UNIVERSITY OF NAIROBI
Postgraduate Supervision Workshop
(December 10, 2013) CCU
Intellectual Property Management Office
UNITID Building, KNH Campus
Next to Medical Library
P. O. Box 19676 00202 Nairobi
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RESEARCH PROPOSAL
SUPPORT
ROLE OF PATENT
INFORMATION IN RESEARCH
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PATENT
 Any invention which is not protected in a
given country is considered as being in the
public domain in that country.
 Could be used in the country for its own
technology development without the risk of
infringement.
 Patent -inventor has the maximum legal
means of PROTECTION
 Higher sales price or royalty for selling or
licensing invention than those without.
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PATENT DOCUMENTS
 Patent documents generally convey the most
recent information.
First to file an application
 Patent documents -fairly uniform structure
generally easier to understand.
 Patent Documents - sources of information
not only on what is new (the invention) ,what
is already known (i.e., the state-of-the-art)
and in many cases furnish a history
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patent documents..
 Patent Documents generally cover most of
what is new and most of what is worthwhile
knowing about technological development;
 This is shown not only by the great number
of patents but also by the fact that they cover
every branch—big or small, relatively simple
or sophisticated—of technology
 Patent documents generally contain
information which is not divulged in any other
form of literature.
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patent documents..
 Don’t ASSUME that relevant information
contained in patent documents will come to
one’s notice by other means including
journals, books – Not patentable
 Over 80% of all U.S. patents contain
technology that is not disclosed or only
partially disclosed in the non-patent
literature.
 PD belonging to a given classification
subdivision (familly) contain a highly
concentrated supply of technically advanced
information on a given technological field.
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patent documents..
 Patent documents bear a date – duration
under legal protection.
 Patent documents -name and address of the
applicant, the patentee, and the inventor (s):
contact
 Patent documents often disclose not only
concepts concerning the general utility of the
invention,
Give detailed information on the possibility of
its application in industry.
 PDs information is not secret, it can be used
to support research and development
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ISO 9001:2008 Certified http://www.uonbi.ac.ke
patent documents..
Information on patent documents:
useful sources of technological
information
clear advantages over other
sources of information.
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USE OF PATENT INFORMATION..
Patents estimated at over 45
million.
A patent system has two functions:
 Protection
Information = POWER
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USE OF PATENT INFORMATION..
THE LOW UTILIZATION
OF
PATENT INFORMATION!!
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THE LOW UTILIZATION OF
PATENT INFORMATION!!
 British Patent Office millions of Pounds—are
wasted to develop things that are already developed
and documented in the description of patent
specifications
 40% of the patent applications in Austria do not lead
to a granted patent, because they do not contain any
new aspects.
 Costs for development and staff could be cut if the
relevant patent literature was consulted at an earlier
stage in the development- at proposal development.
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WHY USE PATENT INFORMATION?
 Acquire knowledge about existing/prospective
industrial property rights in the country (validity,
ownership, ...), particularly to avoid infringement
actions;
 Acquire knowledge about the state-of-the-art in a
specific technology in order to be aware of the latest
development;
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WHY USE PATENT INFORMATION?..
 Development of new products or processes;
 Identification of alternative technology and its
sources;
 Location of sources of know-how in the field in a
given country;
 Identification of new research trends at an early
stage.
 Solution of a specific technical problem;
 Improvement of an existing product or process;
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WHY SEARCHES
 To determine the general state-of-the-art for the
solution of a given technical problem as background
information for R&D activities
 To know what relevant patent documents already
exist in the field of the research activity;
 To identify alternative technologies which may
replace a known technology
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WHY SEARCHES..
 To evaluate a specific technology which is
being offered for license or which is being
considered for acquisition
 To locate information about published patent
documents involving specific companies or
individuals, such as applicants, assignees,
patentees or inventors
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WHY SEARCHES..
 To assist in determining the novelty or lack of novelty
of the invention claimed in a patent application or a
patent already granted, or even of an invention for
which no application has yet been filed
 To locate documents relevant to the determination
not only of novelty but also of other criteria of
patentability, such as the presence or absence of
inventive step
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WHY SEARCHES..
