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African Journal of Intellectual Property
Volume 1 Number 2 June 2017
ISSN: 2520-3304
Vision
To be Africa’s leading intellectual property hub
Mission
To foster creativity and innovation for
economic growth and development in Africa
Core Values
Client-focus
Engagement
Innovation
Integrity
Accountability
PATENTS | TRADEMARKS | UTILITY MODELS | INDUSTRIAL DESIGNS | TRADITIONAL
KNOWLEDGE | PLANT VARIETIES | COPYRIGHT | GEOGRAPHICAL INDICATIONS
www.aripo.org
African Journal of Intellectual Property
Volume 1 Number 2 June 2017
The African Journal of Intellectual Property is jointly published twice a year by Africa University and
the African Regional Intellectual Property Organisation (ARIPO).
© Africa University and ARIPO, 2017
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ISSN: 2520-3304
African Journal of Intellectual Property
INTERIM EDITORIAL COMMITTEE
CONTRIBUTING AUTHORS FOR THIS ISSUE
CONTRIBUTING REVIEWERS FOR THIS ISSUE
Managing Editor Munani Mtetwa
Mr Emmanuel Sackey, African Regional Intellectual Property Organisation, Zimbabwe
Mr Byson Sabola, African Regional Intellectual Property Organisation, Zimbabwe
Mr Charles Satumba, African Regional Intellectual Property Organisation, Zimbabwe
Mr Outule Rapuleng, African Regional Intellectual Property Organisation, Zimbabwe
Mr Christopher Munguma, Africa University, Zimbabwe
Mr Gabriel Muzah, Africa University, Zimbabwe
Mr George Mandewo, Africa University, Zimbabwe
Mr Munani Mtetwa, Africa University, Zimbabwe
Mr Misheck Banda University of South Africa
Ms Uchenna Felicitas Ugwu University of Ottawa, Canada
Mr Obi Chinedu Ghent University, Belgium
Mr Timothy Manyise Ghent University, Belgium
Prof Roberta Moruzzo University of Pisa, Italy
Mr Dan-Habu Saratu BB Dan-Habu and Co., Nigeria
Ms Lorraine Ogombe The Judiciary, Kenya
Mr Gift Sibanda Professor Amos Saurombe
Ms Brenda Matanga Mr Emmanuel Sackey
Professor Mpazi Sinjela Professor Caroline Ncube
Dr Moredreck Chibi
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Correspondence to: Munani Mtetwa, Managing Editor on ajipjournal@africau.edu
African Journal of Intellectual Property
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TABLE OF CONTENTS
FROM THE MANAGING EDITOR....................................................................................viii
PROTECTED GEOGRAPHICAL INDICATION IN SUB-SAHARAN AFRICA:
ISSUES AND IMPLICATIONS
Obi Chinedu, Timothy Manyise and Roberta Moruzzo ..........................................................79
CHALLENGES FOR THE HARMONISATION OF AFRICA’S INTELLECTUAL
PROPERTY SYSTEMS THROUGH THE PAN-AFRICAN INTELLECTUAL
PROPERTY ORGANISATION (PAIPO)
Misheck Banda ......................................................................................................................99
JUSTIFYING EMPLOYER OWNERSHIP OF PATENT AND DESIGN RIGHTS IN
NIGERIA AND KENYA
Saratu Dan-Habu ...............................................................................................................107
THE SUITABILITY OF INTERNATIONAL INTELLECTUAL PROPERTY LAWS
FOR PROTECTING TRADITIONAL KNOWLEDGE AND INDIGENOUS
INNOVATIONS IN AFRICA
Uchenna Felicia Ugwu .......................................................................................................116
BALANCING ACCESS AND INNOVATION IN PATENT ENFORCEMENT: A
COMPARATIVE ANALYSIS OF THE ROLE OF THE JUDICIARY IN KENYA AND
INDIA
Lorraine Ogombe ................................................................................................................128
10 African Journal of Intellectual Property
FROM THE MANAGING EDITOR
This issue, the second of the African Journal of Intellectual Property (AJIP)
tackles a diverse range of topics from Geographical Indication in sub-Saharan
Africa, to Africa’s intellectual property systems, access and innovation in
patent enforcement, employer ownership of patent and design rights, and the
suitability of intellectual property laws for protecting traditional knowledge
in Africa. The contributing authors come from equally diverse backgrounds;
legal practitioners including a magistrate, and academics including a professor,
PhD students and a researcher.
In their article, Chinedu et al. argue that whereas the emergence of Protected
Geographical Indication as an intellectual property right has brought
opportunities and challenges, and many countries have taken measures to
protect their origin-linked food products, countries in sub-Saharan Africa
seem to lag behind. This article examines the contemporary issues surrounding
the establishment of PGI in sub-Saharan Africa and describes some benets
linked to their development.
Banda, while calling for a uniform intellectual property system for Africa
through the Pan-African Intellectual Property Organisation (PAIPO), notes
that not much progress has been registered due to the challenges that stand
in the way of establishing a Pan-African intellectual property organisation,
which would have seen the harmonisation of ARIPO and OAPI systems.
The article by Dan-Habu questions whether the corporate entitlement to
patent and design right at the expense of the individual author is justiable
and demonstrates that corporate ownership of patent and design right is more
practical to business operation than any other ownership structure.
Ugwu’s article analyses how international intellectual property laws of African
countries can be utilised as a tool for advancing indigenous innovation and
protecting traditional knowledge. The article also examines the relationship
between innovation and IP, and identies the legal principles that are best
able to reconcile IP regulation with public interests like TK and indigenous
invention.
Ogombe posits that courts play a critical role in enforcing patent rights and
that for pharmaceutical and medical related patents in particular, the exercise
of judicial authority frequently requires the balancing of two conicting
rights, that is, property rights versus human right to health.
We hope you will enjoy reading this issue of the African Journal of Intellectual
Property.
Munani Mtetwa
viii
79
Vol. 1 No. 2 June 2017
PROTECTED GEOGRAPHICAL INDICATION
IN SUB-SAHARAN AFRICA: ISSUES AND
IMPLICATIONS
Obi Chinedu
Erasmus Mundus Scholar, Ghent University, Belgium
Timothy Manyise
Erasmus Mundus Scholar, Ghent University, Belgium
Roberta Moruzzo
Professor of Veterinary Science, University of Pisa, Italy
Abstract
The emergence of Protected Geographical Indication (PGI) as an intellectual property
right has brought opportunities and challenges to Sub-Saharan Africa (SSA). While
many countries have taken measures to protect their origin-linked food products,
countries in SSA seem to lag behind. The difculty in doing so would not only cause the
usurpation of their intellectual property rights but also preclude them from enjoying
the economic and cultural benets accruing from PGI. This article aims to examine
the contemporary issues surrounding the establishment of PGI in SSA. We rst
briey present the overview of PGI and then we describe some benets linked to their
development. We identied 145 potential Geographical Indications (GIs) in SSA and
make a case on why they are yet to be protected. Slightly agreeing with earlier studies,
we conclude that poor institutional framework coupled with inadequate capacity are
the major factors hindering the development of GI in SSA. Finally, we provide policy
considerations to tackle these challenges.
Introduction
The global transformation resulting from market liberalisation and development
of large retail outlets have necessitated people to be conscious and protective of
what they consume (Biénabe and Marie-Vivien, 2015; De Groote and Kimenju,
2008; Grote, 2009). Food safety is becoming essential to consumers due to a
general income increase, which results in a change in food preference and
eating habits (Bramley et al., 2003). Recently, food information, quality, and
certication have become even more important than the price of food (Banerji
et al., 2016; Herzfeld, Drescher, and Grebitus, 2011; Obayelu et al., 2015). For
Hughes (2009) reputation and information have become the selling point of
food in the contemporary world. Many people are now willing to pay more
for “sustainable foods” which include environmental friendly food and origin-
linked food (Balogh et al., 2016; Feldmann and Hamm, 2015; Ingenbleek,
2015; Loureiro and Umberger, 2003; Skuras and Vakrou, 2002). Therefore, the
80 African Journal of Intellectual Property
territorial origin is now a strategic tool for food product differentiation and
origin-linked food concept has spread widely (Bramley et al., 2003).
Origin-linked foods have unique characteristics which distinguish them from
similar products. These characteristics could be due to the peculiarity of the
geographical territory from which they originate, the indigenous knowledge of
the local producers, or other qualities such as a peculiar method of production,
colour or taste (Giovannucci et al., 2009; Vandecandelaere, et al., 2010). The
reputation accorded to these food products can improve their market values as
well as generate other non-economic benets such as preservation of cultural
heritage and environment sustainability. Due to their peculiarities and collective
acceptance, origin-linked food products are often given famous names or
signs necessary for recognition and differentiation. These signs or names are
generally regarded as Geographical Indication (GI), and when they are certied
and protected by law, they are called Protected Geographical Indication (PGI).
Therefore, it is worthwhile to note that not all origin-linked products are GI and
not all GIs are protected (Thevenod-Mottet, 2006). Conversely, PGI is used to
protect GIs against misuse, misappropriation, and bio-piracy. When consumers
are willing to pay more for GI products, the urge for usurpation becomes
tempting, therefore, it becomes necessary to protect GI to enjoy what it offers
(Chabrol et al., 2015).
Although the concept of GIs existed in many countries for centuries, the
international effort to identify and protect them from infringement was done
in the last century. Whereas many countries like India, China, Thailand and the
European Union have structured their market, identied these products and
gained substantially from their certications, in Sub-Saharan Africa (SSA), this
opportunity is yet to be tapped. There is a huge research gap in studies focusing
on the development of GI in SSA due to a scanty scientic literature (Bramley et
al., 2003; Chabrol, et al., 2015). Furthermore, the few studies conducted showed
that institutional environment poses the biggest challenge for the development
of GI in the region (Egelyng et al., 2016; Biénabe and Marie-Vivien, 2015; Chabrol
et al., 2015). As such, the available GIs have not been given the needed attention
by individual government, leaving the job of identication and registration of
the products to two regional institutions, ARIPO and OAPI. The research on the
development of GI starts with the identication of the origin-linked product,
and many of such researches have been carried out by both the regional and
national institutions. However, there is yet to be a comprehensive list of the
identied potential GIs available in the region. As a result, the opportunities
that PGI presents are not harnessed, and the SSA countries face the risk of their
GIs being infringed by other countries or becoming generic.
Against this backdrop, this article aims to highlight the potential benets and
opportunities available for the protection of GI in SSA. It tries to provide the
most up to date list of potential GIs available in SSA that are found in scientic
literature. It also examines the challenges of developing PGI in SSA and suggests
81
Vol. 1 No. 2 June 2017
policy recommendations to overcome these challenges. Our work is quite
descriptive. However, it raises a number of questions about the development
of PGI in SSA. We proceed as follows: rst, we give the overview of GI and
the benets linked to the development of PGIs. Second, we review a synthesis
of existing literature from peer-reviewed journals and scientic web pages,
focusing on cases studies of PGIs in SSA. Third, we reect on the implications
of the PGIs for SSA countries and examine the related challenges. Fourth, we
describe the setting up and implementation framework which should support
the development of the PGIs in SSA.
Meaning of Geographical Indication
Scholars seem not to vary in their denitions of Geographical Indication (GI),
however, they have dened it under different perspectives. For instance, some
scholars have associated GI as an intellectual property right (Blackwell, 2007;
Hughes, 2009; de Beer, et al., 2014); others have seen it as an institutional
construction (Belletti et al., 2015), while still others see it as just a sign or
symbol (WIPO, 2004). Nevertheless, the underlying information is that GI is an
instrument used to identify origin based products. Specically, for Giovannucci
et al., (2009) it is any “indication” that identies origin-linked products that
have peculiar attributes linked to the places where they are produced while
building up a reputation over time. In a related version, Biénabe and Marie-
Vivien (2015) observed it as a “name” associated with a good originating in a
place, where a given quality, reputation, or other characteristics of the good is
essentially attributed to its geographical origin.
In EU and other countries, a different concept has been used to promote and
protect the indications/names of these types of products. The names used
include “Protected Designation of Origin”, “Traditional Specialties Guaranteed”,
“Protected Denomination of Origin”, “Appellation of Origin”, and “Protection
of Traditional Knowledge”. Although they refer to slightly different meaning,
for the purpose of clarity, this article will refer to all these concepts generally
as PGI, as done by Belletti et al., (2015). PGI is a framework for certifying a
product which originates in the territory of a country, or a region or locality
in that territory, where a given quality, reputation or other characteristic of
the product is essentially attributable to its geographical origin (TRIPS, 1994;
rephrased by Author).
GI products cover both agricultural and non-agricultural products. In some
countries like China, India, South Korea and Colombia, it has extended to
handicrafts, garments, hats, potteries, woodcarvings, ornamental owers,
traditional medicine, tobacco (Egelyng et al., 2016). Globally, some famous GIs
An Overview of Geographical Indication (GI)
82 African Journal of Intellectual Property
include Camembert de Normandie, Parmigiano Reggiano, Basmati, Mocha, Ceylon,
Champagne, Havana, Parma ham, Darjeeling tea and Rooibos (Blackwell, 2007).
The number of GIs varies in different countries (Table 1) and obtaining the
correct number of registered GIs is very difcult. This is because, in many
countries, the list does not exist and in some countries where it exists, more
than one of such databases are kept. For instance, in EU about four databases
are maintained; DOOR for foodstuff, E BACCHUS for wine, E SPIRT DRINKS
for spirits, and EUIPO database. A similar challenge was also found in the
IP website of Brazil, where two databases are kept. More so, the number of
registered GIs is being constantly updated as new products are registered. This
has resulted in irregularities in the number of GIs reported by scholars.
Origin of Geographical Indication
Although the rst effort to make a global recognition and certication for GI
started in the late 1800s, GIs have been in existence for a longer time. The origin
was traced as far back as ancient Egypt, Greece and Chinese histories, where
it was used during the building of pyramids in Egypt to identify reputable
bricks, and in ancient Greece it served as a sign of quality wine (Grote, 2009;
Egelyng et al., 2016). However, the initial effort to espouse a common method
of recognising origin-linked products was during the Paris Convention on
the Protection of Intellectual Property in 1883 (Blackwell, 2007; Sharma and
Kulhari, 2015; WIPO, 2004). Though GI was not a stand-alone concept from
the articles of the convention, it is embedded in the “Appellation of Origin”
and “Indication of Source” which were provided as means of protecting
intellectual property right (Egelyng et al., 2016). An Indication of Source means
any expression or sign used to indicate that a product or service originates in
a country, a region or a specic place, and “Appellation of Origin” means the
designation of a product by the name of the place where it derives its unique
characteristics. These denitions were combined in later conferences to mean
Geographical Indication.
Table 1: Number of Registered GIs in Selected Countries
Country Registered GIs Source
European Union 4 915 EUIPO, (2016)
India 282 IPIndia, (2017)
China 2 790 SAIC, (2015)
Thailand 87 DIP, (2017)
Belarus 31 National IP website
USA 206 (Mendelson and Wood, 2013)
Georgia 37 National IP website
Brazil 59 National IP website
Chile 18 Inapi, (2016)
Columbia 23 National IP website
83
Vol. 1 No. 2 June 2017
Legislative ways of protecting Geographical Indication
There are many legislative ways of protecting origin-linked products. Since the
international IP treaties could not produce a common legal means of protecting
GI (Biénabe and Marie-Vivien, 2015; Giovannucci et al., 2009), different
countries have adopted different means to do so. These have given rise to four
known means of protecting GI in literature (Belletti et al., 2015; Henson, et al.,
2011). They include protection through trademark laws, as a separate GI law
(sui generies), law against unfair competition, and government labelling rules
and regimes.
From these four methods, two competing procedures have emerged (Blackwell,
2007):
1. collective or certication trademarks of the USA where the origin base
products are protected in a similar way as any other trademark;
2. Sui generis legal framework of the EU, where there is a separate law for
protecting geographical indication.
However, whichever method any country adopts, protecting origin-linked
products have been found to have great benets to the country (UNCTAD, 2015;
WIPO, 2004). Nevertheless, this article makes the case for a “strong grounded
approach” for the certication of GI (Bramley and Bienabe, 2012), preferably
through the enactment of a separate GI law or dedicating a chapter of existing
national IP to Geographical Indication.
Promoting Rural Development
Protecting geographical indication can help in a rural development process
through the generation of rural employment and income for farmers. For
instance, in their work Vandecandelaere et al. (2010) observed that PGIs have
generated increased and better quality rural employment in Europe. Belletti
et al. (2015) conrmed this by stating that the valorisation of GI products can
increase rural welfare and enhance the sustainable development in rural areas
of any country. The reputation built around PGI products serves as goodwill
which can easily be converted to extra income to local farmers, open doors for
agro-tourism and eventually create valuable rural employment.
Market Creation
Another benet of PGI is that it creates a market for goods and helps the local
product to enter the international market. Where it has been certied, GI
products have been shown to improve the economy and open up more markets.
Bramley and Bienabe (2012) observed that GI can offer quality signalling and
Benets of Protecting Geographical Indication
84 African Journal of Intellectual Property
assurance of the authenticity of products, help in product differentiation,
market access and the capture of producer premium. For example, since its
institutionalisation as GI, there has been a constant increase in the export of
Basmati rice from India to UK, Saudi Arabia, Iran, and Kuwait which have
amounted to about ve billion USA dollars in 2014 alone (Biénabe and Marie-
Vivien, 2015). In the EU, products like Champagne and Parmigiano Reggiano have
become household names that depict quality and premium value. This conrms
that consumers are willing to pay more for PGI products since it accords the
consumers prestige, and also assures them of the safety and authenticity of the
origin of the products they consume.
Preservation of Culture and Environment
PGIs help to recognise and ensure the sustainability of local intellectual heritage,
culture, and the environment. Belletti et al. (2015) observed that GI is becoming
a global phenomenon and many countries have adopted it as it is relevant in
the preservation of cultural heritage, promotion of sustainable agricultural
practices, protection and remuneration of traditional knowledge and genetic
resources. The economic benet emanating from PGI ensures that the local
identity is preserved and the environmental conditions that are generating
the products’ uniqueness are managed effectively. This was observed in the
work of Vandecandelaere et al., (2010) where they showed that a vicious circle
is activated in the process of registering GI, which has the ability to ensure
effective environmental management.
Prevention of Infringement and Unnecessary Cost
PGIs help to monitor and prevent infringement and usurpation (EU, 2016).
Infringement occurs when other people use a GI which does not belong to
them for marketing similar goods. In the event of no legal protection, real
owners often face enormous cost, that includes the cost of inspection against
infringement (Giovannucci et al. 2009), legal battles for usurpation (Biénabe
and Marie-Vivien, 2015; Hughes 2009), and associated market failures due to
free riding activities (Bramley et al., 2003). In 2014, about nine percent of EU’s
GI products market were infringed which summed up to a value of over four
billion euros, and about 2.3 billion euros were unjustly paid by consumers who
were deceived that they are buying genuine GI products (EUIPO, 2016). Many
cases have been shown in literature where a huge amount of money was lost
during legal tussles between countries due to misuse of GI (Biénabe and Marie-
Vivien, 2015; Chabrol et al., 2015; El Benni and Reviron, 2009). Particularly, the
case of South Africa and USA over the use of Rooibos was settled after 10 years
and nearly one million USD were wasted in legal fees (El Benni and Reviron,
2009). Therefore, early certication and protection of GI products help to avoid
all these issues and losses. It enables the genuine owners to enjoy the gift of
nature and discourages others from interfering.
