WIPO METHODOLOGY

FOR
DEVELOPING INTELLECTUAL
PROPERTY STRATEGY

BENCHMARKING INDICATORS
BY
Prof Tom P M Ogada,
T&P Innovation and Technology Management Services

DRAFT 1
NAIROBI, FEBRUARY, 2012
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CHAPTER FIVE
BENCHMARKING INDICATORS FOR NATIONAL
IP STRATEGY
5.1.

Introduction

The first step of developing a national IP strategy is to undertake a baseline survey to

ascertain the current status of the IP system in a country in order to identify the elements
where the countrys IP system is strong and adequate and those elements where the IP
system in weak and require strengthening or reinforcing.
This baseline survey tool has been provided by WIPO to help member states to conduct a
national IP audit. The tool consists of 43 indicators presented under the following five
sections:
5.1. IP Awareness in Universities, Research Institutions and Enterprises
5.1.1. IP Awareness as a target indicator in a national IP strategic
Recent studies have shown that the levels of IP awareness in most developing countries
are low or very low. In 2004-2006 several IP Audits were sponsored by WIPO in selected
African countries, and a preliminary report was presented in March 2006 in Nairobi
during a regional seminar that was organized by WIPO and the Government of Kenya. 12
countries presented their findings, and in all, low IP awareness was identified as a
strategic issue that needed to be addressed by the planned national IP strategies.
Similarly, a study undertaken in ASEAN Countries by WIPO, established that these
countries recognized public awareness on IP as essential to IP asset management. Most of
the survey responses acknowledged that although the situation was improving, public
awareness on IP is still low or very low.
The low level of IP awareness has impact on the number of applications for IP in some
countries. Whereas reasonable innovative and inventive activities are taking place
universities and research organizations, these activities are not translated into IP
applications and protections. The same is true among the SMEs, which are involved in a
lot of creativity and inventiveness that could lead into patents, industrial designs or utility
models, but these remain unprotected. Whereas large companies appreciate the power of
trademarks and branding, for marketing of goods and services, many SMEs still do not.
The main reason for this scenario is the low level of IP awareness amongst the
universities, research organizations and SMEs. This explains why most national IP
Strategies consider IP Awareness as one of the key strategic issues for promoting the
generation, protection and commercial utilization of IP.

5.1.2. Benchmarking Strategies for enhancing IP Awareness

Due to the importance of IP awareness to the development of IP systems, most countries
are coming up with strategies of increasing IP awareness. Your country may wish to
identify such countries, study their programs and select a few countries for
benchmarking. In 2003, the Korean Industrial Property Institute (KIPO) published a
report entitled Koreas Invention Promotion Activities. This is briefly discussed here
below for illustrating what the government of the republic of South Korea had put in
place to promote invention.
KIPO identified the following four strategies for promotion of IP generation, which are
briefly discussed here below:
1. Cultivating creative young inventors.
2. IPR Acquisition campaign for SMEs.
3. Strengthening support for women invention activities
4. Promoting IP awareness in universities and research organizations
a.

Cultivating creative young inventors

Under this strategy the following three projects were pursued;

Promoting Invention Clubs: Invention clubs were established in selected

schools across the country to provide students and the public with opportunities to
turn their ideas into inventions. The invention clubs were supported with full-time
IP teachers as well as variety of tools, equipment and workshop to support the
inventive activities of the members. KIPO had a plan of having at least a club in
each of the 180 regional education offices by end of 2006.

Promoting Invention Classes: Since 1980s KIPO had recommended that

elementary, middle and high schools, (10,500 in number) introduce invention
classes in the form of special activities ranging from performing practical skills
for making inventions and creation to visiting various sites where invention are
made. KIPO provided various support including training of the invention teachers
and provision of teaching and study materials. By end of 2002, some 6945
schools were running invention classes.

Annual Students Invention Exhibition: KIPO also introduced several events for
promoting students invention activities. Of particular interest was the annual
students invention exhibition. Items created by students from elementary
school, middle school, high school and university were exhibited, irrespective of
whether they have been patented or not. Prizes were awarded to individuals and
groups. Prize winning inventions were displayed for the general public for major

local exhibition whereas middle school prize winners could be admitted to college
without an entrance examination.
b. IPR Acquisition campaign for SMEs
Under this strategy the following one project was pursued;

IPR seminars and IPR courses for SMEs: Since 1999, KIPO has also been
conducting its IPR acquisition campaign for SMEs. The campaign encourages
SMEs to invent new technologies and use them as core business assets. The
campaign includes IPR seminars and IPR courses for SMEs. In both programs,
SMEs CEOs and employees responsible for technology development and IPRs are
targeted.

c. Strengthening support for women invention activities

Under this strategy the following one project was pursued;

Promoting women invention activities: In 2002, out of the 287,104 patent

applications, only 4 % were from women. Recognizing the need to improve,
KIPO has formulated comprehensive measures to promote the invention activities
of women. These include raising public awareness and interest in womens
invention activities, organizing symposium on exemplary women inventions and
promoting the establishment and development of Korean Women Inventors
Association.

d. Promoting IP awareness in universities and research organizations

Under this strategy the following three projects were pursued;

IPR training for professors: KIPO also has another program called IPR
training for technology and engineering departments which targets professors
of such departments to undertake basic IPR awareness training. In turn, the
professors upon completion of their training, promote IPR interests in their
departments.. Some 80 professors had attended this course.

Cooperation agreements with universities and research institutes: KIPO has

also focused attention on promoting inventiveness in universities and research
organizations. First to enhance interest of universities and research organizations
in IPRs and IPR applications, KIPO has established a system of cooperation
where it signs cooperation agreements with such universities on IPR
administration. Under these agreements, the parties agreed to undertake specific
activities to promote IPR awareness and increase IPR application.

Promotion of employee invention: Promotion of employee invention is another

key strategy of KIPO. Past statistics show that about 80 % of all inventions in
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5.2.

Korea are employee invention and less than 20 % individual inventions. This
prompted KIPO to propose incentive and reward policies to encourage employee
invention. KIPO also organizes national employee invention competitions, with
the winner getting presidential award.
Intellectual Property Policy

5.2.1. Introduction
Intellectual Property Policy is an important tool for promotion of the generation,
protection and commercialization of intellectual property in a university and Research
Organization. IP Policy provides the instrument, structure and framework that can
promote the generation, protection and commercialization of IP in an RTO. It addresses
key issues including ownership of intellectual property rights; benefit sharing, strategies
for commercialization, management of privately sponsored research, collaborative
research and conflict of interests, amongst other things. The presence of IP policies in
universities and research organizations is therefore a strong indicator of the commitment
of a government to the promotion of generation, protection and commercial exploitation
of intellectual property rights
Today most countries are recognizing the need of such policies. It has been the best
practice in USA, Australia, and most countries in European. Countries that have recently
embraced IP policies include Malaysia, Japan, Kenya, Nigeria, South Africa, Philippines
and China.
5.2.2. Guidelines for developing Institutional IP Policy
Due to the growing importance of IP institutional policies, in 2001, WIPO prepared a
booklet on Guidelines for developing IP Policies in African Universities and Research
Organizations. Although the name suggests that the guideline was targeting African
institutions, the content is general and therefore the guideline has since found application
in several developing countries and has been translated in French and Spanish. Recently,
a second one was prepared and is currently awaiting publication. It is entitled Choices
in developing IP policies in universities and research organizations It discusses some
10 issues that senior managers of universities and research organizations may wish to
consider when developing institutional IP policies.
Today, having institutional IP policies is considered to be the best practice in the
management of IP assets in universities and research organizations. Therefore most
countries today consider promoting the development of IP policies in their National IP
Strategies or Science, Technology and Innovation Policies.
5.2.3. Best Practices in developing IP policies
Today, several universities and research organizations have IP policies. Through a search
in the internet using search word IP policies for universities and research institutions

you can be able to access several institutional IP policies from which you can select a few
for benchmarking. From the experience of the current authors, the following information
may be useful for your team. It discusses best practices in developing institutional IP
policies.
a.

Some of the issues tom consider in an IP policy

A review of most institutional IP policies has identified the following 10 issues that
may need to be considered;
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
b.

Ownership of IP rights from public funded research projects

Ownership of IP rights from private funded research projects
Management of IP in collaborative research projects
Commercialization of IP
Benefit sharing
Research procedures
Disclosing of IP
Filling and protection of IP
Conflict of interest
Infrastructure for IP management
Key stakeholders to be considered in an IP Policy

A review of most institutional IP policies has identified the following stakeholders that
may need to be considered;
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
c.

Inventor and co-researchers

Institutions
Students
Visiting research fellows
Inventors department or research group
Collaborators
Sponsors
Technology Transfer Office
Government
Public
IP models

Some countries have prepared model IP policies which universities and research
organizations may adapt depending on their mission, research culture and agenda. For
example, the Nigerian Office for Technology Appropriation, NOTAP, has prepared a
model IP policy, which it has made available for institutions in Nigeria. This has made
the process of developing IP faster.
d.

