To foster innovation, protect inventions
Dar es Salaam, Tanzania – Imagine a scientist whose efforts have focused for years on an important issue. Eventually the scientist hits a target, and this provides opportunities for future career development and potential new discoveries. Now imagine that someone uses that discovery without permission.
What would be the consequences for the scientist who had invested so much time, intellect and resources?
Patents are exclusive rights granted for inventions – they provide researchers with a monopoly to commercialise the invention over a 20 year period, says Revel Iyer, an expert in patent law. Most important, he says, patents act as catalyst for technological development: by protecting creativity, they support a dynamic innovation ecosystem where human endeavour flourishes.
Iyer is the director of the Technology Transfer Office (TTO) at Cape Peninsula University of Technology in Cape Town, South Africa. He was a guest speaker at the TWAS Research Grants conference in Dar es Salaam, Tanzania, on 29 August. The Swedish International Development Cooperation Agency (Sida) provided generous support for the conference.
As a scientist, Iyer was involved in biotechnology and led the transgenic maize research program at the University of Cape Town. As an inventor, he was involved in the development of plants genetically engineered to be drought-tolerant.
Since 2016, Iyer has been the director of the CPUT TTO, where he deals with technology transfer, intellectual property laws and patenting. In an interview with TWAS staff writer Cristina Serra, he offered insight on the importance of patenting and protect scientific findings.
Dr. Iyer, in your experience, are African scientists aware of the importance of patenting discoveries and intellectual products?
I do not think so. It appears to be a global problem with scientists from universities not being very familiar with intellectual property (IP). IP is mainly considered an aspect of the commercial world and has traditionally been treated as something that cannot coexist with academic research. The success of the USA system has challenged this mindset. The knowledge economy in the USA blossomed after implementation of the Bayh-Dole Act (legislation dealing with intellectual property arising from research funded by the federal government). A number of countries are now implementing similar legislation. An example is South Africa. This requires a culture shift.
What are typical patent objects?
Inventions can be patented. In contrast, ideas and discoveries cannot be patented. Thus one needs to understand the difference between inventions and discoveries. A discovery is the observation for the time of something that already existed but was not known to science. An invention goes a step further. It involves using one's creative abilities to act upon ideas and discoveries to create something useful. For example, the development of the light bulb.
Does Africa have a unified patenting system, or is fragmented?
There is no such thing as a global patent or a continental patent. This is probably the biggest misconception regarding patents. Patents can only be enforced in the country where they have been filed. Thus a patent filed in the USA does not prevent a person in Kenya from exploiting the invention in Kenya.
Is the patent process difficult in Africa? Can African nations afford it?
Patenting involves specific knowledge. Thus one needs to employ the assistance of an IP lawyer. Filing in African countries is not very expensive. In contrast, filing in the developed world is costly. And the more countries you file in, the more expensive it becomes. In addition to filing costs, there are costs for office actions and maintenance of the patents. One can go straight to national phase, or take the longer process – provisional filing followed by Patent Cooperation Treaty (PCT) followed by national phase. This is typically dependent on the specific IP and the commercialisation strategy for it.
Why should African scientists invest money in a patent, rather than investing in new equipment or hiring PhD students and manpower?
Filing patents should be a strategic decision by the university. It should be done to protect potentially lucrative inventions that may provide a large financial return. Patenting for the sake of patenting is not advised. Thus one should not chase numbers of patents but rather be very selective in what one protects. Or else the cost would negatively impact the institution. In contrast, a wisely constructed portfolio could have long-term benefit on the institution providing revenue that will allow the university to upgrade facilities, and provide more bursaries. But more than this, bringing about this culture shift means that the research occurring in the lab is more relevant to society.
Could you provide an example?
The example I often use is: A researcher was focused on cancer drug research. However, all of his research was published. This prevents patenting – in fact it destroys all possibility of patenting. For drugs which take around 14 years to develop and cost on average around USD150 million during this process, a patent is a basic requirement. Where there is no possibility to patent, it is generally not possible for that drug to reach the market. My question is, would a cancer patient get value from reading the publication or from being treated by an actual drug that is created in the process? The mindshift leads to better quality research in the long run as commercial due diligence is much more rigorous than peer review.
Are patents important for everyday life, or do they serve just scientists?
By definition, inventions have impact on the socio-economic sector. Patents have to be used or they can be deemed invalid for non-use. Thus one cannot patent something to prevent others from using it. It needs to be made available commercially.
Once a good is patented, how strong is the enforcement of IP rights? How big the risk of theft of intellectual property?
Once a patent has been granted, it provides for enforceable rights in that specific territory. The problem however is that one has to enforce one's rights against an infringer in the courts. This can be very expensive. At the same time, awards against infringers can be very big, sometimes being in the hundreds of millions of dollars. In the absence of the patent, one has no enforceable rights.
In Africa there are two regional patent systems - ARIPO and OAPI: why should a scientist choose one or the other?
The Organisation Africaine de la Propriété Intellectuelle or African Intellectual Property Organization (OAPI) largely serves French-speaking African countries, whereas the African Regional Intellectual Property Organization (ARIPO) largely functions in the English-speaking countries. Importantly, South Africa, Nigeria and Egypt do not form part of ether system. Filing via OAPI or ARIPO allows one to get protection in the individual countries within the respective system. For OAPI the application automatically extends to all member states. For ARIPO the specific member states need to be designated. Recently there have been discussions to harmonise the two systems with increased levels of cooperation.
Should scientists patent as individuals, or it would be better if they merge in larger groups to have stronger voice and relevance?
My preference is that individual scientists do not file patents. I often find that scientists cannot grasp the concept of commercialisation. Often it is better to get in an entrepreneur or techno-preneur to run the spin-off/start-up. A good scientist does not necessarily make a good businessman. I feel that universities should have systems in place to protect and commercialise IP. It should not be in the hands of individuals.
Sometimes scientists think that patenting could pose obstacles to publishing. Is it true?
Patenting does not compete with publication. However, if one publishes before filing the patent application, it destroys the possibility to patent. Thus it is best to file a provisional application before publishing. This gives one 12 months more to file a full application. Thus patents and publication can co-exist.