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Vol. 1 No. 2 June 2017
Opportunity for International Co-operation
Finally, the process of institutionalisation of PGI can help to create an
international partnership. Although negotiation is still on-going for a
harmonise d GI registration system around the world, through bilateral or
regional trade relations, it is becoming easier to institutionalise GI thereby
creating opportunities for cooperation in the process. For instance, the report
from EU (2012) shows that they are willing to partner with ACP countries in
developing a sui generis registration system. O’Connor and Company (2005)
listed some of the examples of bilateral agreements concluded by the European
Commission (EC) for protecting GIs in third party country. They include the EU-
Australia agreement on trade in wine (1994), Canada and EU on trade in wines
and spirits (2002), EC-Mexico agreements on Designations for spirited drinks
(1997), Agreement between EC and South Africa on Wine and Spirits (2002).
They observed that these agreements can help to build a stronger economic and
political relationship between EU and participating countries.
Furthermore, the international community is bounded by the TRIPS agreement
to recognised goods that have been accorded GI title in member countries.
Therefore, to quicken the process of recognition, origin base products can be
protected in foreign countries if local law is yet to be enacted. A good example
of GI products which beneted from this process includes Champagne and
Ethiopian coffee which have been registered and recognised in foreign countries
(ARIPO, 2012). Other countries like Thailand, Brazil, and China have registered
foreign GIs, thereby improving the trade relation with such countries.
The Institutions
There are three institutional frameworks through which SSA countries could
develop their GIs. First, it is through the international treaties and many
countries in SSA are members of international treaties such as Paris Convention,
the Madrid Agreement on Indication of Source, the Lisbon Agreement and the
TRIPS Agreement (Table 2). Specically, excluding South Sudan, all countries
in SSA are members of the World Intellectual Property Organisation (WIPO).
As a benet of their membership, they are empowered to register their GI in
another country and prohibit other countries from using an established GI from
the region.
Secondly, two intellectual property rights organisations exist at the trans-
regional level in SSA. The Organisation Africaine de la Propriété Intellectuelle
(Africa Intellectual Property Organisation, OAPI) which covers 17 French
speaking countries, is headquartered in Yaoundé, Cameroon and the African
Regional Intellectual Property Organisation (ARIPO) accounts for 19 mainly
Anglophone countries in its membership, is managed in Harare, Zimbabwe. In
Protecting Geographical Indications in sub-Saharan Africa
86 African Journal of Intellectual Property
2001, the OAPI with the support of WIPO and the French government initiated a
pilot project covering the establishment of eight products as GI in four member
countries (Hughes, 2009) of which three have successfully been registered by
the organisation, namely, Oku White honey, Penja Pepper, and Ziama Macenta.
ARIPO on the other hand signed a Stone Town Administrative Memorandum
of Understanding with EU in 2012, with the commitment to working together
to help build capacity and promote the practical use of GIs across Africa
(ARIPO, 2015; European Commission, 2012). An effort has been made by the
two sister IP organisations to harmonise their systems and mutually cooperate
in the development of GI in the region. In 2017, the organisations entered a
new agreement that requires that either party offers technical assistance when
requested and take a common position on major IP issues affecting the member
states.
Thirdly, almost all countries in SSA have a form of legal regime for GI protection
either through a trademark or separate GI law. About half of the countries whose
potential GIs were reported in this article have a separate national GI Act existing
as a stand-alone law or a subject matter in their main IP law. Furthermore, the
member countries of ARIPO and OAPI can protect their GI under the framework
of the Lusaka and Bangui Agreements respectively. Although subscribing to the
membership of the regional IP institution is necessary for the development of
GI, it is however not sufcient. The study of Uluko, Oyewunmi and Mandewo
(2012) opined that by a mere revision of the trademark regimes or adoption of
a simplied sui generis system, many potential GIs in SSA can be protected at
national level. While having a separate national GI law will reduce the huge
burden on the trans-regional GI institutions, it will present a great opportunity
for a tailored and grassroots oriented approach.
The GIs
There are many origin-linked products in SSA which can generate much
economic benet if protected and animated. From Rooibos tea in South Africa
to Sissili shea butter in Burkina Faso, many products in the region have built
reputation globally but few have been registered. The list of potential GIs in
SSA is shown in Table 3. The GIs were collated from scientic literature and
IP websites. A total of 145 potential GIs were found. The products include
Table 2: Membership of African Countries in Treaties Relevant to GI
Protection
Name of Treaty Total Membership Number of African Countries
The Paris Convention 173 47
The Madrid Agreement 35 4
The Lisbon Agreement 26 6
The TRIPS Agreement 153 41
Source: ARIPO (2012)
87
Vol. 1 No. 2 June 2017
foodstuff, handicraft, and traditional specialties but excluding wines and
spirits. It also includes the three products that were registered by OAPI and
some other products that were registered in foreign countries like Rooibos tea.
It is important to assert that the collection was done within the limit of the
authors, and there would be many more potential GIs which were not reported.
The compilation was done from several scientic literatures. The nal column
shows if there is yet to be a dedicated national GI bill in the countries listed.
This information was obtained from the WIPO website as at February 2017.
Table 3: A List of 145 Potential Geographical Indication Products in SSA
Country Potential/Registered GI National GI Act
Botswana** Ghanzi Beef, Ngami/Nhabe Basket Subject Matter in the
Industrial Property Act, 2010
Benin* Savalou gari, shea butter No
Burkina Faso* Massina Kwite butter, Faso Shea
butter, Souou green beans, Bobo for
plank masks
No
Cameroon* Oku white honey, Penja pepper No
Chad* High-grade cotton Subject Matter in Law No 005
/ PR /2003
Congo* Kivu, Ituri for coffee Subject Matter in Decree No.
2001-238
Ethiopia Harenna wild coffee, Wenchi volcanic
honey, Wukro honey, Forest Pepper
No
Gabon* Sweet potato, Okoumé Timber No
Ghana** Ghana cocoa, Kente cloth Geographical Indication Act,
2003
Guinea* Mafeya pineapple, banana Conakry,
chili de Mamou, Diama coffee, Ziama-
Macenta robusta coffee, Boké palm oil
No
Cote d’lvoire* Korhogo fabrics, Man Mountain rice,
Atcheke of Grand Lahou
No
Kenya** Kenya (Arabica) Coffee, Cut Flowers,
Kiondo (sisal handbags), Kisii
Soapstone Ornaments, Wamunyu
handicrafts, Kakamega Wild silk,
Kenya tea, Mwinigi honey, Mt. Kenya
coffee, Gathuthi tea, Kisii tea, Kericho
tea, Kangeta, Miraa, Meru potato,
Kikuyu grass, Mombasa mango,
Machakos mango, Asembo mango,
Muranga bananas, Kisii bananas,
Molo lamb, Kitengela ostrich meat,
Subject Matter in Protection
of Traditional Knowledge and
Cultural Expression Act, 2016
88 African Journal of Intellectual Property
Omena sh, Mursik milk, Keringeti
mineral water, Tsavonite, Magadi
soda, Kenyan kiondo, Naivasha
wine, Kakamega Papaya, Kakamega
omukombera, Tilapia sh from Lake
Victoria sh, Lake Turkana sh,
Akamba carvings, Maasai attire, beads,
Machakos Honey, Bixa, batiks, Gum
Arabic, paw-paw wine, Ukambani
honey, Ngoe mangoes and Khat-
(Miraa)
Madagascar Mananara vanilla, Pink rice from
Amparafaravola Imraguen
No
Malawi Mzuzu coffee, sh (Chambo sh),
peanuts, tobacco, macademia nuts,
chillies, Malawi tea,
No
Mali* Dogon Shallot Subject Matter in Industrial
Property No.87 18/AN-RM
Mauritania* Imraguen women’s mullet bottarga No
Mauritius Chilis, pickles, beeswax, Petit piment
cont, Aigre-doux de limons, Piment
de manges, Piment de limons, Piment
de papayes, Achard Bilimbi longue,
Achard de carambole, Achard de
limons, Piment de Tamarin, Pâte de
piment rouge, Pâte de piment vert,
Achard de fruits de Cythère, Demerara
Sugar, Baie Topaz Red Beans, Piment
Rodrigues, Bois Cherie Tea, Tai So
Litchi, Cut Flowers, Rodrigues Honey,
Rhum St Aubin, Café de Chamarel
Geographical Indication Act,
2002
Mozambique** white prawn, tete goat meat Subject Matter in Industrial
Property Code 2015
Namibia** Kalahari Melon Seed Oil, Karakul fur No
Niger* Galmi Purple Onion No
Nigeria Yam, Kola nut GI for Wine Regulation 2005
Rwanda** Rwanda coffee (Red Bourbon Arabica) Subject Matter in IP law No.
31/2009
Senegal* yêtt de Joal, Fruits from Lower-
Casamance
No
South Africa Rooibos, Honeybush tea, Karoo Lamb,
Camdeboo Mohair, Klein Karro
Ostrich, Aloe Verox, Idumbe, Hoodia,
Bhugu, several wines
GI for Liquor and Methylated
Regulations, 2004
89
Vol. 1 No. 2 June 2017
Tanzania Konyagi (alcohol), Kilimanjaro coffee,
M’Bigoiu for sculptures, Zanzibar
Cloves, high value vegetables, cut
owers, Kyela Rice, Kilimanjaro
Sugar (TPC), Kilimanjaro Aloe Vera,
Tanzanian Peaberry
No
Uganda** Waragi (alcohol), Barkcloth (Ladies
bag)
Geographical Indication Act,
2013
Zimbabwe** Tobacco and Chipinge coffee Geographical Indication Act,
2001
*Member of OAPI, **Member of ARIPO
The Market
Although, there is yet to be a comprehensive study on public perception and
willingness to pay premium prices for PGI in SSA, related studies conducted
in SSA countries on GI tend to suggest that the local people are willing to pay
more for origin-linked products (de Beer et al., 2014; Chabrol et al., 2015). For
instance, in Mali, the preference for the highly priced shallots over onions is
because it serves as a cultural heritage and identity. Secondly, urban dwellers
in SSA have been found to purchases foods coming from their state of origin
in order to reconnect to their roots and traditions. Thirdly, the study of Uluko
et al. (2012) showed that Malawian consumers are not only inuenced by price
but also the GI associated with a product. This is in line with the concept of
solidarity identied by Belletti et al. (2011) and Reviron, et al. (2009). GI helps
to form networks which encourage cooperation and solidarity among people
of common origin.
Furthermore, the evidence from the registered GIs in SSA shows that when
legally certied and effectively marketed, the GI in SSA have the capacity to
increase sales, achieve a higher selling price, and access export market easily.
The case study of the rst three GI products to be registered by OAPI was done
by Chabrol et al. (2015). They showed that for Oku white honey of Cameroon,
the selling price increased 100 percent in ve years from €40,000 to €80,000.
The reason of this is that the uniqueness of the honey became recognised by
the inhabitants of the territory where it is produced. Unlike previously where
it was considered defective by the local people due to its white colour, the
revalorisation through GI registration improved its market value. More so, they
reported that the demand for the product is growing in large cities. This is
similar to the case of Penja pepper where both production and price increased
by 50 percent, and the products are currently being exported. Finally, for Ziama
Macenta coffee of Guinea, the GI development equally opened the international
market for the product.
With the availability of a great number of potential GI, the legal regimes, and
positive impact studies, it becomes a thing of wonder why many countries
90 African Journal of Intellectual Property
Institutional Challenge
While many countries in SSA have a regime for GI protection, as shown in Table
3, the literature shows that in some countries in SSA the available trademark
regime is inadequate in protecting GIs (Hirko, 2014; Uluko et al., 2012). Kenya,
for instance, has more than 45 potential GIs and a Trademark Act, but the delay
in passing the GI bill was the major factor preventing the registration of their
GIs. A similar reason was given for Malawi by Uluko, et al. (2012) where it was
observed that the available Trademark Act needs to be revised to meet current
expectations.
Although having ratied the TRIPs agreement, many countries in SSA are still
xed in their bid to choose between the USA trademark certication regime
or the EU separate sui generis system for GI protection. The lack of agreement
on method tends to compromise the regional effort for enforcing a common IP
rights regime. The mutual cooperation between ARIPO and OAPI in achieving
a unied legal framework and method for identifying GI is therefore very vital
to solving this issue. Secondly, some countries have shown an effort to enact
a separate law for GI protection; however, in most cases the process has been
delayed. For instance, Egelyng et al. (2016) showed the case of the Kenyan GI
bill which was later enacted after almost 10 years. Thirdly, in countries where
the bill is available, enforcement of such laws is poor. Zimbabwe crafted the
GI Act in 2002 but only to make it operational in 2016 (Nyakotyo, 2013; ZIPTA,
2016). This represents a delay of more than a decade and a loss of opportunities.
Having seen that the enactment of separate GI laws has helped to revalorise GI
products in India, China, and Thailand, it is opined that SSA nations should
strive to urgently amend their IP laws to allow a seamless registration process.
Resource Challenge
The registration and protection of GI is an investment that requires resources
(African Union - European Union Workshop, 2011; Blakeney, 2009). In the case
of protection, adequate resources in the form of nance in different jurisdictions
are a precondition for the effective management of the GI system (Blakeney
and Coulet, 2011). However, a majority of countries in SSA are low-income
countries, hence a GI development system can put pressure on the already
meagre government revenue.
Vandecandelaere et al. (2010) emphasised the need for skilled and experienced
personnel from identication, qualication, remuneration to reproduction
of potential GI. However, the skills to identify the unique characteristics
Challenges in Developing GI in sub-Saharan Africa
in SSA still lag behind in the development of their GIs. The following section
presents the factors hindering the successful implementation of GI in the region.
91
Vol. 1 No. 2 June 2017
of products is a challenge in SSA and the capacity to monitor infringement
and enforcement of IP rights is also poorly developed (Petit and Ilbert, 2015;
Mengistie, et al, 2012; Musungu et al., 2008). This perhaps stems from the fact
that GI valorisation is a relatively new concept in the region, hence there is a
general lack of experience which is a very important factor if success is to be
realised. In this vein, it is important to point out that though legal institutions
exist for most countries, PGI is a recent phenomenon that needs awareness
(O’Connor and Company, 2005). Therefore, it is important that the public is
enlightened about the signicance and potential of GI products.
Finally, protection of GI requires knowledge about supply and value chains
(Musungu et al., 2008). The majority of cases of imitation and bio-piracy as well
as misuse of GI names are a result of unclear and inadequate knowledge of what
happens when a product leaves the farm gate. A number of studies found that
the majority of producers are not aware of the destination of their products, let
alone port of export and retail prices (John, et al., 2016). These studies suggest
that most of the rural stakeholders who are supposed to be involved in the
registration and management of GI products have limited knowledge of value
chain and activities which is a challenge for the development of GIs.
Territorial Challenge
GI is a collective mark that protects origin-linked products from a particular
delimited territory (Vandecandelaere et al., 2010). It, therefore, requires
collaboration and compliance among members of the community, especially
the producer’s group in which case, well-organised producer groups are a
necessary condition for GI valorisation (Hirko, 2014). However, such producer
groups are quite complicated in SSA countries. In most SSA countries, studies
showed that many producer organisations collapsed after the 1990s structural
reforms and efforts to revitalise such groups require not only a big push but
compliance with International Cooperative Alliance principles.
Furthermore, the existing producer groups are faced with a myriad of
challenges that could hinder them from participating in GI development. GI
products are mostly products from marginalised or remote areas, and the local
organisation may not be aware of the economic opportunities that are hidden
in their foodstuff or traditional knowledge. Furthermore, the disconnection
between the urban and rural areas where these products are found, the poor
rural infrastructure, low education, and the existence of rural stakeholders with
divergent interests can pose challenges for GI elaboration in rural territories in
SSA.
Tomspon, et al. (2009) studied the challenges and opportunities for strengthening
farmers organisations in Africa. Drawing lessons from rural areas in Ethiopia,
Malawi, and Kenya, they observed various bottlenecks that must be overcome
for farmer producer groups to be able to engage in collective identication of GI
92 African Journal of Intellectual Property
products. They stated that rst and foremost, producers’ groups must operate
in a business-like fashion. With a prot-making motive, producer organisation
can be inspired to work towards GI development. Secondly, there is a need
for manpower development through training and extension. Thirdly, the high
entry requirement should be made as easy as possible to enable the majority of
farmers to participate. Finally, the producers’ groups need funding to carry out
the GI establishment process.
Generic Challenge
The international GI recognition is often demonstrated to be difcult (Petit
and Ilbert, 2015). Some names of products in African countries have become so
generic that protecting them in international markets is often challenging. In
that case, it may be difcult to prove in certain cases that the product requires
specic right in the GI system. For example, names such as Safari and Karoo
used in SSA were rejected to be accorded GI recognition in the United States on
the basis that they are too generic (Sibanda, 2016). Similarly, the case study of
Ethiopia and Starbuck Coffee War in protecting its coffees through a trademark
in the United States shows that it is often challenging for countries seeking
market access and protection to gain easy recognition (WIPO, 2004). A well-
developed national database system with a clear demonstration of the product
unique characteristics is necessary.
The study so far has demonstrated that PGI is essential for development in SSA,
however, the above challenges cannot be ignored as far as successful protection
and management of a stronger GI system are concerned. It is imperative to
map the way forward for most countries in the sub-Saharan Africa who
are struggling to tap into the benets of GI products. The implementation
framework, therefore, includes some elements:
i. Countries who are yet to do so should craft a country specic GI legislation.
Whilst trademarks and other certication have been shown to offer some
protection to GI products, it is clear that if countries are to gain from the
reputation of their products, strong statutory provision, and management
of a separate GI regime is needed.
ii. There is a need for national governments to have strong investment
commitments towards GI development. Whilst donor support is
important in technical assistance, public investments are very essential for
infrastructure and educational development particularly in GI territory
and in rural areas as a whole. National governments should seek to equip
key players in specic GI products with essential knowledge such as
product characterisations and the complete value chain identication.
iii. Because GIs are collective marks, successful PGIs have been shown to have
Policy Measures to Overcome the Challenges
93
Vol. 1 No. 2 June 2017
strong producer groups. While a majority of SSA countries faced a collapse
of the cooperative sector after the liberalisation era (Nyangito, 2002), the
need to encourage the creation of producer groups for GI products and at
the same time recognising the principles of cooperation is important.
iv. It can be asserted that developing a GI at the regional level is a long process,
however, having a comprehensive database of GI at the national and trans-
regional level is a good step. More so, national GI registration procedure
should be made easier and cheaper. While we have made the initial effort
of compiling the names of available GI for SSA from the scientic literature,
individual countries should map out means of developing such a register.