National policies and guidelines

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In some countries, national IP laws, policies and guidelines have provisions for
institutional IP policies and even addresses some of the issues that need to be considered
in an IP policy and thereby providing some uniformity. For example, the Kenyan
Science and Technology Act of 1980 addressed the issue of ownership of IP and benefit
sharing. Today most countries are adopting the USAs Bayl Dole Act (1982) which
provides for research organizations to own IP rights from public funded research.
e. Stakeholders involvement in developing IP policy
Whereas the processes of developing IP policy may be speeded up using model IP
policy or the WIPO guidelines, an effective IP policy is that which is owned by the key
stakeholders in an institution. This requires that the key stakeholders must be adequately
involved in the process. Consensus will need to be built in almost all the key issues.
f. IP Awareness
For the stakeholders to participate meaningfully, their level of IP awareness must be
reasonable. The development of IP policy must therefore be preceded by an intensive IP
awareness campaign in the institution.
g. Committed management
The process of developing an IP policy cannot succeed without full commitment of the
top management of the institution.
h.

Drafting Team and team leader

The drafting team should consist of a small team representing the key faculties or
schools in an institution. The team should be supported by a legal officer and where
possible officer(s) from the national IP offices. The team leader of the drafting team
should be one of the senior researchers, with good knowledge of IP and fairly respected
by his/her colleagues. The process can be slow and frustrating and therefore the leader
should be self- driven and capable of motivating other to forge on and complete a draft.
i.

Approval by Key organs of the institution

The draft should be approved by the various organs of the institution based on the
institutions procedures for approving policies. For example, in the case of Moi
University, Kenya, the draft IP policy was discussed and approved (after incorporating
suggestions and recommendations at every level), by the committee of Deans, the
University Senate and Finally the University Council.
j.

Launching of the IP policy

Once finalized, the IP policy should be formally launched publicly. The launch signifies
to the institutions staff that the development of the IP policy is completed and
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implementation starts. The policy would clarify which office is responsible for
implementation. For the external stakeholders, the launch communicates that the
university now has an instrument to enhance its collaboration with them.
5.2.4. Key decisions to be made by the National IP Strategy
Whereas, most of the issues listed in 3.4.2 are operational and handled at institutional
level, at national level, the IP strategy should address the following questions:
1. Whether or not the promotion of the development of institutional IP policies
should be a target in the national IP strategy
2. If so, whether or not it should be provided for in national IP laws, or related
policies such as science, technology and innovation policies, national research
policies or the national laws establishing the universities and research institutions
3. Whether or not, a model institutional IP policies should be prepared at a national
level for adaptation by individual universities and research organizations
4. The role of national IP offices in supporting the development of institutional IP
policies
5. Financial support from the government to universities and research organization
for developing IP policies.
6. Whether technical assistance would be required by your country from IP related
organizations such as WIPO.
7. Whether WIPO guidelines for developing institutional IP policies should be used
for benchmarking.
5.3. Establishing Technology Transfer Offices
5.3.5. Introduction
Technology Transfer Office (TTOs) is a support infrastructure for the management of IP
assets in a university or research organization. It is therefore critical not only for
generation of IP rights but also for protection and commercialization. Originally started in
USA, today most countries are embracing the idea of promoting TTOs in their public
universities and research organizations. They are in various forms. In most countries you
find TTOs, other countries have Technology Licensing Offices and some have
companies, solely owned by the university or research organizations
5.3.2. Functions of Technology Transfer Offices
A Technology Transfer Office (TTOs) in research organizations in developing countries
can have several and varied functions depending on the missions of the institutions and

the key objective for which the TTOs are established. From IP management point of
view, the TTOs
1. Promote IP awareness among staff of the institution
2. Manage disclosure of IP
3. Filing for protection
4. Commercialization
a. Marketing, negotiation and licensing
b. Creation of start ups and spin offs
5. Maintenance of IP Assets
6. Enforcement of IP rights
7. Managing revenue sharing
8. Managing conflict of interest and commitments
Where financial suitability is a key objective, some TTOs may be involved in the
following, in addition to the above:
1. Management of consultancy services offered by the institutions
2. Marketing of short courses and related capacity building programs offered by the
institution
3. Management contract research and related projects
4. Marketing other capacities of the institutions, such as laboratory services and
5. Any other income generating activities identified by the institutions
5.3.3.

Benchmarking models for organizing and financing technology transfer

offices

Terry Young (2004) has presented the various models of technology transfer offices in
selected countries while world. These models are discussed briefly here below and your
country may wish to review the models and select which countries to benchmark with
and obtain more information on establishing and operating a technology transfer office or
its equivalent.
S/
No

Model

Brief Details

Australias
model

In Australia, public research organizations are responsible for financing the

operations of their TTOs. There are two models, namely internal TTOs
and external company. In the company model, the corporation generates
cash flow through a variety of related business activities such as
consultancy, conference management and professional development. The
proceeds enable the company to support the universitys technology
transfer functions. In most cases, the universities would provide seed
money to start the company. For the internal TTOs, the university funds it
directly as one of its departments. The amount and adequacy depend on
the importance the university attaches to technology transfer process and

the ability of the TTO to demonstrate the benefits it brings to the university

Indias
Model

Japans
Models

China

No formal legislation for organizing and financing TTIOs exist in India.

However, most technical universities and research institutions have
established organizations to interface with industry. Such organizations
perform many of the technology transfer activities typically assigned to
TTOs in other country. The state or central government provide seed
funding, but for a limited time since these units are expected to eventually
be financially self sustaining and even become profit centers. In 2005, an
umbrella organization, the Society of Technology Management (STEM)
was established as Indias professional technology transfer society.
In 1998, the Japanese government enacted legislation to create government
approved university TTOs. The government would provide two-thirds of
its operating cost, up to the equivalent of US $ 300,000 per year for five
years, the university or research organization provided the other one thirds.
At the end of the five years the TTOs were expected to be self-sustaining
financially. However, the government later realized that this expectation
was not possible to meet and therefore extended its subsidy to a portion of
the cost of TTO operations. Later a number of TTOs realized that the
funding from the government was not sufficient to support their operations
and therefore created associated for profit companies that facilitated the
creation of spinout companies. Faculty members were asked to invest in
these companies which also commercialized university R&D. In 2004, 92
% of the national universities, 60 % of the national research organizations
and 43 % of the private universities had established an office for
cooperation with industry.
Today, most public research organizations in China have TTOs. They were
originally supported by the government, but as China moved to market
economy, these TTOs have changed and today they operate as associated
private companies. These companies are today very active in business like
activities such as setting up business incubators, assisting SMEs to prepare
business plans, helping develop spinout companies with university based
venture capital. More often, the TTOs negotiate for significant equity
shares or may wholly own spinout companies.

South
Africa

TTOs are crucial part of IP management although a relatively new

development in South Africas university and research organizations.
There are currently six universities and research councils with well
established technology transfer activities.

Kenya

Out of the 8 public universities currently in Kenya, three universities have

companies whereas out of the six research organizations, two have TTOs.
These five institutions also have IP policies.

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United
Kingdom

Since 1998 report white paper on UK competitiveness many policy

initiatives and government funding streams were established to stimulate
university-industry cooperation. This cooperation significantly changed
the way universities in UK organize their technology transfer activities.
Several prominent universities created separate companies to
commercialize IP, particularly those considered to have high potential for
spinout companies.

Netherlands

5.3.4.

Best Practice in establishing a Technology Transfer Office

The concept of university based companies is also popular with

universities in Netherlands. Amsterdam University and University of
Maastricht are examples of universities that own companies for technology
transfer.

If your country, as chosen as a target, the promotion of establishment of technology

transfer offices, then your country may need to consider some of the following issues;
mission and funding of the TTOs, indicators for benchmarking TTOs and the consortium
model for TTOs
Mission and funding of the TTOs
The main question is why set up a TTO, is it to generate income for the institution or to
promote the mandate of the institution of disseminating knowledge.
As a country, the main mission for establishing TTO should be to enhance the
dissemination to the society of the knowledge generated in the universities and research
organizations to grow the economy, create job and new enterprises.
TTO are incapable of being financially sustaining in the short time. Experience has
shown that it requires eight to ten years before a TTO can generate income enough to
sustain its operation and provide dividend. Therefore financial support by the government
and the respective institutions is required
Indicators for benchmarking TTOs
Establishing a TTO must be economically viable in terms of outputs and impacts to the
society. Benchmarking indicators have been developed to evaluate the performance of
TTOs. These include;
The number of IP disclosures,
The number of IP Applications,
The number of grants
The number of licensing contracts,
The licensing revenue and
The number of start-ups.
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To normalize these, the numbers are expressed as a function of the research budget. The
benchmarking data can be used to understand the implications of promoting technology
transfer and the likely outcomes of a technology transfer initiative. For example, , an
invention disclosure rate of 40-50 per US$ 100 million of research expenditure in
developed countries may discourage developing countries, with meager research budget,
for establishing TTOs. Another example is that the income to an institution, after 8-10
years is likely to be a modest of 1-2% of the annual research expenditure. Top university
managers must understand these data to avoid unrealistic expectations and be committed
to financially supporting the TTOs for a long period of time.
Consortium model for developing countries
To improve the economics of TTOs, developing countries may opt to establish TTOs to
serve several universities or research organizations in a given region. The logistics of
how this can be done can be obtained from literature such as establishing and operating
technology transfer offices, in intellectual property management in health and agriculture
innovation a handbook of best practices.
5.4. Establishing Collective Management Organizations
5.4.1. Roles of Collective Management Organizations
Establishing CMOs is a strategy that most countries are today considering to promote the
creative industries. In this case, the rights owners authorize Collective Management
Organizations (CMOs) to administer their rights, that is to undertake the following;
1. To monitor the use of the works concerned
2. To negotiate with prospective users such as radio and television stations,
discotheques, bars, airplanes etc or groups of users such as hoteliers, for use of the
rights
3. To authorize those users to use the works against payment of agreed royalties
4. To collect such fees and distribute them to amongst the owners of the rights
5.4.2. Collective Management Organizations as Best Practice in the management of
copy rights and related rights
Establishing Collective Management Organizations is today considered as a best practice
in the management of copy rights and related rights. Developing countries have
recognized the essential role and objective of CMOs in facilitating the collective
management of literary and artistic works of their members. Most of the developing
countries have already initiated the process of reviewing their laws and some have
already incorporated the provisions of establishing CMOs in their reviewed or new TRIPs
compliant legislations.

