Intellectual Property in Sierra Leone: Status, Prospects & Policy Recommendations
Author: Oluwagbemileke Joy Jegede
Editor: Michaella Jane George (Policy Lead, DSTI)
Acknowledgements: David Sengeh (CIO, DSTI), Salima Bah (DSTI), Elizabeth Saptieu Saccoh (ARG), OARG IP Unit, All interviewees.
1 EXECUTIVE SUMMARY
Sierra Leone currently has three major intellectual property (IP) laws relating to copyright, patents, industrial designs and trademarks, which were all enacted in the last ten years. Although there are some gaps with regards laws on trade secrets, online copyright, the cybersecurity of IP in Sierra Leone, and the accession to international agreements that standardise IP classification, among others, a major challenge with regards IP in Sierra Leone is the lack of clarity in the law on its administration and enforcement.
Except for trademarks, the process for other IP applications, examination and registration is not fully formulated and established. Further, Sierra Leone is yet to ratify 15 out of 22 IP and related treaties and or international agreements that have been signed by other Mano River Union countries, which would develop its legal framework and provide much needed structure to its IP system. Hence, Sierra Leone is losing out on the socio-economic gains that it could accrue with a fully established IP administration and evaluation system. The protection of Intellectual property rights (IPR) are essential for creating an innovation environment and entrepreneurial ecosystem globally. IPR primarily contributes to innovation in developing countries like Sierra Leone by (1) technology transfer through foreign direct investment or licensing of foreign technology and (2) increasing protection of domestic innovation.
While a strict intellectual property rights regime is most times preferable as it reduces imitation, there is a risk that it might also hamper creativity and inventiveness within a country of low technology capacity. Therefore, it is important to also look at alternative regimes, such as a utility model regime that can offer protection for smaller innovations. Sierra Leone’s laws already provide for utility models and this could be instrumental in boosting local innovation in the country. Utility models offer protection for small innovative works, which can enhance the local environment and ultimately facilitate a strong formal IP system that enhances technology transfer and provides stronger protection as innovation grows in Sierra Leone.
Building on the Sierra Leone IP system would involve incentivising technology transfer and innovation, building systems and institutional capacity, education and training of required personnel, and taking advantage of the established system. This report provides a brief introduction to intellectual property; a review of Sierra Leone’s IP laws, treaties and regulations; an analysis of its IP system, institutions and steps taken so far; a brief look at the incentives and value for innovation in Sierra Leone; and policy implications and recommendations. All information provided in this report is valid as of August 31, 2019.
2 INTRODUCTION
According to the World Intellectual Property Organisation (WIPO), intellectual property refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. It identifies two broad classes of IP: industrial property (including patents and trademark) and copyright (WIPO, 2004). Intellectual property rights are rights vested in persons who own property rights in such. A country’s intellectual property rights (IPR) regime is said to be strong when it has the following features:
● Modern laws (national, regional, international)
● Strict enforcement of those laws
● Well established and functioning IP system and infrastructure including substantive examination
● Established and independent adjudication body
A weak IPR Regime is said to exist when all or most of the above are missing.
To be ideal, IP laws need to strike a balance between providing an incentive for creation and not curtailing the expansion of invention by limiting access to relevant knowledge (Boldrin & Levine, 2008). In Sierra Leone, innovation and technology are still at the beginning stages and so its innovators need the security that their works will be protected and cannot easily be co-opted. On the other hand, they also need to be able to learn from each other and build on each other’s work to foster faster creativity and innovation within the ecosystem.
2.1 ROLE OF INTELLECTUAL PROPERTY RIGHTS IN INNOVATION, NEW PRODUCT
DEVELOPMENT & ECONOMIC DEVELOPMENT
Fundamentally, the purpose of intellectual property rights (IPR) is to provide innovators an incentive to innovate and a means to gain economic returns that cover their innovation development costs and more. While stronger IP regimes could, therefore, be perceived as one of the obvious solutions to innovation, it seems the influence IPR has on the innovations of a country are dependent on their level of development. Khan & Sokoloff (2001) in an analysis of the history of US IPR protections posit that “appropriate policies towards intellectual property are not independent of the level of economic development and overall institutional environment”.
