WIPO Methodology for developing IP Strategy - Benchmarking (simiyu).doc

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WIPO METHODOLOGY

FORDEVELOPING INTELLECTUAL

PROPERTY STRATEGY

BENCHMARKING INDICATORS

BY

Prof Tom P M Ogada,

TP I!!o"a#$o! a!d T%&'!o(og) Ma!ag%m%!# S%r"$&%*

DRAFT +

NAIROBI, FEBRUARY, -+

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CHAPTER FIVE

BENCHMARKING INDICATORS FOR NATIONAL

IP STRATEGY

./+/ I!#rod0&#$o!

The first step of developing a national IP strategy is to undertake a baseline survey toascertain the current status of the IP system in a country in order to identify the elementswhere the country’s IP system is strong and adequate and those elements where the IPsystem in weak and require strengthening or reinforcing.

This baseline survey tool has been provided by WIP to help member states to conduct anational IP audit. The tool consists of !" indicators presented under the following five

sections#

./+/ IP A1ar%!%** $! U!$"%r*$#$%*, R%*%ar&' I!*#$#0#$o!* a!d E!#%r2r$*%*

5.1.1. IP Awareness as a target indicator in a national IP strategic

$ecent studies have shown that the levels of IP awareness in most developing countriesare low or very low. In %&&!'%&&( several IP )udits were sponsored by WIP in selected)frican countries* and a preliminary report was presented in +arch %&&( in ,airobiduring a regional seminar that was organi-ed by WIP and the overnment of /enya. 1%

countries presented their findings* and in all* low IP awareness was identified as astrategic issue that needed to be addressed by the planned national IP strategies.0imilarly* a study undertaken in )0), 2ountries by WIP* established that thesecountries recogni-ed public awareness on IP as essential to IP asset management. +ost of the survey responses acknowledged that although the situation was improving* publicawareness on IP is still low or very low.

The low level of IP awareness has impact on the number of applications for IP in somecountries. Whereas reasonable innovative and inventive activities are taking placeuniversities and research organi-ations* these activities are not translated into IPapplications and protections. The same is true among the 0+s* which are involved in a

lot of creativity and inventiveness that could lead into patents* industrial designs or utilitymodels* but these remain unprotected. Whereas large companies appreciate the power of trademarks and branding* for marketing of goods and services* many 0+s still do not.The main reason for this scenario is the low level of IP awareness amongst theuniversities* research organi-ations and 0+s. This e3plains why most national IP0trategies consider IP )wareness as one of the key strategic issues for promoting thegeneration* protection and commercial utili-ation of IP.

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5.1.2. Benchmarking Strategies for enhancing IP Awareness

4ue to the importance of IP awareness to the development of IP systems* most countriesare coming up with strategies of increasing IP awareness. 5our country may wish toidentify such countries* study their programs and select a few countries for

benchmarking. In %&&"* the /orean Industrial Property Institute 6/IP7 published areport entitled /orea’s Invention Promotion )ctivities. This is briefly discussed here below for illustrating what the government of the republic of 0outh /orea had put in place to promote invention .

/IP identified the following four strategies for promotion of IP generation* which are briefly discussed here below#

1. 2ultivating creative young inventors.%. IP$ )cquisition campaign for 0+s.

". 0trengthening support for women invention activities

!. Promoting IP awareness in universities and research organi-ations

a. Cultivating creative young inventors

8nder this strategy the following three pro9ects were pursued:

• Promo#$!g I!"%!#$o! C(03*4 Invention clubs were established in selected

schools across the country to provide students and the public with opportunities toturn 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 theinventive activities of the members. /IP had a plan of having at least a club ineach of the 1;& regional education offices by end of %&&(.

• Promo#$!g I!"%!#$o! C(a**%*4 0ince 1<;&’s /IP had recommended that

elementary* middle and high schools* 61&*=&& in number7 introduce $!"%!#$o!

&(a**%* in the form of special activities ranging from performing practical skillsfor making inventions and creation to visiting various sites where invention aremade. /IP provided various support including training of the invention teachersand provision of teaching and study materials. >y end of %&&%* some (<!=schools were running invention classes.

• A!!0a( S#0d%!#* I!"%!#$o! E5'$3$#$o!4 /IP also introduced several events for

promoting students invention activities. f particular interest was the a!!0a(

*#0d%!#*6 $!"%!#$o! %5'$3$#$o!. Items created by students from elementaryschool* middle school* high school and university were e3hibited* irrespective of whether they have been patented or not. Pri-es were awarded to individuals andgroups. Pri-e winning inventions were displayed for the general public for ma9or

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local e3hibition whereas middle school pri-e winners could be admitted to collegewithout an entrance e3amination.

b. IPR Acquisition campaign for SMEs

8nder this strategy the following one pro9ect was pursued:

• IPR *%m$!ar* a!d IPR &o0r*%* for SME*# 0ince 1<<<* /IP has also been

conducting its IP$ acquisition campaign for 0+s. The campaign encourages0+s to invent new technologies and use them as core business assets. Thecampaign includes IPR *%m$!ar* a!d IPR &o0r*%* for SME*. In both programs*0+s 2s and employees responsible for technology development and IP$s aretargeted.

c. Strengthening support for women invention activities

8nder this strategy the following one pro9ect was pursued:

• Promo#$!g 1om%! $!"%!#$o! a&#$"$#$%*4 In %&&%* out of the %;?*1&! patent

applications* only ! @ were from women. $ecogni-ing the need to improve*/IP has formulated comprehensive measures to promote the invention activitiesof women. These include raising public awareness and interest in womenAsinvention activities* organi-ing symposium on e3emplary women inventions and promoting the establishment and development of /orean Women Inventors)ssociation.

. Promoting IP awareness in universities an research organi!ations

8nder this strategy the following three pro9ects were pursued:

• IPR #ra$!$!g for 2rof%**or*4 /IP also has another program called IPR

#ra$!$!g for #%&'!o(og) a!d %!g$!%%r$!g d%2ar#m%!#* which targets professorsof such departments to undertake basic IP$ awareness training. In turn* the professors upon completion of their training* promote IP$ interests in their departments.. 0ome ;& professors had attended this course.

• Coo2%ra#$o! agr%%m%!#* 1$#' 0!$"%r*$#$%* a!d r%*%ar&' $!*#$#0#%*4 /IP has

also focused attention on promoting inventiveness in universities and research

organi-ations. Birst to enhance interest of universities and research organi-ationsin IP$s and IP$ applications* /IP has established a system of cooperationwhere it signs &oo2%ra#$o! agr%%m%!#* with such universities on IP$ administration. 8nder these agreements* the parties agreed to undertake specificactivities to promote IP$ awareness and increase IP$ application.

• Promo#$o! of %m2(o)%% $!"%!#$o!4 Promotion of employee invention is another

key strategy of /IP. Past statistics show that about ;& @ of all inventions in

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/orea are employee invention and less than %& @ individual inventions. This prompted /IP to propose incentive and reward policies to encourage employeeinvention. /IP also organi-es national employee invention competitions* withthe winner getting presidential award.

.// I!#%((%&#0a( Pro2%r#) Po($&)

5.2.1. Introduction

Intellectual Property Policy is an important tool for promotion of the generation* protection and commerciali-ation of intellectual property in a university and $esearchrgani-ation. IP Policy provides the instrument* structure and framework that can promote the generation* protection and commerciali-ation of IP in an $T. It addresseskey issues including ownership of intellectual property rights: benefit sharing* strategiesfor commerciali-ation* management of privately sponsored research* collaborativeresearch and conflict of interests* amongst other things. The presence of IP policies in

universities and research organi-ations is therefore a strong indicator of the commitmentof a government to the promotion of generation* protection and commercial e3ploitationof intellectual property rights

Today most countries are recogni-ing the need of such policies. It has been the best practice in 80)* )ustralia* and most countries in uropean. 2ountries that have recentlyembraced IP policies include +alaysia* Capan* /enya* ,igeria* 0outh )frica* Philippinesand 2hina.

5.2.2. Guidelines for develoing Institutional IP Polic!

4ue to the growing importance of IP institutional policies* in %&&1* WIP prepared a booklet on DGuidelines for develoing IP Policies in African "niversities and #esearch

$rgani%ations& . )lthough the name suggests that the guideline was targeting )fricaninstitutions* the content is general and therefore the guideline has since found applicationin several developing countries and has been translated in Brench and 0panish. $ecently*a second one was prepared and is currently awaiting publication. It is entitled D'hoices

in develoing IP olicies in universities and research organi%ations& It discusses some1& issues that senior managers of universities and research organi-ations may wish toconsider 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 organi-ations. Therefore mostcountries today consider promoting the development of IP policies in their ,ational IP0trategies or 0cience* Technology and Innovation Policies.

5.2.(. Best Practices in develoing IP olicies

Today* several universities and research organi-ations have IP policies. Through a searchin the internet using search word D IP policies for universities and research institutionsE

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you can be able to access several institutional IP policies from which you can select a fewfor benchmarking. Brom the e3perience of the current authors* the following informationmay be useful for your team. It discusses best practices in developing institutional IP policies.

a. Some of the issues tom consider in an IP olic!

) review of most institutional IP policies has identified the following 1& issues thatmay need to be considered:

1. wnership of IP rights from public funded research pro9ects%. wnership of IP rights from private funded research pro9ects". +anagement of IP in collaborative research pro9ects!. 2ommerciali-ation of IP=. >enefit sharing(. $esearch procedures?. 4isclosing of IP

;. Billing and protection of IP<. 2onflict of interest1&. Infrastructure for IP management

b. )e! stakeholders to be considered in an IP Polic!