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The following are some of the justifications for establishing CMOs as a strategy for
promoting the creative industries;
1. The continued development of sophisticated technology for taping, recording,
transferring, sharing, transmission and broadcasting of performance of music and
works has made extensive piracy possible and therefore the individual exercise of
the rights has become almost impossible.
2. Some users such as broadcasting organizations require rapid access to a vast mass
of work. Such organization would prefer not dealing with individual rights owners
but entities like CMOs.
3. CMOs provide useful assistance to users of the works through procedural
simplification such as negotiation, calculation of fees and facilitation of access to
works. This reduces the administrative costs for the users.
4.

CMOs can play an important role as lobbyist groups for the interest of their
members as was the case with the Performing Musician Association of Nigeria
(PMAN), when it lobbied for many years for a comprehensive review of the
copyright Act (1970). PMNA organized a countrywide protest march as part of
their lobbying strategies that consequently witness the passage of the law three
weeks later.

5. CMOs can play a vital role in raising awareness of the potential rights owners,
law enforcement agents and the public at large on the intellectual property issues
and the importance of protecting the IP rights to the right owners and for the
promotion of creativity.
5.4.3. Types of Collective Management Organizations
The nature and status of CMOs differ depending on the form and extent of government
supervisions as discussed here below:
1. In some countries, such as Italy, Nigeria and Brazil, CMOs are departments of
central government. They are essentially, central offices for collection and
distribution of right owners fees.
2. In some countries, such as Algeria, Senegal and Morocco, CMOs are semi-public
copyright organizations that manage the rights on behalf of the rights owners.
3. In Russia and USA, CMOs are autonomous bodies or private agencies.
4. CMOs also differs in respect as to whether they are the only CMOs responsible
for the management of all the copyrights or there are several in a country.
5.4.4. Way forward for Collective Management Organizations in developing countries
1. The experience and technological development of the recent years have
increasingly confirmed that the individual exercise of rights is impractical. Those

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developing countries that have not embraced CMOs, must do that as a matter of
agency.
2. Having realized the importance and usefulness of CMOs, for the interest of the
rights-holders and users, developing countries have been incorporating provisions
of establishing CMOs in their legislation drafting processes. Definitely this is one,
first and most prerequisite condition for the effective protection and promotion of
copyright and related rights and all IP rights in general.
3. After incorporating establishing CMOs in legislation, appropriate IP policies and
strategies must be developed to actualize the establishment of CMOs.
4. During the initial stages of the establishment, CMOs in developing countries are
normally very weak in terms of meeting their administrative costs. This may be
due to very limited initial number of members and the weak capacity of those
members even to pay their annual membership fees, as they have been involved in
the past in creating works but without payment. In this regard it is recommended
that the respective government should commit themselves., through annual
budgets, to meet the requirements of the administrative costs of their respective
CMOs until they maintain strong position to manage themselves.
5. CMOs themselves must strive to create a reliable and cost effective rights
management system such as effective mechanisms for royalty collection and
distribution and monitoring. The efficiency in the operations of these mechanisms
will boost confidence of the members on their organizations and thus attract more
members and attain respect of other stakeholders.
6. As piracy is one of the notorious copyright infringing activities at the commercial
level and reduce revenue to CMOs and right-owners, CMOs must establish and
strengthen close collaboration with other IP enforcement agencies such as the
police, judiciary and well as custom officials
5.5. Promoting IP Training, Education and Research
5.5.1. Objectives of promoting IP Training, Education and Research
IP Training, Education and Research is an important target which most developing
countries would want to pursue in their National IP Strategies. IP Training, Education and
Research is key to the realization of IP awareness creation as well as capacity building
programs, that any country will want to implement. The objectives of selecting IP
Training and Education are two folds, namely, to produce the required IP professional
service providers and to impact basic knowledge of IP amongst potential generators
and user of IP
a) To produce the required IP professional service providers, as identified in the
baseline survey and included in the national IP strategy as targets. These cut through
four of the five elements of IP systems, as shown in the table below:

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S/N
1
2
3
4
5

Element of IP System
Support the generation of IP
Support the Protection of IP

IP professionals required
Technology transfer managers
IP Attorneys, IP Drafters and IP
Examiners
Support the commercialization of IP valuation, IP auding, IP licensing,
IP
IP marketing and negotiations
Support the enforcement of IP
IP enforcement officers; judges,
lawyers, police and custom officials
Support teaching of IP in IP lectures and teachers
universities, colleges and schools

b) To promote innovation and creativity, basic knowledge of IP is required amongst

potential IP generators and users. These include the youth, women inventors and
creators as well as women entrepreneurs, university students of law, science,
technology and business, small and medium scale enterprises including the
informal sector, lecturers and researchers in universities and research organizations
5.5.2. Key issues for consideration when developing a strategy for IP Training,
Education and Research
The following key strategic issues need to be considered in a strategy for IP Training,
Education and Research.
1.
2.
3.
4.
5.

The products
The curriculum
Intellectual Property Faculty
Teaching Materials
Mode of teaching

a) The Products
This refers to the IP professionals required by your country in order to implement the
national IP strategy and develop the IP system. The needs are established through the
baseline survey and the actual numbers fixed in the targets.
b) Selecting IP curriculum
There is a wide range of students that can benefit from IP training and education. These
include students of business, law, fine arts, engineering and technology, science and
journalism schools and faculties. Currently in most universities in developing countries,
the following three cases are most common. First, almost all business programs include
some overview of the basics of intellectual property. Second, basic law degree programs
offer intellectual property courses that give students a general understanding of the
philosophy and application of IP law. Third, specialized postgraduate (LL.M) programs
that typically provide a more comprehensive, specialized knowledge of the theory and
practice of IP law.
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Specialized IP programs deal with three aspects of IP practice

The nature and extent of rights that are available to protect IP
The process of obtaining and registering IP rights
The process of protecting and enforcing IP rights once acquired
Education programs in business focus on the first aspect to enable the students gain an
understanding of the ways in which protection of IP can enhance economic
competitiveness. Ideal undergraduate law degree programs should cover all the three
aspects to provide opportunities for students that intend to become IP practitioners.
Students who enters postgraduate specialized programs in IP, e.g. LL.M, will typically be
IP practitioners who are interested in deepening their understanding of the legal
foundation of IP law, and increase their skills in the acquisition and enforcement of IP
rights
c) Intellectual Property Faculty
Ideal situation is where one has full time IP lecturers and teachers. In developing country
this is a major challenge and can only be realize in medium and long term through the
established postgraduate programs in IP in your country or training abroad. In the short
time, use of practicing IP professionals (IP Attorneys, IP Examiners, Technology Transfer
Managers etc) as part-time lecturers, could be possible.
b) Teaching Materials and mode of teaching
Ideal situation is to develop teaching materials, with examples and cases drawn from
within or neighboring countries, thus taking care of the country culture, development
aspiration and needs. Available teaching materials may be adapted and modified. Use of
existing materials prepared by various IP agencies could be helpful.
5.5.3. Strategies for implementing IP Training, Education and Research in a
developing country
Starting from the point that in most developing countries, the teaching of IP is low,
resources are limited and faculty to teach IP are few, you may wish to consider a phaseimplementation strategy as proposed here below, depending on the current level of IP
training and education in your country.;
Phase one (short term)

provision of short courses and seminars in collaboration with WIPO and other IP
TACB providers
Sending staff abroad for specialized IP training through scholarship obtained from
the government, WIPO or any other development agencies

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Review and strengthen existing undergraduate IP education programs (e.g.

existing IP undergraduate programs in law , business as well as engineering
schools)
Review and strengthen existing postgraduate IP education programs (e.g. LL.M,
postgraduate diplomas)

Phase two (medium term)

Introduce new IP programs, where IP programs do not exist

o Introduce IP programs in undergraduate law school
o Introduce IP programs in undergraduate non-law schools
o Introduce postgraduate IP programs (LL.M, MIP) in at least one university
in the country
o Introduce postgraduate diploma IP programs in at least one university

Phase three (long tern)

o
o
o
o

Introduce IP programs in teachers training colleges

Introduce IP programs in technical colleges
Introduce IP programs in schools
Introduce IP Academies and research institute

5.5.4. Institutions for benchmarking IP Training, Education and Research.

The following training and research institutes are briefly discussed in order to for the
information of your country. For detailed information, you may wish to contact those
institutions you have selected for the purpose of benchmarking.
a.