There is debate about whether stronger IPR regimes in developing countries benefit them with the view being that stronger IP rights increases the market power of developed countries, who usually hold the technology while increasing prices in the developing countries (Deardoff, 1992). According to Daley (2014), countries seem to benefit from more stringent IPR protections when they are middle income or highly developed countries while least developed countries or countries just beginning development benefit more from lower IP protection so as not to crowd out domestic innovation. In relation, panel studies of developing and developed countries find that the impact of IP rights on the rate of innovation and economic growth is stronger for developed countries compared to developing countries, and stronger for upper middle income countries compared to lower middle income and low income countries (Sattar & Mahmood, 2011; Schneider, 2005).
There have been arguments for strong IPR protections in developing countries; although, most times they are in relation to benefits from foreign innovation instead of domestic innovation. It is suggested that without stronger IPRs, developed countries (1) would not develop technologies needed by the Global South, and (2) make their technologies inimitable. Hence, ensuring a strong IP regime generally promotes world welfare (Chen & Puttitanun, 2005). One argument for strong IPRs in developing countries that focused on the benefit to domestic innovation comes from Chen et al (2005). The authors use data on 64 developing countries from 1975-2000 and find that even though weak IPR increases imitation, it reduced incentives for domestic innovators and that the relationship between its IPR regime is U-shaped, decreasing and then increasing as the country’s technological capacity increases.
With regard the impact of IPR on imitation, Branstetter et al. (2011), using a difference-in- differences approach and data on US multinational firms, found that lower IPR protection only results in lesser industrial development when the activities of multinational enterprises with original innovations are lesser than the activities of domestic imitators. Hence, with stronger IPR protection, you could have more affiliates of multinational enterprises (MNE) operating in developing countries and the benefits they bring will outweigh the cost of stifling domestic imitators who cannot operate because of stronger IP laws, thus driving industrial development. In relation, Lai (1996) found that strong IP protections lower the rate of innovation and technology transfer if production transfer from developed to developing countries is through imitation. The opposite holds if the method of transfer is through multinationalisation, or if multinationalisation is larger than imitation.
Foreign direct investment through technology transfer has been suggested as one of the ways in which strong IPR protection benefits developing countries and this has been shown by some of the evidence. Using a dynamic general-equilibrium model of the product cycle, Yang et al. (2001) find that stronger IPR in the Global South increases the incentives of firms in the North to innovate and licence technologies to the South. Stronger IPR reduces the cost of licensing, hence lesser cost of technological transfer, and increases the rent share of the licensor. Mansfield (1994) finds that US firms consider the IP regimes of a country in deciding where to invest depending on the industry. The author found that industries like pharmaceutical ones refused to invest in countries with weak IPR as their technologies are easily imitable unlike car manufacturing companies, who place a lower importance on IPR as their technologies would be harder to replicate in such developing countries.
With regards to innovation and new product development generally, Acemoglu et al. (2012) show that due to a trickle-down effect, it is optimal for patent protection to be dependent on the state of the firm. Calling for further research on this effect, the authors find that when greater protection is granted to firms that have the technological lead, it will increase their R&D efforts as well as those of their followers, who will increase their efforts because they want to later on get increased protection too. On the general relationship between IP and innovation, Lerner (2009) finds a lack of positive impact upon studying 177 shifts in patent policy over 150 years of the 60 countries with the highest gross domestic product in 1997. He suggests three plausible reasons: (1) patent protection is not a good proxy for innovative activity, (2) the time frame of 5 years between policy change and number of patents is too short, and (3) much of the literature might be overestimating the impact.