) review of most institutional IP policies has identified the following stakeholders thatmay need to be considered:

1. Inventor and co'researchers

%. Institutions". 0tudents!. Fisiting research fellows=. Inventor’s department or research group(. 2ollaborators?. 0ponsors;. Technology Transfer ffice<. overnment1&. Public

c. IP models

0ome countries have prepared model IP policies which universities and researchorgani-ations may adapt depending on their mission* research culture and agenda. Bor e3ample* the ,igerian ffice for Technology )ppropriation* ,T)P* has prepared amodel IP policy* which it has made available for institutions in ,igeria. This has madethe process of developing IP faster.

d. *ational olicies and guidelines

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implementation starts. The policy would clarify which office is responsible for implementation. Bor the e3ternal stakeholders* the launch communicates that theuniversity now has an instrument to enhance its collaboration with them.

5.2./. )e! decisions to be made b! the *ational IP Strateg!

Whereas* most of the issues listed in ".!.% are operational and handled at institutionallevel* at national level* the IP strategy should address the following questions#

1. Whether or not the promotion of the development of institutional IP policiesshould be a target in the national IP strategy

%. 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

". Whether or not* a model institutional IP policies should be prepared at a nationallevel for adaptation by individual universities and research organi-ations

!. The role of national IP offices in supporting the development of institutional IP policies

=. Binancial support from the government to universities and research organi-ationfor developing IP policies.

(. Whether technical assistance would be required by your country from IP relatedorgani-ations such as WIP.

?. Whether WIP guidelines for developing institutional IP policies should be usedfor benchmarking.

./7/ E*#a3($*'$!g T%&'!o(og) Tra!*f%r Off$&%*

5.(.5. Introduction

Technology Transfer ffice 6TTs7 is a support infrastructure for the management of IPassets in a university or research organi-ation. It is therefore critical not only for generation of IP rights but also for protection and commerciali-ation. riginally started in80)* today most countries are embracing the idea of promoting TTs in their publicuniversities and research organi-ations. They are in various forms. In most countries youfind TTs* other countries have Technology Hicensing ffices and some have

companies* solely owned by the university or research organi-ations

5.(.2. 0unctions of ,echnolog! ,ransfer $ffices

) Technology Transfer ffice 6TTs7 in research organi-ations in developing countriescan have several and varied functions depending on the missions of the institutions and

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the key ob9ective for which the TTs are established. Brom IP management point of view* the TTs

1. Promote IP awareness among staff of the institution%. +anage disclosure of IP". Biling for protection

!. 2ommerciali-ationa. +arketing* negotiation and licensing b. 2reation of start ups and spin offs

=. +aintenance of IP )ssets(. nforcement of IP rights?. +anaging revenue sharing;. +anaging conflict of interest and commitments

Where financial suitability is a key ob9ective* some TTs may be involved in thefollowing* in addition to the above#

1. +anagement of consultancy services offered by the institutions

%. +arketing of short courses and related capacity building programs offered by theinstitution". +anagement contract research and related pro9ects!. +arketing other capacities of the institutions* such as laboratory services and=. )ny other income generating activities identified by the institutions

5.(.(. Benchmarking models for organi%ing and financing technolog! transfer

offices

Terry 5oung 6%&&!7 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 withand obtain more information on establishing and operating a technology transfer office or its equivalent.

0G ,o

Mod%( Br$%f D%#a$(*

+ Australias

model

In )ustralia* public research organi-ations are responsible for financing theoperations of their TTs. There are two models* namely internal ,,$s

and eternal coman!. In the company model* the corporation generates

cash flow through a variety of related business activities such asconsultancy* conference management and professional development. The proceeds enable the company to support the university’s technologytransfer functions. In most cases* the universities would provide seedmoney to start the company. Bor the internal TTs* the university funds itdirectly as one of its departments. The amount and adequacy depend onthe importance the university attaches to technology transfer process and

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

Indias

3odel

,o formal legislation for organi-ing and financing TTIs e3ist in India.owever* most technical universities and research institutions haveestablished organi-ations to interface with industry. 0uch organi-ations

perform many of the technology transfer activities typically assigned toTTs in other country. The state or central government provide seedfunding* but for a limited time since these units are e3pected to eventually be financially self sustaining and even become profit centers. In %&&=* anumbrella organi-ation* the 0ociety of Technology +anagement 60T+7was established as India’s professional technology transfer society.

7

4aans

3odels

In 1<<;* the Capanese government enacted legislation to create governmentapproved university TTs. The government would provide two'thirds of its operating cost* up to the equivalent of 80 J "&&*&&& per year for fiveyears* the university or research organi-ation provided the other one thirds.

)t the end of the five years the TTs were e3pected to be self'sustainingfinancially. owever* the government later reali-ed that this e3pectationwas not possible to meet and therefore e3tended its subsidy to a portion of the cost of TT operations. Hater a number of TTs reali-ed that thefunding from the government was not sufficient to support their operationsand therefore created associated for profit companies that facilitated thecreation of spinout companies. Baculty members were asked to invest inthese companies which also commerciali-ed university $K4. In %&&!* <%@ of the national universities* (& @ of the national research organi-ationsand !" @ of the private universities had established an office for cooperation with industry.

8 'hina

Today* most public research organi-ations in 2hina have TTs. They wereoriginally supported by the government* but as 2hina moved to marketeconomy* these TTs have changed and today they operate as associated private companies. These companies are today very active in business likeactivities such as setting up business incubators* assisting 0+s to prepare business plans* helping develop spinout companies with university basedventure capital. +ore often* the TTs negotiate for significant equityshares or may wholly own spinout companies.

. South Africa

TTs are crucial part of IP management although a relatively new

development in 0outh )frica’s university and research organi-ations.There are currently si3 universities and research councils with wellestablished technology transfer activities.

9 )en!a

ut of the ; public universities currently in /enya* three universities havecompanies whereas out of the si3 research organi-ations* two have TTs.These five institutions also have IP policies.

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: "nited

)ingdom

0ince 1<<; report Dwhite paper on 8/ competitivenessE many policyinitiatives and government funding streams were established to stimulateuniversity'industry cooperation. This cooperation significantly changedthe way universities in 8/ organi-e their technology transfer activities.0everal prominent universities created separate companies to

commerciali-e IP* particularly those considered to have high potential for spinout companies.

;

*ether

lands

The concept of university based companies is also popular withuniversities in ,etherlands. )msterdam 8niversity and 8niversity of +aastricht are e3amples of universities that own companies for technologytransfer.

5.(./. Best Practice in establishing a ,echnolog! ,ransfer $ffice

If your country* as chosen as a target* the promotion of establishment of technologytransfer offices* then your country may need to consider some of the following issues:mission and funding of the TTs* indicators for benchmarking TTs and the consortiummodel for TTs

Mission an funing of the ""#s

The main question is why set up a TT* is it to generate income for the institution or to promote the mandate of the institution of disseminating knowledge.

)s a country* the main m$**$o! for establishing TT should be to enhance thedissemination to the society of the knowledge generated in the universities and researchorgani-ations to grow the economy* create 9ob and new enterprises.

TT are incapable of being financially sustaining in the short time. 3perience hasshown that it requires eight to ten years before a TT can generate income enough tosustain its operation and provide dividend. Therefore financial support by the governmentand the respective institutions is required

Inicators for benchmar$ing ""#s

stablishing a TT must be economically viable in terms of outputs and impacts to thesociety. >enchmarking indicators have been developed to evaluate the performance of TTs. These include:

• The number of IP disclosures*

• The number of IP )pplications*

• The number of grants

• The number of licensing contracts*

• The licensing revenue and

• The number of start'ups.

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To normali-e these* the numbers are e3pressed as a function of the research budget. The benchmarking data can be used to understand the implications of promoting technologytransfer and the likely outcomes of a technology transfer initiative. Bor e3ample* * aninvention disclosure rate of !&'=& per 80J 1&& million of research e3penditure in

developed countries may discourage developing countries* with meager research budget*for establishing TTs. )nother e3ample is that the income to an institution* after ;'1&years is likely to be a modest of 1'%@ of the annual research e3penditure. Top universitymanagers must understand these data to avoid unrealistic e3pectations and be committedto financially supporting the TTs for a long period of time.

Consortium moel for eveloping countries

To improve the economics of TTs* developing countries may opt to establish TTs toserve several universities or research organi-ations in a given region. The logistics of how this can be done can be obtained from literature such as Destablishing and operating

technology transfer offices* in intellectual property management in health and agricultureinnovation L a handbook of best practices.

./8/ E*#a3($*'$!g Co((%&#$"% Ma!ag%m%!# Orga!$<a#$o!*

5./.1. #oles of 'ollective 3anagement $rgani%ations

stablishing 2+s is a strategy that most countries are today considering to promote thecreative industries. In this case* the rights owners authori-e 2ollective +anagementrgani-ations 62+s7 to administer their rights* that is to undertake the following:

1. To monitor the use of the works concerned%. 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 therights

". To authori-e those users to use the works against payment of agreed royalties!. To collect such fees and distribute them to amongst the owners of the rights

5./.2. 'ollective 3anagement $rgani%ations as Best Practice in the management of

co! rights and related rights

stablishing 2ollective +anagement rgani-ations is today considered as a best practicein the management of copy rights and related rights. 4eveloping countries haverecogni-ed the essential role and ob9ective of 2+s in facilitating the collectivemanagement of literary and artistic works of their members. +ost of the developingcountries have already initiated the process of reviewing their laws and some havealready incorporated the provisions of establishing 2+s in their reviewed or new T$IPscompliant legislations.

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The following are some of the 9ustifications for establishing 2+s 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 e3tensive piracy possible and therefore the individual e3ercise of the rights has become almost impossible.

%. 0ome users such as broadcasting organi-ations require rapid access to a vast massof work. 0uch organi-ation would prefer not dealing with individual rights owners but entities like 2+s.