United States of America and Canada

In the United States of America, one of the very first centers devoted exclusively to
research in intellectual property was associated with the Law School of the George
Washington University and was known as the Patent, Trademark and Copyright
Foundation. It subsequently became a part of the Franklin Pierce Law Center where it has
flourished with the support of the legal profession and industry.
Other intellectual property centers exist, though not exclusively for research. In North
America, there is the Center for Intellectual Property Law at the John Marshall Law
School, in Chicago, Illinois, which combines law school and postgraduate teaching of
intellectual property with research and dissemination of intellectual property information.

17

The Canadian Intellectual Property Institute, which was established in Hull, Canada, is
very closely linked with the governmental authorities responsible for intellectual property
matters.
Europe
In Belgium, a Center for Intellectual Property Law was set up at the Catholic University
of Louvain. In Sweden there is the Center for Intellectual Property and Media Law of the
Stockholm School of Economics. In the United Kingdom there is the Intellectual
Property Research Institute of Queen Mary and Westfield College at the University of
London. In France there is the Center for International Industrial Property Studies
(CEIPI) in Strasbourg, where WIPO, in cooperation with CEIPI, conducts each year a
training course on industrial property for official from developing countries. There is also
the Institut de recherch en propriete industrielle (IRPI) Henri-Desbois in Paris, the
Centre Universitaire denseignement et de recherch en matiere de propriete industrielle
(CUERPI) in Grenoble and the Centre Paul Roublier in Lyon.
Asia
In the Asia and Pacific Region, the China Intellectual Property Training Center (CIPTC),
set up in 1998, was sponsored by the State Intellectual Property Office of the Peoples
Republic of China, and a considerable number of Intellectual Property Centers were also
set up in Beijing, Shanghai and other cities of China. In India the Institute of Intellectual
Property Development (IIPD) was set up in January 1997 to undertake research and
provide training on intellectual property rights (IPRS). The Singapore Intellectual
Property Academy was launched in September 2002. As the focal point of education and
research in intellectual property in Singapore, the Academy provides introductory and
further training in areas ranging from basic legal understanding of intellectual property to
soft skills of negotiation, branding, know-how, business strategy and valuation of
intangible assets. In the Republic of Korea, the International Intellectual Property
Training Institute (IIPTI) was set up in Daeduk in 1991. The Intellectual Property
Training Center was set up in Malaysia in 1998. In Tokyo, Japan, are located the Japan
Institute of Invention and Innovation (JIII), as well as the Asia and Pacific Industrial
Property Centre (APIC).
Africa
In Africa, WIPO and ARIPO have started in 2008 a Masters in Intellectual Property
program in Africa University, Zimbabwe. The University of South Africa (UNISA) also
offers distance learning programs in intellectual property.
5.6.

Presence of an Innovation system

5.6.1 Introduction
The role of the government is to ensure the basic ingredients are in place for an
innovative economy the skilled people, the basic research, the economic and regulatory

18

framework, and the fiscal policies that both enable innovation and reward successful
innovators. In addition, the government can increase the likelihood of innovation success
by nurturing local clusters of excellence and serving as a leading user of innovative
technologies and solutions. An innovation system links the research organizations in a
country with the government and the private sector, thus enhancing the generation,
protection and commercial exploitation of intellectual property rights. To establish an
innovation system, a country must come up with a policy or law establishing it and to
explain, amongst others, the operation, funding, management and administration of such
a system and then implementing.
5.6.2 Components of an innovation system
To establish working innovation systems countries must first of all develop an innovation
action plan. Australia has one of the best innovation systems and the action plan is
equally comprehensive capturing the key elements of an innovation system which
include;
i.
Establishment, support and promotion of entrepreneurial firms and
innovative workplaces - competing on innovation and knowledge is decisive to
successful business performance for firms and to sustainable prosperity for
nations. To achieve these countries should deftly enhance the opportunities and
environment for business enterprises to innovate. This is intended to strengthen
innovation at the point where business enterprises and workplaces engage with
their markets and customers.
ii.

Identification, training and capacity development of talent pool/human

capital. High quality human capital is critical to innovation. Equipping our people
with the skills to innovate is essential, not only for the generation and application
of new knowledge, but also to use and adapt the knowledge produced elsewhere.
Building high quality human capital requires attention at all levels of education:
from early childhood education and schooling, through vocational education and
training and higher education, and into the workplace.

iii.

Information flows, market design and freedoms to innovate - Markets in

which people compete for private gain can only come into existence against a
backdrop of shared practices and expectations. Because these rules of the game
are a public good, governments are unsurprisingly involved in their provision and
enforcement. Often the most efficient and innovative solution to an emerging
problem is to develop a market as Australia and other countries are doing with
emissions trading. Governments can improve information flows and support
innovation and economic efficiency by encouraging disclosure, assisting markets
for reputation to develop, and by ensuring that the information and other content
that they fund is freely available to maximise its use and the value that others can
add to it.

iv.

Research capability and platforms the ability to generate strong productivity

gains requires that we perform nationally important research and that we
successfully adopt and adapt 98 percent of innovative ideas that are generated in
the rest of the world. There is therefore great need for an urgent restoration of

19

public funding levels for research in universities and government research

agencies. There is also need for the adoption of full funding for the costs of
research at universities and increased funding for universities and government
research agencies A strong and sustainable public research sector requires
universities to be providers of research, not investors in research. Currently
research in universities in most countries is not fully funded and so it is typically
subsidized from universities other revenue streams, with the upshot of leaving it
subject to the uncertainties of international markets.
v.

Market facing innovation programs - Firms and people are fundamental to

successful innovation. Governments have an important and strategic role to play
in facilitating innovation where it is confident, firstly, that there are structural
impediments to markets doing the work and, secondly, that government
involvement will generate more benefits in addressing these problems than it will
generate in collateral costs. This can be achieved through the provision of direct
market facing programs to support innovative firms life. The current suite of
government market facing program assistance should be designed to focus on;
Building the capacity of firms to absorb and incorporate new knowledge.
Facilitating collaboration especially between firms and universities and publicly
funded research agencies; and
Improving capital market development.
To help firms build capacity to absorb and incorporate new knowledge, a new program to
assist innovative firms in the high risk early stages of proof-of-concept and development
is required, together with an expansion of the Enterprise Connect program to build
innovation performance and capacity in firms, and to allow access by services firms.
Australia has established Cooperative Research Centres (CRC) which emphasizes the
value of collaboration for productivity and recommended the maintenance of a portfolio
of collaboration and linkage programs. In addition to the portfolio of collaboration
programs, there are plans to introduce an innovation voucher system to facilitate linkages
between small and medium sized enterprises and the research community. There is a
global and systemic funding gap in the availability of capital for early stage ventures and
thus the maintenance and extension of the Innovation Investment Fund and Pre-Seed
Fund programs supporting capital rising by early stage companies is essential. To further
strengthen the growth of high technology and innovative service-based firms, support
should be given to organizations of angel investors to help increase networking and the
Commercializing Emerging Technologies (COMET).
i.

Innovation within Government - One of the enduring advantages markets have

over governments is that innovation can come from anywhere. CEOs of large
companies and individuals running their own businesses are each free to improve
what they do, and if they lower costs and/or better satisfy consumers, they have a
good chance of being successful. With many policy innovations to their credit,
governments have typically performed well at engineering top down innovation.
But at the coal face they have been less good at harnessing the insights of
officials further down the chain of command and consumers of government
services. There is a suite of low cost measures to inculcate a culture of innovation

20

in our public sector from the bottom up. They include: A body to operate as; an
advocate for those within the public or private sectors who seek to innovate but
who are stymied by government culture, practices, structures, or regulation, a
source of funds and skills for the development of innovative approaches to public
policy and/or service delivery, the running of randomized policy trials and
government tendering that maximizes the scope for innovation in supply of goods
and services to government. Encouraging a virtuous circle of innovation,
experimentation and evaluation amongst the states and territories, which will help
us learn what works and what does not.
ii.

iii.

National Innovation Priorities it is critical to identify a set of National

Innovation Priorities to complement the broad National Research Priorities
already in effect in our countries. There are two areas of classification of these
priorities; areas under the direct control of the public sector; and areas whereby
public innovation could spillover into complementary private sector innovative
efforts. In terms of the public sector priorities the following areas may be
outlined: agricultural and food security, climate change mitigation and adaptation,
population health, solutions in tropical environments, and applications to utilize
broadband infrastructure (especially in health, education and public data access).
In terms of stimulating complementary private sector innovation, the following
areas deserve attention: resource industries, space and astronomy, finance and risk
management, and marine industries. To manage and coordinate these priorities
with those for research in public innovation programs, Australia has proposed
National Innovation Council to be charged with ongoing evaluation and
identification of synergies across programs.
Institutional alignment - Proper institutional framework is required to enhance
leadership and improve coordination across the innovation system. Such a
framework needs to span ministerial and jurisdictional boundaries and encompass
a broad range of policy areas. It needs to focus on coordination without
centralization, due to the importance of maintaining specialized roles and
functions across the system. To achieve the coherence, flexibility and
responsiveness necessary for effective innovation policy, the system requires a
'central brain'.

Benchmarking activities within the innovation system may include;

i.

Innovation award system - Awards form an integral part of an innovation system

and can both encourage and raise awareness of innovative practices among
research organizations and businesses. Presenting awards at important events,
such as those organized by government agencies and industry practitioners can
go a long way in strengthening establishing a strong innovation system. Examples
of Innovation awards include; the Hungarian Innovation Grand Prize, organized
by the Chamber of Commerce and Industry of Hungary, Mohammed bin Rashid
Al Maktoum Business Award, organized by the Chamber of Commerce and
Industry, Dubai, the Golden Kuna Innovation Award presented by the Croatian
Chamber of Economy.