Generally, it seems, stronger IPR reduces the rate of imitation, promotes innovation and increases foreign direct investment (Branstetter & Saggi, 2011; Tanaka & Iwaisako, 2014; Kyrkilis & Koboti, 2015). It could also increase knowledge sharing by foreign firms with local suppliers, although this is usually at the cost of increased monopoly over local customers (Smeets & De Vaal, 2015). However, policy makers need to bear in mind that other complementary mechanisms are needed to ensure domestic innovation and beneficial knowledge transfer is not stifled by an increase in regulation
3 SIERRA LEONE’S INTELLECTUAL PROPERTY LAWS
There are three intellectual property legislations in Sierra Leone:
1. The Copyright Act No. 8 of 2011,
2. The Patents and Industrial Design Act No. 10 of 2012, and
3. The Trademarks Act, 2014
The three legislations having been passed in the last decade, are comparable to the existing IP laws in other common law jurisdictions like the United Kingdom. The Acts are not identical but they protect similar rights. The major differences are in the lack of some administrative provisions, which Acts in common law jurisdictions with developed IP systems contain. This is likely because prior to the past year, the IP laws were not being fully utilised and thus only a few steps had been taken to implement the necessary systems. Hence, prior to 2018 there has been little need for additional provisions that will address administrative issues faced during enforcement.
3.1.1 The Copyright Act, 2011
This Act provides for the protection of copyright in Sierra Leone and other related matters. The Act, inter alia, makes provisions for the administration of copyright; duration of copyright; permitted use and transfer of copyright; protection of performers, broadcasting houses, sound recording producers, and audio-visual producers; royalties, public domain and registration, the Collecting Society, and the infringement and enforcement of copyright.
According to Section 4 of this Act, an author or co-author is entitled to the copyright and protection afforded to literary, artistic, musical, audio-visual, choreographic, and derivative works, as well as sound recordings, programme-carrying signals, and computer software and programmes. The Act also provides for the economic and moral rights of authors. Except for the copyright in corporations, audio-visual works, programme-carrying signals and photographic works, the economic and moral rights of authors are protected for their lifetime and for fifty years after their death.
With regards infringement, the Act provides civil remedies of damages and paid expenses. Damages should be determined considering the importance of the material and moral prejudice suffered by the owner of the right and the defendant’s profits attributable to the infringement. Section 73 provides criminal sanctions – a fine of sixty million leones or imprisonment for a term not exceeding three year or to both the fine and imprisonment. The Commercial and Admiralty Division of the High Court is the judicial body granted jurisdiction over matters of infringement under the Act.
3.1.2 The Patents and Industrial Design Act, 2012
This Act has the purpose of providing for the promotion of inventive and innovative activity and facilitating the acquisition of technology through the grant and regulation of patents and industrial designs and other related matters. The Act, inter alia, contains provisions on patentability, right to patent, applicant for and refusal of patent grant, utility model certificates, international applications of the Patent Cooperation Treaty and ARIPO Protocol, and industrial design.
Section 58 provides that industrial designs can be registered for five years and renewed after for two consecutive periods of five years. Sections 24 and 36 provide that the duration of a patent and a utility model certificate shall be 20 years and 7 years respectively. There are no provisions for renewal for patents and utility models
With regards infringement, civil remedies provided by the Act in Section 72 are (1) an injunction preventing or prohibiting an infringement, (2) damages and or (3) any other remedy in law. Section 23 provides criminal sanctions for knowing infringement – a fine of sixty million leones or imprisonment for a term not exceeding one year or to both the fine and imprisonment. The High Court is the judicial body granted jurisdiction over matters of infringement by the Act.
3.1.3 The Trademarks Act, 2014
This Act provides for the protection, registration and regulation of trademarks, trade names, and other related matters. In addition to provisions on registration of trademarks, the Act also makes provisions on trade names and unfair competitions, the trademarks registry, trade description, classifications of goods and service marks, collective marks and fraudulent marks. Although trademarks are currently being registered under this Act, the trademark regulations of the previous act Trademarks Act, Cap. 244 of the laws of Sierra Leone, 1960) are still in place until new regulations are made as per Section 60 of this Act. Trademarks are registered for a period of ten years and can be renewed for consecutive periods of ten years upon payment of the prescribed fee.