Consultancy with relevant institutions, researchers, and property rights
legal experts can be helpful.
v. It is important that consumers recognise the value of a GI, which in turn
means that a marketing strategy has to be designed. Stronger state support
can be helpful in setting up the GI also for this aspect (Bramley and
Bienabe, (2012), but often it is common to link the success of GIs with a
long-standing popular product of which marketing was further developed
by strong private partners (Giovannucci et al., 2009). Marketing then
represents a huge part of a GI success (Sharma and Kulhari, 2015).
Conclusion
PGI is relatively new in SSA. While many countries have taken measures to
protect their GI, countries in SSA seems to lag behind. The negligence in doing so
would not only cause usurpation of their IP rights but also the inability to enjoy
the huge economic and cultural benets accruing from PGI. The importance,
opportunities, and challenges faced by SSA countries in establishing PGI were
examined. There is limited scientic literature on this area of research in the
region. Nevertheless, the establishment of a functional PGI system will help SSA
countries to discourage free riding of their GIs. When GIs are legally protected
by the national or regional institution, it helps to control the market failures
arising from usurpation; it improves rural development; ensures environmental
sustainability and leads to general economic and social development.
However, certain challenges need attention as far as the success of protecting
products of origin is concerned. These challenges were categorised under
institutional, resource, territorial and generic challenges. We agreed slightly
with scholars who opined that the inability of SSA countries to develop their
GI is mainly due to a poor institutional environment. We assert that almost
all countries in the region have at least a legal regime for GI protection, and
many are adopting the sui generis system, however, stakeholders lack proper
experience and skill for GI development.
Achieving meaningful results in protecting GI by national government requires
not only technical assistance from other countries or total dependence on
94 African Journal of Intellectual Property
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99
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CHALLENGES FOR THE HARMONISATION
OF AFRICA’S INTELLECTUAL PROPERTY
SYSTEMS THROUGH THE PAN-AFRICAN
INTELLECTUAL PROPERTY ORGANISATION
(PAIPO)
Misheck Banda
PhD Student, College of Law, University of South Africa
Abstract
Despite a decade long talk on the need for a uniform intellectual property (IP) system
for Africa through the Pan-African Intellectual Property Organisation (PAIPO), not
much progress has been registered to date. The once colourful dream of bringing under
one roof the regional IP organisations in the name of African Regional Intellectual
Property Organisation (ARIPO) and African Intellectual Property Organisation
(OAPI) seems to have faded with time. Of late, the regional organisations have
proceeded to sign harmonisation agreements, between themselves even though such
initiatives still lack continental inclusiveness. This article explores, through a review
of existing literature, the challenges that have been standing, and continue to stand in
the way of establishing a Pan African intellectual property organisation, which would
have seen the harmonisation of ARIPO and OAPI systems. The article highlights
some key existing differences within the two organisations that would possibly hinder
harmonisation of the two organs through the PAIPO model of a merger. The article
also brings to light how PAIPO may not be in a position to serve the IP needs of
Africa as a continent if it took on board ARIPO and OAPI in their current mandate.
Throughout the discussion, the article makes certain recommendations of how those
challenges could be resolved in order to enable the Pan African Intellectual Property
Organisation to realise its objectives.
Introduction
Intellectual property (IP) in its broadest sense refers to the creations of the
human mind (Idris, 2003). The necessity of protecting IP rights within the
international, regional and national frameworks has been acknowledged all
over the world. IP systems contribute to the self sustaining development of
local economies and are therefore part of the essential infrastructure of African
countries in that, under proper IP protection, local industry would condently
promote innovation and develop original brands, and foreign entities would
increase investment and research and development activities. Presently in
Africa, two major regional organisations dealing with the protection of IP
100 African Journal of Intellectual Property
exist: the Africa Regional Intellectual Property Organisation (ARIPO) and the
Organisation Africaine de la Propriété Intellectuelle (OAPI).
Both OAPI and ARIPO were established at the time most African countries
had just gained independence but critics have argued that the provisions
establishing these two regional organisations do not adequately reect the
true African values. Kongolo (2000) observed that the systems set forth in the
organisations referred to above, have not yet been able to contribute in a positive
and effective manner to the development process of their member states. The
two organisations therefore still have a long way to go to be considered as
effective tools for the development of their member states.
It is also surprising to note that despite IP being an economically empowering
force, not all African countries are members of ARIPO or OAPI. The combined
membership of ARIPO and OAPI currently stands at 36 countries, yet Africa
has a total of 54 countries. The remaining 18 countries, mainly in North Africa,
are not represented by any regional institution and have each relied on their
national IP arrangements to address IP matters (Idris, 2003). Notably also, most
IP legislation remains outdated and does not reect current trends in global
IP regulation. These are among several shortfalls mentioned in relation to IP
issues affecting Africa that gave rise to the idea of the establishment of a Pan
African IP system.
The Idea of a Unied Intellectual Property System
for Africa
The preferred scenario for IP protection for Africa has been to establish an
organ unifying Africa’s IP systems to ensure that IP serves the needs of each of
the African countries based on its developmental stage, and the nuances of its
socio-economic and cultural circumstances (Kongolo, 2000). The widely agreed
upon solution to these discrepancies has been the necessity of setting up a
new African organisation that should adapt to the realities and needs of Africa
as opposed to IP laws that appear to be mere repositories of western-based
IP needs. These sentiments prompted the push to establish the Pan African
Intellectual Property Organisation (PAIPO). The idea for PAIPO is described
in the African Union Concept Paper which emerged from an Extra-ordinary
conference of the African Ministers of Council on Science and Technology that
took place in November 2006 (Gerhardsen, 2007).
In support of the setting up of a new IP structure for Africa, the PAIPO
Concept Paper calls for the development of appropriate legal and institutional
infrastructures to support innovation and enforcement of IP rights, to ensure
that IP serves as an incentive for investment and research in Africa. The PAIPO
idea has however not gone without criticism. For instance, as Karjiker (2012)
reports, the PAIPO initiative has been condemned for being biased towards
foreign IP rights holders by seeking to adopt “rst-world” standards of
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protection; failure to address the needs of Least Developed Countries (LDCs)
in Africa and lack of consultation and transparency in the process leading up
to the production (and potential adoption) of the draft PAIPO statute. The lack
of consultation criticism is collaborated by ARIPO and OAPI in their 2014 joint
communiqué on PAIPO (Ncube, 2014).
Nevertheless, it is strongly felt that a unied IP system would be benecial
for Africa as a whole. Among the positive aspects of such an undertaking,
Africa would get rid of the shortfall of varied policy and legal frameworks
amongst the states. The different policies and legal frameworks are difcult to
implement, for example where the IP owner is from a different country and is
seeking protection or enforcement of his/her rights in another country. Since
IP laws are territorial in nature, it is difcult to enforce one’s rights in countries
where for instance, a particular IP law does not exist (Shaheed, 2000).
Secondly, as Kongolo (2000) notes, the establishment of an Africa-wide IP
structure would sharpen the visibility of IP issues as they relate to economic
development, which seems not to be highlighted in some countries in the present
scenario. This will add impetus to the leaders’ political will and commitment
to inventiveness and innovation, thus emphasising the signicance of political
leadership in such a strategic eld of development.
In addition, an opportunity arising from a unied IP system is with regard to
trade within and beyond the continent. If IP laws had been made uniform in
all states of Africa, there would have been created a conducive environment
for trading within as well as outside the continent. For instance, effective
IP rights (IPRs) enforcement measures would not only attract Foreign Direct
Investment (FDI) but would also enable domestic IP owners to recoup their
investments in research and development (R&D) since the export and import
of counterfeit products would be minimised through a uniform and effective
border measure system. Shaheed (2000) notes that counterfeiting and piracy
create conicts with a developing country’s major trade partners and that their
control is essential for creating the necessary environment in high technology
enterprises. An integrated approach to the problem is important.
Furthermore, an opportunity from a unied IP system would become evident
with regard to IP developments at the international level. Africa would be in a
position to speak with one voice on matters of interest and benet to the entire
continent. Already, recent developments at various international forums have
necessitated for Africa to speak with one voice. One notable example relates to
the protection of Genetic Resources, Traditional Knowledge and Expressions of
Folklore, in which Africa is heavily endowed. Such cooperation will be of use
in future multilateral negotiations because it will enable the continent to form
a lobby block on issues that affect them the most, such as the present demand
for benet sharing for the use of traditional knowledge and genetic resources.
102 African Journal of Intellectual Property
Notably also, with unied policy, greater IP awareness, training and capacity
building would be forged continent-wide. Terroir (2016) notes that some
countries in Africa have made some strides with regards IP awareness, training
and capacity building, while others still lag behind. A unied IP system would
ensure that efforts for IP awareness training and capacity building are spread
across the continent, providing an atmosphere where those countries lagging
behind are given the opportunity to learn from the model countries, thereby
enabling such countries to take positive strides in the development of their own
awareness, training and capacity building programmes.
One other opportunity that would arise relates to the issue of funding and
innovation of IP. As Terroir (2016) notes, studies have shown that some
countries within Africa are struggling to get funding for the development of IP
and innovations, and so a harmonised IP system would be better positioned to
push for funding for IP in all the member states. This could be implementable
in several ways, for instance where the IP organ sets for its member states,
minimum requirements regarding funding for IP. Thus with a unied IP system,
the signicant variations that exist in respect of IP matters among the African
countries would be reduced and possibly eliminated all together with time.
Africa would for once have an opportunity to inuence and play an active role
in its own economic development.
It is thus not surprising that the two regional IP organs have been and continue
to explore ways of collaborating on IP matters. Evidently, the two organs signed
memoranda of understanding, rst in 1996, which was followed by another in
2005. As recent as February, 2017, the two organisations also signed another
agreement aimed at harmonisation of their systems; exchange of documentation
and technical information, mutually cooperating in the development of training
and joint capacity building in user awareness (Williams, 2017). This underscores
the dire need for Africa to have a unied IP system, which unfortunately is
refusing to take off through the PAIPO idea. The measures being taken by
ARIPO and OAPI towards harmonisation amidst the talk of a Pan-African IP
organisation may well be interpreted as an indicator of the amount of scepticism
the two organisations have as regards the PAIPO idea being implemented
anytime soon, probably attributable to lack of consultations at the inception.
In spite of the aforementioned, some analysts have expressed hope that the
PAIPO dream, if properly worked on, could turn into an effective reality of
harmonising the operations of ARIPO and OAPI. From the outset, those
framing the idea of a Pan African Intellectual Property Organisation decided
not to leave aside the two regional IP organisations in their quest for a uniform
IP system for Africa, appreciative of the role the two organisations are already
playing.
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The On-Going Process for the Realisation of the
PAIPO Dream
Although PAIPO appears to be a better option for bringing about a unied IP
system for Africa compared to the current set up, certain hurdles still exist that
make it impossible for the PAIPO idea to be realised. The implementation of
PAIPO has not been an easy task. For instance, in December, 2008, a blueprint
for the proposed PAIPO was sent back to the drawing board by the steering
committee of the African Ministerial Council for Science and Technology
(AMCOST) bureau, dashing the hopes that it could be adopted by presidents
the following January. This was probably for the reason that African countries,
including members of the current regional IP organs, have within themselves
different interests and priorities in the area of IP. The Abuja meeting noted
that the blue print design, despite being drawn in consultation with relevant
stakeholders, including ARIPO and OAPI, was too bureaucratic as it had
proposed for the establishment of a new ministerial forum to be known as
African Ministerial Council for Intellectual Property (Nordling, 2008).
From the very onset, although hope was expressed that the nal plan for PAIPO
would be ready for submission to the Heads of State summit during 2009, the
Abuja meeting was quick to acknowledge that coming up with an appropriate
design for PAIPO was without doubt a difcult and time consuming task
probably because of the challenge in merging the operations of two regional
organisations with different operation systems.
Further, while the 20th Ordinary Session of the African Union in January 2013
decided to establish PAIPO and requested for a meeting of all stakeholders in the
implementation by May of the same year, surprisingly the PAIPO Stakeholder
meeting was not part of the 21st Ordinary Session that year. In 2014, ARIPO
and OAPI had to issue a joint statement, expressing their views on PAIPO, and
requesting their involvement in the consultative process regarding the PAIPO
proposal. Just as happened in May 2013, the 2015 AU Summit does not minute
any PAIPO related discussion (Ncube, 2016).
The rst 10-year plan of the Agenda 2063 covering the years 2014-2023 however
mentions something on PAIPO to the effect that the PAIPO Draft statute
would be reviewed by the Specialised Technical Committee on Justice and
Legal Affairs and thereafter be approved by the Summit in 2016; consultations
with Tunisia (host country) would be undertaken in 2017; the adoption of
the Implementation Action Plan by the Assembly ought to be achieved in
2017; PAIPO would then commence its activities in 2018; and should be fully
functional by 2023 (Ncube, 2016). Whether the Agenda 2063 rst 10-year plan
is to register any tangible developments towards the establishment of PAIPO
or whether it will be another long episode of pushing the document from one
committee to the next remains to be seen.
104 African Journal of Intellectual Property
Existing Fears Surrounding the Idea of the ‘Marriage’
of ARIPO and OAPI in the Name of PAIPO
Some scholars have argued that instead of Africa pushing the PAIPO idea, it is
the WIPO secretariat that is in the forefront driving the AU secretariat towards
the creation of PAIPO, with the goal of extending the OAPI/ARIPO model
- controlled by WIPO - to the entire African continent (Gerhardsen, 2007).
Resultantly, the PAIPO arrangement would considerably reduce the capacity
of important non-OAPI/ARIPO members such as South Africa, Egypt and
Algeria to take independent positions on IP at the international level.
Some quarters have also observed that for as long as the new IP organ adopts
the systems of OAPI and ARIPO in their current form, the objective of having
a unied IP system for Africa would still not be achieved. One such observer,
Waruru (2016) argues that the two regional IP bodies in Africa, do not, strictly
speaking, provide an opportunity for their member states to fully exercise their
patent rights and counter IP “mercantilism,” nor do they provide links to free
trade and bilateral investment agreements with external partners. On the same
note, there is an observation that whereas there are IP ofces in all the member
states of ARIPO, OAPI provides IP services for its member states but the degree
of sovereignty of the member states on IP matters differs greatly between the
two organisations. While ARIPO maintains the national industrial property
ofces as independent entities, OAPI on the other hand serves as the national
industrial property service for its member states. Furthermore, even though
the ling procedures in both organisations are similar, under ARIPO a member
state might give notice that an application properly led with the regional body
will not apply to her. This is unlike the provision in OAPI, which only subjects
application of the regional laws to the laws of any given member state. Thus,
this difference in the degree of sovereignty raises the fear that there would be a
challenge in bringing the two organisations under PAIPO since the respective
member states are already used to their different approaches.
The protocols that govern the operations of the two organisations also present
a sharp contrast. While ARIPO has separate protocols for Marks and the
other for Patents, Industrial Designs and Utility Models, and provides that
member states are free to accede to one or both, OAPI on the other hand has
only one agreement (the Bangui Agreement) which encompasses all areas of IP
protection and accession to the agreement automatically means accession to all
its contents. This, in the event of a marriage of the two through PAIPO would be
a challenge since some member states are used to having the freedom of choice
of the protocol they deem most suitable to them. This might especially be the
case with ARIPO member states, as some have already shown a reluctance to
adhere to other forms of protection within the organisation (Kongolo, 2007).
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Conclusion
The implementation of the PAIPO statute continues to face resistance in every
way, a decade after its proposal for establishment. Every effort to implement
the statute against all odds seems not to work. Over a decade since the
inception of the PAIPO idea the PAIPO document keeps on being moved from
one committee to the next. The initial irregularity was that at the inception of
the idea, there was not much stakeholder involvement and consultations. This
has resulted in the idea getting a lot of criticism and lacking the support of
some relevant stakeholders at a time when such support was needed most, a
situation which has almost stalled the process.
Noticeably also, the place of the two existing regional organisations in the
context of a unied IP system seemed not to have been given much attention
and thought. The PAIPO Concept Paper does not adequately address how the
existing differences between the regional organisations would be handled in the
context of a unied system. Resultantly, this lack of certainty has raised fears
in some quarters. Nevertheless, with proper re-designing and implementation,
the PAIPO model would be a sure way for the much needed unied IP system
for Africa.
References
Gerhardsen, T. (2007, August 30). Concern Arises Over Proposed Pan-African
IP Organisation. Intellectual Property Watch. Retrieved from https://www.ip-
watch.org.
Idris, K. (2003). Intellectual Property a Power Tool for Economic Growth. Geneva:
WIPO.
Karjiker, S. (2012, November 6). Sizing Up the Ill Conceived PAIPO Draft
Statute. Intellectual Property Watch. Retrieved from https://www.ip-watch.org
Kongolo, T. (March, 2000). The African Intellectual Property Organisations:
The Necessity of Adopting One Uniform System for All Africa. The Journal of
World Intellectual Property Vol. 3 No. 2.
Ncube, C. (2014, April 15). PAIPO: ARIPO and OAPI speak. [Web log post].
Retrieved from www.afro-ip.blogspot.com/2014/04/paipo-aripo-and-oapi-
speak.html.
Ncube, C. (2016, February 8). PAIPO and Agenda. [Web log post]. Retrieved
from www.afroip.blogspot.com/2016/02/paipo-agenda-2063.html.
Nordling, L. (2008, December 4). Africa: Delay to Intellectual Property Plan.
SciDevNet. Retrieved from http://www.scidev.net.
106 African Journal of Intellectual Property
Shaheed, A. (2000). Socio-Economic Benets of Intellectual Property Protection for
Developing Countries. Geneva: WIPO Publication.
Terroir, P. (2016, December 5). A New Look at Intellectual Property and
Innovation in Africa. Licensing Executives Society International. Retrieved from
https://www.lesi.org.
Waruru, M. (2016, May 5). Africa should speed formation of Pan African Body.
Intellectual Property Watch. Retrieved from https://www.ip-watch.org.
Williams, L. (2017, February, 11). ARIPO and OAPI Sign a Cooperation
Agreement. Retrieved from https://theipjournal.blogspot.com/2017/02/
aripo-and-oapisigncooperation.html
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JUSTIFYING EMPLOYER OWNERSHIP OF
PATENT AND DESIGN RIGHTS IN NIGERIA
AND KENYA
Saratu Dan-Habu
Legal Practitioner, BB Dan-Habu & Co., Lagos, Nigeria
Abstract
The typical legal environment in relation to patent and industrial design rights ownership
in Nigeria and Kenya is such that the employer owns the right and can undoubtedly
have these rights asserted by the courts against the creators and inventors. This
appears inconsistent with Locke’s philosophical ideas that have been acknowledged
by various legal scholars as an authoritative justication for intellectual property
(IP) right. If Locke’s philosophy underpins IP law, how might we explain the rights
that accrue to the employer? It is denitely worth taking a step back and examining
the rationale behind the detachment of ownership rights from the creator. The question
this article seeks to answer is if the corporate entitlement to patent and design right at
the expense of the individual author is justiable. By exploring a range of alternative
options, this article will demonstrate that corporate ownership of patent and design
right is more practical to business operation than any other ownership structure.