21

ii.

iii.

iv.

v.

Innovation forums and market places - Innovation fairs bring together the
different stakeholders necessary to support innovation and can be an important
catalyst and networking opportunity. Such fairs or fora are may be organized by
government agencies, or industry organizations have partnered with such agencies
to organize these events. These fora also provide a marketplace for innovations
and thus spurring innovation. Examples of innovation forums and market places
include; Foro de Innovacin de las Amricas organized by the national agency
of research and innovation of Uruguay, ANII (Agencia Nacional de Investigacin
e Innovacin), the Mongolian National Chamber of Commerce and Industry (in
collaboration with various institutions) annual exhibition, Inventions and Utility
Models , Knowledge Innovation Market by the Barcelona Chamber of
Commerce, Hamburg Chamber of Commerce and the Office of Science and
Research of the Free and Hanseatic City of Hamburg technology data base.
Reports/studies - Collating, analyzing and publishing information on innovation
trends help companies to benchmark their performance and to keep abreast of
developments. This can also raise the profile of industry and research
organizations and establish them as references in the field. Examples of reports
include; The Innovation Centre of Bizkaia, (Barrixe), linked to the Chamber of
Commerce of Bilbao, continually monitors levels of innovation within the region
and tracks trends in innovative sectors. The centre informs members about
successful experiences, programmes and potential sources of aid at the
community, regional and national levels, The Association of Chambers of
Commerce and Industry of Germany (ACCIA) releases an annual report on the
state of innovation in German firms, with information on the different activities
performed in the field and on how receptive the target audiences are to such
innovation, The Croatian Chamber of Economy publishes The innovation
environment of Croatia with the same objectives as ACCIA.
Educational activities - Training is one of the most effective ways to implement
cultural change within the workplace. Educational courses and modules can be
used to train students on how to carry out innovation on a continuing basis.
However, educational activities are time and resource intensive and require a
training infrastructure, either internal or through partnerships with educational
institutions, as well as resources for training trainers. Industry and research
organizations may consider options for procuring public funding for such
activities.
Innovation support to individual companies - Innovation support services aim
to analyze the innovation potential of individual companies and to help them
adopt an integrated, methodical approach to innovation. Providing such advice
requires highly-trained specialists in the modern trends towards dynamic,
interdisciplinary, integrated and sustained innovation. IPR-Helpdesk is a perfect
example of innovation support: The main objective of the IPR-Helpdesk is to
assist current and potential participants in Community-funded research and
technological development projects, as well as innovation projects on IP matters.
While focused on the European region, the information provided can generally
assist industry and research organizations through detailed information on its
website, a helpline, online courses, and an IPR Bulletin.

22

5.7.
Presence of Science, Technology and Innovation Policy
5.7.1 Introduction
The 21st century can be characterized best as a knowledge and information era in which
creative knowledge and information constitute competitiveness. Innovation is discovering
new ways of creating value. It is the process through which new economic and social
benefits are extracted from knowledge. Through innovation, knowledge is applied to the
development of new products and services or to new ways of designing or marketing an
existing product or service. The term innovation refers to both the creative process of
applying knowledge and the outcome of that process. Innovation can be promoted
systematically across the economy as part of a deliberate strategy to improve national
productivity growth. The conscious promotion of innovation has become an important
focus of economic and social policy. Innovation does not happen merely by chance, but
is a response to economic incentives incentives that can be significantly affected by
government policy. Governments can be most effective at promoting innovation by not
trying to create innovation directly. Rather, effective economic, fiscal, and management
policies will result in innovation as a by-product. A science, technology and innovation
policy would address these issues
5.7.2 Objectives of STIP
The key objectives of STIP include:
i.
Establish an institutional framework, as well as an organizational, human and
financial structure capable of leading the development of science, technology and
innovation - Concentrate in two areas where the functions of foresight,
intelligence and strategic planning and evaluation of STI policies, on the one
hand, and financing and execution of STI programmes.
ii.
Design a mix of STI policies and programmes which, combined with economic
policy, will strengthen general STI capacities and the development of STI in a
selected number of strategic sectors and technologies.
Identify priority subsectors and technologies of strategic importance for the
economy and society, in which active policies on strengthening technological
capacity and innovation should focus.
Accompany these policies by others of a more general character which establish
the essential conditions for the development of STI, acting on both the supply and
the demand side.
Progressively and steadily increase the financing of STI activities and consider
the establishment of incentives to promote private investment in STI. For
example, consider the establishment of fiscal incentives for investing in R&D.
Develop a science, technology and innovation system which allows the design,
monitoring and evaluation of STI policies. For example, promote the elaboration
of a national innovation surveys, the systematic collection of STI data and the
development of capacities to process and analyze this information.

23

5.7.3 Benchmarking features for STIP

The key benchmarking features for STIP include:
Current pool of S&T personnel;
Investment in human resources training and development;
Demand for knowledge by the private sector;
Institutional knowledge assets;
Enabling environment;
Functioning S&T infrastructures;
Challenges and opportunities;
Socio- economic features and the technological status of a nation.
5.8.
Funding by government of R&D as a percent of the GDP
5.8.1 Introduction
Currently most developing countries are spending less than 0.5 percent of the GDP on
R&D. Yet the number of IPRs generated depends on the number of R&D activities which
in turn depends on the level of funding. Consequently R&D funding by the government
as a percentage of the GDP is an indicator of the capacity of a country to generate IPRs.
Some IP Strategies or Science Technology and Innovation Strategy would include
funding of R&D by the government in their strategies. As the level of industrialization
increases, so is the funding of R&D by industries.
Public policy can play an important role in orienting innovation efforts so that they help
address domestic and global challenges. Government R&D budgets (GBAORD) -provide
an indication of the relative importance of various socio-economic objectives, such as
defense, health and the environment, in public R&D spending. In 2009, governments
across the OECD invested the equivalent of nearly 0.75% of GDP in direct funding of
R&D activities. R&D -budgets as a percentage of GDP are largest in the United States,
followed by Finland, Iceland, Portugal and Korea, ranging from nearly 0.2% to 1.2%. In
most countries, this indicator is up relative to pre-recession levels, reflecting both the use
of stimulus packages to support R&D and the drop in GDP growth rates.
5.8.2 Importance of Government Funding for R&D

5.8.3 Key result indicators of Government funding for R&D

Invention disclosures
Patent applications
Inventions patented/protected
New/active licenses and options
Income/revenue from commercialization
Spin-off companies and start-ups created
5.9.
IP Information Centers
5.9.1 Introduction
24

Patent documentation is a powerful tool that can be used to support R&D activities as
well as product development by industries including SMEs. The establishment of IP
Information Service Centers is an important strategy for these countries. In the UK a
recent Royal Society report, The Scientific Century, places science and innovation at
the heart of the UKs long-term strategy for economic growth. However, it has become
clear that the leisurely translation of scientific discoveries into new industries has been
replaced by a race between nations to take advantage of these discoveries and translate
them into economic success stories before others do so.
Its is therefore evident that there is a critical gap between research findings and their
subsequent development into commercial propositions that can attract venture capital
investment or be licensed. This gap can only be closed by making new technologies
investment ready. Therefore, governments must get serious about creating knowledgeeconomies, they must continue to invest in, and support, research excellence; ensure
they support areas of industry which have the ability and absorptive capacity to capture a
significant share of high value activity; and close the gap between universities and
industry through a translational infrastructure to provide a business-focused capacity
and capability that bridges research and technology commercialization. Other countries
benefit greatly from a translational infrastructure that bridges this gap for example, the
Fraunhofer Gesellschaft in Germany, ITRI in Taiwan, ETRI in South Korea, and TNO in
the Netherlands.
5.9.2 Roles of IP information centers
The breadth of the roles of the IP information centers can be broadly summarized to
include:
undertaking basic research;
carrying out applied research in the innovation chain between university generated
initial discovery and industrial development to realize its commercial potential;
enabling SMEs to innovate though provision of knowledge, equipment and applied
research;
providing technical and commercialization services to large and small companies; and
developing a highly skilled workforce.
5.9.3 Some IP Information center models
France identifying that its internationally acclaimed research base was not producing
breakthrough innovations in new technologies and that there was little collaboration
between sectors and weak links between the research system and industry. The network
of Carnot Institutes was set up from 2006 to address this gap.
Operating 3 to 10 years ahead of industrial needs and to foster the development of the
local industrial base through the creation of spin-out companies, promoting R&D
collaboration and developing technology skills with business for the Inter-University
Micro Electronics Centre (IMEC) in Belgium; and
Facilitating the development of the semiconductor industry in Taiwan, as universities
were not considered a suitable environment for commercializing technologies, by
establishing the Industrial Technology Research Institute (ITRI)
5.9.4 Funding for IP information centers

25

Both the level and type of funding for IP information centers varies significantly between
countries. However, the sources of funding can be broadly categorized as:
Core funding from national and regional government. While this funding is not always
linked to specific activities or outcomes, a performance management framework is often
in place where they receive this investment;
Research grants and contracts from public bodies, in most instances won on a
competitive basis; and
Research contracts from the private sector, usually competitively tendered.