With regards infringement, Section 47 provides for the civil remedies of damages and paid expenses and Section 48 provides for criminal sanctions of a fine of sixty million leones or imprisonment for a term not exceeding five years or to both the fine and imprisonment. An Intellectual Property Tribunal is given exclusive original jurisdiction in civil and criminal matters arising from the infringement of a right under the Act.
3.2 LEGAL REQUIREMENTS FOR ELIGIBILITY AND REGISTRATION OF INTELLECTUAL PROPERTY
3.2.1 Copyrights
According to Section 4 of the Copyright Act, for a work to be eligible for copyright, it should be
(i) original in character,
(ii) fixed in a medium of expression through which it can be perceived, reproduced or otherwise communicated, and
(iii) created by a citizen of SL/someone ordinarily resident in SL/corporate body
(iv) first published in SL or if published outside, subsequently published within 30 days after its publication outside
(v) a work in respect of which SL has an obligation under international treaty to grant protection
3.2.2 Patents
According to Sections 3 and 4 of the Patent and Industrial Design Act, 2012 (PAID Act), an invention is patentable if it is
(1) new,
(2) involves an inventive step and is (3) industrially applicable.
An invention is new if it is not anticipated by prior art, and prior art consists of everything disclosed to the public anywhere in the world, by publication in tangible form or by oral disclosure. This publication can be by use or in any other way, prior to the filing of the application claiming the invention or, where appropriate, the priority date.
An invention is considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention, it would not have been obvious to a person having ordinary skill in the art.
An invention is considered industrially applicable if it can be made or used in any kind of industry. "Industry" is understood in its broadest sense and covers, in particular handicraft, agriculture, fishery and services.
3.2.3 Industrial Design
According to Section 1 of the PAID Act, an industrial design means
i. any composition of lines or colours or ii. any three-dimensional material, whether or not associated with lines or colours, provided that
i. such a composition, form or material gives a special appearance to a product of industry or handicraft,
ii. can serve as a pattern for a product of industry or handicraft and iii. appeals to and is judged by the eye
3.2.4 Utility Models
According to Section 36 of the PAID Act, an invention qualifies for a utility model certificate if it is new and industrially applicable. The criteria for utility model exclude inventive step, which is the singular difference between the patent and utility model criteria. The definition of new and industrially applicable are as provided in Sections 4 and 5 abovementioned. Section 36(2) provides that Sections 1 and 3 do not apply in the case of an invention for which a utility model certificate is requested. However, this is likely a mistake as Sections 1 and 3 deal with interpretation of the Act and the meaning of novelty respectively; Section 36(2) likely meant to refer to section 2, which deals with patent criteria specifically and section 4, which deals with inventive step, the criteria excluded for the grant of utility model certificates.
3.2.5 Trademarks
The Trademarks Act 2014 does not provide specific criteria that a trademark must meet to be registrable as the prior 1960 Act did. It, however, contains 7 grounds for refusal of a trademark including inter alia:
i. it is a trade name;
ii. it is incapable of distinguishing the goods or services of one enterprise from the goods or services of another enterprise;
iii. it is contrary to public order or morality;
iv. it is likely to mislead the public or trade circles with particular reference to the geographical origin of the goods or services, their nature or characteristics;
v. it is identical to or is an imitation of or contains, as an element, official symbols or signs of a State, intergovernmental organisation or organisation created by an international convention unless authorised by such
vi. it is identical to or confusingly similar to or constitutes a translation of a trademark or trade name which is well known in the country
vii. it is identical to a trademark of another owner already on the register or identical to a trademark the subject of an application with an earlier filing or priority date for the same goods or services or closely related goods or services or if it resembles that trademark so closely that it is likely to deceive or cause confusion.