Introduction
An examination of the diverse African and foreign jurisdictional approach to
ownership conrms that most employees do not own the right in the patent
and designs. In Nigeria, the Patents and Designs Act (PDA) provides for all
inventions and designs created in the course of employment or in the execution
of a contract for the performance of a specied type of work to vest in the
employer (s2 (4) and 14(4) Patent and Design Act, 1970. However, it is worth
noting that the right of the employer to be granted the patent and design is
not absolute. The law provides for “fair remuneration” to be awarded to an
employee that is not required, by the nature of his employment, to exercise any
inventive activity but has made an invention utilising facilities or data provided
by his employer (s2 (4)(a)(i) PDA). Additionally, it also provides for the award
of “fair remuneration” where the invention is considered to be “exceptionally
important” (s2 (4)(a)(ii) PDA). Unfortunately, the PDA does not provide for
what is to be regarded as “exceptionally important” and the tern is thereby
subject to varying interpretation (Nwogu, 2015). While most inventors would
be inclined to consider their work as “exceptionally important”, employers
may agree otherwise.
108 African Journal of Intellectual Property
On another hand, the law in Kenya provides that the invention made in the
execution of an employment contract with the use of the employer’s resources,
belongs to the employer (See s16 (3) Industrial Property Act, 2001), but where
the invention is made without any relation to an employment contract and
without the use of the employer’s resources, the right to exploit the invention
solely belongs to the employee (See s16 (2) IPA). Where there is no express
contract and the employer and employee equally contributed to the resources
used increating the invention, the law provides for ”joint ownership”, with the
employer having exclusive right of exploitation and the employee, the right to
xed remuneration. Despite the fact that Kenyan law makes the employer’s
ownership right subject to contract while Nigerian law does not, it has been
suggested that the laws have similar effects, as inequality in bargaining power
leaves employees open to exploitation as the employee is unable to exert any
control over the terms and might be unable to secure any employment in the
areas of expertise if such agreements are not signed (Bartow, 1996).
Furthermore, other African jurisdictions such as Swaziland, Lesotho,
Mozambique, Malawi, Tanzania, Uganda and Ethiopia maintain similar
approaches to this area of law where ownership typically rests in companies
that employ the inventors and designers (Wekundah, 2012). This ownership
structure is also analogous to western jurisdiction; for instance, in United
Kingdom (s.215(1) and (30) CDPA) and Australia (s13(1) of the Design Act
2003), the law recognises the employer to be the owner of the patent and design
right if the work was made in the course of employment.
These laws appear inconsistent with the Lockean theory, a philosophical idea
that has been acknowledged by various legal scholars as an authoritative
justication for intellectual property rights (Becker, 1977; Grunebaum, 1987).
The Lockean theory asserts that property rights exist after a person labours upon
resources that are “held in common” or unknown; thus, the labourer acquires a
natural property right from the resulting product of his labour (Mgbeoji, 2012).
However, it is evident that not all labour results in the ownership of a property
right. The question thus becomes, why should the employer own the fruits of
the employee’s unique talent, skills and insight? Should we defend a system
that allows the risk-taking corporation to reap the rewards of the hard-working
individual? Like Mgbeoji asks, “what effort of theirs was applied to the thing to
create the property? Is their shareholding to be construed as effort or labour?”
Criticisms have arisen against this system, mostly on the basis that it is
unfair and that it damages the incentive to be creative. It is worth specically
addressing these concerns.
Fairness
Existing body of literature challenging the fairness of this legal structure
consider it unfair to the employees and exceptionally favourable to the
employers (Bartow, 1996; Riley, 1994). According to Riley, this system of
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employer ownership “drains a person’s productivity in the same manner that
communist countries stied their workers’ will to produce”. Riley further
asserts that “allowing businesses to exploit their employees by assuming rights
over their inventions, is morally and ethically wrong”. This is based on the
premise that compared to the employer; the employee contributes substantial
investment to the design. Therefore, the argument goes, and the employee
deserves a greater reward. According to Bartow:
It is unjust that an employer reaps all of the rewards [...] as the “payoff’ for the
resources it devotes to an invention, but an employee-inventor who has also
made a substantial investment in the inventive process-potentially at a level of
personal sacrice disproportionately greater than any nancial or “opportunity
cost” risk assumed by the employer is usually precluded [...] from protting
from the fruits of his or her labour in a manner commensurate with, or even
proportional to, the value and utility of [the design or invention]…
Several researches go as far as recognising the personality element in an
intellectual property and advocating for an employee ownership, arguing that
an employee’s creation is an extension of his personality and consequently in
some sense his (Cherensky, 1993; Gordon, 1993; Hughes, 1998). The argument
further goes that the employee might devote themselves to investing copious
amount of time, energy, intellect, training and constant thought to the creation
of innovative and complex ideas, thus, the creative process becomes bound up
in their personhood. The employer should therefore retain signicant interest
in the invention. Cherensky(1993) describes the creative process by relaying
the comments of an innovator:
[...]Innovation is an emotional experience [...]. The desire to innovate comes
partly from the genes; you’re born with it. It also comes from your early life,
your education, the kind of encouragement you got to be creative and original.
Innovative people come in all shapes and sizes and in all personality types.
Some people are happiest when they’re wrestling with a problem; I’m one of
those. Others go into a green funk. They’re miserable and depressed until they
have the answer. But you can’t have a good technologist who’s not emotionally
involved in the work. You can’t have a good technologist who doesn’t wake
up in the middle of the night searching for answers. You can’t have a good
technologist who doesn’t come into the lab eager to see the results of last night’s
experiment.
While these are reasonable arguments, it is impossible to note that, to a very
large extent, it undervalues the unique and important role the employer plays
in the innovation process. Most R&D projects require enormous expenditure.
Drawing on various quantitative studies, and his independent research,
Scherer indicated that companies require ‘expensive marketing and roll-out
campaigns’. Furthermore, the corporation has to continually invest resources
on ‘incremental improvement and process innovation’ (Silverman, 1989). By
undervaluing the role of the corporation, we make the mistake of disregarding
the signicant role of business strategy in fostering innovation and generating
increased consumption.
110 African Journal of Intellectual Property
Creativity Incentive
The other major criticism against this legal structure is that it dampens the
incentive to create and fails to encourage innovation. Intellectual property
rights are believed to be the rewards given to creative persons, with the
intention of motivating them to be more creative. This theory is grounded on
four signicant premises (Cherensky, 1993). The rst premise is that innovation
requires labour. Secondly, the labour required is rather unpleasant, or less
pleasurable than leisure. As a result, an innovator will not merely choose to
innovate for the fun or love of it; they would require an external inducement.
Thirdly, innovation (newer designs) generally improves the welfare of the
society. Therefore, it is important for society to create and offer incentives for
innovators who suffer the unpleasantness of labour. In the words of Abraham
Lincoln, intellectual property right adds ”the fuel of interest to the re of
genius” (Lincoln, 1859).
While proponents of this school of thought argue that the ”corporate usurpation
of inventive bounty” (Bartow, 1996) might discourage the employee from
making his design public and capitalising on his idea, it is however entirely
obvious that a designer could be motivated in his creative effort by something
other than an ownership right. Employees may prefer short-term benets such
as income, bonuses, and perks over ownership right. Also, as business writer
Daniel H. Pink explains:
Too many people hold a very narrow view of what motivates us. They believe
that the only way to get us moving is with the jab of a stick or the promise
of a carrot. But if you look at over 50 years of research on motivation, or
simply scrutinise your own behaviour, it’s pretty clear human beings are more
complicated than that […] we do things because they’re interesting, because
they’re engaging (Pink, 2011).
While this article has compared the current legal structure relating to the
authorship and ownership of patent and industrial design rights in the work
place, and assessed the various criticisms against it, the question introduced at
the beginning still begs to be answered: how might we justify the patent and
industrial design rights that accrue to the employer? By exploring a range of
alternative options, this article will attempt to demonstrate that a full corporate
ownership of patent and design right is certainly more practical to business
operation.
Full Employee Ownership
On one end of the allocation spectrum, the IP right could be awarded to the
employee with no limitations attached so that the employee might be able to
use it for whatever he wishes, including transferring it to a third party or even
to the employer.
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To begin with, it is important to recognise the valuable resources the employers
invest in the employee’s creative talent. Not only do they pay the salaries, they
also provide a working environment and the materials and other resources
needed in the creative process. In the words of Hershovitz (1995), ”the modern
industrial research laboratory is not a honeycomb of ofce cubicles where
inventive employees toil independently, instead, the employees mostly work
on individual projects, which frequently are a collaborative effort resulting
from both formal and informal brainstorming sessions. While the resulting
product might owe its origin to the brilliance of the employee, it should also
be understood that, but for the employment relationship provided by the
employer, the employee might have been unable to create the product.
Likewise, there ought to be a correlation between the party who bears the cost
and risks of production, and the tool that enables the party to limit potential
infringers (Bar-Gill, 2004). If the law were to allocate the design right to the
party who did not bear the nancial costs and risks associated with creating
and commercialising the design, it will not only be unsuccessful in its desire
to create incentive for creating the work, but it might actually be providing a
disincentive (Birnhack, 2009).
It is instantly obvious that the typical risk bearer in the workplace is the employer;
it would be essential to highlight the advantages of having the employer as
the risk bearer rather than the employee. Compared to the employee, most
employers have better experience, understanding and awareness of the market
behaviour, and even greater resources. A typical employee does not like risk and
tends to appreciate the nancial security provided by his or her salary (Towse,
2003). Most employees, especially those whose source of revenue depends
upon creating creative works, are less familiar with the market sector as they
spend most of their time occupied in the creative department rather than in
the marketing unit. The employer commercialises the design and takes on the
responsibility and cost of marketing the creative work. Furthermore, in most
situations, the employer may manufacture and market various products. He
will have the ability to cross subsidise the products and combine the individual
risk together, and in so doing, he dilutes the separate risk (Birnhack, 2009). It
might be that four out of ve products will hopelessly fail in the market, but
the fth product might be a hot item in the market. A company which owns all
ve products can dilute the risk in each product, meanwhile the employee that
owns a single patent may be unable to do same.
Additionally, the employer also has a signicant interest in the design right
to the extent that trade secrets are typically encompassed in the product
development. An employer’s interest in a design rises in direct proportion
with the amount of exclusive information used in developing the product
(Hershovitz, 1995). A trade secret is extremely valuable because it gives the
possessor an advantage over the competitors who are unaware of the trade
secret (Hershovitz, 1995). If the employee has the full rights to the patent that
112 African Journal of Intellectual Property
Joint Ownership
A second possibility will be to award the initial ownership of the patent and
design right to both parties, that is, there will be joint ownership between the
employer and the employee. The consequence of this is that; Firstly, each co-
owner may utilise the right without the consent of the other right owners. If
there is a disagreement between the employer and employee, either party will
still be able to use the right without requiring an agreement. Secondly, a co-
owner will need the consent of the other co-owner to grant a licence, assign or
mortgage their share of rights. And in the event a co-owner dies, the deceased
share in the intellectual property right may devolve to his representative.
A serious weakness with this is the possibility of ‘holdup’ costs (Meyer, Milgrom
and Roberts, 1992). The employee might refuse to provide his consent for the
employer to, for example, license the right, and frustrate the operations of the
employer. If an employee were capable of holding up an employer’s operations,
a major effect might be an underinvestment in research and development
(Merges, 1999). Like Merges observed, ”common ownership of complementary
assets solves the holdup problem and promotes socially benecial activities”.
Furthermore, joint ownership of right might weaken the effectiveness of
the employer. There is more efciency if the intellectual property rights are
collectively owned; it gives the rm freedom of action. Giving the employer
absolute control of the intellectual property rights is likely to ”improve
efciency through aggregation” (Merges, 1999). However, in a joint ownership
scenario, exploitation rights might need to be handled contractually and with
written consents come complications on limitations, obligations, and so forth.
If individual employees partly owned intellectual property rights in the
products they develop, the process of dealing with the product will be extremely
complicated and nancially lucrative deals might hardly ever be struck. Jointly
owned intellectual property rights will face challenges at every exploitation
stage and the end result is likely not to be optimal for all the parties involved. For
instance, if involved in litigation, most countries will require both owners
to be represented and if there is no common interest to sue, there is bound to be
great amount of frustration. By not exclusively owning the right, the employer
might be unable to develop favourable partnership and licensing relationships,
and collaboration and cross licensing will be challenging (Andersen, 2003).
incorporates the employer’s trade secret, he or she might, by just distributing
the patent, divulge the employer’s trade secret, and in so doing he might
potentially cause the employer’s business incalculable damages.
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Award Ownership to Employee, Acknowledge
Employer’s Right
In this allocation possibility, the ownership right will be awarded to the employee
but the employer will have a non-exclusive and non-transferable right to use
the work for free. This possibility is identical to the American Patent law ”shop
right” (Neumeyer, 1971). This structure nds its origin in principles of equity
and fairness and although quite limited in scope, it enables the employer to
utilise the invention without transferring it to third parties.
One of the potentially devastating effects of this option is the limited
transferability of the employer’s right. A prospective investor or purchaser
might have to acquire the whole business for those rights to be transferable.
The sale of all the assets and stock of the company, or a merger, might
preserve the transferability of the right, however anything less might make the
transferability less denite. The uncertainty of intellectual property ownership
in a target company will undeniably make any investor or purchaser concerned
about potential exposure to litigation (Zimmerman, N.D). Furthermore, since
the employee has an independent right to exploit the invention, he could sell,
license or assign his design rights to a competitor. This would denitely result
in serious consequence in the marketplace and for the employer’s business.
Conclusion
In conclusion, jurisdictional approach of Nigeria and Kenya to the ownership
of design and patent right may be appreciated as an attempt to nd a balance
between efcacy and fairness. It is quite obvious that both the employer and
the employee are somewhat entitled to the patent and design rights that
accrues because in the context of Locke’s philosophy, they both added some
sort of labour to the resources. However, the current laws are certainly the
more practical structure. Full ownership, joint ownership, and the ”shop right”
structures have been considered and it is apparent that these options
will denitely disrupt and possibly discourage the commercial efforts of
honest businessmen. Thus corporate ownership of patent and design right at
the expense of the individual author seems to be the more practicable solution.
Nevertheless, this legal environment is denitely not so unfair as to stop
designers from seeking jobs in research and development rms. The employees
may make signicant efforts to protect their interest by creating inventions at
home, during nonworking hours and without the employer’s resources.
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Bartow, A. (1996). Inventors of the world unite-A call for collective action by
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Mgbeoji, Ii. (2012). Justifying intellectual property Osgoode Hall LJ, 50.
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Law and Practice. MIT Press.
Nwogu, M. I. O. (2015). The dialectics of the right of ownership of patentable
inventions under the Nigerian legal system. International Journal of Social Science
Studies, 3(3), 96-105.
Pink, D. H. (2011). Drive: The surprising truth about what motivates us. Penguin,
New York.
Riley, R. (1994). Inventors deserve their fair share. Machine Design, 66(6), 109.
Silverman, A. E. (1989). Intellectual property law and the venture capital
process. High Technology Law Journal, 5(1), 157-192.
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Economics, Law and Intellectual Property (pp. 419-438). Springer US.
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Wekundah, J. M. (2012). A study on intellectual property environment in eight
countries: Swaziland, Lesotho, Mozambique, Malawi, Tanzania, Uganda,
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Zimmerman, E.M., Books G.E. and Osvald-Mruz, C. (2001). The trouble with
patent ‘Shop Rights’. New York Law Journal, NLP IP Company.
116 African Journal of Intellectual Property
THE SUITABILITY OF INTERNATIONAL
INTELLECTUAL PROPERTY LAWS FOR
PROTECTING TRADITIONAL KNOWLEDGE
AND INDIGENOUS INNOVATIONS IN
AFRICA
Uchenna Felicia Ugwu
Int. IP Law and Development Researcher, University of Ottawa, Canada
Abstract
This article analyses how international intellectual property (IP) laws of African
countries can be utilised as a tool for advancing indigenous innovation and protecting
traditional knowledge (TK) in the following steps: Section I examines the relationship
between innovation and IP, with special focus on the contradictions between the
denition of innovation in TK and formal IP law, by reviewing previous literature
on the topic. Section II identies the legal principles that are best able to reconcile
IP regulation with public interests like TK and indigenous invention, through
philosophical examination of relevant theories and doctrinal review of the provisions
of relevant multilateral treaties. Section III evaluates the extent to which multilateral
IP laws accommodate TK and innovation, by doctrinal analysis of relevant patent and
copyright laws. Section IV draws conclusions and recommendations on how IP law can
be made a more effective tool for advancing indigenous inventions and TK in African
countries.
Introduction
In examining the relationship between intellectual property rights (IPRs)
and development, the important role that traditional knowledge [TK] plays
in sustainable development is often overlooked. For developing countries in
Africa that are yet to develop much modern intellectual property [IP] protected
technology, but have acquired a lot of indigenous knowledge, enhancing the
capability of people to innovate and gain from TK plays an important role in
advancing national development.
The main question this brings up in IP regulation is whether indigenous
knowledge and innovation can be dened as ‘inventions’ that can be protected
under IP regulations? Analysis of this question has varied between those who
adopt a narrow denition of inventions as the products of research in a laboratory
and consider IP law as being an inappropriate forum for protecting TK; to those
who view modern IP systems as being capable of sustaining the development
of TK (Mgbeoji, 2001, p.169-170). This article adopts the latter approach
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whereby TK, indigenous innovation, and IP are not seen as irreconcilable, but
rather as concepts that can be integrated, through the redenition of IP norms
and the adoption of alternative legal instruments, to accommodate TK and
indigenous innovation. The focus is on the relevant multilateral IP agreements
involving Africa, which affect TK, specically provisions relating to patents
and copyrights.
Denition of IP
IP can generally be described as that which results from the mental labour of the
human mind. IP law has been dened as that which “regulates the creation, use
and exploitation of mental or creative labour” (Bently and Sherman, 2004, p.1).
IP encompasses the idea that a person may have ownership not just of physical
property, like a house, but of the results of his or her intellectual endeavour.
For such creations of the mind “the state confers a statutory monopoly for a
prescribed term to prevent their unauthorised exploitation” (Blakeney, 2009,
p.22) described as intellectual property rights [IPRs]. Articles 1-5 of the World
Trade Organisation’s [WTO] International Agreement on Trade Related Aspects
of Intellectual Property Rights [TRIPS] (1994), protects IPRs under ve main
categories: copyrights, trademarks, geographical indications, industrial designs
and patents. This examination focuses principally on patent and copyright law,
as forms of IPRs that affect TK.
Some have dened IPRs in terms of the formal characteristics of the right
granted as a right: “(i) that can be treated as property; (ii) to control particular
uses; (iii) of a specied type of intangible asset” (Spence, 2007, p.12-13).
Different justications have been put forth for IPRs, such as Hegel’s theory of
IPRs as an inherent human right, and Locke’s theory of IPRs as property, and a
necessary incentive to advance innovation (Drahos, 1996, p.13-90). This article
denes IPRs as ‘a social product . . . [with] a social function’. Based on the theory
of Instrumentalism, which views IPRs as tools meant to advance certain public
objectives and functions, there is greater scope for moulding IP protection to
maintain and advance public interests including TK.
