WIPO-ARIPO Sub-Regional Training of Trainers
Program on Effective Intellectual Property Asset
Management by Small and Medium Sized Enterprises
(SMEs) E’s TOT Training
Managing Intellectual Property Assets in
International Business
Joyce C. Banya
Senior Counsellor, Regional Bureau for Africa
Harare, Zimbabwe
November 26, 2014
Contents
Introduction
Taking the Decision to
Export
IP and Exports
Ten points for integrating
IP in an export plan
Conclusion
Introduction
Export trends in Africa:
Exports from Africa were worth about US$581.8 billion in
2013, up 58.7% since 2009. ( representing an estimated 3.2%
of total world exports.)
Based on statistics from the IMF World Economic Outlook
Database, the total Gross Domestic Product for all African
countries amounted to roughly $5.2 trillion in 2013.
Therefore, exports accounted for about 11.3% of Africa’s total
economic output.
Introduction (cont)
Given Africa’s population of about 1.1 billion
people, the total $581.8 billion in 2013 of
African exports translates to roughly $529 for
every person on the continent. This compares
with a benchmark $2,508 in exports per
person for the world’s total exports (assuming
an estimated global population of
7,174,611,584 per the CIA World Factbook).
Top African Export Countries-2013
In total, these 20 countries provided 92.4% of African exports during 2013
Nigeria: $96,276,470,000 (16.5% of total African exports)
South Africa: $95,224,783,000 (16.4%)
Angola: $70,980,070,000 (12.2%)
Algeria: $65,998,138,000 (11.3%)
Libya: $41,901,265,000 (7.2%)
Egypt: $28,779,409,000 (4.9%)
Morocco: $22,178,222,000 (3.8%)
Tunisia: $17,060,465,000 (2.9%)
Equatorial Guinea: $14,396,332,000 (2.5%)
Zambia: $10,700,492,000 (1.8%)
Congo: $10,470,889,000 (1.8%)
Gabon: $9,695,089,000 (1.7%)
Ghana: $9,419,832,000 (1.6%)
Côte d’Ivoire: $8,864,032,000 (1.5%)
Botswana: $7,712,623,000 (1.3%)
Namibia: $6,337,216,000 (1.1%)
Sudan (North and South): $6,158,851,000 (1.1%)
Kenya: $5,201,225,000 (0.9%)
Democratic Republic of the Congo: $ 5,143,985,000 (0.9%)
Cameroon: $4,928,257,000 (0.8%)
What role for IP ?
Taking the Decision to Export
Exporting involves considerable
investments in financial, managerial and
production resources.
Importance of an Export Plan:
to develop a clear export strategy
to determine a product’s readiness
for export
to determine if there is a market for the
product/service abroad
help to obtain funds for exporting
Taking the Decision to Export
Key issues when exporting:
identifying export markets
estimating demand
finding local partners and channels of distribution
adapting the product / design / brand / packaging
contractual agreements with export sales reps, distributors,
licensees, local manufacturers, etc
determining price
making transport arrangements
advertising and marketing the product
IP and Exports
IP is an important consideration for:
Pricing - of the product will partly depend on the
extent to which the trademark is recognized and
valued by consumers, and the extent to which the
product will face competition from rival products
Adaptation -of product / brand / design /
packaging, will involve creative or inventive work
that may be protected through the IP system
IP and Exports
In raising funds, patents, but also trademarks
may be important for convincing investors,
venture capitalists, etc.
In agreements with local partners it will be
important to clarify issues of ownership of IP
rights, particularly if the product will be
manufactured, packaged or modified abroad
IP and Exports
Marketing and advertising campaigns will rely strongly on
the trademark which if unprotected would be much more
difficult to enforce
The timing of participation in fairs may be affected by the
timing of your applications for IP protection
IP and Exports
Protecting IP in export markets may help a company to
prevent others from imitating or copying the product (or parts
of it) without authorization.
IP protection may enable a company to access new markets
through licensing, franchising, joint ventures or other
contractual agreements with other companies.
IP and Exports
Failure to consider IP issues may result in
fatal losses if your products are
considered to be infringing the rights of
others
Exporters often realize the importance
of protecting their IP once it is too late:
e.g. once they have missed the
deadlines for application or once their
product or brand has been copied.
10 points about the IP system to bear in mind
when integrating IP in an export plan
10 points for integrating IP in an export plan
1. IP rights are territorial rights
Example: if a company has applied for and
obtained patent protection for an innovative
product in its own country, it will NOT benefit from
similar protection in other countries unless
protection has also been obtained in those
countries.