4 ADMINISTRATION OF INTELLECTUAL PROPERTY IN SIERRA LEONE
4.1 THE IP REGISTRATION PROCESS IN SIERRA LEONE
Currently, the Office of the Administrator and Registrar General operates an intellectual property registry, which has the capacity to register trademarks and patents. The process for trademarks is well established starting with a manual search to see whether the trademark is original. The owner or agent of the trademark makes an application and the Registry checks whether the classification chosen is in line with the goods mentioned. The NICE Classification is used for classifying trademarks in Sierra Leone. A letter confirming receipt of the application is given to the owner or agent filing. The trademark is then published in the Gazette, the Government Newspaper. Applications are usually published in the Gazette in batches. If there is no opposition to the application, three months after publication, the trademark is approved and published in the Gazette. The certificate is then given to the agent or owner as the case may be. On its website, the OARG lists the fees payable in respect of intellectual property rights in Sierra Leone, but the details provided by the OARG only relate to trademarks (see Appendix A).
For patents, since the enactment of the Patent and Industrial Design Act, 2002, there have been no original patent registrations i.e. registrations in which the country of first registration is Sierra Leone. If, however, there was a patent, the process would include:
i. submitting the claim and other accompanying documents to the OARG, ii. OARG ensuring that the claim meets all formal requirements
iii. paying a fee, which the OARG would use to facilitate a substantive examination by
ARIPO
iv. ARIPO confirming that the invention qualifies for the award of a patent v. Registration of the patent by OARG + payment of registration fee
The process pre-2012 was that patent applications had to be made in the United Kingdom. Currently, there are only 21 patent re-registrations since 2015, the year from which the records at OARG begin. Although there are provisions for utility models in the PAID Act, the OARG has not received any applications for utility models and does not have an established process for registering them. According to the Head of the IP Section, this is because regulations have not been made for it yet and until then, the registration for utility models is on hold.
The Copyright Act provides that the Registrar of Intellectual Property should register copyrights, and though the OARG believes the ARG to be the Registrar of Intellectual Property, there has been some uncertainty as to jurisdiction with the Ministry of Trade and Ministry of Tourism also claiming copyrights registration as within their purview.
With regards to classification, the OARG uses the respective international classifications for the various IPs they currently register. For trademarks, the Act requires that they use the Nice International Classification of Goods and Services and for industrial designs they use the Locarno International Classification for Industrial Designs. For patents, the relevant international classification is the Strasbourg Agreement Concerning the International Patent Classification. Save for the NICE classification required by national legislation, Sierra Leone has not acceded to the international agreements that established these classifications. However, Section 76 of the PAID Act provides that the provisions of any international treaty in respect of industrial property to which Sierra Leone is a party applies to the matters dealt in the Act (patents and industrial designs) and if there is a conflict, the treaty provisions will prevail.
4.2 THE ORGANISATIONAL STRUCTURE FOR IP IN SIERRA LEONE
4.2.1 The Intellectual Property Agency & the OARG
Although the Trademarks Act refers to an Intellectual Property Agency Act which establishes the Intellectual Property Agency (IPAA), this IPA is yet to be enacted and the agency is yet to be set up. Further, while the Trademarks Act refers to a Registrar of Trademarks, the Copyright and PAID Acts refer to the Registrar of Intellectual Property.
The closest statutory power granting the ARG to register IP applications is the Registration of Instruments Act (Cap 256) 1960 which in Section 21 provides that the Registrar-General may register any legal instrument. “Instrument” is defined as any Crown grant, deed, contract, will, or memorial authorised to be registered. However, the intellectual property being registered in Sierra Leone does not fall under the definition of “Instrument”. Further, other legislations such as the Civil Marriage Act (Cap 97), 1960 that have wished to make the Office of the Administrator and Registrar-General the office for registration makes explicit provisions for it to be so, unlike the IP legislations.