Denition of Traditional Knowledge
Traditional knowledge shouldn’t be seen as knowledge that is static or
antiquated, but rather as a process that renes knowledge every day in our daily
lives. Nor should indigenous knowledge be considered as natural phenomena
that are in the commons available for all to use. The fact is that considerable
intellectual activity has been put in by the custodians of TK, thus TK is the
product of purposeful investigation (Mgbeoji, 2010, p.135). This is reected
in the contributions of TK to subsistence farming and in the development of
traditional medicines.
118 African Journal of Intellectual Property
Denition of Indigenous Innovation
This article denes indigenous innovation as developments and understandings
that results from the practical application of indigenous knowledge, applying
local methods such as adaptation, replication and incremental improvements,
by indigenous peoples.
Table 1: Conicting Nature of IP and TK
Intellectual Property Traditional Knowledge
Privately Owned Owned collectively by a community,
or other group of persons
Private Knowledge: Use and Access to
Knowledge limited by holder of IPRs
Public Knowledge: Use and Access to
Knowledge Open within Community
Protection based on novelty, inventive
step and utility, scientic proof and
written records
Protection based on custodial action
of a community over time; May lack
scientic proof; Often transmitted
orally
Adopts particular western
interpretations of knowledge,
ownership, authorship and property
Adopts unorthodox interpretations of
knowledge, innovation, ownership,
authorship and property
Protected via all inclusive standards
and norms (one size ts all) mainly
through multilateral treaties
Standards and norms for
protection differ based on context
(differentiation), usually through
national or regional laws and policies
Promoted by national treatment (NT),
most favoured nation (MFN) and
reciprocity principles
(See Articles3&4 TRIPS Agreement)
Promoted by access and benet
sharing, prior informed consent
principles
(See Articles 15 & 8j CBD; Nagoya
Protocol)
The above analysis indicates that though challenges exist in the current IP
framework for accommodating TK and indigenous innovation, such challenges
can be surmounted by: dening new to include TK passed on orally or publicly
held; redening inventions to include knowledge derived from informal
processes, and broadening the right to hold IPRs to include collective entities
such as communities.
Importance of TK and Inventions for Development
For many centuries, human beings have been producing knowledge and
strategies enabling them to survive in a balanced relationship with their natural
and social environment. Consequently, for any IP law to sustain development
in indigenous settings, it must recognise, protect and advance indigenous
knowledge and inventions. Indigenous innovation and TK are important for
capacity development in such settings because they are based on a bottom-
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Principles for Reconciling IP, TK and Indigenous
Innovation Legal Principles
IPRs are tools for advancing public interest
This has been afrmed by legislation, jurisprudence, and literature at the
international and national levels. In the case of Teva Canada Ltd. v. Pzer Canada
Inc., (2012) the Supreme court of Canada afrmed that the patent system is based
on a bargain, or quid pro quo: by which the inventor is granted exclusive rights
in a new and useful invention for a limited period in exchange for disclosure of
the invention so that society can benet from this knowledge.
IPRs are not static, but continuously evolving
“[IP] is hardly a static conception, but is in a state of constant evolution and
reconsideration. The rst English and Venetian laws were public in nature,
a means of harnessing foreign technologies, or of regulating and censoring
domestic printing. But by the nineteenth century, [IP] had become classied as a
type of private law, conferring private property rights on the few.” (Duteld and
Suthersanen, 2008, p. 14). The 21st century has witnessed greater emphasis on
the impact that IP protection has on non-economic and social aspects, including
education, health, environmental protection and culture. The evolution of new
forms of IPRs such as PBRs, and rights over digital technology are examples
of new forms of IP protection designed to meet the needs of new technologies.
Considering that public interest (including the right to protect and develop
culture through TK and indigenous inventions) is one of the objectives that
IPRs should advance, and that IPRs are not static in nature but rather evolve to
meet the needs of society at specic times, current forms of IP protection can be
modied so as to include traditional and indigenous knowledge.
One size does not t all in IP regulation
Several economic studies have been conducted on the impact of IP protection
on development (Ahn, Hall, and Lee (Eds.), 2014; Milchior, 2015, p. 717). These
studies do not provide reliable evidence that increasing IPRs denitely lead
to greater socio-economic progress. Rather, they indicate that the impact of IP
protection greatly differs between various countries and contexts (Wong and
Dueld, (Eds.), 2011, p.3). The provisions of contemporary IP laws indicate
up approach that encourages “development from within, based mainly,
though not exclusively, on locally available resources, values, institutions and
knowledge” (Kendie and Guri, 2010, p.55). The failure of IP laws, based on
western denitions of innovation, to generate development and indigenous
innovation in Africa’s developing countries emphasises the need to rethink the
norms and designs of these IP regulations.
120 African Journal of Intellectual Property
Provisions for Protecting TK and Indigenous
Knowledge in International Law
that though they agree that IPRs should lead to development, a large degree
of variance exists on what is the best framework by which to harness IP law to
achieve developmental objectives. For just like people have to wear clothing of
different sizes depending of their sizes, ‘one size does not t all in IP regulation’.
This makes it important for individual countries to assess the implications of
current and proposed IP regulation in the context of their national development
goals. African countries should identify what will advance their public interests
in TK, local innovation, national capacity building and development; evaluate
the potential impacts of current and future IP systems on such interests based
on impact assessment; then tailor their IP laws to accommodate such public
interests.
Development advances social, not just economic interests
What is dened as development may vary greatly between countries. An
overview of the provisions of contemporary IP regulation indicates that while
agreeing that IPR should lead to development, a large degree of variance
exists on what is the best framework by which to harness IP law to enhance
development. For the sectors that are considered necessary for development
will vary, depending on the context of analysis. The interests to be included
will differ depending on the overlying geography, state of economy, culture
and social interests of the country, or region seeking progress (ILC Report,
2006, p.23, par.34). Because development is not a xed formula, every
country requires some exibility to contextualise their application of IP laws.
A historical overview of national IP laws and policies conrms this need for
contextualisation, for countries have changed their IP laws and policies at
different stages of economic development (CIPR, 2002, p.18-19). Based on this
principle, IP regulation can only aid development in African countries, where
it grants those countries: ‘maximum freedom to protect and maintain TK,
indigenous innovation and cultural heritage; while advancing their national
capacity to improve all these areas.’ (Sen, 1999; Nussbaum, 2011).
Space within multilateral IP regulations-TRIPS and UPOV
Though essentially favoring the further expansion of current IPR regimes,
there are some provisions in TRIPs that can be exploited by communities and
countries interested in protecting their interests against those of dominant
industrial-commercial forces:
Article 8 allows for legal measures to protect public health/nutrition, and public
interest; though cultural protection is not explicitly built into this, it could be
justied as being in “public interest”.
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Article 27(2) allows for exclusion, from patentability, inventions whose
commercial use needs to be prevented to safeguard against “serious prejudice”
to the environment. This is somewhat convoluted, because a country will rst
need to determine such serious prejudice, justify the prevention of commercial
use, and then only be able to justify non-granting of patents;
Article 27(3) allows countries to exclude plants and animals from patentability,
and also plant varieties, so long as there is some other “effective” form of
IPR to such varieties. As mentioned above, what is “effective” is likely to be
determined by powerful countries, in which case the almost patent-like regime
being advocated by UPOV could well be pushed. However, an exceptionally
bold country could well experiment with completely different sui generis
systems, and face up to any charges that are brought against it at WTO.
Article 15.1 of the International Convention for the Protection of New Varieties
of Plants of the Union for the Protection of New Varieties of Plants [UPOV]
(1991) states that PBRs shall not extend to acts done privately and for non-
commercial purposes; acts done for experimental purposes and; acts done for
the purpose of breeding other varieties. Such exceptions may give countries
leeway to domestically research and breed plant varieties to meet national food
security needs, even without the permission of the breeder.
Space within non-IP regulations
Article 8j of the Convention on Biological Diversity [CBD] (2000) requires
countries to respect and protect indigenous and local community knowledge,
ensure that such communities are asked before using their knowledge for
wider society, and further ensure the equitable sharing of benets arising from
such use. Built into this provision are the seeds of a radically different vision of
protecting knowledge and generating and sharing benets from it. Follow up
agreements to the CBD such as the Nagoya Protocol (1993), and the ITPGRFA
conrm this multi-faceted view of development.
The importance of benet sharing in an African setting is illustrated by the
San Hoodia case concerning the San peoples, also known as Bushmen of the
Kalahari, of South Africa, and their TK of the appetite-suppressant properties
of the Hoodia succulent plant, used as a substitute for food and water when
hunting. In 1995, a South African research institute, the Council for Industrial
and Scientic Research [CSIR], successfully isolated the appetite suppressant
properties of the plant, and led for a patent. Though South Africa was a party to
the CBD, the CSIR never made contact with the San. Instead, they sub-licensed
their discovery to rms in Europe and the United States for signicant fees.
A vigilant local NGO eventually informed San leaders that their TK had been
used in a patent application and that they could either challenge the patent or
demand a benet sharing agreement. They chose the latter option. In March
2003, the San and the CSIR signed a historic agreement which will give the San
122 African Journal of Intellectual Property
6 per cent of all CSIR royalties received from licence-holders and 8 per cent of
all milestone payments. (Schroeder, 2010, p.107)
Based on Article 8j CBD, it is proposed that in addition to conventional criteria
for IPRs such as novelty, etc, the following conditions should be required for
IP applications relating to TK: source (country/community/person) of the
material or information that has gone into the produce/process for which an IPR
is claimed; proof of prior informed consent from the country and community
of origin (as per Articles 15(5) and 8j of the CBD); and details of the benet-
sharing arrangements entered into with the community of origin, wherever
applicable (as per Article 8j of the CBD).
Article 15(1) ICESCR recognises the right of everyone to: take part in cultural
life; and benet from the protection of the moral and material interests resulting
from any scientic, literary or artistic production of which he is the author. In
Article 15(2) State Parties commit to take actions necessary for the conservation,
the development and the diffusion of science and culture.
Space within human rights law
Article 27 (1) of the Universal Declaration of Human Rights [UDHR], Right to
Participate in Cultural Life, which states that: “Everyone has the right freely to
participate in the cultural life of the community, to enjoy the arts and to share
in scientic advancement and its benets”. While Article 27(2) establishes that
“Everyone has the right to the protection of the moral and material interests
resulting from any scientic, literary or artistic production of which he is the
author”.
The right to culture is based on the theory that all human beings have the right
to express themselves through traditional knowledge and cultural creativity.
Such knowledge is an extension of the human personality that deserves to be
recognised, preserved and rewarded in a dignied manner. TK such as folklore
and stories can be considered as artistic productions of indigenous people,
which must be protected. Consequently, IPRs cannot be protected in an isolated
manner, as if they do not affect, nor are affected by, the provision of other laws or
human rights [HRs]. Rather, IP regulations must fully consider the implications
of protection for cultural HRs, including TK and indigenous innovation (Chon,
2006, p. 2821).
Even where IPRs are justied as a form of property, under Locke’s theory, it
must be remembered that the intellectual property protected by IP is not meant
only to reward the labourer or creator of knowledge, but must also maintain
the commons of which TK forms a part. In the words of Andrei Marmor (2007):
“There are common goods which, once they exist, give rise to distributional
rights. Consider the example of culture. Once a given culture exists, it may well
be the case that the cultural resources of the community ought to be distributed
according to a just and fair scheme. People may have a right to a fair share of
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the cultural assets of their community, that is, even if they do not have a right
to culture.” (p.243)
A more prescriptive recognition of culture and indigenous knowledge as HRs is
contained in the UN Declaration of the Rights of Indigenous Peoples [UDRIP]
(2007). The Declaration afrms the right of indigenous peoples, as a collective
or as individuals, to the full enjoyment of all HRs and fundamental freedoms
as recognised in the Charter of the UN, UDHR and international human rights
law (ibid.: art. 1); the equality of all peoples and individuals, and their right
to be free from any kind of discrimination, in the exercise of rights based on
indigenous origin or identity (ibid.: art. 2). UDRIP asserts peoples’ right to
freely pursue social and cultural development (ibid.: art. 3); along with the
right of people to maintain and strengthen their distinct social and cultural
institutions, while retaining their right to participate fully, if they choose, in the
social and cultural life of the state (ibid.: art. 5). Also people have the right not
to be subjected to forced assimilation or destruction of their culture (Ibid, art.
8).
Based on the above provisions, where innovation is dened under IP
regulations so as to exclude TK and indigenous inventions, in a way that limits
the development of indigenous innovations, such IP laws will be considered as
discriminatory and against human rights. Article 31 of the UDRIP conrms that
indigenous knowledge is not something static, or ancient having no relevance
for the contemporary technological development for people have “the right to
maintain, control, protect, and develop cultural heritage, traditional knowledge,
and traditional cultural expressions, as well as the manifestation of science,
technologies and cultures”
Implications for Advancing TK and Innovation in
Africa
• The preconditions for patenting do not rule out TK from IP protection.
• Theories and regulations on interpreting international treaties, suggest
the norms contained in the EPA may affect the interpretation of IP norms
regionally between West African countries (See Article 41 VCLT).
• For “as long as an invention can be shown to be differing from the actual
method used in a TK and involves an inventive step it can be patented.”
This perspective has been conrmed by the decision of the Indian Supreme
Court in the case of (Bishwanath Prasad Radhey Shyam vs. Hindustan
Metal Industries, 1992). Thus where TK isn’t classied as prior art, it can
still be qualify for protection under modern IP systems.
• Moreover, the purpose and objectives of IPRs, as stated in Article 7 TRIPS
and Article 8j of the CBD conrm that the overriding purpose when
applying the patent system to bio culture should be the re-interpretation
124 African Journal of Intellectual Property
of IP provisions so as to respect, preserve and maintain the knowledge of
indigenous and local communities.
• Sui generis systems may be designed under Article 27.3(b) TRIPS
• Prior Informed Consent, Access and Benet Sharing, Disclosure of Origin
Requirements, may be applied to TK and indigenous innovation.
Conclusions and Recommendations
Holistic Denition and Implementation of IPRs Development Objective:
Modern denitions of development and innovation, as stated in soft law/non
IP agreements such as the Declaration on the Right to Development, (1987,
Articles 1.1, 2.2, 3.1, 6.3, 8.1, & 8.2), the SDGs (2015), and the ICESCR should
be taken into consideration in dening rights and responsibilities under IP and
trade laws. These agreements acknowledge that development is not just about
economic growth, but includes advancing the social, cultural and political well-
being of people. Under this approach analysis of IPRs will not just focus on the
way states treat foreign investors, but will also include examining the investor’s
responsibility to indigenous communities in the host state, as legal stakeholders
in IPRs. This could be done by adopting performance indicators for prerequisite
testing to measure the potential impact of regional and multilateral agreements
on TK and innovation in the continent (WWF and CIEL, 2001, p. 23-24)
Compulsory Legislation and Implementation of Prior Informed Consent,
Fair Access and Benet Sharing Schemes: Contemporary IP agreements treat
environmental, social, political and cultural advancement as discreet areas
of activity. They do not seek to integrate them into one holistic vision of
development. The result, as can be seen in some of the contentious projects
funded by the World Bank and in some attempts at expanding corporate social
responsibility practices, is that environmental and social, including human
rights issues, are often seen as ‘costs’ of doing business rather than as an integral
part of the development process.
Ensuring socio-economic advancement for indigenous people will be enhanced
by including binding provisions for access and benet sharing in national IP
legislation. Procedures for prior informed consent should also be developed
in cooperation with all the stakeholders, including farmers and local and
indigenous communities.
Re-dening the core concepts of relevant IP regulation to support development:
For example, concepts like “novel” and “invention” must be carefully dened,
to ensure that genetic resources are not removed from the public domain. To
protect traditional knowledge from misappropriation, patent ofces should
examine sources such as oral testimony, visual evidence, and material held
in gene bank deposits when applying the “novelty” requirement. Careful
denition of core concepts will avoid strengthening IPRs further than required
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by the TRIPS Agreement, and reduce its potential to undermine development
objectives.
Promotion and Protection of Traditional Knowledge and Innovations: Domestic
research and innovation will have greater impact on advancing sustainable
development in Africa, than technology transfer. For “technology adoption
alone is no longer sufcient to maintain a high growth scenario, rather
innovation is now crucial for catching up to high income countries.” (GII, 2015,
p.4) Consequently, African countries should adopt policies aimed at developing
TK and indigenous innovation. A useful instrument in protecting TK is the
provision of databases to record TK and informal inventions. African states
should enact regulation legally protecting traditional knowledge inventions
and adopt policy measures to encourage research, development and innovation
in this area (UN Post, 2015).
Development of sui generis systems to support development: Flexibilities
inherent in the TRIPS Agreement’s, allowing countries to adopt “effective”
sui generis protection of plant varieties, should be fully utilised by ECOWAS
countries. Examples of such unique rights could be allowing for Farmers’
Rights to be compulsorily protected at all levels, especially their right to save
and share seeds. India presents an example of an emerging economy that
has adopted a sui generis system, helpful for advancing the interests of both
indigenous stakeholders and investors.
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Law, International Law Commission Report A/CN.4/L.682. Retrieved from:
http://daccessdds.un.org/doc.
Kendie, S. B. and Guri, B.Y., (2010). Indigenous Institutions and Contemporary
Development in Ghana: Potentials and Challenges, in Subramanian, S. M.
and Pisupati, B. (Eds.) Traditional Knowledge in Policy and Practice: Approaches
to Development and Human Well Being (New York: United Nations University
[UNU]) p.52-71.
Marmor, A. (2007). Law in the Age of Pluralism. Oxford: Oxford University Press.
Mgbeoji, I. (2001). Patents and Traditional Knowledge of the Uses of Plants: Is a
Communal Patent Regime Part of the Solution to the Scourge of Biopiracy. 9:1
Indiana Journal of Global Legal Studies, 163-186.
Mgbeoji, I. (2010). Making Space for Grandma: The Emancipation of Traditional
Knowledge and the Dominance of Western Style Intellectual Property Regimes,
in Subramanian, S.M. and Pisupati, B. (Eds.) Traditional Knowledge in Policy and
Practice: Approaches to Development and Human Well Being (New York: United
Nations University [UNU]) p.130-146.
Milchior, R. (2015). How does IP Impact Economic Development? 10(9) Journal
of Intellectual Property Law & Practice.
Nussbaum, M. (2011). Creating Capabilities: The Human Development Approach.
Massachusetts: Harvard University Press.
Schroeder, D. (2010). Traditional Knowledge, Indigenous Communities
and Ethical Values in Subramanian, S. M. and Pisupati, B. (Eds.) Traditional
Knowledge in Policy and Practice: Approaches to Development and Human Well
Being. New York: United Nations University [UNU]) p.97-107.
Sen, A. (1999). Development as Freedom. New Delhi: Oxford University Press.
Spence, M. (2007). Intellectual Property. Oxford: Oxford University Press.