". 2+s provide useful assistance to users of the works through proceduralsimplification such as negotiation* calculation of fees and facilitation of access toworks. This reduces the administrative costs for the users.

!. 2+s can play an important role as lobbyist groups for the interest of their members as was the case with the Performing +usician )ssociation of ,igeria6P+),7* when it lobbied for many years for a comprehensive review of thecopyright )ct 61<?&7. P+,) organi-ed a countrywide protest march as part of their lobbying strategies that consequently witness the passage of the law threeweeks later.

=. 2+s 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 issuesand the importance of protecting the IP rights to the right owners and for the promotion of creativity.

5./.(. ,!es of 'ollective 3anagement $rgani%ations

The nature and status of 2+s differ depending on the form and e3tent of governmentsupervisions as discussed here below#

1. In some countries* such as Italy* ,igeria and >ra-il* 2+s are departments of central government. They are essentially* central offices for collection anddistribution of right owners’ fees.

%. In some countries* such as )lgeria* 0enegal and +orocco* 2+s are semi'publiccopyright organi-ations that manage the rights on behalf of the rights owners.

". In $ussia and 80)* 2+s are autonomous bodies or private agencies.

!. 2+s also differs in respect as to whether they are the only 2+s responsiblefor the management of all the copyrights or there are several in a country.

5././. 6a! forward for 'ollective 3anagement $rgani%ations in develoing countries

1. The e3perience and technological development of the recent years haveincreasingly confirmed that the individual e3ercise of rights is impractical. Those

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developing countries that have not embraced 2+s* must do that as a matter of agency.

%. aving reali-ed the importance and usefulness of 2+s* for the interest of therights'holders and users* developing countries have been incorporating provisionsof establishing 2+s in their legislation drafting processes. 4efinitely 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.

". )fter incorporating establishing 2+s in legislation* appropriate IP policies andstrategies must be developed to actuali-e the establishment of 2+s.

!. 4uring the initial stages of the establishment* 2+s in developing countries arenormally very weak in terms of meeting their administrative costs. This may bedue to very limited initial number of members and the weak capacity of thosemembers even to pay their annual membership fees* as they have been involved inthe past in creating works but without payment. In this regard it is recommendedthat the respective government should commit themselves.* through annual

budgets* to meet the requirements of the administrative costs of their respective2+s until they maintain strong position to manage themselves.

=. 2+s themselves must strive to create a reliable and cost effective rightsmanagement system such as effective mechanisms for royalty collection anddistribution and monitoring. The efficiency in the operations of these mechanismswill boost confidence of the members on their organi-ations and thus attract moremembers and attain respect of other stakeholders.

(. )s piracy is one of the notorious copyright infringing activities at the commerciallevel and reduce revenue to 2+s and right'owners* 2+s must establish andstrengthen close collaboration with other IP enforcement agencies such as the

police* 9udiciary and well as custom officials

././ Promo#$!g IP Tra$!$!g, Ed0&a#$o! a!d R%*%ar&'

5.5.1. $b-ectives of romoting IP ,raining7 8ducation and #esearch

IP Training* ducation and $esearch is an important target which most developingcountries would want to pursue in their ,ational IP 0trategies. IP Training* ducation and$esearch is key to the reali-ation of IP awareness creation as well as capacity building programs* that any country will want to implement. The ob9ectives of selecting IP

Training and ducation are two folds* namely* #o 2rod0&% #'% r%=0$r%d IP 2rof%**$o!a(*%r"$&% 2ro"$d%r* a!d #o $m2a&# 3a*$& >!o1(%dg% of IP amo!g*# 2o#%!#$a( g%!%ra#or*

a!d 0*%r of IP

a7 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 throughfour of the five elements of IP systems* as shown in the table below#

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S?N E(%m%!# of IP S)*#%m IP 2rof%**$o!a(* r%=0$r%d

1 0upport the generation of IP Technology transfer managers

% 0upport the Protection of IP IP )ttorneys* IP 4rafters and IP3aminers

" 0upport the commerciali-ation of

IP

IP valuation* IP auding* IP licensing*

IP marketing and negotiations! 0upport the enforcement of IP IP enforcement officers: 9udges*

lawyers* police and custom officials

= 0upport teaching of IP inuniversities* colleges and schools

IP lectures and teachers

b7 To promote innovation and creativity* basic knowledge of IP is required amongst potential IP generators and users. These include the youth* women inventors andcreators as well as women entrepreneurs* university students of law* science*technology and business* small and medium scale enterprises including theinformal sector* lecturers and researchers in universities and research organi-ations

5.5.2. )e! issues for consideration when develoing a strateg! for IP ,raining7

8ducation and #esearch

The following key strategic issues need to be considered in a strategy for IP Training*ducation and $esearch.

1. The products%. The curriculum". Intellectual Property Baculty!. Teaching +aterials

=. +ode of teaching

a9 ,he Products

This refers to the IP professionals required by your country in order to implement thenational IP strategy and develop the IP system. The needs are established through the baseline survey and the actual numbers fi3ed in the targets.

b9 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 9ournalism schools and faculties. 2urrently in most universities in developing countries*the following three cases are most common. Birst* almost all business programs includesome overview of the basics of intellectual property. 0econd* basic law degree programsoffer intellectual property courses that give students a general understanding of the philosophy and application of IP law. Third* speciali-ed postgraduate 6HH.+7 programsthat typically provide a more comprehensive* speciali-ed knowledge of the theory and practice of IP law.

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0peciali-ed IP programs deal with three aspects of IP practice

• The nature and e3tent 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

ducation programs in business focus on the first aspect to enable the students gain anunderstanding of the ways in which protection of IP can enhance economiccompetitiveness. Ideal undergraduate law degree programs should cover all the threeaspects to provide opportunities for students that intend to become IP practitioners.0tudents who enters postgraduate speciali-ed programs in IP* e.g. HH.+* will typically beIP practitioners who are interested in deepening their understanding of the legalfoundation of IP law* and increase their skills in the acquisition and enforcement of IPrights

c9 Intellectual Proert! 0acult!

Ideal situation is where one has full time IP lecturers and teachers. In developing countrythis is a ma9or challenge and can only be reali-e in medium and long term through theestablished postgraduate programs in IP in your country or training abroad. In the shorttime* use of practicing IP professionals 6IP )ttorneys* IP 3aminers* Technology Transfer +anagers etc7 as part'time lecturers* could be possible.

b9 ,eaching 3aterials and mode of teaching

Ideal situation is to develop teaching materials* with e3amples and cases drawn fromwithin or neighboring countries* thus taking care of the country culture* development

aspiration and needs. )vailable teaching materials may be adapted and modified. 8se of e3isting materials prepared by various IP agencies could be helpful.

5.5.(. Strategies for imlementing IP ,raining7 8ducation and #esearch in a

develoing countr!

0tarting 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 phase'implementation strategy as proposed here below* depending on the current level of IPtraining and education in your country.:

Phase one %short term&

• provision of short courses and seminars in collaboration with WIP and other IP

T)2> providers

• 0ending staff abroad for speciali-ed IP training through scholarship obtained from

the government* WIP or any other development agencies

1(



• $eview and strengthen e3isting undergraduate IP education programs 6e.g.

e3isting IP undergraduate programs in law * business as well as engineeringschools7

• $eview and strengthen e3isting postgraduate IP education programs 6e.g. HH.+*

postgraduate diplomas7

Phase two %meium term&

• Introduce new IP programs* where IP programs do not e3ist

o Introduce IP programs in undergraduate law school

o Introduce IP programs in undergraduate non'law schools

o Introduce postgraduate IP programs 6HH.+* +IP7 in at least one university

in the countryo Introduce postgraduate diploma IP programs in at least one university

Phase three %long tern&

o Introduce IP programs in teachers training colleges

o Introduce IP programs in technical colleges

o Introduce IP programs in schools

o Introduce IP )cademies and research institute

5.5./. Institutions for benchmarking IP ,raining7 8ducation and #esearch.

The following training and research institutes are briefly discussed in order to for the

information of your country. Bor detailed information* you may wish to contact thoseinstitutions you have selected for the purpose of benchmarking.

a. "nited States of America and 'anada

In the 8nited 0tates of )merica* one of the very first centers devoted e3clusively toresearch in intellectual property was associated with the Haw 0chool of the eorgeWashington 8niversity and was known as the Patent* Trademark and 2opyrightBoundation. It subsequently became a part of the Branklin Pierce Haw 2enter where it hasflourished with the support of the legal profession and industry.

ther intellectual property centers e3ist* though not e3clusively for research. In ,orth)merica* there is the 2enter for Intellectual Property Haw at the Cohn +arshall Haw0chool* in 2hicago* Illinois* which combines law school and postgraduate teaching of intellectual property with research and dissemination of intellectual property information.

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The 2anadian Intellectual Property Institute* which was established in ull* 2anada* isvery closely linked with the governmental authorities responsible for intellectual propertymatters.

8uroe

In >elgium* a 2enter for Intellectual Property Haw was set up at the 2atholic 8niversityof Houvain. In 0weden there is the 2enter for Intellectual Property and +edia Haw of the0tockholm 0chool of conomics. In the 8nited /ingdom there is the IntellectualProperty $esearch Institute of Mueen +ary and Westfield 2ollege at the 8niversity of Hondon. In Brance there is the 2enter for International Industrial Property 0tudies62IPI7 in 0trasbourg* where WIP* in cooperation with 2IPI* conducts each year atraining course on industrial property for official from developing countries. There is alsothe Institut de recherchN en propriete industrielle 6I$PI7 enri'4esbois in Paris* the2entre 8niversitaire d’enseignement et de recherchN en matiere de propriete industrielle628$PI7 in renoble and the 2entre Paul $oublier in Hyon.

