owner.  For small owners, especially those of works not published through traditional corporate sources such as record labels or publishers, obtaining this sort of order would be very, very difficult.  It’s important to remember that copyright owners are both little guys and big guys and copyright infringers are both big guys and little guys.  For example, if a Nigerian artist had a hit song in Nigeria that was picked up by an American website and distributed without permission, how likely would it be for the Nigerian artist to obtain an order to have the work removed verses how difficult is it to send a notice?

A Better Outlook

Those criticisms being said, the report makes a lot of good points that I hope are acknowledged and addressed in the wider, global copyright discussions.  The report looks at the history of copyright law, especially its recent history and how it has been “increasingly used to discourage creativity,” and compares this to the value and benefits of new works, including new transformations of existing works.

Public Domain Value

The report also has two principles, Principles 4 and 5, that address the importance of the public domain.  The idea that “once information and cultural goods fall into the public domain, they must remain” there seems pretty simple.  Little Leo read this as a bit of an attack on the US law that removed works from the public domain.  However, this Principle also seems to run counter to the idea of protection of traditional knowledge and cultural expressions, which is so important in many developing countries.  Little Leo wonders if that was intentional.  The report recommends in Principle 5 that copyright protection not be allowed to go beyond an author’s death.  That idea seems worth bringing back into the international discussions, though it’s unlikely to get much traction at the moment.

Access and encouragement of creation

Principle 13 is one of the most well-thought-out principles in the document.  It reiterates the importance of freedom of expression that underpins the report but also acknowledges the importance of remuneration for work.  Principle 13 suggests a number of balancing options, such as Creative Commons licenses, special exceptions for libraries and people with disabilities and accessibility of resources in multiple languages especially where countries have minority language groups.  (Although Little Leo is tempted to get nitpicky and point out how these concepts can be taken too far…)

Broad Limitations and Exceptions

The report also mentions fair use and fair dealing, the encouragement of which can be very beneficial to balancing the competing needs of freedom of expression and copyright protection.  The report, in Principle 6, encourages that limitations and exceptions to copyright be interpreted broadly.

Internet loss is unfair Punishment

Even some of the more extreme-sounding propositions are worth a good look.  For example, Principle 8 declares that “Disconnection from access to the Internet on grounds of copyright is always a disproportionate restriction.”  People are beginning to clamor that internet is a vital resource, like water or electricity.  While we might not all agree that these three are vital resources, it is worth recognizing the role internet access plays in some societies and what the true ramifications of losing such access could be.  Principle 8 also offers some rebalancing for countries with take-down and filtering systems, the requirement of penalties for requests to remove or block content to which the requesting party does not actually have rights.

Fighting the US and its Influence?

There’s a number of Principles that seem targeted specifically to US law and exported US law.  For example, caps on statutory damages, penalties for abusive copyright infringement litigation, removal of criminal sanctions for non-commercial infringement and removal of criminal sanctions of circumvention of digital rights management.

 

Little Leo hopes that many Afro-IP readers will also take a look at the full report and share their thoughts on the Principles.

A review of African official IP websites: no.44: Somalia

This week we find ourselves in the Horn of Africa in search of the web presence for the intellectual property (IP) office in Somalia; but we are not surprised to find none. Like last year, the country is still rebuilding itself with the help of the international community and Afro-IP can only wish the Somali Government well. However, readers may wish to consult here and here for some information on IP law and practice in Somalia.

A warm welcome to two new blog team members

Readers may have noticed that a couple of fresh names have appeared beneath recent Afro-IP blogposts, though neither of the persons concerned has yet been properly welcomed.  

Afro Leo is pleased to welcome Caroline Ncube, who teaches and researches IP issues at the University of Cape Town, South Africa, and Isaac Rutenberg, who directs CIPIT in Kenya.  These two bright stars on the IP firmament, both holders of doctorate degrees, both have a great deal to contribute to our understanding of both the theory and the practice of intellectual property law in Africa. 

We wish Caroline and Isaac well in their task of sharing their thoughts with our critical and occasionally contrary readership in the blogosphere.

Kenya: a Patent Lawyer Observes... Lofty Goals

A curious trend has surfaced in the last few weeks: inventors coming to CIPIT with some extraordinarily grandiose goals. 

[Sadak in Search of the Waters of Oblivion
oil on canvas by John Martin, 1812]

A few examples are worth sharing (sorry, can’t give specific details so as to preserve confidence). One visitor had an innovation that was guaranteed to completely eliminate corruption from a branch of government.  The next visitor had an innovation that was guaranteed to completely eliminate ethnic tensions and lead to national cohesion. Previously, I had met a visitor with an invention that would easily generate trillions (with a “t”) of shillings every year.

These are worthy goals, to be sure.

As a patent lawyer, it is not so much my job to evaluate the business viability (or social viability or management viability) of an invention as it is to evaluate the patentability of the invention.  In any case, most business ideas sink or swim based on the characteristics of the entrepreneur rather than the merit of the idea. A good businessperson can find success with almost any idea, and a bad businessperson can cause even the most innovative and useful of ideas to fail.

I find these grandiose goals and guarantees to be unnecessary and even a bit distracting. Usually I’m able to ignore them and focus on the invention, but I am often left wondering whether the inventor will be completely disappointed if their ultimate level of success is less spectacular than they expect. 

Inventors: I love to see enthusiasm and dedication, but leave the lofty guarantees for pitches to potential funders or customers. They are not so helpful to your patent lawyer. 