United Nations System Task Team on The Post-2015 Un Development Agenda
[UN Post 2015], “Science, technology and innovation and intellectual property
rights: The vision for development”, Thematic Think Piece, IAEA, ITU, UNESCO,
UNOOSA, WIPO, May 2012.
United Nations (1992). Convention on Biological Diversity [CBD], June 5,1992,
1760 U.N.T.S. 79.
United Nations (1986). Declaration on the Right to Development, GA Res 41/128,
UN Doc A/41/128 Dec. 4, 1986.
United Nations (1996). International Covenant on Economic, Social and Cultural
Rights, Dec. 16, 1996, UN GA Res 2200A(XXI), 21 UNGAOR Supp No.16 at 46,
UN Doc A/6316 (1966), 993 UNTS 3 (1996).
United Nations (2010). Nagoya Protocol on Access to Genetic Resources and the Fair
and Equitable Sharing of Benets Arising from their Utilization to the Convention on
Biological Diversity, Oct. 29, 2010.
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United Nations (2015). Transforming our World: the 2030 Agenda for Sustainable
Development, Sept. 25, 2015, A/RES/70/1 (2015).
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GA Res 217 A (III), UNGAOR, 3rd Sess, Supp No 13, UN Doc A/180(1948) 71
Wong, T. and Dueld, G. (Eds.) (2011). Intellectual Property and Human
Development. Cambridge: Cambridge University Press.
World Intellectual Property Organisation (2007). WIPO Development Agenda,
Oct. 3, 2007, WIPO GA Decision, WO/GA/34/16 (2007).
World Trade Organisation (1994). Agreement on Trade Related Aspects of Intellectual
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WTO, Annex 1C, 1867 U.N.T.S. 154, 33 I.L.M. 1197.
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Jurisprudence
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128 African Journal of Intellectual Property
BALANCING ACCESS AND INNOVATION IN
PATENT ENFORCEMENT: A COMPARATIVE
ANALYSIS OF THE ROLE OF THE JUDICIARY
IN KENYA AND INDIA
Lorraine Ogombe
Magistrate, The Judiciary, Kenya
Abstract
Courts play a critical role in enforcing patent rights. Often this role requires balancing
of the rights of the patent owner and that of the public generally to access the invention.
For pharmaceutical and medical related patents in particular, exercise of judicial
authority frequently requires the balancing of two conicting rights, that is, property
rights versus human right to health. This article seeks to provide a multi-dimensional
approach on the latitude courts in Kenya and India have resorted to in resolving and
balancing the conicting interests of pharmaceutical patent owners versus the right of
the public to access medicine at affordable prices.
Introduction
This article seeks to explore and address how much latitude courts in developing
countries have in balancing incentives and access to medicines in patent
enforcement cases. India and Kenya will form the focal point of the article.
On one hand, the importance of patents cannot be underscored enough.
Patent provides critical economic incentives in the pharmaceutical and other
technological industries. The cost of research and development (R&D) required
to bring a new drug to the market is high, currently estimated at over $1 billion.
According to a survey conducted by Forbes in 2013, most big pharmaceutical
companies are developing more than one drug at a time which often drives up
the cost to about $5 billion.1
Given the high nature of investment involved, players in the pharmaceutical
industry justiably demand the highest and longest form of protection available
through IP regimes particularly patent protection. Without adequate economic
incentive, limited investment may arguably be channelled into this critical
sector which would adversely affect healthcare standards and technologies.
Therefore upholding the economic incentives for patent owners is a legitimate
concern.
On the other hand, patents grant to the patentee monopoly like rights for
a limited period to make, use, sell, and offer to sell or import the patented
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pharmaceutical product or process. With these rights, the patentee controls
distribution and drug pricing, which can both have a signicant impact on
access. Access to essential medicines has been recognised by the World Health
Organisation (WHO), various international legal instruments and several
Constitutions around the world, as a necessary component to the right to health.
For most developing and least developed countries, healthcare needs continue
to be a current problem. African countries have a high disease burden for HIV/
AIDS, malaria, neglected tropical and other diseases. As a result, achieving the
highest attainable standards of healthcare is a key national concern for most
African countries. This goal, out of necessity, requires access to affordable
medicine which may arguably be hampered by the monopoly-like rights
owned by patent owners, therefore when determining patent infringement
cases involving pharmaceuticals, balancing innovation with access is critical.
In addition, often, courts in developing countries are called upon to enforce
patents belonging to foreign nationals, since the inequality in the distribution
of pharmaceutical patents is quite signicant with developed countries
owning the lion’s share of patents through large multinational pharmaceutical
companies.2 Nonetheless due to international obligations, courts must give
equal treatment under the law to foreign patent owners, which may conict
with national interests of that particular developing country.
Finally, while intellectual property (IP) enforcement cases are determined by
courts at national level, there is a lot of inuence from international treaties
and community. In particular, IP treaties from World Intellectual Property
Organisation (WIPO) (Paris Agreement) and the World Trade Organisation
(WTO) (TRIPs Agreement) have had the most impact. TRIPS has set minimum
standards which all contracting states have complied with, and incorporated in
domestic IP legislation. Accordingly, courts must comply with these minimum
standards; and any existing latitude and exibilities for improving access to
medicines can only be applied to the extent allowed by law.
It is for these reasons that courts in developing countries like Kenya and India
face many daunting challenges in balancing incentives and access in patent
cases involving pharmaceuticals. While it is not a direct role of any court system
to address healthcare standards in a country, judgments and other judicial
decisions in any country are not made in a vacuum. Judgments have socio-
economic effects on citizens and patent owners who are quite often foreign.
Therefore blindly enforcing all pharmaceutical patents may negatively affect
development especially a country’s health sector and judges ought to balance
between the need for incentives and access.
This article seeks to provide a multi-dimensional approach on the latitude
courts in Kenya and India have resorted to in resolving and balancing the
conicting interests of pharmaceutical patent owners versus the right of the
public in general to access medicine at affordable prices. From the perspective
130 African Journal of Intellectual Property
A Brief Overview of International Patent Law
Paris Convention
Generally, inventions are patentable if they meet minimum threshold
requirements of novelty, inventive step and usefulness. A patent is granted
pursuant to national patent laws.3 Under the territoriality principle, the scope
of patent protection is limited to the territory of the country in which a particular
patent is granted.4 Accordingly, most national governments around the world
including Kenya and India have patent laws and regulations to govern patent
registration, protection and enforcement. A patent grants to the patentee rights
to exclude others from making, using, selling, offering for sale or importing
the patented product or process without the patentee’s authorisation. These
exclusive rights are enforceable within the national jurisdiction of the country
in which that patent was granted, through local national court processes and
other dispute resolution mechanisms. Thus, for instance, patent infringement
of a Kenyan patent is determined through Kenya’s court system and laws.
However, most national patent laws are not autonomous in that they are
inuenced and often determined by minimum standards set by international
treaties. There are several international treaties dealing with IP under the
auspices of the WIPO and later by the WTO. These international treaties are
important internationally and also at national levels because they have set
minimum standards which signicantly shaped and created uniformity of
patent laws in most countries around the world including India and Kenya.
WIPO’s Paris Convention for the protection of Industrial Property (Paris
Agreement”) was rst signed in 1883. It has been revised severally and currently
has 175 signatories. It provides for the protection of industrial property which
includes patents, trademarks, industrial designs, utility models, appellations
of origin and protection against unfair competition. The Paris Convention
established minimum principles and standards of IP protection without
interfering with the territoriality nature of IP. Under its national treatment
principle which sought to eliminate discrimination against foreign owned IP,
of these two countries, this article analyses how this role has played out in
courts in selected cases.
Part I briey discusses international patent regime and the attendant obligations
and inuences that come from the key international patent treaties. Part II
explores innovation versus access questions, theories and justications. It then
delves into the exibilities available under the (TRIPs) to improve access to
medicines. Part III examines national responses and approaches in Kenya and
India in dealing with pharmaceutical patents versus the right to health of its
people. Selected case law from these two jurisdictions are examined. In the nal
part, the article makes conclusions and recommendations.
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contracting countries are required to offer foreign nationals equal treatment
as its own nationals. In addition to creating industrial property protection,
the Paris Convention establishes certain limitations to IP protection such as
compulsory licensing and other exceptions.5
The Paris Convention has been criticised for lacking adequate enforcement
mechanisms. Further, that by allowing national treatment, contracting countries
could elect whether to offer IP protection or not for a particular product or
process provided such a law was enforced uniformly as against national and
foreign innovators. It is this principle that India adopted for over 30 years up to
2005, to deny patent protection to all pharmaceutical products.
TRIPS Agreement
WIPO versus WTO
It is partly because of these criticisms that IP protection was deliberated as a trade
issue under the WTO and subsequently, the TRIPs Agreement was signed isn 1994
to provide more uniform and effective international IP standards. Articles 27 – 38
of TRIPs Agreement sets out the minimum patent standards.6 TRIPs establishes
minimum patent rights that member states must grant patentees which are:
a) where the subject matter of a patent is a product, the right to prevent third
parties not having the owner’s consent from the acts of: making, using, offering
for sale, selling, or importing for these purposes that product;
b) where the subject matter of a patent is a process, the right to prevent third
parties not having the owner’s consent ‘from the act of using the process, and
from the acts of: using, offering for sale, selling, or importing for these purposes
at least the product obtained directly by that process.”7
Arising from the differences in the powers granted to each organisation,
their respective treaty provisions and institutions governing each, there
are signicant implications arising from the move and current sharing of
multilateral IP protection and governance from the purview of WIPO only to
WTO also. First, national treatment principle differs from the TRIPS Agreement
to the Paris Convention. Unlike the exibilities under Paris, the set minimum
standards under TRIPS are applicable to all member states without exception.
Under WIPO regulation, a country was allowed to set certain IP standards
like India’s exclusion of pharmaceutical products from patentability provided
such standards were enforced uniformly as against nationals and foreigners.
TRIPs removes this exibility and requires all member states to apply uniform
minimum IP standards.8 Second, the move from WIPO to WTO is signicant
because of the effective dispute resolution mechanisms by WTO. WTO IP trade
disputes can be resolved under WTO’s Agreement on Dispute Settlement
132 African Journal of Intellectual Property
Understanding (DSU) which established the Dispute Settlement Body. It also
has an established seven member Appellate Body to handle appeals.9
WIPO on the other hand lacks a similar rules based dispute settlement
mechanism. Its Arbitration and Mediation Centre offers alternative dispute
resolution (ADR) options including mediation, arbitration, expedited
arbitration and expert determination.10 Critics of these ADR processes argue
that they are inadequate and the IP rights granted in the various WIPO
Agreements could not be effectively enforced. Without a multilateral dispute
mechanism process, countries often had to take individual unilateral action in
reaction to IP infringement or for failure/refusal to protect their national’s IP
by foreign governments. For instance, the US under section 301 of the Trade Act
of 1974 (popularly known as “super 301”) frequently took appropriate trade
and related action including retaliation against foreign governments which
violated international trade agreements including under WIPO Agreements.11
This made enforcement cumbersome and dependent on the relative power a
country yielded internationally. WTO resolved this challenge by setting up
a proper multilateral dispute resolution mechanism available to all member
countries.
However, by requiring all countries to uniformly apply minimum IP standards,
TRIPS constricted the space available for developing countries to take steps
necessary to address development challenges. Its reduced exibilities discussed
below are available in limited conditions only.
Patents: Innovation versus Access
One of the key justication for IP protection generally is the need to promote
innovation by providing economic incentives and granting to inventors the
right to control exploitation of their invention. But an equally important ideal
is the need to provide access to the invention to consumers and the public. For
pharmaceutical patents access is a critical issue in healthcare because access
to essential medicines and procedures often means life or death. But without
adequate IP protection companies may be less willing to invest in R&D required
in the pharmaceutical sector. Therefore from the perspective of innovation and
access, patents can have both a positive and negative impact on development
as discussed below.
The theories, justications and implications of patent protection in closed versus
open economies differ. An open economy12 refers to a country that engages
in international exchange of goods and services while a closed economy is a
more self-contained economy with limited contribution to international trade.13
Access and innovation issues differ in closed versus open economies. In an
open economy, stronger IP protection arguably stands to benet the IP rich
countries14 who export the technologies. The inequality in patent distribution
has impacts on the development and access to essential patented products
and processes for less developed economies. Due to international obligations
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to recognise set minimum IP standards during the term of the patent, less
developed countries cannot apply available technologies to develop their local
industries without rst obtaining a licence.
In a closed economy, proponents emphasise the innovation element provided
by strong patent protection. A patent is considered a social contract.15 Therefore
in return for disclosing an invention, the patentee gets exclusive rights for a
limited period of time. In this way, advancements in pharmaceutical and medical
sciences are facilitated and promoted since the patentee must fully disclose the
components of the invention and best mode of practising the invention. Other
innovators in the industry can use the disclosed invention in their research
to create other drugs and treatments.16 In this way duplication of research, is
avoided as the details of the invention are available through a patent ofce.
In addition, patent plays a crucial role of providing economic incentives in the
form of exclusive rights to innovators. As stated above, R&D for a new drug
is estimated to be as high as 1 to 5 billion dollars. The high cost of R&D is
attributed to the time and risk associated with developing a new drug. Even
after successful innovation, pharmaceutical products and processes must be
subjected to regulatory approval. As a result, only a small fraction of products
and processes make it to the market due to failure at clinical trial stage and
rejection by regulatory authorities.17 The success rate differs depending on
the therapeutic class with success varying from 8 to 24 percent.18 Such a low
success rate further escalates the cost of new drugs, as consumers are forced
to pay higher prices to compensate for the failures and R&D costs of the drugs
that did not make it to market.
With patent protection, the patentee has 20 years or more of exclusivity to
make, sell and authorise use the invention. During this period of protection,
the patentee can recover the cost of R&D and turn a prot. This includes
compensating nancially for the R&D cost of the other drugs that did not make
it to market. There are arguments that without an effective patent system,
free riding would increase and this would hinder progress and innovation as
fewer companies would have incentive to invest in costly R&D required for
developing new drugs, vaccines and treatment methods. Under the patent
system a patentee has competitive advantage and is able to commercialise the
invention at the exclusion of all others for a limited period.
Access to Medicines
On the other hand of the debate is the access counter argument. There is
evidence that pharmaceutical patents can have negative impact on access and
availability of medicines.19 A patent grants monopoly like rights to the holder
who can determine drug pricing and availability.
First, challenges to access for medicines for developing countries including
Kenya and India can be viewed from three main areas. Perhaps the most
134 African Journal of Intellectual Property
signicant obstacle to accessing treatment is cost.20 For instance, treatment for
HIV/AIDS gained global attention largely because of the fatal nature of the
disease and the massive numbers of HIV infections and therefore numbers of
people in need of treatment. At the beginning of the AIDs crisis in the late
80s and early 90s, ARVs cost on average $ 10,000 per year, which cost was
prohibitive and untenable for millions of people in developing countries who
succumbed to the disease.21 Pharmaceutical companies were accused of putting
prots and patents over people; and a strong advocacy movement arose in the
90s pushing for affordable medicines for HIV treatment. The international
community including international organisations, governments of several
developed countries, Funds and Non-Prot Organisations responded and have
signicantly assisted in providing access to cheaper medicines to people living
in low income countries.22 In addition, production of generic drugs also drove
prices down.23 The cost of treatment of rst line adult regimen treatment of HIV
dropped to about $74 per person per year by 2008,24 and as a result millions of
people today who require treatment are receiving it.
Second, neglected tropical diseases is a signicant problem without the global
attention of HIV/AIDS. According to the WHO:
Neglected tropical diseases (NTDs) blight the lives of a billion people worldwide
and threaten the health of millions more. These ancient companions of poverty
weaken impoverished populations, frustrate the achievement of health in the
Millennium Development Goals and impede global public health outcomes. An
evaluation of their signicance to public health and economies has convinced
governments, donors, the pharmaceutical industry and other agencies, including
nongovernmental organisations, to invest in preventing and controlling this
diverse group of diseases.
As stated above, there have been a lot global efforts to combat HIV/AIDS
and provide access to affordable medicines. While HIV/AIDS infections and
deaths have been concentrated in developing countries especially in Africa, it
was still a global problem and it therefore attracted swift worldwide response
from donors and also the scientic community. However, for diseases limited
to poor tropical countries there is limited economic incentive to engage in R&D
which has signicantly limited availability of new and effective drugs and
treatment.25 There are about 14 diseases on the WHO list of neglected diseases
which affect approximately one million people in poor countries.26 Due to lack
of adequate economic incentive, there is less R&D in neglected diseases leading
to access problems.27
Third, the patent term for pharmaceutical products is a thorny issue. In
theory a patent term should last for 20 years.28 In practice, the pharmaceutical
industry has adopted various strategies to extend patent terms often referred to
as evergreening strategies.29 Evergreening refers to various legal and business
strategies by patentees to extend patent terms on modied forms, new delivery
systems or new uses for the same drug. Strategies include protecting a single
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pharmaceutical product by a string of patents or patent portfolio on the
active ingredient and secondary patent on other formulations.30 In addition
superuous modications and improvements on the original drug are also
patented further extending patent term31 Other business related evergreening
strategies include entering exclusive partnerships with generic drug producers
to enhance brand value; establishment of subsidiary units as generic producers
before expiry of the drug; defensive pricing strategies to stie competition;
and switching to over the counter (OTC) distribution instead of prescription
for a drug whose patent is about to expire.32 These and other strategies have
signicantly extended patent holders control. The table below demonstrates
examples of the effectiveness of patent term extensions.
Critics argue that evergreening practices are abusive as they prevent patented
drugs from falling into the public domain thus delaying production of generic
medicines, and acts as a barrier to access to affordable medicines. There are
policy arguments that a balance between preventing legitimate incremental
innovations over mere evergreening strategies will be productive. As a result
of the monopoly-like exclusive rights to control the manufacture, sale and
importation of patented products and processes, patentees are able to set drug
prices.33 High drug prices mean that poorer members of society cannot afford
treatment thereby severely limiting access. The majority of developing and least
developed countries which are net importers of drugs have been affected the
Table 1: Effectiveness of patent term extensions
Case
Study
Rank Generic Name Proprietary Trade Mark Maximum Period of
Patent Protection
1 8 CLOPIDOGREL PLAVIX, COPLAVIX,
DUALPLAVIX, DUOCOVER
38yrs 7months 11days
2 6 VENLAFAXINE,
DESVENLAFAXINE
EFEXOR, EFEXOR-XR,
PRISTIQ
39yrs 8months 13days
3 13 ATORVASTATIN LIPITOR, CADUET 33yrs 7months 1day
4 12 ALENDRONATE FOSAMAX, FOSAMAX PLUS
D-CAL
36yrs 5months 17day
5 4 CEFUROXIME FORTUM, ZINNAT 43yrs 7months 16day
611 ZOLEDRONIC ACID ZOMETA, ACLASTA 36yrs 9months 29day
7 3 CITALOPRAM,
ESCITALOPRAM
CIPRAMIL, LEXAPRO 46yrs 7months 8day
8 1 OMEPRAZOLE,
ESOMEPRAZOLE
LOSEC, PRILOSEC, NEXIUM 48yrs 27months
9 15 ROSUVASTATIN CRESTOR 27yrs 10months
10 7 RISEDRONATE ACTONEL, ACTONEL E.A.T
COMBI
39yrs 3months 26day
11 9 NEVIRAPINE VIRAMUNE, VIRAMUNE XR 37yrs 11months 8day
12 2 FEXOFENADINE TELFAST 46yrs 8months 18day
13 5 LANSOPRAZOLE ZOTON 40yrs 4months 14day
14 10 MELOXICAM MOBIC 36yrs 11months 3day
15 14 OLANZAPINE ZYPREXA 31yrs 3months 2day
136 African Journal of Intellectual Property
most, especially the countries without technological capacity to manufacture
the drugs themselves. With longer extended patent terms, a patentee continue
to control distribution of the patented drugs thereby limiting access.