Asia

In the )sia and Pacific $egion* the 2hina Intellectual Property Training 2enter 62IPT27*set up in 1<<;* was sponsored by the 0tate Intellectual Property ffice of the People’s$epublic of 2hina* and a considerable number of Intellectual Property 2enters were alsoset up in >ei9ing* 0hanghai and other cities of 2hina. In India the Institute of IntellectualProperty 4evelopment 6IIP47 was set up in Canuary 1<<? to undertake research and provide training on intellectual property rights 6IP$07. The 0ingapore IntellectualProperty )cademy was launched in 0eptember %&&%. )s the focal point of education andresearch in intellectual property in 0ingapore* the )cademy provides introductory andfurther training in areas ranging from basic legal understanding of intellectual property tosoft skills of negotiation* branding* know'how* business strategy and valuation of intangible assets. In the $epublic of /orea* the International Intellectual PropertyTraining Institute 6IIPTI7 was set up in 4aeduk in 1<<1. The Intellectual PropertyTraining 2enter was set up in +alaysia in 1<<;. In Tokyo* Capan* are located the CapanInstitute of Invention and Innovation 6CIII7* as well as the )sia and Pacific IndustrialProperty 2entre 6)PI27.

Africa

In )frica* WIP and )$IP have started in %&&; a +asters in Intellectual Property program in )frica 8niversity* Oimbabwe. The 8niversity of 0outh )frica 68,I0)7 alsooffers distance learning programs in intellectual property.

./9/ Pr%*%!&% of a! I!!o"a#$o! *)*#%m

./9/+ I!#rod0&#$o!

The role of the government is to ensure the basic ingredients are in place for aninnovative economy L the skilled people* the basic research* the economic and regulatory

1;



framework* and the fiscal policies that both enable innovation and reward successfulinnovators. In addition* the government can increase the likelihood of innovation success by nurturing local clusters of e3cellence and serving as a leading user of innovativetechnologies and solutions. )n innovation system links the research organi-ations in acountry with the government and the private sector* thus enhancing the generation*

protection and commercial e3ploitation of intellectual property rights. To establish aninnovation system* a country must come up with a policy or law establishing it and toe3plain* amongst others* the operation* funding* management and administration of sucha system and then implementing../9/ Com2o!%!#* of a! $!!o"a#$o! *)*#%m

To establish working innovation systems countries must first of all develop an innovationaction plan. )ustralia has one of the best innovation systems and the action plan isequally comprehensive capturing the key elements of an innovation system whichinclude:

i. E*#a3($*'m%!#, *022or# a!d 2romo#$o! of %!#r%2r%!%0r$a( f$rm* a!d

$!!o"a#$"% 1or>2(a&%* ' competing on innovation and knowledge is decisive to

successful business performance for firms and to sustainable prosperity fornations. To achieve these countries should deftly enhance the opportunities andenvironment for business enterprises to innovate. This is intended to strengtheninnovation at the point where business enterprises and workplaces engage withtheir markets and customers.

ii. Id%!#$f$&a#$o!, #ra$!$!g a!d &a2a&$#) d%"%(o2m%!# of #a(%!# 2oo(?'0ma!

&a2$#a(. igh quality human capital is critical to innovation. quipping our peoplewith the skills to innovate is essential* not only for the generation and applicationof new knowledge* but also to use and adapt the knowledge produced elsewhere.>uilding high quality human capital requires attention at all levels of education#from early childhood education and schooling* through vocational education andtraining and higher education* and into the workplace.

iii. I!forma#$o! f(o1*, mar>%# d%*$g! a!d fr%%dom* #o $!!o"a#% ' +arkets inwhich people compete for private gain can only come into e3istence against a backdrop of shared practices and e3pectations. >ecause these Arules of the game’are a public good* governments are unsurprisingly involved in their provision andenforcement. ften the most efficient and innovative solution to an emerging problem is to develop a market L as )ustralia and other countries are doing withemissions trading. overnments can improve information flows and supportinnovation and economic efficiency by encouraging disclosure* assisting marketsfor reputation to develop* and by ensuring that the information and other Acontent’that they fund is freely available to ma3imise its use and the value that others canadd to it.

iv. R%*%ar&' &a2a3$($#) a!d 2(a#form* L the ability to generate strong productivitygains requires that we perform nationally important research and that wesuccessfully adopt and adapt <; percent of innovative ideas that are generated inthe rest of the world. There is therefore great need for an urgent restoration of

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public funding levels for research in universities and government researchagencies. There is also need for the adoption of full funding for the costs ofresearch at universities and increased funding for universities and governmentresearch agencies ) strong and sustainable public research sector requiresuniversities to be providers of research* not investors in research. 2urrently

research in universities in most countries is not fully funded and so it is typicallysubsidi-ed from universities’ other revenue streams* with the upshot of leaving itsub9ect to the uncertainties of international markets.

v. Mar>%# fa&$!g $!!o"a#$o! 2rogram* ' Birms and people are fundamental tosuccessful innovation. overnments have an important and strategic role to playin facilitating innovation where it is confident* firstly* that there are structuralimpediments to markets doing the work and* secondly* that governmentinvolvement will generate more benefits in addressing these problems than it willgenerate in collateral costs. This can be achieved through the provision of directmarket facing programs to support innovative firms life. The current suite of

government market facing program assistance should be designed to focus on:• >uilding the capacity of firms to absorb and incorporate new knowledge.

• Bacilitating collaboration L 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 toassist innovative firms in the high risk early stages of proof'of'concept and developmentis required* together with an e3pansion of the nterprise 2onnect program to buildinnovation performance and capacity in firms* and to allow access by services firms.)ustralia has established 2ooperative $esearch 2entre’s 62$27 which emphasi-es thevalue 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 si-ed enterprises and the research community. There is aglobal and systemic funding gap in the availability of capital for early stage ventures andthus the maintenance and e3tension of the Innovation Investment Bund and Pre'0eedBund programs supporting capital rising by early stage companies is essential. To furtherstrengthen the growth of high technology and innovative service'based firms* supportshould be given to organi-ations of angel investors to help increase networking and the2ommerciali-ing merging Technologies 62+T7.

i. I!!o"a#$o! 1$#'$! Go"%r!m%!# ' ne of the enduring advantages markets have

over governments is that innovation can come from anywhere. 2s of largecompanies and individuals running their own businesses are each free to improvewhat they do* and if they lower costs andGor better satisfy consumers* they have agood chance of being successful. With many policy innovations to their credit*governments have typically performed well at engineering top down innovation.>ut at the Acoal face’ they have been less good at harnessing the insights ofofficials further down the chain of command and consumers of governmentservices. There is a suite of low cost measures to inculcate a culture of innovation

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in our public sector from the bottom up. They include# ) body to operate as: anadvocate for those within the public or private sectors who seek to innovate butwho are stymied by government culture* practices* structures* or regulation* asource of funds and skills for the development of innovative approaches to public policy andGor service delivery* the running of randomi-ed policy trials and

government tendering that ma3imi-es the scope for innovation in supply of goodsand services to government. ncouraging a virtuous circle of innovation*e3perimentation and evaluation amongst the states and territories* which will helpus learn what works and what does not.

ii. Na#$o!a( I!!o"a#$o! Pr$or$#$%* L it is critical to identify a set of ,ationalInnovation Priorities to complement the broad ,ational $esearch Prioritiesalready 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 innovativeefforts. 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 utili-e broadband infrastructure 6especially in health* education and public data access7.In terms of stimulating complementary private sector innovation* the followingareas deserve attention# resource industries* space and astronomy* finance and risk management* and marine industries. To manage and coordinate these prioritieswith those for research in public innovation programs* )ustralia has proposed ,ational Innovation 2ouncil to be charged with ongoing evaluation andidentification of synergies across programs.

iii. I!*#$#0#$o!a( a($g!m%!# ' Proper institutional framework is required to enhanceleadership and improve coordination across the innovation system. 0uch aframework needs to span ministerial and 9urisdictional boundaries and encompassa broad range of policy areas. It needs to focus on coordination withoutcentrali-ation* due to the importance of maintaining speciali-ed roles andfunctions across the system. To achieve the coherence* fle3ibility andresponsiveness necessary for effective innovation policy* the system requires acentral brain.

>enchmarking activities within the innovation system may include:

i. I!!o"a#$o! a1ard *)*#%m @ )wards form an integral part of an innovation systemand can both encourage and raise awareness of innovative practices amongresearch organi-ations and businesses. Presenting awards at important events*such as those organi-ed by government agencies and industry practitioners’ cango a long way in strengthening establishing a strong innovation system. 3amplesof Innovation awards include: the ungarian Innovation rand Pri-eE* organi-ed by the 2hamber of 2ommerce and Industry of ungary* D+ohammed bin $ashid)l +aktoum >usiness )wardE* organi-ed by the 2hamber of 2ommerce andIndustry* 4ubai* the Dolden /una Innovation )wardE presented by the 2roatian2hamber of conomy.