5.10. Current scope of legislation governing IP rights

These indicators will measure the extent to which IP laws are developed in a country. It
will measure the presence or absence of laws covering the following IPRs;
1.
Industrial property (patent, utility model, industrial design, trade
and service marks, geographical indications, integrated circuit and trade
secrets)
Most countries have separate laws governing the different components of
Industrial property. In developed countries there are several pieces of
legislation to govern specific aspects of Industrial property. E.g in Singapore
there is a patents Act with separate Rules and regulation, the trademark act of
Singapore also cover extensively border enforcement measures as well as
international registration rules and measures. The same applies for registered
designs and plant varieties
2.
Copyrights Singapore has one of the most elaborate copyright
protection system under their copyright act which involves legislation on
international organizations, international protection, records royalty system,
border enforcement measures, copyright tribunal, and copyright for network
service providers and excluded works.
3.
Plant breeders rights - The evolution of PBR protection system has to
respond to changing needs of today, Benchmarking in PBR protection is about
the effective collection of royalties from such seed which is improving in
countries like France but non-existent in Italy. In the USA this is not done
either. The attempt to reduce cosmetic breeding and securing rights for
practical breeders when their varieties are used in transformation is also
another indicator. Presence of a straightforward protection, which requires
little cost for legal counsel to implement (compared to the patent system) is
also a critical indicator for benchmarking for PBR legislation.

26

4.

Traditional knowledge and genetic resources Different countries have

different methodology for protection of traditional Knowledge and genetic
resources. Countries such as Bolivia, Ecuador and Colombia have made
constitutional provisions to protect TK and GRs. Australia has a
comprehensive Biodiversity protection legislation that protects TK and GRs.
some of the benchmarking issues in TK and GRs include: the broad national
interests and/or concerns with respect to protection of traditional knowledge,
folklore and biodiversity?, activities that are currently under way in the
country that have led or will lead to the definition of national positions (e.g. in
international rule making) with respect to each?, the specific issues that are of
particular domestic concern or interest (e.g. basmati rice, Maldives Tuna,
traditional textiles, Geographical Indications)? And the key stakeholders with
respect to each issue?

5.11. Current coverage of legislation governing IP rights

These indicators measure whether or not the existing national IP laws comply with the
minimum requirements for TRIPs. This is currently a problem with some developing
countries including LDC that have not revised their IP laws to comply with TRIPs.
Benchmarking will look at the extent of commitment to the countries obligations under
TRIPS. Most countries already have their laws into compliance with the TRIPS
agreement but there are issues of technical and financial assistance that these countries
need to ensure full compliance. Another aspect of benchmarking is about how far is the
process for developing IPR legislation, regulations and procedures (e.g. are discussion
papers prepared, are stakeholders solicited for input, etc.)
5.12 Accenting to international treaties and conventions
5.12.1 Introduction
There are a number of international treaties which impact on a countrys IP System. Most
of these are administered by WIPO. The decision to accede to a treaty must be done in
the best interest of a country and therefore requires national consultations. Some
countries are now including accession to specific treaties, convention or agreements in
their national IP strategies. The accession to these treaties is a direct measure of the level
of development of IP system to conform to international standards.
5.12.2 Accession to WIPO administered Treaties and conventions
Accession to treaties and convention administered by WIPO is effected by the deposit of
an instrument of accession with the Director General of WIPO, as provided in Article 21.
The Conventions and treaties enter into force, with respect to a country so adhering, three
months after the accession has been notified by the Director General of WIPO to all
Governments of the member countries. Accession therefore needs only unilateral action
by the interested country and does not require any decision by the competent bodies of
the Union.

27

5.12.2 Benchmarking indicators

Do the international agreements on intellectual property interfere unduly with the
flourishing of national legal cultures;
The Link between International agreements on intellectual property and trade and
taxation policies of the countries;
The extent to which international Intellectual property treaties and conventions
provide incentives for innovation and appropriate protection of brand
identification;
5.13 Unfair competition and anti trust laws
5.13.1 Introduction
All countries that have established market economy systems have devised some kind of
safeguard against unfair business practices. All member states of the Paris Convention
must provide, at least on the basis of existing general legislation, effective safeguard
against all acts contrary to honest trade practices. These are acts which are likely to cause
confusion, mislead the public and acts of discrediting a competitor. Unfair competition
and anti trust laws are to ensure that competition is carried out in an honest manner. Anti
trust laws is aimed at ensuring that the society benefits from the protection of intellectual
property rights by providing a balance between the rights of the creators and the benefits
to the society.
5.13.2 Objectives/rationale for unfair competition and anti-trust laws
5.13.3 Critical components for unfair competition and anti-trust laws

5.14

Policies and regulation to enhance use of flexibilities in TRIPS

Furthermore some countries are not having in place national policies and regulations to
enable a country to use legal options and flexibilities available in the TRIPS such as
compulsory licensing and parallel importation. The areas that are considered within the
TRIPS flexibilities are:
Transitional periods - in Asia Myanmar is perhaps the only country that has yet to
put in place a patent protection system. Bangladesh is also another LDC that is
not yet clear whether it has enforced its provisions. Cambodia appears to be the
only country that has incorporated the 2016 extension into its patent law to take
advantage of this flexibility
Compulsory licensing most countries have some form of compulsory licensing
in their patent laws Sri Lanka is said to not clear on this aspect. In the recent post
Doha years there have been a number of Compulsory licensing cases being

28

5.15

granted on grounds of Public health and access to medicines. Zimbabwe was the
first country to invoke this provision in 2002 to procure Anti-retroviral medicines.
Zambia and Mozambique also followed suit in 2004.
Public, noncommercial use of patents the US system under section 28USC 1498
is a good example to illustrate how government may use patents or authorize a
third party to use patents for virtually any public use. Under this statute the
government does not have to seek license or negotiate for the use of patent or
copyright. The patent holder is entitled to compensation, but may not resort to
injunctive relief to prevent usage by the government. The government may only
be held liable to the patent owner for payment of the reasonable and entire
compensation for its non-authorized use of the patent. The UK also applies a
similar approach under the Crown use provision.
Parallel importation Exceptions to patent rights
Exemptions from patentability
Limits on data protection
IP Tribunals

This refers to having in place intellectual property tribunals that effectively and
efficiently handles disputes arising from application and grants of intellectual property
rights.
5.15.1 functions of IP tribunals

5.15.2 Structure and Funding for IP tribunals

5.15.3 Benchmarking models for IP tribunals

5.16. Status of National IP Offices

5.16.1 Introduction
IP Offices exists in various forms. Some are sections within a department in a ministry;
some are departments within ministries, whereas some are semi-autonomous or fully
autonomous organizations. The degree of autonomy shows the extent of attention and
focus a country has given to the promotion of intellectual property

29

5.16.2 Functions of national IP offices

5.16.3 Components of national IP offices

5.16.4 Structure and funding for national Ip offices

5.16.5 Services offered by National IP Offices

Traditionally the key function of an IP office has been processing of application and
giving grants for rights. Today a modern IP Office is expected to do more than
protections and include services such as;
Promoting of use of IP by SMEs
Training
Outreach programs
Registration and certification of IP professionals
Promotion of IP associations
Promotion of commercialization of IP
5.18. Formal and Substantive Examination
5.18.1 Introduction
Some IP offices only do formal examination and outsource substantive examination to
other offices including regional IP offices. As the number of application grow, a country
may consider starting own substantive processing. The procedure for the examination of
a patent application is divided into formal examination and substantive examination.
Patent applications are examined in the order of their filing date. Only in exceptional
cases, the examination of a patent application may be accelerated, i.e. for the purpose of
judicial or other proceeding, when it is deemed necessary, in compliance with other
regulations, to carry out an expedited registration within a certain time limit and further
to a special request of the applicant accompanied by the statutory fee.
5.18.2 Formal examination
In the procedure for the formal examination, the IP offices examine:
Whether the application contains all of the elements stipulated by law or
regulations and whether such elements meet all of the prescribed conditions with
respect to correctness;
whether there is an indication of the inventor in the application or whether there is
the inventor declaration to the effect that he does not wish to be indicated in the
application;

30

Whether a separate application is filed for each invention if the application does
not meet the conditions of the unity of invention at first view.

5.18.3 Substantive examination

If the subject-matter of an application is a utility patent, the IP office also examines the
invention as to the conditions of novelty, inventive step and susceptibility of industrial
application. If, in the course of the examination of the conditions indicated herein, the IP
office establishes that the application does not meet all such conditions, the IP office
invites the applicant by a notice in writing to remedy the deficiencies in the application,
within the time limit which may not be longer than 90 days from the day of the delivery
of the notice. Following the reasoned request of the applicant, the IP office shall extend
the time limit for remedying the deficiencies, but for the period not exceeding 90 days
from the expiration of the time limit. The priority of the first application shall be granted
to all remedied applications. If the applicant fails to comply with the invitation of the IP
office within the prescribed time limit or if he fails to pay the fee and procedural charges
for remedying the application, such an application shall be rejected by a decision.
If a patent application fulfills all of the statutory conditions and if the fees and procedural
charges are paid for its publication, the Institute shall pass a decision on the publication
of such application in the IP office Gazette. The application is published 18 months after
the filing date or the date of the priority of the first application claimed. At the request of
the applicant, accompanied by the statutory fee and procedural charges, the application
may be published at an earlier time, but not earlier than 90 days from the date of its filing
with the IP office. The publication of an application comprises the publication of
bibliographic data, the abstract and the characteristic drawing. Once published, the
application becomes available to the public. The unpublished application may be viewed
solely based on consent in writing from the applicant.
5.18.3 Benchmarking indicators for Formal and substantive examination.
Ease of making IP applications here we look at the application forms and assess
how easy is it for a person who is not an expert to file IPR application.
In developed countries such as the US has introduced Prioritized Examination
("PE") and Accelerated Examination (AE) of patent applications. The PE
program in the US allows an applicant to pay an additional $4800 fee ($2800 for
small entities) to place an application on a prioritized track where the patent office
has a goal to provide final disposition of the application (i.e., final rejection or
allowance) within a year on average. Interestingly, the AIA retains the Accelerated
Examination ("AE") program established on August 26, 2006. While the PE
program prioritizes an application for prosecution ahead of standard filings, the
AE program prioritizes and accelerates the actual prosecution of the application.
The prioritized examination and accelerated examination programs co-exist as of
September 26, 2011.
The number of successful and rejected applications by the national IP office per
year.