Improving Access to Medicines through TRIPS
Flexibilities
To address these public health challenges and disease burden, member
countries of WTO can utilise the TRIPs exibilities. As discussed above TRIPs
is important because it sets minimum standards by which members like Kenya
and India must operate.
TRIPs recognises under Article 7 that IPRs should be protected and enforced
in a manner that promotes socio economic development. Article 8(1) further
permits countries to adopt necessary measures to protect public health and
nutrition. However, these measures must be consistent with the TRIPs
Agreement. The limitations of compliance with the TRIPs Agreement under
Article 8(1) have signicantly curtailed member countries’ abilities to apply
TRIPS exibilities. These exibilities include: transition periods, compulsory
licensing, public non-commercial use of patents (government use), parallel
importation and exemptions from patentability.34
Article 27 provides for patentable subject matter and establishes exceptions
for exemption of diagnostic, therapeutic and surgical methods for human and
animal treatment, from patenting. For a product of process to be patentable it
must be new, involve inventive step and have industrial applicability. TRIPs
does not require patenting of modications or new uses of known substances
and thus patent protection can be rejected for such applications.
In addition, compulsory licensing procedures are established under Article 31 of
TRIPs. A compulsory licence is one issued by a Government without authority
of the patent owner to a third party to manufacture, a patented product and to
use and sell it.35 The Doha Declaration at paragraph 4 claried that 8(1) would
not prevent a country from derogating certain patent obligations under TRIPs
to address public health needs. In addition in Article 31 bis was adopted by
WTO General Council claried compulsory licensing conditions. However, the
effectiveness of Doha is limited because it is merely a Declaration and is thus
not binding.
Parallel importation allows countries to import cheaper drugs from other
markets. It is premised on the principle that once a patented product has been
sold legitimately, the patentee’s rights are exhausted and he cannot control
resale of the drugs in a secondary market.
In spite of these provisions, implementation of TRIPs exibilities to achieve
access to medicines for least developed and developing countries, has been
difcult and challenging. Use of compulsory licences by developing countries
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National Responses in India and Kenya
The international IP treaties under WIPO and WTO matter at national level
for developing countries like Kenya and India because they inuence national
IP laws. Under TRIPs, all member states including Kenya and India were
required as a matter of course to adopt minimum TRIPS standards based on
their membership to the WTO. Accordingly, IP laws of member states are fairly
similar based on these international obligations, at least on expected minimum
standards. Like other developing countries, compliance with TRIPs and other
international obligations has created development challenges which include
the requirement to recognise and offer protection of pharmaceutical patents
even in the face of national health crises.
As IP rights are territorial in nature, in order to secure protection of a
pharmaceutical product or process in different jurisdictions, for instance in Kenya
and India, the patentee must le a formal patent application in each country in
which patent protection is sought. The patent application must satisfy certain
formal requirements and the patentee must pay patent fees. In addition to the
formality requirements, the patent will be subjected to substantive examination.
To be patentable, rst an invention must fall under patentable subject matter.
As such discoveries, laws of nature and products in their natural state cannot
be patented. Second the invention must meet three basic requirements: novelty,
non-obviousness and utility.37 If the patent application is granted, the term of the
patent is 20 years. However, for pharmaceutical products and processes which
require regulatory approval, this term is often increased to cater for the special
nature of the pharmaceutical industry since clinical trial is often required to
ensure safety and efcacy of a new drug.38 As a result, while the default patent
term is only 20 years, this term has been extended by various legal mechanisms
in the patent system, leading to problems in providing access to medicines. In
addition the pharmaceutical industry has adopted various industry practices
for extending patent term through evergreening and other strategies.
Like other IP rights, patent protection and enforcement is territorial in nature.
Therefore protection only extends within boundaries of a particular country.
For developing countries like Kenya and India, meeting their international
obligations under WTO and WIPO to protect and enforce foreign patents while
at the same time meeting their public healthcare needs has presented many
challenges.
is growing but still in limited numbers in spite of signicant public health
needs. 36 Most countries elect to proceed with caution to avoid trade sanctions
and often voluntary licence agreements have subsequently been entered with
the pharmaceutical company in place of the compulsory licence. At national
levels, Kenya and India have both adopted these TRIPs exibilities in different
models which are discussed below.
138 African Journal of Intellectual Property
The two countries selected for case studies herein, that is India and Kenya, are
both developing countries. However, it is noteworthy that they are at different
stages of development. India has an advanced pharmaceutical industry and is
ahead of Kenya in many ways in terms of development indicators.39 This can
be attributed in part to the strategies adopted by India that encouraged and
supported the growth of its domestic pharmaceutical industry. In addition to
the differences in economic and technological capacities, the legislative and
judicial responses have differed. This offers a useful comparison of successful
strategies adopted to balance innovation and access at domestic national levels.
National IP Frameworks in India and Kenya
India’s patent legal framework
In India, patents are registered and regulated under the Patent Act which
provides the requirements and procedures of obtaining a patent in India.
It applies the basic tenets of patent law such as novelty, inventive step, and
industrial application requirements.
The rst Patent Act was passed in 1947 and it has been revised severally
and replaced in 1970 and subsequently in 2005. India is a signatory to both
WIPO’s Paris Convention and WTO’s TRIPs. Under the 1970s Patent Act, it
had implemented the national treatment principle as exibility. By exempting
all pharmaceutical products from patenting, India was able to develop its
own domestic pharmaceutical industry for generic drugs. This exclusion of
pharmaceutical products from patenting was applied equally to inventions
by nationals and foreigners thus conforming to the non-discrimination
requirement by WIPO.40
However, when India joined WTO, it was forced to standardise patent protection
in line with the rest of the WTO members. Thus at the expiry of the transition
period for developing countries, India amended its patent laws in 2005 to
permit patenting of pharmaceuticals and agricultural chemicals. Critics from
within and other developing and least developed countries which were relying
on generic drugs from India argued that TRIPs compliance would adversely
affect India’s pharmaceutical industry and slow down access to medicines
for many developing countries. India’s legislative latitude to differentiate its
patent system for pharmaceuticals in favour of its own national interests is
thus limited after TRIPs.41 However, it has continued to apply the available
exibilities as discussed below.
First, India took advantage of the full 10 year transition period available for
developing countries before amending its IP laws. Amendments to the Patent
Act were enacted and came into force in 2005. Drugs that were already being
produced in India as generics were not clawed back thus production of those
drugs continued. Second, while India adopted the spirit of TRIPs provisions,
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it rmly maintained in the 2005 Patent Act safeguards to promote and address
public health issues such as exible compulsory licensing requirements and
ban on evergreening practices such as patenting of modications or discovery
of new form of existing known substance.42
In particular, section 3(d) of India’s Patent Act excludes from patentability:
the mere discovery of a new form of a known substance which does not result in
the enhancement of the known efcacy of that substance or the mere discovery
of any new property or new use for a known substance or of the mere use of a
known process, machine or apparatus unless such known process results in a
new product or employs at least one new reactant.
Further section 84 provides for compulsory licences, that:
At any time after the expiration of three years from the date of the grant of a patent,
any person interested may make an application to the Controller for grant of
compulsory licence on patent on any of the following grounds, namely:— (a) that
the reasonable requirements of the public with respect to the patented invention
have not been satised, or (b) that the patented invention is not available to the
public at a reasonably affordable price, or (c) that the patented invention is not
worked in the territory of India.”
As a result, as will be discussed in the case studies below of the developing
countries, India has retained fairly signicant latitude for judges to promote
access in patent enforcement cases. In addition, it has maintained stricter
substantive patent examination thus preventing excessive extension of patent
terms.
Kenya’s patent legal framework
As a member of WTO, Kenya has also adopted minimum standards set by
TRIPs in its national IP framework. Under Kenya’s legal framework, patent law
is protected under the Industrial Property Act (IPA) and administered by the
Kenya Industrial Property Institute (KIPI).43 Among the key functions of KIPI
is to administer industrial property rights including patents, industrial designs
and trademark,44 while original jurisdiction to hear patent disputes is vested in
the Industrial Property Tribunal. Appeals are heard by the High Court.
The IPA contains public health exemptions in line with TRIPs exibilities in the
form of compulsory licensing and parallel importation. In particular, Section
58(2) provides for parallel importation for genuine goods and section 73 provides
that a compulsory licence may be issued only to the extent necessary.45
The Judiciary: Kenya and India
Judicial authority in Kenya is established by Article 159 of the Constitution which
provides “…that judicial authority is derived from the people and vests, and
shall be exercised by Courts and Tribunals established under this Constitution.”
140 African Journal of Intellectual Property
The Courts in Kenya in hierarchal order are the Supreme Court, Court of Appeal
(COA), High Court, Environment and Land Court (ELC), Employment and
Labour Relations Court (ELRC), Magistrates’ Courts and the Kadhi’s Courts.
Article 169 (1) of the Constitution of Kenya denes subordinate courts under the
judiciary to include local tribunals as may be established by an Act of Parliament.
The Intellectual Property Tribunal has been established pursuant to this provision
and the Industrial Property Act with the mandate to have original jurisdiction to
hear patent and other industrial property disputes. The Managing Director of
KIPI also has power to make decisions over specic issues relating to industrial
property. Appeals from the Tribunal are heard by the High Court. The second
appeal is to the Court of Appeal and the nal appeal is to the Supreme Court.46
Like in the US, right of appeal to Kenya’s Supreme Court is not automatic and
a case must be certied for hearing under the Supreme Court Rules. Decisions
of the Supreme Court are nal and binding. The Kenyan Supreme Court was
established under the Constitution, 2010 as the apex court in Kenya.47 To date, it
has not heard or determined any IP cases.
In India the court system is composed of the Supreme Court, the High Court,
District and Village Courts in that order of hierarchy. The Supreme Court is
the court of nal jurisdiction and its decisions are binding. Judicial authority is
derived from the Constitution. The Constitution of India recognises the right to
life which provision has been interpreted by the Supreme Court to include right
to timely medical treatment.48
Role of the Judiciary in Balancing Innovation and
Access
The courts in developing countries play a crucial role in enforcing patent rights.
As seen in both Kenya and India, the right to health is recognised as a core
human right. However the right to IP is equally protected as a property right.
Thus courts must adjudicate and resolve IP and related cases in a manner that
does hinder innovation nor compromise access to medicines.49
Case studies from Kenya and India discussed below reveal how courts and other
administrative bodies can assist in improving access to medicines.
Selected Case Studies from India and Kenya
There are various case studies from these two jurisdictions. This section highlights
cases that have had a signicant impact on the access to medicines question.
Indian case studies
Novartis v. Union of India50
The subject of this litigation was pharmaceutical product Glivec (imatinib
mesylate) used for cancer treatment and produced by Norvartis International AG,
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a Swiss multinational pharmaceutical company. The patent application No. 1602/
MAS/1998 was rst led in India on 06/17/1998 by Novartis. Further patent on
the modications was led in 2005. The claims in the patent application were for
“Crystal modication of N-Phenyl-2-Pyrimidineamine derivative, process for its
manufacture and its use.” In 2005, Cancer Patients Aid, Cipla and others led an
opposition to the patent application. After hearing the opposition, the Controller
of Patents and Designs in 2006 rejected the patent application for failure to
exhibit inventive step and enhanced efcacy. This led to a protracted seven year
court battle. One of the main issues raised in the litigation was interpretation
of section 3(d) of the Patent Act and whether modications of drugs should be
patented. Pzer argued this provision was contrary to the TRIPS Agreement.51
The Supreme Court upheld the decision of the Patent Ofce and the Appellate
Board which had rejected patent application of the modication of the drug.
Supporters of this decision have argued that the interpretation of section 3(d) is
in line with Article 27 of TRIPS which sets minimum standards of patentability
for inventions which are novel; involve an inventive step (non-obviousness);
and are useful (industrial applicability). The Novartis product herein for which
the Company was seeking to patent was a modication of an existing known
product for cancer treatment. A lot of policy arguments have been made against
patentability of minor modications especially for pharmaceutical products.52
This decision sets an important precedent rejecting patentability of modications
of existing drugs. Surprisingly, the same drug has been patented in various
patent ofces around the world including Kenya.53 The Novartis decision was
signicant to the whole world, especially for developing countries which rely on
generic medicines produced in India as Gleevec is a highly effective treatment for
cancer and if the patent was issued on the modication, it would have extended
the term of the patent.
Below is a table from the Intellectual Property Appeal Board showing outcome of
recent selected pharmaceutical cases in India.
Table 2: Outcome of recent selected pharmaceutical cases in India
Company Drug/Disease Issue Current outcome
Bayer Nexavar - kidney
cancer
Patent ofce ordered Bayer to
license its drug to Indian rm to
produce low cost generic
IPAB rejected Bayer appeal to
overturn compulsory licence on
03/04/2013; Further appeal to
Mumbai High Court pending
Bayer Nexavar - kidney
cancer
Sued Cipla for patent
infringement
Hearing in Dec 2012
Novartis Glivec – leukemia India refused to grant patent to
Swiss rm in 2006
India Supreme Court rejected
Novartis patent appeal on
04/01/2014 after 7 year legal battle.
Roche Tarceva – cancer Roche sued Indian companies for
patent infringement
Delhi High Court dismissed Roche’s
patent infringement case in Sept
2012 after 4 year struggle
Roche Valcyte (AIDS) Patent ofce revoked Roche’s
patent
Appeal pending before IPAB
Gilead Viread (HIV) Patent ofce rejected two patents Appeal pending
142 African Journal of Intellectual Property
Kenyan Case Studies
Pzer Inc. v. Cosmos Limited54
The subject of this litigation was a pharmaceutical product known as
azithromycin dehydrate commonly used for treatment of opportunistic diseases
associated with HIV/AIDS. It is produced by Pzer Incorporated, a US based
pharmaceutical company. Pzer sued Cosmos for patent infringement. Cosmos
raised two defences. First, it challenged the validity of the patent but this defence
was rejected as the Patent was found to be valid. Second, Cosmos relied on parallel
importation provision under section 58(2) of the IPA alleging that importation
was non-infringing because Pzer’s patent rights had been exhausted. In its
decision delivered in 2008, the Tribunal rejected both defences and found Cosmos
liable for patent infringement.55 The Tribunal also issued orders for destruction
of the remaining stock of infringing drugs and an order of injunction restraining
the respondent from further infringing the patent for the remainder of the patent
term which incidentally expired in about 3 months from the date of this particular
ruling. The Tribunal held that the rights under section 58(2) were not a blanket
provision which a third party could rely on to infringe a valid patent.
Patricia Ochieng & 2 others v. Attorney General & AIDS Law Project56
The subject matter of this litigation was a Constitutional petition by persons
living with HIV and AIDs (PLWAH) seeking declaratory orders to afrm their
fundamental right to life, human dignity and health. The Petition was led in the
High Court at Nairobi, in the Constitutional and Judicial Review Division. At the
core of the litigation was interpretation of section 2 of the Anti-Counterfeit Act
which dened counterfeiting as:57
“ means taking the following actions without the authority of the owner of
intellectual property right subsisting in Kenya or elsewhere in respect of protected
goods—
a. the manufacture, production, packaging, re-packaging, labelling or making,
whether in Kenya or elsewhere, of any goods whereby those protected goods
are imitated in such manner and to such a degree that those other goods are
identical or substantially similar copies of the protected goods;
Other Cases
There are several other examples of other pharmaceutical products in which India
has implemented the TRIPs exibilities adopted in its national Patent Act, to
prevent excessive patent periods and/or meet public health needs. The relevant
provisions include patentable subject matter, or applied the TRIPs exibilities like
compulsory licence. Decisions by the Indian Patent Appeal Board are appealed
to the High Court.
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b. the manufacture, production or making, whether in Kenya or elsewhere, the
subject matter of that intellectual property, or a colorable imitation thereof
so that the other goods are calculated to be confused with or to be taken as
being the protected goods of the said owner or any goods manufactured,
produced or made under his licence;
c. the manufacturing, producing or making of copies, in Kenya or elsewhere,
in violation of an author’s rights or related rights;
d. in relation to medicine, the deliberate and fraudulent mislabeling of medicine
with respect to identity or source, whether or not such products have correct
ingredients, wrong ingredients, have sufcient active ingredients or have
fake packaging…”
The Petitioners argued that their right to access to affordable generic medicines
was in danger due to the ambiguity in this section and sections 32 and 34 which
had not specically distinguished generic drugs from counterfeits. The UN
Special Rapporteur on the right to health led an amicus brief in support of the
Petition supporting the Petitioners’ argument that the ambiguity in the Act could
be misinterpreted to the detriment of the Petitions by limiting access to medicines
and by extension, hindering their right to the health.
The Respondent, the Honourable Attorney General of the Republic of Kenya
sought dismissal of the case and counter-argued that the statute had no
ambiguities; and that generics are clearly distinguishable from counterfeits. He
argued there was no need to specically exempt them in the denition section. In
the her Judgment Honourable Lady Justice Mumbi Ngugi, considered relevant
provisions of the Industrial Property Act, IPA, the HIV Act, as well as relevant
international treaties. The judgment details the socio economic impact of HIV and
Kenya’s National AIDS strategic plan. In nding in favour of the Petitioners, the
Court held that that under Article 43 of the Constitution and other international
treaties,58 Kenyans have the right to the highest attainable standard of health.
Further that the failure to distinguish generic medicines from counterfeit drugs,
the section was ambiguous and could be subjected to interpretation which could
threaten the Petitioners right to life which encompasses right to access affordable
HIV medicines including generic drugs. Accordingly, the Court declared section
2 unconstitutional. This case is a landmark case for Kenya as it the rst decision
in which the High Court has considered IP rights and the right to health; and
upheld the right to health, as a basic human and constitutional right.
Comparative Analysis: Balancing Innovation and
Access to Medicine in Kenya and India
There are some similarities and some striking differences between Kenya and
India in their manner of addressing innovation and access in cases involving
pharmaceutical patents.
144 African Journal of Intellectual Property
First, both countries are developing countries. Therefore they share some of
the same challenges associated with a countries at developing status such
as poverty of a large section of its population. However, there are signicant
differences between the two countries.59 India is at an advanced stage of
economic development generally. Moreover it has a well-established domestic
pharmaceutical industry. In cases involving foreign patents in India, the
existence of domestic pharmaceutical interests is often a critical factor in patent
enforcement cases since the Indian Government including the Judiciary is keen
on protecting and promoting its local industry. The cases discussed in the
preceding sections illustrate the consistent policies and strategies adopted in
India to prevent extension of patent terms. Kenya, on the other hand lacks a
large domestic pharmaceutical industry, and mostly relies on importing drugs.