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ii. I!!o"a#$o! for0m* a!d mar>%# 2(a&%* @ Innovation fairs bring together thedifferent stakeholders necessary to support innovation and can be an importantcatalyst and networking opportunity. 0uch fairs or fora are may be organi-ed bygovernment agencies* or industry organi-ations have partnered with such agenciesto organi-e these events. These fora also provide a marketplace for innovations

and thus spurring innovation. 3amples of innovation forums and market placesinclude: DBoro de InnovaciQn de las )mNricasE organi-ed by the national agencyof research and innovation of 8ruguay* ),II 6)gencia ,acional de InvestigaciQne InnovaciQn7* the +ongolian ,ational 2hamber of 2ommerce and Industry 6incollaboration with various institutions7 annual e3hibition* DInventions and 8tility+odelsE , /nowledge Innovation +arket by the >arcelona 2hamber of2ommerce* amburg 2hamber of 2ommerce and the ffice of 0cience and$esearch of the Bree and anseatic 2ity of amburg technology data base.

iii. R%2or#*?*#0d$%* @ 2ollating* analy-ing and publishing information on innovationtrends help companies to benchmark their performance and to keep abreast ofdevelopments. This can also raise the profile of industry and research

organi-ations and establish them as references in the field. 3amples of reportsinclude: The DInnovation 2entre of >i-kaia*E 6>arri3e7* linked to the 2hamber of2ommerce of >ilbao* continually monitors levels of innovation within the regionand tracks trends in innovative sectors. The centre informs members aboutsuccessful e3periences* programmes and potential sources of aid at thecommunity* regional and national levels* The )ssociation of 2hambers of2ommerce and Industry of ermany 6)22I)7 releases an annual report on thestate of innovation in erman firms* with information on the different activities performed in the field and on how receptive the target audiences are to suchinnovation* The 2roatian 2hamber of conomy publishes DThe innovationenvironment of 2roatiaE with the same ob9ectives as )22I).

iv. Ed0&a#$o!a( a&#$"$#$%* @ Training is one of the most effective ways to implementcultural change within the workplace. ducational courses and modules can beused to train students on how to carry out innovation on a continuing basis.owever* educational activities are time and resource intensive and require atraining infrastructure* either internal or through partnerships with educationalinstitutions* as well as resources for training trainers. Industry and researchorgani-ations may consider options for procuring public funding for suchactivities.

v. I!!o"a#$o! *022or# #o $!d$"$d0a( &om2a!$%* @ Innovation support services aimto analy-e the innovation potential of individual companies and to help themadopt an integrated* methodical approach to innovation. Providing such advicerequires highly'trained specialists in the modern trends towards dynamic*interdisciplinary* integrated and sustained innovation. IP$'elpdesk is a perfecte3ample of innovation support# The main ob9ective of the IP$'elpdesk is toassist current and potential participants in 2ommunity'funded research andtechnological development pro9ects* as well as innovation pro9ects on IP matters.While focused on the uropean region* the information provided can generallyassist industry and research organi-ations through detailed information on itswebsite* a helpline* online courses* and an IP$ >ulletin.

%%



./:/ Pr%*%!&% of S&$%!&%, T%&'!o(og) a!d I!!o"a#$o! Po($&)

./:/+ I!#rod0&#$o!The %1st century can be characteri-ed best as a knowledge and information era in whichcreative knowledge and information constitute competitiveness. Innovation is discoveringnew ways of creating value. It is the process through which new economic and social benefits are e3tracted from knowledge. Through innovation* knowledge is applied to thedevelopment of new products and services or to new ways of designing or marketing ane3isting product or service. The term DinnovationE refers to both the creative process of applying knowledge and the outcome of that process. Innovation can be promotedsystematically across the economy as part of a deliberate strategy to improve national productivity growth. The conscious promotion of innovation has become an importantfocus of economic and social policy. Innovation does not happen merely by chance* but

is a response to economic incentives L incentives that can be significantly affected bygovernment policy. overnments can be most effective at promoting innovation by nottrying to create innovation directly. $ather* effective economic* fiscal* and management policies will result in innovation as a by'product. ) science* technology and innovation policy would address these issues

./:/ O3%&#$"%* of STIP

The key ob9ectives of 0TIP include#i. stablish an institutional framework* as well as an organi-ational* human and

financial structure capable of leading the development of science* technology andinnovation ' 2oncentrate in two areas where the functions of foresight*intelligence and strategic planning and evaluation of 0TI policies* on the onehand* and financing and e3ecution of 0TI programmes.

ii. 4esign a mi3 of 0TI policies and programmes which* combined with economic policy* will strengthen general 0TI capacities and the development of 0TI in aselected 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 technologicalcapacity and innovation should focus.

• )ccompany these policies by others of a more general character which establish

the essential conditions for the development of 0TI* acting on both the supply andthe demand side.

•Progressively and steadily increase the financing of 0TI activities and considerthe establishment of incentives to promote private investment in 0TI. Bore3ample* consider the establishment of fiscal incentives for investing in $K4.

• 4evelop a science* technology and innovation system which allows the design*

monitoring and evaluation of 0TI policies. Bor e3ample* promote the elaborationof a national innovation surveys* the systematic collection of 0TI data and thedevelopment of capacities to process and analy-e this information.

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./:/7 B%!&'mar>$!g f%a#0r%* for STIP

The key benchmarking features for 0TIP include#R 2urrent pool of 0KT personnel:R Investment in human resources training and development:

R 4emand for knowledge by the private sector:R Institutional knowledge assets:R nabling environment:R Bunctioning 0KT infrastructures:R 2hallenges and opportunities:R 0ocio' economic features and the technological status of a nation.

5.:. 0unding b! government of #;+ as a ercent of the G+P

./;/+ I!#rod0&#$o!

2urrently most developing countries are spending less than &.= percent of the 4P on

$K4. 5et the number of IP$s generated depends on the number of $K4 activities whichin turn depends on the level of funding. 2onsequently $K4 funding by the governmentas a percentage of the 4P is an indicator of the capacity of a country to generate IP$s.0ome IP 0trategies or 0cience Technology and Innovation 0trategy would includefunding of $K4 by the government in their strategies. )s the level of industriali-ationincreases* so is the funding of $K4 by industries.Public policy can play an important role in orienting innovation efforts so that they helpaddress domestic and global challenges. overnment $K4 budgets 6>)$47 'providean indication of the relative importance of various socio'economic ob9ectives* such asdefense* health and the environment* in public $K4 spending. In %&&<* governmentsacross the 24 invested the equivalent of nearly &.?=@ of 4P in direct funding of $K4 activities. $K4 'budgets as a percentage of 4P are largest in the 8nited 0tates*followed by Binland* Iceland* Portugal and /orea* ranging from nearly &.%@ to 1.%@. Inmost countries* this indicator is up relative to pre'recession levels* reflecting both the useof stimulus packages to support $K4 and the drop in 4P growth rates../;/ Im2or#a!&% of Go"%r!m%!# F0!d$!g for RD

./;/7 K%) r%*0(# $!d$&a#or* of Go"%r!m%!# f0!d$!g for RD

• Invention disclosures

• Patent applications

•Inventions patentedGprotected

• ,ewGactive licenses and options

• IncomeGrevenue from commerciali-ation

• 0pin'off companies and start'ups created

5.<. IP Information 'enters

.//+ I!#rod0&#$o!

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Patent documentation is a powerful tool that can be used to support $K4 activities aswell as product development by industries including 0+s. The establishment of IPInformation 0ervice 2enters is an important strategy for these countries. In the 8/ arecent $oyal 0ociety report* DThe 0cientific 2enturyE* places science and innovation atthe heart of the 8/’s long'term strategy for economic growth. owever* it has become

clear that the leisurely translation of scientific discoveries into new industries has beenreplaced by a race between nations to take advantage of these discoveries and translatethem into economic success stories before others do so.Its is therefore evident that there is a critical gap between research findings and theirsubsequent development into commercial propositions that can attract venture capitalinvestment or be licensed. This gap can only be closed by making new technologiesinvestment ready. Therefore* governments must get serious about creating Aknowledge'economies’* they must continue to invest in* and support* research e3cellence: ensurethey support areas of industry which have the ability and absorptive capacity to capture asignificant share of high value activity: and close the gap between universities andindustry through a Atranslational infrastructure’ to provide a business'focused capacity

and capability that bridges research and technology commerciali-ation. ther countries benefit greatly from a translational infrastructure that bridges this gap L for e3ample* theBraunhofer esellschaft in ermany* IT$I in Taiwan* T$I in 0outh /orea* and T, inthe ,etherlands.

.// Ro(%* of IP $!forma#$o! &%!#%r*

The breadth of the roles of the IP information centers can be broadly summari-ed toinclude#R undertaking basic research:R carrying out applied research in the innovation chain between university generatedinitial discovery and industrial development to reali-e its commercial potential:R enabling 0+s to innovate though provision of knowledge* equipment and appliedresearch:R providing technical and commerciali-ation services to large and small companies: andR developing a highly skilled workforce.

.//7 Som% IP I!forma#$o! &%!#%r mod%(*

R Brance 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 networkof 2arnot Institutes was set up from %&&( to address this gap.R perating " to 1& years ahead of industrial needs and to foster the development of thelocal industrial base through the creation of spin'out companies* promoting $K4collaboration and developing technology skills with business for the Inter'8niversity+icro lectronics 2entre 6I+27 in >elgium: andR Bacilitating the development of the semiconductor industry in Taiwan* as universitieswere not considered a suitable environment for commerciali-ing technologies* byestablishing the Industrial Technology $esearch Institute 6IT$I7

.//8 F0!d$!g for IP $!forma#$o! &%!#%r*

%=



>oth the level and type of funding for IP information centers varies significantly betweencountries. owever* the sources of funding can be broadly categori-ed as#R Cor% f0!d$!g from national and regional government. While this funding is not alwayslinked to specific activities or outcomes* a performance management framework is oftenin place where they receive this investment:

R R%*%ar&' gra!#* a!d &o!#ra&#* from public bodies* in most instances won on acompetitive basis: andR R%*%ar&' &o!#ra&#* from #'% 2r$"a#% *%&#or* usually competitively tendered.

./+-/ C0rr%!# *&o2% of (%g$*(a#$o! go"%r!$!g IP r$g'#*

T'%*% $!d$&a#or* will measure the e3tent to which IP laws are developed in a country. Itwill measure the presence or absence of laws covering the following IP$s:

1. Industrial property 6patent* utility model* industrial design* tradeand service marks* geographical indications* integrated circuit and tradesecrets7+ost 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. .g in 0ingaporethere is a patents )ct with separate $ules and regulation* the trademark act of 0ingapore also cover e3tensively border enforcement measures as well asinternational registration rules and measures. The same applies for registereddesigns and plant varieties

%. 2opyrights L 0ingapore has one of the most elaborate copyright protection system under their copyright act which involves legislation oninternational organi-ations* international protection* records royalty system* border enforcement measures* copyright tribunal* and copyright for network service providers and e3cluded works.