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5.19. Number of IP applications filed and granted

In most developing countries, the number of applications for patents and utility models
from foreign applicants is much higher than those from local applicants. Furthermore, the
quality of drafting is also comparable lower than those from outside. Most countries are
therefore taking serious the low level of local applications for patents and utility model as
an issue that needs to be addressed in a national IP strategy
There are three indicators for consideration under this section:
1. In most developing countries, the number of IP applications as well as grant are
extremely low compared to those of developed countries
2. Secondly, amongst the applications received and IP rights granted by developing
countries, the number of local applications are lower than those from foreign
applicants
3. Thirdly, the success rate of applications from locals, defined as the ratio of the
number of IP grants to the number of IP applications in a given period, is very low
compared to those from foreign applicant. This is mainly due to low quality of IP
drafting.
5.20. Automation of IP registration processes
A major handicap of most National IP Offices is the low efficiency of processing IP
Applications, due to manual operations and procedures. This has led to long processing
time and backlog. In most national IP audit, a major complain of the customers is the
issue of slow processing of IP applications and bureaucracy. Those National IP Offices,
which have automated their IP processes and procedures, have reported tremendous
improvement ins service delivery and income. Therefore those National IP Offices which
have not done so may wish to give it priority in their national IP strategy
5.21.

Capacity for the National IP Offices to offer IP Services to SMEs

Most developing countries give much attention to SMEs, which are seen as the engines of
economic growth and industrialization. SMEs have special IP needs to grow their
companies and become more competitive. National IP Offices are therefore being
encouraged to come up with programs and services targeting SMEs, to enhance the
generation, protection and commercial utilization of IP Assets by SMEs.
5.22.

Human Resources for IP Offices

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Key challenge for most National IP Offices in developing countries is lack of adequate IP
experts. As IP awareness increases and the need for IP services expand so will be the
requirement to expand the services offered by the IP Offices. This will require more
qualified staff. Furthermore the successful implementation of any national IP strategy will
require that adequate human resource is available. Therefore, strategies to build and
retain the necessary human resources may be part and parcel of any national IP strategy
5.23.

Creation of IP Awareness and Outreach Programs

An important aspect of any national IP strategy is the effort given to create adequate IP
awareness. To this end, some countries are initiating outreach programs, promoting the
establishment of IP focal points in universities and R&D institutions and other strategies
to increase IP awareness. Therefore, National IP Offices that do not have IP Outreach
Programs may wish to establish such in their IP strategy. Whereas those countries that do
have outreach programs already may want to strengthen them by expanding the scope
and services offered
5.24. Baseline data to support the promotion of the copyright industries
5.24.1 Introduction
Copyright industries can contribute significantly to the economy of most developing
countries if given proper support. This is due to the richness of these countries in terms of
copyrightable material. Yet copyright has not yet secured the right attention of the
decision makers in developing countries. This is perhaps because there are no data
available that can be used to sensitize decision makers on the important role of copyright
to the economy. Few Latin American countries have done such studies and are now
having data on which to develop national strategies for the copyright sector. Many other
developing countries may wish to undertake such studies as away of promoting their
copyright industries
5.24.2 Objectives of the Baseline studies
The objectives of the studies are:
to quantify the economic contribution of copyright and the related rights
industries in the selected countries to Gross Domestic Product (GDP),
employment, and trade,
to examine selected copyright-based industries to understand the role of copyright
in each,
to propose policy and institutional interventions to encourage the growth and
development of copyright-based industries in the country.
The studies focus on GDP, employment, and trade as the main indicators of economic
importance, inasmuch as growth and productivity are conventionally ascertained in these
terms. Use of these indicators also enables comparisons with other industries and with
other countries that will in turn help refine the methodology.

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5.24.3 Classification of copyright industries

The WIPO Guide separates copyright-based industries into four groups: To identify
copyright industries, the Guide uses the International Standard Industrial Classification
(ISIC) system, which describes and classifies all possible types of industries in a country,
assigning codes to each for easy reference
Core copyright-based industries, defined as those that are wholly engaged in the
creation, production and manufacture, performance, broadcast, communication and
exhibition, or distribution and sales of works and other protected subject matter.
Interdependent copyright-based industries are industries that are engaged in the
production, manufacture and sale of equipment whose function is wholly or primarily to
facilitate the creation, production or use of works and other protected subject matter.
Partial copyright-based industries are industries in which a portion of their activity is
related to works and other protected subject matter and may involve creation, production
and manufacture, performance, broadcast, communication and exhibition or distribution
and sales.
Non-dedicated support industries are industries in which a portion of their activity is
related to facilitating broadcast, communication, distribution or sales of works and other
protected subject matter, and whose activities have not been included in the core
copyright industries.
Countries such as Philippine have adopted the ISIC through the Philippine Statistical
System as the Philippine Standard Industrial Classification (PSIC) scheme (1994
version), the most disaggregated descriptions of which are at the 5-digit level. The
definitions of some sectors were modified to suit the Philippine environment.
5.25. Financing commercialization of IP assets
a) Securitization of IP Assets
Intellectual property rich companies should be aware of alternative strategies for raising
capital separate from traditional loan or equity financing. One such alternative strategy
involves monetization of an owners IP assets through a revenue or royalty acquisition
transaction. In this case, the IP holder sells to an investor a royalty or revenue stream it
currently has that is derived from or based on its intellectual property for cash price
deemed reasonable by both parties. The royalty or revenue acquisition stream could be,
for example, a royalty to be received by the IP holder from the licensing of its patents or
other intellectual property or a revenue stream based on sales of products covered by the
IP holders intellectual property. In each case, the IP holder wins in this transaction by
achieving some present day liquidity on its intellectual property royalty stream and the
investor wins by purchasing the revenue stream at a discounted price. Moreover, the IP
holder generally retains the ownership of the underlying IP asset and the right to exploit
such assets in any field of use not sold as part of the revenue acquisition transaction.
b) Use of IP Assets as collateral

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Most financial institutions are not yet accepting AP assets as collateral; neither is IP
assets considered by banks during the evaluation of the business plans from inventors and
enterprises. Consequently, inventors seeking financial support for the commercialization
of their inventions must look for other forms of security in order to secure business credit
from financial institutions. Programs that can make financial institutions to partner with
government in supporting inventors are desirable.
c) Consideration of IP asset by financial institutions
When evaluating the business plans for inventors and SMEs, most financial institutions
are not yet considering the value of IP assets of the applicants. If this situation changes,
many inventors may access finances for the commercialization of their IP assets
d) Other financing mechanisms
This is the presence of specialized financing institutions such as funding for prototype
development, venture capitalists, business angels and industrial development bank.
5.26. Licensing of IP Assets
Licensing is the most preferred route for commercialization of IP assets. The inventing
institution enters into a licensing agreement with another company, which will
commercialize the invention. The inventing institution would in return receive royalties.
The advantage here is that the license can be given to a number of entrepreneurs. Many
entrepreneurs today are manufacturing under license. Licensing enables the company to
gain profits from the IP asset with minimum risk and commitment. To enhance
commercial exploitation of IP rights through licensing, the following may be required
b.

Provisions in national IP laws that allows your country to authorise others

to exploit IPR in case of non use or non-commercialization of IP rights

c.

Provision in laws stipulating licensing procedures and licensing royalties

d.

National licensing agency

5.27. No of IP registered by local inventors commercialized

The number of IP Assets registered and commercialized by local inventors is a clear
measure of the efforts made by Member States to promote commercialization of locally
developed creations, inventions and innovations.
5.28. IP Audits Capacity for industries
5.28. Introduction
As a way of strategically managing IP for competitive advantage, many industries are
starting to develop IP strategies. This requires that companies undertake, now and then,
IP audit and develop IP strategies.
5.28. Objectives and Methodology for IP audits
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The usual objectives of an IP audit are to identify relevant IP, establish the ownership of
that IP, put in place procedures to manage the IP, and assist in the formulation and
execution of the companys IP policy. Of course, before any of these processes can begin,
the scope of the audit must be determined. In some cases, an audit might be done to
satisfy partner institutions or for external accreditation. Those commissioning the audit
must determine the objectives. A decision will have to be made about who gets the results
of the audit. It may be confined to the board, to partners, to management, or be made
available to the public.
The audit may be conducted through: online surveys of senior administrative and
research staff, follow-up interviews, by phone or in person, with those staff, analysis of
contracts, material transfer agreements (MTAs) and other documents held at
the central administration and analysis of relevant documents identified
through interviews.