Section 60(4) of the Trademarks Act provides that until the IP Agency is established, the existing administrative agency for trademarks, which is the OARG should remain valid and will exercise all the powers vested in the IP Agency under the Act. The other IP legislations fail to make this provision; administration of the PAID and Copyrights Acts is vested solely in the Registrar of Intellectual Property.
In 2018, the OARG made significant strides towards establishing the IP registry system:
a) There is an existing Intellectual Property Unit under the purview of the ARG, currently responsible for the registration of IP.
b) The OARG has an existing Intellectual Property Development Plan (IPDP), which seeks to address, IP concerns and issues including legislative review and reform. The vision of the IPDP is to upgrade the structures within the IP unit to make it more functional while awaiting the establishment of an Agency. The IPDP is set to be rolled out within a fiveyear period (2020-2025).
c) The OARG has developed capacity in IP to support the IP Unit. The office currently has 3 staff with Masters in Intellectual Property and plans are ongoing to develop the capacity of other staff while trying to recruit more with requisite skills.
4.2.2 The Intellectual Property Tribunal
In Section 1, The Trademarks Act 2014 provides for an IP Tribunal to be established under the IP Agency Act, which has not yet been enacted. The Tribunal has original exclusive jurisdiction to hear matters on proceedings arising under the Act such as infringement, invalidation, rectification proceedings according to Section 46 and according to Section 48, it has exclusive jurisdiction for all offences arising under the Act. Section 60(5) provides that until the Tribunal is established the High Court should exercise the jurisdiction and powers conferred on the Tribunal under the Act.
4.2.3 Ministerial Authority
The Trademarks Act refers to the Minister responsible for trademarks and the PAID and Copyright Acts refers to the Minister responsible for trade. These Acts vest him or her with several powers and responsibilities. This may be because intellectual property is closely tied with innovation and industrial development, which is within the purview of the Ministry of Trade and Industry. The Minister is responsible for making statutory instruments carrying into effect the provisions of the Trademarks, Copyright and PAID Acts. In the PAID Act, he or she also has the power to
i. Donate industrial designs to an educational, research or cultural institution if they are not claimed by their owner within two years following expiration of the period of protection
(Section 56) ii. Authorise the exploitation of a patent by the GoSL or a third party designated by the GoSL, and vary, terminate or transfer such authorisation
However, what obtains in practice is that the Ministry of Trade does not administer IP in Sierra Leone. The OARG, is currently administering IP in Sierra Leone and is under the supervision of the Ministry of Justice.
5 INTERNATIONAL TREATIES & AGREEMENTS BINDING ON SIERRA LEONE
5.1 GLOBAL: WTO & WIPO
1. As a member of the World Trade Organization (WTO), Sierra Leone is bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
2. As a member of the World Intellectual Property Organization (WIPO), Sierra Leone has acceded to
(i) WIPO Convention (1986)
(ii) the Paris Convention for the Protection of Industrial Property (1997),
(iii) the Patent Cooperation Treaty (PCT) (1997) and the
(iv) Madrid System (the Madrid Agreement and Protocol) (1997 and 1999) for the Registration of Trademarks.
5.2 AFRICA: ARIPO
As a member of the African Regional Industrial Property Organization (ARIPO), Sierra Leone has acceded to two treaties:
1. Harare Protocol on Patents and Industrial Designs Within the Framework of the African Regional Industrial Property Organization (ARIPO) (February 25, 1999)
2. Lusaka Agreement on the Creation of the African Regional Intellectual Property Organization (ARIPO) (December 5, 1980)
5.3 WEST AFRICA: ECOWAS
As a member of the Economic Community of West African States, Sierra Leone would be bound by treaties into which it enters into at ECOWAS. Although, there is no specific ECOWAS agreement dealing with intellectual property among its states, Article 27 of the ECOWAS Agreement provides among others that
“…In their cooperation in this field, Member States shall: (a) harmonize, at the Community level, their national policies on scientific and technological research with a view to facilitating their integration into the national economic and social development plans; (b) coordinate their programmes in applied research, research for development, scientific and technological services; (c) harmonize their national technological development plans by placing special emphasis on indigenous and adapted technologies as well as their regulations on industrial property and transfer of technology;…”
Also, in Article 107 of the Economic Partnership Agreement with the EU (2015), ECOWAS mutually agreed to enter into discussions on, inter alia, intellectual property and innovation, including traditional knowledge and genetic resources.