". Plant breeder’s rights ' The evolution of P>$ protection system has torespond to changing needs of today* >enchmarking in P>$ protection is aboutthe effective collection of royalties from such seed which is improving incountries like Brance but non'e3istent in Italy. In the 80) this is not doneeither. The attempt to reduce cosmetic breeding and securing rights for practical breeders when their varieties are used in transformation is alsoanother indicator. Presence of a straightforward protection* which requireslittle cost for legal counsel to implement 6compared to the patent system7 isalso a critical indicator for benchmarking for P>$ legislation.

%(



!. Traditional knowledge and genetic resources L 4ifferent countries havedifferent methodology for protection of traditional /nowledge and geneticresources. 2ountries such as >olivia* cuador and 2olombia have madeconstitutional provisions to protect T/ and $’s. )ustralia has acomprehensive >iodiversity protection legislation that protects T/ and $’s.

some of the benchmarking issues in T/ and $’s include# the broad nationalinterests andGor concerns with respect to protection of traditional knowledge*folklore and biodiversityS* activities that are currently under way in thecountry that have led or will lead to the definition of national positions 6e.g. ininternational rule making7 with respect to eachS* the specific issues that are of particular domestic concern or interest 6e.g. DbasmatiE rice* D+aldivesE Tuna*traditional te3tiles* eographical Indications7S )nd the key stakeholders withrespect to each issueS

5.11. 'urrent coverage of legislation governing IP rights

T'%*% $!d$&a#or* measure whether or not the e3isting national IP laws comply with theminimum requirements for T$IPs. This is currently a problem with some developingcountries including H42 that have not revised their IP laws to comply with T$IPs.>enchmarking will look at the e3tent of commitment to the countries obligations underT$IP0. +ost countries already have their laws into compliance with the T$IP0agreement but there are issues of technical and financial assistance that these countriesneed to ensure full compliance. )nother aspect of benchmarking is about how far is the process for developing IP$ legislation* regulations and procedures 6e.g. are discussion papers prepared* are stakeholders solicited for input* etc.7

./+ A&&%!#$!g #o $!#%r!a#$o!a( #r%a#$%* a!d &o!"%!#$o!*

./+/+ I!#rod0&#$o!

There are a number of international treaties which impact on a country’s IP 0ystem. +ostof these are administered by WIP. The decision to accede to a treaty must be done inthe best interest of a country and therefore requires national consultations. 0omecountries are now including accession to specific treaties* convention or agreements intheir national IP strategies. The accession to these treaties is a direct measure of the levelof development of IP system to conform to international standards.

./+/ A&&%**$o! #o WIPO adm$!$*#%r%d Tr%a#$%* a!d &o!"%!#$o!*

)ccession to treaties and convention administered by WIP is effected by the deposit ofan instrument of accession with the 4irector eneral of WIP* as provided in )rticle %1.The 2onventions and treaties enter into force* with respect to a country so adhering* threemonths after the accession has been notified by the 4irector eneral of WIP to allovernments of the member countries. )ccession therefore needs only unilateral action by the interested country and does not require any decision by the competent bodies ofthe 8nion.

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./+/ B%!&'mar>$!g $!d$&a#or*

• 4o the international agreements on intellectual property interfere unduly with the

flourishing of national legal cultures:

• The Hink between International agreements on intellectual property and trade and

ta3ation policies of the countries:

• The e3tent to which international Intellectual property treaties and conventions provide incentives for innovation and appropriate protection of brandidentification:

./+7 U!fa$r &om2%#$#$o! a!d a!#$ #r0*# (a1*

./+7/+ I!#rod0&#$o!

)ll countries that have established market economy systems have devised some kind of safeguard against unfair business practices. )ll member states of the Paris 2onventionmust provide* at least on the basis of e3isting general legislation* effective safeguardagainst 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. 8nfair competitionand anti trust laws are to ensure that competition is carried out in an honest manner. )ntitrust 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 benefitsto the society.

./+7/ O3%&#$"%*?ra#$o!a(% for 0!fa$r &om2%#$#$o! a!d a!#$@#r0*# (a1*

./+7/7 Cr$#$&a( &om2o!%!#* for 0!fa$r &om2%#$#$o! a!d a!#$@#r0*# (a1*

./+8 Po($&$%* a!d r%g0(a#$o! #o %!'a!&% 0*% of f(%5$3$($#$%* $! TRIPS

Burthermore some countries are not having in place national policies and regulations toenable a country to use legal options and fle3ibilities available in the T$IP0 such ascompulsory licensing and parallel importation. The areas that are considered within theT$IP0 fle3ibilities are#

R Transitional periods ' in )sia +yanmar is perhaps the only country that has yet to put in place a patent protection system. >angladesh is also another H42 that isnot yet clear whether it has enforced its provisions. 2ambodia appears to be theonly country that has incorporated the %&1( e3tension into its patent law to takeadvantage of this fle3ibility

R 2ompulsory licensing L most countries have some form of compulsory licensingin their patent laws 0ri Hanka is said to not clear on this aspect. In the recent post4oha years there have been a number of 2ompulsory licensing cases being

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granted on grounds of Public health and access to medicines. Oimbabwe was thefirst country to invoke this provision in %&&% to procure )nti'retroviral medicines.Oambia and +o-ambique also followed suit in %&&!.

R Public* noncommercial use of patents L the 80 system under section %;802 1!<;is a good e3ample to illustrate how government may use patents or authori-e a

third party to use patents for virtually any public use. 8nder this statute thegovernment 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 toin9unctive relief to prevent usage by the government. The government may only be held liable to the patent owner for payment of the Areasonable and entire’compensation for its non'authori-ed use of the patent. The 8/ also applies asimilar approach under the A2rown use’ provision.

R Parallel importation 'R 3ceptions to patent rightsR 3emptions from patentabilityR Himits on data protection

./+. IP Tr$30!a(*

This refers to having in place intellectual property tribunals that effectively andefficiently handles disputes arising from application and grants of intellectual propertyrights../+./+ f0!&#$o!* of IP #r$30!a(*

./+./ S#r0&#0r% a!d F0!d$!g for IP #r$30!a(*

./+./7 B%!&'mar>$!g mod%(* for IP #r$30!a(*

5.1=. Status of *ational IP $ffices

./+9/+ I!#rod0&#$o!

IP ffices e3ists in various forms. 0ome are sections within a department in a ministry:some are departments within ministries* whereas some are semi'autonomous or fullyautonomous organi-ations. The degree of autonomy shows the e3tent of attention andfocus a country has given to the promotion of intellectual property

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./+9/ F0!&#$o!* of !a#$o!a( IP off$&%*

./+9/7 Com2o!%!#* of !a#$o!a( IP off$&%*

./+9/8 S#r0&#0r% a!d f0!d$!g for !a#$o!a( I2 off$&%*

5.1=.5 Services offered b! *ational IP $ffices

Traditionally the key function of an IP office has been processing of application andgiving grants for rights. Today a modern IP ffice is e3pected to do more than

protections and include services such as:• Promoting of use of IP by 0+s

• Training

• utreach programs

• $egistration and certification of IP professionals

• Promotion of IP associations

• Promotion of commerciali-ation of IP

5.1:. 0ormal and Substantive 8amination

./+;/+ I!#rod0&#$o!

0ome IP offices only do formal e3amination and outsource substantive e3amination toother offices including regional IP offices. )s the number of application grow* a countrymay consider starting own substantive processing. The procedure for the e3amination of a patent application is divided into formal e3amination and substantive e3amination.Patent applications are e3amined in the order of their filing date. nly in e3ceptionalcases* the e3amination of a patent application may be accelerated* i.e. for the purpose of 9udicial or other proceeding* when it is deemed necessary* in compliance with other regulations* to carry out an e3pedited registration within a certain time limit and further to a special request of the applicant accompanied by the statutory fee.

./+;/ Forma( %5am$!a#$o!

In the procedure for the formal e3amination* the IP offices e3amine#

• Whether the application contains all of the elements stipulated by law or

regulations and whether such elements meet all of the prescribed conditions withrespect 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 theapplication:

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• 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.

./+;/7 S03*#a!#$"% %5am$!a#$o!

If the sub9ect'matter of an application is a utility patent* the IP office also e3amines the

invention as to the conditions of novelty* inventive step and susceptibility of industrialapplication. If* in the course of the e3amination of the conditions indicated herein* the IPoffice establishes that the application does not meet all such conditions* the IP officeinvites the applicant by a notice in writing to remedy the deficiencies in the application*within the time limit which may not be longer than <& days from the day of the deliveryof the notice. Bollowing the reasoned request of the applicant* the IP office shall e3tendthe time limit for remedying the deficiencies* but for the period not e3ceeding <& daysfrom the e3piration of the time limit. The priority of the first application shall be grantedto all remedied applications. If the applicant fails to comply with the invitation of the IPoffice within the prescribed time limit or if he fails to pay the fee and procedural chargesfor remedying the application* such an application shall be re9ected by a decision.

If a patent application fulfills all of the statutory conditions and if the fees and proceduralcharges are paid for its publication* the Institute shall pass a decision on the publicationof such application in the IP office a-ette. The application is published 1; months afterthe filing date or the date of the priority of the first application claimed. )t the request ofthe applicant* accompanied by the statutory fee and procedural charges* the applicationmay be published at an earlier time* but not earlier than <& days from the date of its filingwith the IP office. The publication of an application comprises the publication of bibliographic data* the abstract and the characteristic drawing. nce published* theapplication becomes available to the public. The unpublished application may be viewed

solely based on consent in writing from the applicant.