 To identify a member of a “patent family” which
could be useful in order to:
 Find the countries in which a given patent application
has been filed (if published);
 Locate the document that is written in a desired
language;
 Obtain a list of prior art documents or “References
Cited”;
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WHY SEARCHES..
Estimate the importance of the invention by
number of patent documents relating to the
same invention and being published in
different countries or by industrial property
organizations.
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WHY SEARCHES..
 To obtain information on the validity (status) of a
published patent application or a granted patent, on
a given date.
 Important in the negotiation of license agreements.
 Guide on the value attached to a particular patent by
the patentee.
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TOWARDS QUALITY
RESEARCH
TECHNOLOGY AND INNOVATION
SUPPORT CENTRE(TISC)
AT
UNIVERSITY O F NAIROBI
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TOWARDS QUALITY
RESEARCH..TISC@UON
What is TISC?
Technology and Innovation Support Centers (TISCs) is
joint WIPO-KENYA DEVELOPMENT project aimed
at:-
 assisting researchers, scholars, small and medium
enterprises and others to more fully exploit their
innovative potential;
 supporting researchers in creating and developing
new solutions to technical challenges faced on a local
and global level;
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TOWARDS QUALITY
RESEARCH..TISC@UON..
What is TISC?..
 assisting researchers to protect and manage their
intellectual property rights.
 Foster the development of appropriate, effective
and sustainable technology and innovation support
services
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TOWARDS QUALITY
RESEARCH..TISC@UON..
What is TISC?..
 Appropriate: Adapted to local needs and
conditions
 Effective: Delivers desired benefits to
stakeholders and the country
 Sustainable: Can ultimately be maintained using
locally available resources
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TOWARDS QUALITY
RESEARCH..TISC@UON..
TISC Project Objectives:
1. Facilitating access to databases FOR:

Patent (free-of-charge and commercial)
information
 Non-patent (scientific and technical journals)
information
2. Capacity Building



© UoN, 2013
Establishing Technology and Innovation Support
Centers (TISCs)
Training TISC staff – face to face and online
Organizing Regional Conferences
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TISC Project Services
Core services
 Access to patent and non-patent databases
 Assistance in using databases
Additional services (based on user need and office
capacity)
 Technology search services
 Patent analytical services
 IP Awareness-raising
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TOWARDS QUALITY
RESEARCH..TISC@UON..
Access to Free-of-Charge Databases:
 Regional and international
organizations e.g. PATENTSCOPE®
(WIPO), esp@cenet(EPO)
 National offices (e.g. USPTO, JPO)
 Private sector providers (e.g. Google
Patent, etc.)
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TOWARDS QUALITY
RESEARCH..TISC@UON..
Benefits of TISC
 Allow users to benefit effectively from
increased accessibility offered by internet
searches through direct personal assistance
 To strengthen the local technological base by
building up local know-how
 To increase technology transfer,
 To assist local users to create, protect, own
and manage their intellectual property rights
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TOWARDS QUALITY
RESEARCH..TISC@UON..
Capacity building: Distance learning
 DL-101: General course on intellectual
property
 DL-301: Patents
 DL-318: Patent information search
 …and many others
NB: Courses are FREE for TISC members
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TOWARDS QUALITY
RESEARCH..TISC@UON..
Access to Commercial Patent Databases and Journals:
 Access to Specialized Patent Information (ASPI)
program
 Access to Research for Development and Innovation
(aRDi)
 Other UN Programmes
-HINARI (WHO)
-AGORA (FAO)
-OARE (UNEP)
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ISO 9001:2008 Certified http://www.uonbi.ac.ke
TOWARDS QUALITY
RESEARCH..TISC@UON..
OVERALL IMPACT OF TISC
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ISO 9001:2008 Certified http://www.uonbi.ac.ke
TOWARDS QUALITY
RESEARCH..TISC@UON..
FOR FURTHER INFORMATION CONTACT
1. Prof. Julius MWANGI
ulius.mwangi@uonbi.ac.ke, 0722825966
2. Mr. Spencer Muthoka
spense.musyoka@uonbi.ac.ke, 0721572340
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ISO 9001:2008 Certified http://www.uonbi.ac.ke
TOWARDS QUALITY
RESEARCH..TISC@UON..
I THANK YOU FOR YOUR KIND ATTENTION
END
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