South Africa's TK Bills test the implementation of a Constitutional Court judgment

As noted elsewhere South Africa now has two Bills on the protection of TK. These TK bills are significant in two different ways: namely with regard to the IP substantive debate as to whether conventional or sui generis protection is more appropriate for TK and as part of the broader debate about parliamentary procedures in a constitutional democracy. This post considers the second issue.


The progress of  first bill (the IP Laws Amendment Bill No.8 of 2010) through parliament,  is at an advanced stage. It was passed by parliament in 2012, but was denied Presidential Assent (read the president's letter - p.2 - 4). It was then sent back to parliament for reconsideration. At its meeting of 2 May 2013, the relevant parliamentary committee decided that it has adequately reconsidered the first bill and it now seeks to move the Bill forward. This reconsideration entailed referring the bill to the National House of Traditional Leaders (NHTL) and reclassifying it from a section 77  to a section 76 bill. The reclassification was necessary as the bill is not a money bill  and section 77 of the Constitution deals with money bills. Despite objections from some members, the committee voted to adopt the bill without amendment. (The minutes of this meeting are available here - subscription required).


The second bill, (the draft Protection of Traditional Knowledge Bill) is fairly new, having been released for public comment in April this year.  It was submitted to the Speaker of Parliament at the beginning of May as a private member's bill by the opposition Democratic Alliance's shadow minister for trade and industry, Dr Wilmot James. It has thus not yet been considered by parliament.The introduction of a second alternative bill to parliament as a private member's bill is unprecedented in South Africa. It only became possible to introduce private members' bills pursuant to a Constitutional Court decision in October 2012 which struck down certain parliamentary rules as unconstitutional. Section 73(2) of the Constitution provides that any member of the National Assembly can introduce a bill to parliament. However, this power could not be exercised as parliamentary rules provided that a private member's bill could only be introduced with the permission of parliament. A member of the opposition Inkatha Freedom Party, Dr Mario Ambrosini, successfully litigated to have this, and other related rules, struck down as unconstitutional (read the judgement here).

Now the conundrum is how parliament should proceed. Should it carry on with the procedures required to return the first TK bill to the President for his assent or wait until the second bill is fully before it?
The Constitution and Parliamentary Rules are unclear on this point as they do not envisage the situation we are in: that is two competing bills seeking to regulate the same issue proceeding through parliament, at different paces.


One possible solution is for the matter to be referred to the parliamentary rules committee for its guidance. If parliament proceeds with the first bill and ultimately obtains Presidential assent for it, the second bill still has to be properly considered by parliament. If it also is passed by parliament and obtains Presidential assent, it will repeal or supersede the first law. However, this is highly unlikely because the opposition parties do not have the necessary voting majority to pass the bill. Nonetheless, the introduction of the second bill to parliament is still very important as it forces parliament to confront the substantive IP debate about the best way to protect TK and provides the opportunity for reflection on, and perhaps reform of, parliamentary procedures.

Kenya: a patent lawyer observes ... education in science and law

Afro IP is pleased to host a third guest contribution from Dr Isaac Rutenberg, an American patent lawyer living in Kenya.  Isaac, who directs the Center for Intellectual Property and Information Technology (CIPIT) at Strathmore Law School, writes:

My graduate degrees are in Chemistry and in Law. To me, this is perfectly natural, and many of my friends in America have similar backgrounds. Any time I tell this to people in Kenya, I am met with amazement and disbelief. I can hear them thinking “why would anybody study both chemistry and law?“

Unlike in America, law is an undergraduate subject in Kenya so the vast majority of lawyers have no training beyond their training in the law. After law school, lawyers here (it is hoped) find jobs; I have heard of no instances where they pursue an additional degree or additional training in science/technology.

At CIPIT, I have been training patent drafting skills. Both legal and scientific literacy are needed for the task. I originally assumed that it would be easier to train an inventor the required legal skills rather than training a lawyer the required technology skills. I have since decided that both are hard, and neither is necessarily “better” or “easier”.  As long as the trainee is not scared away by scientific or legal technical terms, the main inquiry seems to be whether the individual is dedicated and focused.

If there is ever to be a good number of patent drafting professionals in Kenya, people need to believe that a living can be made doing such work. But if nobody is doing the work, then the number of patent applications stays low. If the number of applications is low, there is a perception (actually a misconception – see my earlier diary entry here) that there is no demand for drafting skills.  This Catch-22 is one of several reasons that patent drafting is a skill that remains elusive in Kenya.

So what of the scientific literacy that is needed for patent work? In the case of chemistry, without a doubt one needs a formal education to do any patent work. In other fields such as mechanical devices, I know that non-scientist lawyers can learn enough to draft good applications. My lawyer trainees have shown this, at least so far.

INTA's Africa session: a reminder

Are you in Dallas for this year's International Trademark Association (INTA) Meeting? If so, don't forget tomorrow afternoon's Africa session.  The programme for the session looks like this:

RT50 Regional Update: Africa (3.30 to 4.45pm, Dallas Convention Center, Level 2, Ballroom A)

Intermediate Level 

Over the past 10 years, Africa has experienced rapid and significant development, on both economic and legislative fronts, but challenges still remain.  Panelists will discuss issues of importance such as the development of various IP laws, the organization of IP Offices, Madrid Protocol and developments in case law, as well as counterfeiting, enforcement and brand protection issues in Africa.
Moderator:
Simon Brown, Adams & Adams (South Africa)
Speakers:
William I. Maema, Iseme, Kamau & Maema Advocates (Kenya)
Uche Nwokocha, Aluko & Oyebode (Nigeria)
Darren Olivier, Adams & Adams [and Afro-IP] (South Africa)

You can check out the full INTA programme here.