./+;/7 B%!&'mar>$!g $!d$&a#or* for Forma( a!d *03*#a!#$"% %5am$!a#$o!/

• ase of making IP applications here we look at the application forms and assess

how easy is it for a person who is not an e3pert to file IP$ application.

• In developed countries such as the 80 has introduced Prioriti-ed 3amination

6P7 and )ccelerated 3amination 6A)’7 of patent applications. The P program in the 80 allows an applicant to pay an additional J!;&& fee 6J%;&& for small entities7 to place an application on a prioriti-ed track where the patent officehas a goal to provide final disposition of the application 6i.e.* final re9ection or allowance7 within a year on average. Interestingly* the )I) retains the )ccelerated

3amination 6)7 program established on )ugust %(* %&&(. While the P program prioriti-es an application for prosecution ahead of standard filings* the) program prioriti-es and accelerates the actual prosecution of the application.The prioriti-ed e3amination and accelerated e3amination programs co'e3ist as of 0eptember %(* %&11.

• The number of successful and re9ected applications by the national IP office per

year.

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5.1<. *umber of IP alications filed and granted

In most developing countries* the number of applications for patents and utility modelsfrom foreign applicants is much higher than those from local applicants. Burthermore* thequality of drafting is also comparable lower than those from outside. +ost countries aretherefore taking serious the low level of local applications for patents and utility model asan 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 aree3tremely low compared to those of developed countries

%. 0econdly* amongst the applications received and IP rights granted by developingcountries* the number of local applications are lower than those from foreignapplicants

". Thirdly* the success rate of applications from locals* defined as the ratio of thenumber of IP grants to the number of IP applications in a given period* is very lowcompared to those from foreign applicant. This is mainly due to low quality of IPdrafting.

5.2>. Automation of IP registration rocesses

) ma9or handicap of most ,ational IP ffices is the low efficiency of processing IP)pplications* due to manual operations and procedures. This has led to long processingtime and backlog. In most national IP audit* a ma9or complain of the customers is theissue of slow processing of IP applications and bureaucracy. Those ,ational IP ffices*which have automated their IP processes and procedures* have reported tremendousimprovement ins service delivery and income. Therefore those ,ational IP ffices whichhave not done so may wish to give it priority in their national IP strategy

5.21. 'aacit! for the *ational IP $ffices to offer IP Services to S38s

+ost developing countries give much attention to 0+s* which are seen as the engines of

economic growth and industriali-ation. 0+s have special IP needs to grow their companies and become more competitive. ,ational IP ffices are therefore beingencouraged to come up with programs and services targeting 0+s* to enhance thegeneration* protection and commercial utili-ation of IP )ssets by 0+s.

5.22. ?uman #esources for IP $ffices

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/ey challenge for most ,ational IP ffices in developing countries is lack of adequate IPe3perts. )s IP awareness increases and the need for IP services e3pand so will be therequirement to e3pand the services offered by the IP ffices. This will require morequalified staff. Burthermore the successful implementation of any national IP strategy willrequire 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

5.2(. 'reation of IP Awareness and $utreach Programs

)n important aspect of any national IP strategy is the effort given to create adequate IPawareness. To this end* some countries are initiating outreach programs* promoting theestablishment of IP focal points in universities and $K4 institutions and other strategiesto increase IP awareness. Therefore* ,ational IP ffices that do not have IP utreachPrograms may wish to establish such in their IP strategy. Whereas those countries that dohave outreach programs already may want to strengthen them by e3panding the scopeand services offered

5.2/. Baseline data to suort the romotion of the co!right industries

5.2/.1 I!#rod0&#$o!

2opyright industries can contribute significantly to the economy of most developingcountries if given proper support. This is due to the richness of these countries in terms of copyrightable material. 5et copyright has not yet secured the right attention of thedecision makers in developing countries. This is perhaps because there are no dataavailable that can be used to sensiti-e decision makers on the important role of copyrightto the economy. Bew Hatin )merican countries have done such studies and are nowhaving data on which to develop national strategies for the copyright sector. +any other developing countries may wish to undertake such studies as away of promoting their copyright industries

5.2/.2 O3%&#$"%* of #'% Ba*%($!% *#0d$%*

The ob9ectives of the studies are#

• to quantify the economic contribution of copyright and the related rights

industries in the selected countries to ross 4omestic Product 64P7*employment* and trade*

• to e3amine 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 4P* employment* and trade as the main indicators of economicimportance* inasmuch as growth and productivity are conventionally ascertained in theseterms. 8se of these indicators also enables comparisons with other industries and withother countries that will in turn help refine the methodology.

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5.2/.( 'lassification of co!right industries

The WIP uide separates copyright'based industries into four groups# To identifycopyright industries* the uide uses the International 0tandard Industrial 2lassification6I0I27 system* which describes and classifies all possible types of industries in a country*

assigning codes to each for easy referenceCor% &o2)r$g'#@3a*%d $!d0*#r$%*, defined as those that are wholly engaged in thecreation* production and manufacture* performance* broadcast* communication ande3hibition* or distribution and sales of works and other protected sub9ect matter.I!#%rd%2%!d%!# &o2)r$g'#@3a*%d $!d0*#r$%* are industries that are engaged in the production* manufacture and sale of equipment whose function is wholly or primarily tofacilitate the creation* production or use of works and other protected sub9ect matter.Par#$a( &o2)r$g'#@3a*%d $!d0*#r$%* are industries in which a portion of their activity isrelated to works and other protected sub9ect matter and may involve creation* productionand manufacture* performance* broadcast* communication and e3hibition or distributionand sales.No!@d%d$&a#%d *022or# $!d0*#r$%* are industries in which a portion of their activity isrelated to facilitating broadcast* communication* distribution or sales of works and other protected sub9ect matter* and whose activities have not been included in the corecopyright industries.2ountries such as Philippine have adopted the I0I2 through the Philippine 0tatistical0ystem as the Philippine 0tandard Industrial 2lassification 6P0I27 scheme 61<<!version7* the most disaggregated descriptions of which are at the ='digit level. Thedefinitions of some sectors were modified to suit the Philippine environment.

5.25. 0inancing commerciali%ation of IP assets

a& Securiti!ation of IP Assets

Intellectual property rich companies should be aware of alternative strategies for raisingcapital separate from traditional loan or equity financing. ne such alternative strategyinvolves moneti-ation of an owner’s IP assets through a revenue or royalty acquisitiontransaction. In this case* the IP holder sells to an investor a royalty or revenue stream itcurrently has that is derived from or based on its intellectual property for cash pricedeemed reasonable by both parties. The royalty or revenue acquisition stream could be*for e3ample* 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 theIP holder’s 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 theinvestor wins by purchasing the revenue stream at a discounted price. +oreover* the IPholder generally retains the ownership of the underlying IP asset and the right to e3ploitsuch assets in any field of use not sold as part of the revenue acquisition transaction.

b& 'se of IP Assets as collateral

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+ost financial institutions are not yet accepting )P assets as collateral: neither is IPassets considered by banks during the evaluation of the business plans from inventors andenterprises. 2onsequently* inventors seeking financial support for the commerciali-ationof their inventions must look for other forms of security in order to secure business creditfrom financial institutions. Programs that can make financial institutions to partner with

government in supporting inventors are desirable.

c& Consieration of IP asset by financial institutions

When evaluating the business plans for inventors and 0+s* most financial institutionsare not yet considering the value of IP assets of the applicants. If this situation changes*many inventors may access finances for the commerciali-ation of their IP assets

& #ther financing mechanisms

This is the presence of speciali-ed financing institutions such as funding for prototypedevelopment* venture capitalists* business angels and industrial development bank.

5.2=. icensing of IP Assets

Hicensing is the most preferred route for commerciali-ation of IP assets. The inventinginstitution enters into a licensing agreement with another company* which willcommerciali-e 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. +anyentrepreneurs today are manufacturing under license. Hicensing enables the company togain profits from the IP asset with minimum risk and commitment. To enhancecommercial e3ploitation of IP rights through licensing* the following may be required

b. Provisions in national IP laws that allows your country to authorise othersto e3ploit IP$ in case of non use or non'commerciali-ation of IP rights

c. Provision in laws stipulating licensing procedures and licensing royalties

d. ,ational licensing agency

5.2@. *o of IP registered b! local inventors commerciali%ed

The number of IP )ssets registered and commerciali-ed by local inventors is a clear measure of the efforts made by +ember 0tates to promote commerciali-ation of locallydeveloped creations* inventions and innovations.

5.2:. IP Audits 'aacit! for industries

5.2:. Introduction

)s a way of strategically managing IP for competitive advantage* many industries arestarting to develop IP strategies. This requires that companies undertake* now and then*IP audit and develop IP strategies.

5.2:. $b-ectives and 3ethodolog! for IP audits

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The usual ob9ectives of an IP audit are to identify relevant IP* establish the ownership ofthat IP* put in place procedures to manage the IP* and assist in the formulation ande3ecution of the company’s IP policy. f course* before any of these processes can begin*the scope of the audit must be determined. In some cases* an audit might be done tosatisfy partner institutions or for e3ternal accreditation. Those commissioning the audit

must determine the ob9ectives. ) decision will have to be made about who gets the resultsof the audit. It may be confined to the board* to partners* to management* or be madeavailable to the public.The audit may be conducted through# online surveys of senior administrative andresearch staff* follow'up interviews* by phone or in person* with those staff* analysis ofcontracts, material transfer agreements (MTAs) and other documents held atthe central administration and analysis of relevant documents identiedthrough interviews.