5.29. IP Policies for industries

Industries, as the main consumers of IP assets need to have IP Policy and to establish a
framework for the management of IP assets. Such policy would address several pertinent
issues, such as funding for innovation, documentation, maintenance of IP registry, IP
protection, IP commercialization, safeguarding loss of IP to partners, collaborators and
business stakeholders, incentives for staff to innovate etc.
5.30. Infrastructure for commercialization of IP rights
a). Prototype development policies and facilities
Prototype development is the step between IPR grant and full commercialization. A
prototype enables an investor to see the potential of the invention to be put in particular
commercial usage. This function can be supported by a prototype development policy and
a facility for prototype development
b). Science, Technology and Industrial Parks
Most R&D institutions in developing countries are supported through government
funding. STI Parks allow the establishment of companies based on the R&D findings
from research institutions. Being in the vicinity of such organization the STI Parks
provide good infrastructure for commercialization of IPRs from RTOs.
c). Incubation Policy and Technology Incubators

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A part from STI Parks, most countries are now coming up with incubation policies to
support the establishment of Technology Incubators. In the incubator technology based
SMEs are supported to develop and grow through provision of services including
financial, legal, management, working space, etc. most countries may wish to have the
establishment of technology incubators as targets in their IP Strategy.
5.31. IP enforcement laws and regulations
IP enforcement laws provide guidelines for dispute resolution and prevention of IP
violation through civil, administrative and criminal procedures and remedies for
damages. For example some countries are coming up with anti counterfeit and anti
piracy laws. Where national IP enforcement laws exist, there is need to evaluate them to
establish if they include the following judicial and administrative procedures and
remedies:
Jurisdiction courts over IP infringement
IP holders have standing , can be represented and have mandatory appearance in
court to claim their civil rights
Judicial authority to order relevant parties to produce evidence
Means to identify and protect confidential information brought forward as
evidence
Remedies , e.g. injunctions and damage compensation, that may be ordered
There is authority to order infringer to inform the IP holder of the identity of third
persons involved in the infringement
Indemnification of defendants wrongly enjoined
Provision governing the length of proceedings
Provision governing the cost of proceedings
5.31. Border Measures
5.31.1 Introduction
To increase protection against counterfeiting and piracy some countries may need to
expand authorities and improve enforcement practices. Such as increase IP training to
Customs and Border Protection and Immigration Offices. Further more there is need to
increase required information sharing with right holders; improve recordation process;
measure and improve current enforcement tools; develop special scrutiny database to flag
suspect shipment; identify lowrisk shippers. Outlaw importation of any quantity of
counterfeit or pirated products including vial mail/courier services.
5.31.2 Customs authorities and Parallel imports
Most countries have already complied with the TRIPS regime in satisfying the minimum
standards of intellectual property protection, and are now looking at ways and means to
ensure a full proof enforcement mechanism. With a view to limit the adverse effects of
parallel imports. One of the ways to do this is to provide for a registration mechanism

37

with the Customs Authorities to legally intercept and restrict the intrusion of parallel
imports into the official and authorized channels of trade. .
The Customs Authorities should be empowered and authorized to intercept, seize and
confiscate goods found to be or suspected to be infringing intellectual property rights
registered and in-force in the country. Registration of the intellectual property right with
the Customs Authority will enable the Customs Authorities to store the IPR in their
electronic database which will be flashed across all entry points in the country. These
Rules are in addition to Intellectual Property laws and serve as an enforcement
mechanism at the points of entry into the country. The Rules give the custom officials the
authority to intercept, detain, confiscate and destroy the same even before such parallel
imports enter the ordinary circulation of trade.
The Customs Authorities should be empowered to suspend the clearance of such
infringing goods either on the basis of the registration appearing in the electronic
database or even suo motu in the interest of the trade and protection of intellectual
property rights. An intellectual property right owner today is therefore in a position to
minimize his losses and intercept any actual or potential loss by parallel imports or even
counterfeit goods, by a mere registration with the Customs Authority at a cost that is
negligible compared to the losses incurred.
5.31.2 Customs Laws and Border Protection Measures in India
In the present global scenario, which is indentured by increased international trade, India
has developed new Enforcement Rules that mark a significant achievement in the
evolution of border protection measures in India and alignment of Indian Customs and
IPR related legislation with global adjustment.
Further, considering Indias obligation as a WTO member to implement border measures
as envisaged in Articles 51 to 60 of TRIPS, Notification No. 47/2007-Cus. (N.T.), has
been issued, after which the Intellectual Property Rights (Imported Goods) Enforcement
Rules, 2007 (Enforcement Rules) were introduced in mid 2007.
The Enforcement Rules, which are of recent origin, have been modeled on the lines of the
legislation drafted by the Geneva-based World Customs Organization and seek to define
the role of the Indian Customs in combating IP rights (IPR) infringements at the
borders. It is noteworthy that while the mandatory obligations under Articles 51 to 60 of
the TRIPS dealing with border measures are restricted to Copyright and Trade Marks
infringement only, the Enforcement Rules deal with Patents, Designs and Geographical
Indications violations as well, in conformity with the best practices prevailing in certain
other countries, most notably within the European Union.
The Enforcement Rules have been made applicable only to goods of a commercial nature
and do not apply to goods of a non-commercial nature and goods contained in small
consignments for personal use. It is also pertinent to note that the present definition of the
term goods infringing intellectual property rights, which is the focal point of the

38

legislation, covers any goods which are made, reproduced, put into circulation or
otherwise used in breach of the intellectual property laws in India or outside India, which
is used without the consent of the rights holder or his authorized representative.
The Enforcement Rules, which provide for actions to be taken against goods infringing
IPR like prohibition/suspension in trading/ confiscation and disposal of such goods inter
alia, provide for:

The filing of a notice by the right holder;

Registration of said notice by the Customs;

A time limit for right holders to join proceedings;

A single point for registration of the notice filed by the right holder;

Adequate protection to the Customs for bona fide act;

Suo-motu action by the Customs in specified circumstances; and

Disposal of the confiscated goods.

Even in terms of the provisions of the Enforcement Rules, the determination of the fact as
to whether any particular consignment which has been imported violates any of the rights
of the rights holder would require to be done taking into account the provision of the
Parent Acts, namely the Copyright Act, 1957, the Trade Marks Act, 1999, the Patents Act,
1970, the Designs Act, 2000, and, the Geographical Indications Act, 1999. This would
necessarily entail a good working knowledge of such Acts by the concerned Customs
officials and specific subject expertise.
Japans Customs Tariff Law seeks to resolve this issue by enjoining their Patent Office to
assist Customs Officials in complex patent infringement cases. The above issue has also
been recognized by the Indian Customs authorities and the formation of a separate IPR
cell within each Customs House, which will deal with any action involving suspected
infringement of IPRs by any import has been mooted. In this context, note should
however be made of the provisions of the Patents Act, 1970, which provides that the
determination of the issue of infringement/non-infringement of a patent can only be made
by the District Court or High Court having jurisdiction.
5.33. IP courts
Most courts in developing countries have weak capacity to handle IP disputes. This is
because of lack of trained IP Judges and court prosecutors. Consequently IP Disputes take
very long duration before being determined. In some countries, there are no IP courts and

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IP issues are handled by commercial courts. To strengthen IP enforcement, some

countries are including the establishment of IP Courts in their IP Strategy.
5.34. Establishment of IP enforcement Agencies
In most countries, the IP enforcement is undertaken by several agencies scattered in
different ministries. In some countries this is working well whereas in others, the
coordination of enforcement is difficult. Therefore some countries are establishing IP
enforcement agencies to coordinate all the enforcement activities.
5.35. Public and consumer education and awareness

Public and consumer education and awareness: The public should be made
aware of the existence of IP enforcement system for the system to function
efficiently. Have educational campaigns at major entry and departure points.
Create and administer a nation-wide consumer awareness campaign reveling the
harms caused by counterfeiting and piracy.

Consumer education and awareness: A key role of enforcement is information

consumers of counterfeits and pirated products so that they can avoid them.

5.35. Training of enforcement officers

Training of IP Judges and Court Prosecutors: Empowerment of enforcement

officials through technical and legal training in international protection standards,
enforcement provisions, and dispute settlement mechanisms is required. Once an
IP Court is established, a country need to move further to ensure that qualified and
well trained IP Judges and prosecutors are available. For this to be achieved a
National IP Office must come up with programmes to build the capacity.

Training of customs officers: Trained custom officers help in the prevention of

counterfeits and pirated products from entering the channels of commerce.

Training of IP enforcement Police: Police officers are very effective in arresting

and prosecuting IP Violators. They should therefore be trained to identify IP
violation.

5.36. IP enforcement penalties

This refers to the level of infringement penalties that can deter infringement. In most
developing countries the penalties have been described as less punitive and therefore do
not usually attain the desired result of deterring infringement.
In Kenya, the fines for copyright infringement range from USD 1,000 to USD 5,000,
which is a paltry sum compared to the amount of losses that the IP owners incur. The jail
terms are equally lenient and thus copyright enforcement in Kenya has remained a

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pipedream despite having a fairly elaborate legislation and institutions to govern

copyright.

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