10 points for integrating IP in an export plan
2. Important differences in IP laws world-wide in terms of:
legal requirements
how legal requirements are interpreted
what cannot be protected
the scope of rights
how a specific product may be protected: e.g. software,
works of applied art, new plant varieties
10 points for integrating IP in an export plan
3. Important differences in IP procedures worldwide
how applications are examined
how IP rights or applications may be challenged by others
how applications are to be drafted (e.g. claim drafting,
definition of classes of goods and services)
differences in options available to applicants, e.g.
provisional patent applications
Most countries require foreign applicants to hire a local
(resident) agent/attorney
10 points for integrating IP in an export plan
4. There may be different options for filing applications for IP protection
abroad (national, regional or international routes) and companies may be in a
position to choose their filing strategy based on issues such as:
Membership of international treaties
Countries in which protection is sought
Convenience of delaying payment of national fees and translation fees
Convenience of reducing certain costs
Time taken to register/grant the right through different routes
Type of examination conducted by different offices
10 points for integrating IP in an export plan
5. Decision on where to seek patent protection may be based on:
Where will the product be commercialized?
What are the costs involved in patenting in each jurisdiction?
What are the main markets for the product?
In which markets can you expect benefits from protection?
Where are the main competitors/potential licensees based?
What are the chances that you will be able to enforce your IP in case
of infringement?
Size of the market
10 points for integrating IP in an export plan
6. Timing of applications is key
Priority period: case of patents and industrial designs
Effect of 18 months publication of patent application
Reasons for applying early: first-to-file, time to grant,
important for licensing, etc.
Reasons for applying late: costs, further modifications to
the product, etc.
Priority period: the case of trademarks
10 points for integrating IP in an export plan
7. “Freedom to operate” analysis in relevant export markets
to avoid future problems
same or confusingly similar trademark may
already exist in the export market
technology not patented in one country may be
patented elsewhere
license to use a given technology in one country,
but not in an export market
Case study
Checking the Freedom to operate
When Nike tried to register its now famous “Nike” mark in
other countries of the world it found that, in Spain, the word
“Nike” had already been registered
many years previously (that is before Nike became famous)
by its distributor, a Spanish company called Cidesport. Nike
could only sell its products in Spain using the company’s
swoosh” logo, not the Nike name.
Recently, after many years of battling in the Spanish courts,
the Supreme Court of Spain granted Nike the right to use its
name.
10 points for integrating IP in an export plan
8. Clearly defining issues pertaining to IP ownership with
partners
if developing a new product with another enterprise,
establishing a joint venture, or modifying the design,
package or trademark of a product, important to ensure
that it is clear (preferably in a written contract) who will be
the owner of any IP generated.
10 points for integrating IP in an export plan
9. Ensuring there is no early disclosure
disclosure of product to trade partners (e.g. export sales
representatives) without non-disclosure agreement or
inclusion in a catalogue, brochure, etc. prior to applying for
protection may destroy novelty of the invention or design.
10 points for integrating IP in an export plan
10. Adequate protection in foreign market as a pre-requisite
to licensing/franchising in that market
Companies seeking to license the manufacturing of their
product in a number of markets, should ensure that their IP
is protected and is not in the public domain in those
markets (i.e. protection has been obtained and has not
expired)
Economic Tool
Competitive edge, market power and earning more money
Provides the exclusive right to commercialize the
innovative product in the selected markets
Facilitates the licensing or sale of an invention to foreign
firms
Increases the negotiating power of a firm vis-à-vis
competitors (particularly good for cross-licensing)
May enhance the image of the company (in the eyes of
investors, partners, consumers) as being technologically
developed
Facilitates the establishment of partnerships and joint
ventures in domestic and foreign markets
CONCLUSION
Challenges facing SME’s in Africa :
Lack of Competitiveness:
Products sold as commodities
Poor or no value addition
Low quality
Appearance is not attractive
Lack of technological innovation
Lack of use of IPRs (products not protected no
TMs)
Challenges facing SME’s in Africa:
DIFFICULTIES TO ACCESS REGIONAL AND
INTERNATIONAL MARKET
New obstacles to trade: norms, laws, certification.
Difficulties to compete with international companies.
Most SMEs are working on government Procurement
LACK OF TECHNOLOGICAL INNOVATION
No innovation, we follow the trend
Need to develop new or alternative process
Need for alternative raw material
Challenge Facing SMEs in Africa
LOW ACCESS TO FINANCE SERVICES
Access to financial institutions is difficult
Business environment is not attracting investors/ and or
FDIs in the private sector
LACK OF ABILITY AND CAPACITY TO MEET MARKET
DEMANDS AND NEEDS
Low efficiency and effectiveness
Inability to produce big quantities
Lack of standardization of products