5.2<. IP Policies for industries

Industries* as the main consumers of IP assets need to have IP Policy and to establish aframework for the management of IP assets. 0uch policy would address several pertinentissues* such as funding for innovation* documentation* maintenance of IP registry* IP protection* IP commerciali-ation* safeguarding loss of IP to partners* collaborators and business stakeholders* incentives for staff to innovate etc.

./7-/ I!fra*#r0&#0r% for &omm%r&$a($<a#$o! of IP r$g'#*

a&. Prototype evelopment policies an facilities

Prototype development is the step between IP$ grant and full commerciali-ation. ) 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 anda facility for prototype development

b&. Science( "echnology an Inustrial Par$s

+ost $K4 institutions in developing countries are supported through governmentfunding. 0TI Parks allow the establishment of companies based on the $K4 findingsfrom research institutions. >eing in the vicinity of such organi-ation the 0TI Parks provide good infrastructure for commerciali-ation of IP$s from $Ts.

c &. Incubation Policy an "echnology Incubators

"(



) part from 0TI Parks* most countries are now coming up with incubation policies tosupport the establishment of Technology Incubators. In the incubator technology based0+s are supported to develop and grow through provision of services includingfinancial* legal* management* working space* etc. most countries may wish to have theestablishment of technology incubators as targets in their IP 0trategy.

5.(1. IP enforcement laws and regulations

IP enforcement laws provide guidelines for dispute resolution and prevention of IPviolation through civil* administrative and criminal procedures and remedies for damages. Bor e3ample some countries are coming up with anti counterfeit and anti piracy laws. Where national IP enforcement laws e3ist* there is need to evaluate them toestablish if they include the following 9udicial and administrative procedures andremedies#

• Curisdiction courts over IP infringement

• IP holders have standing * can be represented and have mandatory appearance in

court to claim their civil rights• Cudicial authority to order relevant parties to produce evidence

• +eans to identify and protect confidential information brought forward as

evidence

• $emedies * e.g. in9unctions 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 en9oined

• Provision governing the length of proceedings

• Provision governing the cost of proceedings

5.(1. Border 3easures

5.(1.1 Introduction

To increase protection against counterfeiting and piracy some countries may need toe3pand authorities and improve enforcement practices. 0uch as increase IP training to2ustoms and >order Protection and Immigration ffices. Burther more there is need toincrease required information sharing with right holders: improve recordation process:measure and improve current enforcement tools: develop special scrutiny database to flagsuspect shipment: identify lowLrisk shippers. utlaw importation of any quantity of counterfeit or pirated products including vial mailGcourier services.

5.(1.2 'ustoms authorities and Parallel imorts

+ost countries have already complied with the T$IP0 regime in satisfying the minimumstandards of intellectual property protection* and are now looking at ways and means toensure a full proof enforcement mechanism. With a view to limit the adverse effects of parallel imports. ne of the ways to do this is to provide for a registration mechanism

"?



with the 2ustoms )uthorities to legally intercept and restrict the intrusion of parallelimports into the official and authori-ed channels of trade. .

The 2ustoms )uthorities should be empowered and authori-ed to intercept* sei-e andconfiscate goods found to be or suspected to be infringing intellectual property rights

registered and in'force in the country. $egistration of the intellectual property right withthe 2ustoms )uthority will enable the 2ustoms )uthorities to store the IP$ in theirelectronic database which will be flashed across all entry points in the country. These$ules are in addition to Intellectual Property laws and serve as an enforcementmechanism at the points of entry into the country. The $ules give the custom officials theauthority to intercept* detain* confiscate and destroy the same even before such parallelimports enter the ordinary circulation of trade.

The 2ustoms )uthorities should be empowered to suspend the clearance of suchinfringing goods either on the basis of the registration appearing in the electronicdatabase or even suo motu in the interest of the trade and protection of intellectual

property rights. )n intellectual property right owner today is therefore in a position tominimi-e his losses and intercept any actual or potential loss by parallel imports or evencounterfeit goods* by a mere registration with the 2ustoms )uthority at a cost that isnegligible compared to the losses incurred.

5.(1.2 2ustoms Haws and >order Protection +easures in India

In the present global scenario* which is indentured by increased international trade* Indiahas developed new nforcement $ules that mark a significant achievement in theevolution of border protection measures in India and alignment of Indian 2ustoms andIP$ related legislation with global ad9ustment.

Burther* considering India’s obligation as a WT member to implement border measuresas envisaged in )rticles =1 to (& of T$IP0* ,otification ,o. !?G%&&?'2us. 6,.T.7* has been issued* after which the Intellectual Property $ights 6Imported oods7 nforcement$ules* %&&? 6Dnforcement $ulesE7 were introduced in mid %&&?.

The nforcement $ules* which are of recent origin* have been modeled on the lines of thelegislation drafted by the eneva'based World 2ustoms rgani-ation and seek to definethe role of the Indian 2ustoms in combating IP rights 6DIP$E7 infringements at the borders. It is noteworthy that while the mandatory obligations under )rticles =1 to (& ofthe T$IP0 dealing with border measures are restricted to 2opyright and Trade +arks

infringement only* the nforcement $ules deal with Patents* 4esigns and eographicalIndications violations as well* in conformity with the best practices prevailing in certainother countries* most notably within the uropean 8nion.

The nforcement $ules have been made applicable only to goods of a commercial natureand do not apply to goods of a non'commercial nature and goods contained in smallconsignments for personal use. It is also pertinent to note that the present definition of theterm Dgoods infringing intellectual property rightsE* which is the focal point of the

";



legislation* covers any goods which are made* reproduced* put into circulation orotherwise used in breach of the intellectual property laws in India or outside India* whichis used without the consent of the rights holder or his authori-ed representative.

The nforcement $ules* which provide for actions to be taken against goods infringing

IP$ like prohibitionGsuspension in tradingG confiscation and disposal of such goods interalia* provide for#

• The filing of a notice by the right holder:

• $egistration of said notice by the 2ustoms:

• ) time limit for right holders to 9oin proceedings:

• ) single point for registration of the notice filed by the right holder:

• )dequate protection to the 2ustoms for bona fide act:

• 0uo'motu action by the 2ustoms in specified circumstances: and

• 4isposal of the confiscated goods.

ven in terms of the provisions of the nforcement $ules* the determination of the fact asto whether any particular consignment which has been imported violates any of the rightsof the rights holder would require to be done taking into account the provision of theParent )cts* namely the 2opyright )ct* 1<=?* the Trade +arks )ct* 1<<<* the Patents )ct*1<?&* the 4esigns )ct* %&&&* and* the eographical Indications )ct* 1<<<. This would

necessarily entail a good working knowledge of such )cts by the concerned 2ustomsofficials and specific sub9ect e3pertise.

Capan’s 2ustoms Tariff Haw seeks to resolve this issue by en9oining their Patent ffice toassist 2ustoms fficials in comple3 patent infringement cases. The above issue has also been recogni-ed by the Indian 2ustoms authorities and the formation of a separate IP$cell within each 2ustoms ouse* which will deal with any action involving suspectedinfringement of IP$’s by any import has been mooted. In this conte3t* note shouldhowever be made of the provisions of the Patents )ct* 1<?&* which provides that thedetermination of the issue of infringementGnon'infringement of a patent can only be made by the 4istrict 2ourt or igh 2ourt having 9urisdiction.

5.((. IP courts

+ost courts in developing countries have weak capacity to handle IP disputes. This is because of lack of trained IP Cudges and court prosecutors. 2onsequently IP 4isputes takevery 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* somecountries are including the establishment of IP 2ourts in their IP 0trategy.

./78/ E*#a3($*'m%!# of IP %!for&%m%!# Ag%!&$%*

In most countries* the IP enforcement is undertaken by several agencies scattered indifferent ministries. In some countries this is working well whereas in others* thecoordination of enforcement is difficult. Therefore some countries are establishing IPenforcement agencies to coordinate all the enforcement activities.

./7./ P03($& a!d &o!*0m%r %d0&a#$o! a!d a1ar%!%**

• P03($& a!d &o!*0m%r %d0&a#$o! a!d a1ar%!%**4 The public should be made

aware of the e3istence of IP enforcement system for the system to functionefficiently. ave educational campaigns at ma9or entry and departure points.2reate and administer a nation'wide consumer awareness campaign reveling the

harms caused by counterfeiting and piracy.• Co!*0m%r %d0&a#$o! a!d a1ar%!%**4 ) key role of enforcement is information

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

5.(5. ,raining of enforcement officers

• ,raining of IP 4udges and 'ourt Prosecutors mpowerment of enforcement

officials through technical and legal training in international protection standards*enforcement provisions* and dispute settlement mechanisms is required. nce anIP 2ourt is established* a country need to move further to ensure that qualified and

well trained IP Cudges and prosecutors are available. Bor this to be achieved a ,ational IP ffice must come up with programmes to build the capacity.

• Tra$!$!g of &0*#om* off$&%r*4 Trained custom officers help in the prevention of

counterfeits and pirated products from entering the channels of commerce.

• Tra$!$!g of IP %!for&%m%!# Po($&%4 Police officers are very effective in arresting

and prosecuting IP Fiolators. They should therefore be trained to identify IPviolation.

./79/ IP %!for&%m%!# 2%!a(#$%*

This refers to the level of infringement penalties that can deter infringement. In mostdeveloping countries the penalties have been described as less punitive and therefore donot usually attain the desired result of deterring infringement.In /enya* the fines for copyright infringement range from 804 1*&&& to 804 =*&&&*which is a paltry sum compared to the amount of losses that the IP owners incur. The 9ailterms are equally lenient and thus copyright enforcement in /enya has remained a

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pipedream despite having a fairly elaborate legislation and institutions to governcopyright.

WIPO Methodology for developing IP Strategy - Benchmarking (simiyu).doc

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