Second, India has adopted stricter patent legislation and patentability standards.
Novartis Glivec drug was rejected by the India’s Patent Ofce and the decision
was conrmed by the Supreme Court on the basis of Section 3(d) of India’s
Patent Act which limits patenting of modications of known existing substances
without sufcient improved efcacy. Kenya on the hand conducts less substantive
patent examination in Kenya and accepts patents registered at regional level by
the African regional Intellectual Property Organisation (ARIPO). For instance,
Novartis Glivec and many other drugs rejected in India are patented in Kenya
through ARIPO. In addition, the Indian judiciary largely supports decisions by the
Patent Ofce by passing consistent judgments rejecting excessive pharmaceutical
patents. There are much fewer court decisions in Kenya over patent infringement
involving pharmaceutical products, thus case law is limited. By comparison, the
exibilities adopted in Kenya were more in line with increasing importation of
drugs to deal with the HIV/AIDS crisis under section 58(2) of the IPA which
authorises parallel importation or through voluntary licences.
Third, arguably, the Indian Government and its Judiciary have exhibited
independence and ability to withstand international pressure and global
corporate interests. India has faced a lot of criticism about strategies it has adopted
in respect of patenting of pharmaceutical products including the rejection of
pharmaceutical products prior to 2005 and currently section 3(d) of the Patent
Act. Its independent Judiciary continues to apply the provisions of the Patent Act
to balance innovation with access.
Latitude for Courts to Improve Access
Generally, the role of a judiciary in any country is to administer justice according
to the law. This requires interpretation of statutory provisions and application
of the law to the facts of a particular case. How the law is interpreted ultimately
determines the outcome of a case. In addition, both Kenya and India are
common law countries. Therefore in principle courts can make law through its
judicial decisions. But this occurs only in limited circumstances because IP and
particularly patent is highly regulated by virtue of TRIPs.
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By virtue of their membership to WTO, most developing countries including
India and Kenya have limited room to determine their IP laws to suit national
interests since their laws must comply with minimum standards set by TRIPS. As
a result of the IP laws passed pursuant to TRIPS obligations, courts in Kenya and
India must adhere to TRIPs. The more expansive latitude which existed prior to
2005 has been eroded.60 Currently, latitude for courts exists only in the form of
TRIPs exibilities that is compulsory licence, parallel importation and patentable
subject matter.
As discussed above, India’s court system is a good example of a judiciary that has
continued to apply existing exibilities to improve access, and prevent excessive
and prolonged patent terms. Kenya may adopt and implement legislation
which promote compulsory licensing to avail necessary drugs in the market
at reasonable cost. The Industrial Property Act already permits compulsory
licensing under certain conditions. If the same is challenged by a patent holder,
courts should where possible be reluctant to enforce the patent holders’ rights so
as to improve access.
It is noteworthy that any existing latitude for courts to promote access does not
exist in a total vacuum. It requires the participation of all stakeholders including
the legislature, the executive, the patent ofce and other industry players. In
India, the legislature has passed patent laws which can be used by judges to
improve access. For instance, the removal of patentability of pharmaceutical
products prior to 2005 and the current section 3(d) of India’s Patent Act give the
courts provisions which can be interpreted to improve access. India’s patent ofce
is vigilant in patent application examinations and frequently rejects applications
which do not meet the enhanced efcacy requirement set by section 3(d) or other
patentability standards. When such decisions are appealed, the courts are also
quick to dismiss the appeal thus balancing innovation and improving access.
In addition to the laws and statutes, both national and international, judges are
restricted by the doctrine of stare decisis. Stare decisis is a Latin maxim which means
to “stand by that which is decided.” Under this doctrine, courts are required to
follow legal precedents set by previous decisions especially that of a superior
court.61 Thus, for example, in Kenya and India, the decisions by the Supreme
Court are binding on all other courts within that country. Stare decisis plays an
important role in ensuring rule of law and predictability in outcome of cases and
interpretation of statutes. Accordingly, a latitude a judge has in a patent dispute
will also be determined by previous judgments and interpretation of the law by
higher courts. In India, the Supreme Court has set good precedents for balancing
innovation and access. Kenya’s jurisprudence on patent matters is not as well
advanced.
Courts should where possible fast track and expeditiously hear and determine
cases involving pharmaceutical patents and access to health issues. While all
cases in a judicial system are important, cases involving access to medicines
fundamentally have a public interest element to them with potential to affect a
146 African Journal of Intellectual Property
large segment of members of society’s access to healthcare. Undue delay of such
cases may impede access to medicines. Therefore due to the caseload pending in
the Kenyan judicial system for instane, initiatives to fast track such cases would
aid in expeditious determination of the disputes. As at the reporting year 2014/15,
the total number of cases pending in Kenya’s judicial system was 612,309.62
Without concerted efforts to fast tracking access to medicines related cases, these
cases may remain pending in the system for a while thereby impeding access.
By improving access to justice generally, through reduction of physical, procedural
and technical barriers to justice, the judiciary can vastly improve resolution of
related disputes. Patent law is by nature a specialised area of law. The common
litigant may not very well understand the intricacies of patent law and may be
unlikely to le a claim challenging the legitimacy of a patent granted for minor
adjustments such as evergreening, even where it directly affects his right to
health. Therefore concerted efforts to improve and simplify court procedures
and court ling fees would aid the pro se litigants.63 Various efforts have been
adopted by the Kenyan judiciary to improve access to justice. Among them is
the restructuring and transition of tribunals under the ambit and management
of the judiciary. The Industrial Property Tribunal is one of 15 tribunals which
have been transitioned to the judiciary from their parent ministries.64 Further
efforts to improve determination of patent disputes should be implemented by
the judiciary.
Conclusion: Lessons for Judges and Magistrates
Whether explicitly stated or not in the various judgments by the courts or
decisions by patent ofces, which involve pharmaceutical products and
processes, there are usually public health policy implications. Strict construction
of patent claims and refusal to patent certain products such as modications
without enhanced efcacy, can go a long way in promoting access to medicines
or promoting domestic pharmaceutical industries such as India’s. To the extent
possible, judges should uphold decisions by patent ofces especially where those
decisions promote access.
First, for a judge to effectively hear and determine a patent case, he should have
good knowledge and understanding of IP and particularly national patent law.
Specialised advanced training in this area would assist the judge to better grasp
the issues. Second, because international IP obligations brought on by WTO and
WIPO ultimately affect domestic patent laws, the judge should also keep abreast
of international developments on IP. Third, the judge may consider judgments in
other jurisdictions as persuasive authority.
While progress has certainly been made towards improving access to medicines
generally for developing countries, more can still be done and the judiciary has a
big role to play while adjudicating patent and related disputes.
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Notes
1 Herper, M. (2012). The cost of creating a new drug now $5billion, pushing big pharma to
change. Retrieved from http://medlines.org/the-cost-of-creating-a-new-drug-now-5-
billion-pushing-big-pharma-to-change/.
2 This inequality has arisen partly because of resource availability for research and
development in the richer nations and also their technological capability. However,
there are some exception in developing countries like India, Brazil and others which
have developed indigenous local pharmaceutical industries which began by focusing
on generic medicines.
3 However, there are regional and international patent treaties which have inuence
patent norms and registration.
150 African Journal of Intellectual Property
4 Max Planck Institute, (2014). The concept of territoriality and its impact on international
intellectual property protection. Retrieved from http://www.ip.mpg.de/en/pub/
research_teaching/ip/main_areas/concept_of_territoriality.cfm.
5 Hicks, L., Holbein, J. (1997). Convergence of national intellectual property norms in
international trading agreements, American University Journal of International Law and
Policy 12 769-781. Retrieved from https://litigation-essentials.lexisnexis.com.
6 TRIPS also provides for protection of copyright and other industrial property rights
like trademarks, industrial design and geographical indications among others.
7 Article 28(1) of the TRIPs Agreement.
8 Accordingly by 2005, even India had to amend its laws to allow patenting of
pharmaceutical products. See Mueller, J.M. (2007). The tiger awakens: the tumultuous
transformation of India’s patent system and the rise of Indian pharmaceutical innovation,
University of Pittsburg Law Review 68, 491. Retrieved from https://lawreview.law.pitt.
edu. DOI https://doi.org/10.5195/lawreview.2007.79.
9 WTO, Understanding the WTO: settling disputes. Retrieved from http://www.wto.org/
english/thewto_e/whatis_e/tif_e/disp1_e.htm.
10 WIPO, Alternative Dispute Resolution. Retrieved from http://www.wipo.int/amc/
en/.
11 Wikipedia, (2014) Section 301 of the Trade Act of 1974. Retrieved from http://
en.wikipedia.org/wiki/Section_301_of_the_Trade_Act_of_1974).
12 Open economy is characterized by large movement of goods, services, nancial
capital and foreign exchange to other countries.
13 Maskus, K. (2000). Globalization and the economics of intellectual property rights:
dancing the dual distortion, Institute for International Economics, 27-85.
14 Generally, the more developed countries own majority of the world patents due to
their advanced technological capabilities.
15 Osenga, K. (2011) Get the balance right: squaring access with patent protection,
MacGeorge Business and Development Law Journal 25, 309. Retrieved from https://
heinonline.org.
16 Osenga K. at 313.
17 DiMasi J., Feldman I., Seckler A., Wilson A. (2010, Mar.) Trends in risks associated
with new drug development: success rates for investigational drugs, State of the Art,
87(3), 272. Retrieved from www.nature.com/cpt.
18 Ibid at 276
19 Christie, A., Dent, C., McIntyre, P., Wilson L., Studdert, D. (2013, April) Patents
associated with high cost drugs in Australia. Retrieved from http://www.plosone.org/
article/info%3Adoi%2F10.1371%2Fjournal.pone.0060812.
20 Frost, L. Reich, M. (2008) How do good health technologies get to poor people in poor
countries, Harvard Centre for Population and Development Studies, Cambridge.
21 Hoen, E., Berger, J., Calmy, A., Moon, S. (2011) Driving a decade of change: HIV/AIDS,
patents and access to medicines for all, Journal of International AIDS Society. Retrieved
from http://www.biomedcentral.com/1758-2652/14/15/.
22 World Health Organisation (2014, May) Global HIV/AIDS response: epidemic update
151
Vol. 1 No. 2 June 2017
and health sector progress towards universal access. Retrieved from www.unaids.org/.../
unaids/.../unaidspublication/.../20111130_ua_report_en...
23 A generic drug is an identical copy (bioequivalent) of a brand name drug
24 Waning, B., Diedrichsen, E., Moon S. (2010) A lifeline to treatment: the role of Indian
generic manufacturers in supplying antiretroviral medicines to developing countries, Journal
of International AIDS Society . Retrieved from http://www.ncbi.nlm.nih.gov/pmc/
articles/PMC2944814/.
25 Stirner, B. (2008) Stimulating research and development of pharmaceutical products for
neglected diseases, European Journal on Health Law. Retrieved from https://heinonline.
org.
26 Neglected tropical diseases include some parasitic diseases transmitted by insects
(such as Chagas disease; leismaniasis; African trypanosomiasis, commonly known as
sleeping sickness); bacterial infections (such as trachoma, Buruli ulcer), others, however,
are spread by contaminated water and soil infected with eggs of worms (lymphatic
lariasis, commonly known as elephantitis; onchocerciasis, commonly known as river
blindness; hookworm).
27 Vinicio M., Feres C. (2012) Law as identity: the case of drugs for neglected diseases,
US-China Law Review. Retrieved from https://Heinonline.org.
28 However, since pharmaceutical products and processes require regulatory approval,
the term of protection has been increased in most jurisdictions to cater for the period
before approval is granted and the product or process can be safely put on the market.
In the US, the term was increased by the Hatch Waxman Act for a period between 5 to
14 years, to compensate patentees for the period lost when seeking regulatory approval
from the Food and Drug Administration (FDA). Other countries have similar statutory
provisions which extend patent terms.
29 The practice is also known as stockpiling, layering, life-cycle management or line
extensions.
30 Thomas, J., (2014). Patent evergreening: issues in innovation and competition. Retrieved
from http://www.ipmall.info/hosted_resources/crs/R40917_091113.pdf www.ipmail.
info.
31 Kapczynski, A. (2013). Engineered in India: patent law 2.0, The New England Journal
of Medicine.
32 Bhat, P. (2014, May). Drug patent evergreening: an overview, BLOG. Retrieved from
http://blog.mmsholdings.com/blog/bid/86991/Drug-Patent-Evergreening-An-
Overview.
33 MSF Access Campaign, (2014). The impact of patents on access to medicines. Retrieved
from http://www.msfaccess.org/content/impact-patents-access-medicines.
34 Musungu, S., Oh, C. (2005). The use of exibilities in TRIPS by developing countries: can they
promote access to medicines.Retrieved from http://www.who.int/intellectualproperty/
studies/TRIPS_exibilities/en/.
35 Use of compulsory licences have certain limitations. First, prior to issuance of a
compulsory licence authorization of the patentee must be sought on reasonable
commercial terms. However, in event of a national emergency the need for negotiations
is waived. Second the scope and use of a compulsory licence must be limited to public
noncommercial use; predominantly for the domestic market and shall be non-exclusive
152 African Journal of Intellectual Property
and non-assignable. Third, the patentee shall be paid reasonable compensation. See
Article 31 of TRIPS.
36 African countries like Zimbabwe, Kenya, Mozambique, Zambia and South Africa have
in the past issued compulsory licences for production of ARVs to address HIV/AIDS
infections in their jurisdictions. See Musungu, S., Oh, C. (2005). The use of exibilities in
TRIPS by developing countries: can they promote access to medicines, at 8, supra.
37Merges, R., Menell, P., Lemley, M. (2012). Intellectual property in the new technological
age, Wolters and Kluwer, New York at p. 128.
38 For instance in the US, patent restoration for pharmaceutical patents is regulated
by the Hatch Waxman Act, 1984. Under this Act, patent term can be extended for 5-14
years if the patent was issued after 1984. See Bair, S., (2013). Adjustments, extensions,
disclaimers, continuations: when do patent term adjustments make sense? Capital
University Law Review 41, 445. Retrieved from https://lexisnexis.org.
39 India has the third largest pharmaceutical industry by volume and considered the 14th
largest in terms of value of the industry. In 2010, its estimated value was $10billion, and
sales projected to grow to $74billion in 2020. According to Gabble and Kohler, with this
robust pharmaceutical industry it may be easy to assume that access to medicines for
all has been achieve in India. Surprisingly, this is not the case. Poverty is a signicant
concern as about 70% live on less than $2 a day and only 5% with access to private
health insurance. See Gabble and Kohler supra at 2
40 Mueller, J. (2007). The tiger awakens: the tumultuous transformation of India’s patent
system and the rise of Indian pharmaceutical innovation, University of Pittsburg Law
Review 68, 491.
41 Mueller, J., Ibid.
42 Gabble and Kohler supra at 2
43 KIPI is a Government agency created under an Act of Parliament under the Ministry
of Industrialization and Enterprise Development.
44 See ofcial Kenya Industrial Property Institute website. Retrieved from www.kipi.
go.ke.
45 Lettington, R.L., Munyi, P. (2004, September). Willingness and ability to use TRIPs
exibilities: Kenyan case study. Retrieved from www.who.int/hiv/amds/countries/
ken_UseTRIPsFlexibilitiesDFID.
46 Ombija N., (2011). Case study of Kenya’s specialised intellectual property rights court
regimes. Retrieved from Kenya Law Journal. Retrieved from www.kenyalaw.org.
47 Republic of Kenya, The supreme court of Kenya. Retrieved from www.judiciary.go.ke.
48 Bazzle, T. (2011). Pharmacy of the developing world: reconciling intellectual property
rights in India with the right to health: TRIPS, India’s patent system and essential
medicines. Georgetown Journal on International Law, 42 785. Retrieved from LexisNexis.
49 Oke, E.K. (2013, December). Incorporating a right to health perspective into the
resolution of patent law disputes, Health and Human Rights Journal 15(2). Retrieved
from http://www.hhrjournal.org/2013/12/06/incorporating-a-right-to-health-
perspective-into-the-resolution-of-patent-law-disputes/.
50 Novartis AG v. Union of India, Supreme Court of India Civil Appeal No. 2706 – 2716
of 2013. Retrieved from http://www.rstbiz.com/corporate/full-text-sc-judgement-
rejecting-novartis-patent-plea-for-glivec-40247.html.
153
Vol. 1 No. 2 June 2017
51 Bazzle, T. (2011) Pharmacy of the developing world: reconciling intellectual property
rights in India with the right to health: TRIPS, India’s patent system and essential
medicines, supra at 806.
52 Roderick, P. Pollock, A. (2012, Sep.) India’s patent law under pressure, 380 The Lancet
9846. Retrieved from http://www.thelancet.com/journals/lancet/article/PIIS0140-
6736(12)61513-X/fulltext.
53 Gabble, R., Kohler, J.C. (2014, January). To Patent or not to patent? the case of Novartis’
cancer drug Glivec in India. Retrieved from http://www.globalizationandhealth.com/
content/10/1/3.
54 See Pzer Inc. v. Cosmos LLC, Case No. 49 of 2006, Judgment of the Industrial Property
Tribunal at Nairobi (Apr. 25, 2008).
55 Oke, E.K. (2013, December). Incorporating a right to health perspective into the
resolution of patent law disputes, Health and Human Rights Journal, 15(2). Retrieved
from http://www.hhrjournal.org/2013/12/06/incorporating-a-right-to-health-
perspective-into-the-resolution-of-patent-law-disputes/ .
56 Patricia Ochieng & 2 others v. Attorney General & AIDS Law Project Court Petition No.
409 of 2009, Judgment of the High Court of Kenya at Nairobi (May 12, 2014, 3:30AM),
http://kelinkenya.org/wp-content/.../Judgment-Petition-No-409-of-20092.pdf.
57 The section contained a proviso to the effect that the paragraph did derogate from the
existing provisions under the Industrial Property Act.
58The relevant treaties which Kenya is a signatory to: are the International Convention
on Economic, Social and Cultural Rights, Convention on Elimination on all forms of
Discrimination on Women and Convention on the Rights of the Child all provide for
the right to health.
59 Development is measured by indexes like per capita income, gross domestic product
(GDP), and human development index (HDI)
60 Before 2005, developing countries like Kenya and India had the transition period
before implementation of TRIPs was required.
61 Foster, S. (2008) Should courts give stare decisis effect to statutory interpretation
methodology? Georgetown Law Journal 96, 1863, available at https://lexisnexis.org.
62 The Republic of Kenya Judiciary (2016) Report on State of the Judiciary and administration
of justice 2014-2015. Retrieved from www.judiciary.go.ke.
63Ibid.
64 The Republic of Kenya, Tribunal. Retrieved from http://www.judiciary.go.ke/portal/
page/tribunals.
Website: www.aripo.org Website: www.africau.edu