5.4 MANO RIVER REGION: MRU
The Mano River Union does not seem to have any provisions within its agreements, protocols or activities regarding intellectual property. Guinea being a Francophone country has a different legal system founded on French Civil law and decrees, which is different from Sierra Leone’s legal system which is founded on English common law and now comprises our legislation and customary law. Liberia’s legal system is also different; it is based on Anglo-American common law. A comparison of the various international and regional IP treaties and agreements signed by the three countries is provided in Appendix B. International and regional IP treaties and agreements that Sierra Leone is yet to accede to are highlighted in yellow.
6 INNOVATION IN SIERRA LEONE: INCENTIVES & VALUE
This Section is based on interviews by the researcher with local inventors and loan officers of local commercial banks.
6.1 INCENTIVES
Among local inventors, there seems to be two categories:
(i) those that operate on their own or with small groups with their personal interest in invention being the key factor and
(ii) those that operate within a workshop and relatively strong organisation and are driven by both their personal and commercial interests.
Both groups believe in creating inventions that work within their local environment but while the first group focuses on community development, the second group tends to focus on meeting the needs of a community or industry by providing a commercial solution. The technical skills of most people in both groups are usually learnt through their work and not acquired through formal education, implying that technology invention is not a widely considered career path even for Engineering or Science graduates.
6.2 VALUE
The key takeaway from the interviews with loan officers are that technology companies are treated like any other business and the same factors would be considered in granting them loans. However, banks would consider the owning of a patent or other IP as an added advantage especially with regards the certainty of the business becoming viable and the loan being returned. The major factors that would first be considered are the current turnover of the company, or its potential turnover as seen from already received contract or grants; the business viability; its financial and management capacity, among others. The reputation of the company would also be considered, particularly in cases where the company is a local branch of an international company.
6.3 CASE STUDY: FINIC
FINIC is a company that creates and produces local inventions for use especially within the agricultural sphere. Since their start 20 years ago, they have created dozens of inventions. Based on the interview with the Managing Director, their major incentive has been market demand. They get customers who request a machine that can perform a particular task. The FINIC team brainstorms ideas for the machines and the Research & Development Manager then creates the machine with a team of 12 people. Internal and external test runs are carried out. If the product passes these evaluations, they start selling to other people. The customer who makes the request only pays for the cost of the machine and not the other associated costs of research as FINIC deems the machine their IP which they can use as a model to build machines for sale to other customers.
The patent incentive for FINIC has not been strong in the past. They have only attempted to patent one of their inventions and it fell short of the level of invention required. They are however, in the process of registering a patent with ARIPO for a palm fruit thresher, which they think is a new inventive step as they have not seen the model anywhere else. They tried to register with the Sierra Leone Patent Office 12 years ago, but they were asked to register with Britain as was the practice before 2012.
As FINIC operates as a commercial organization, the value of their inventions is determined by their market price. There is very little competition in the market and as such price is set by FINIC in consideration of their development costs and what they believe the buyer is willing to pay.
With regards to the level of innovation, FINIC uses YouTube videos and tutorials for similar machines to what they are looking to build. They then create a prototype that uses local materials and that can work with local technologies within the environment. Hence, while the core ideas of the machines might not be new inventive steps but depending on how much innovation goes into the local adaptations made, they may or may not qualify as a new inventive step.
7 POLICY IMPLICATIONS & RECOMMENDATIONS
7.1 IMPLICATIONS
The literature highlights imitation as one of the ways through which technology is circulated in developing countries, and this is in opposition to the interests of multinational companies who need stronger IPR protection to operate successfully. However, imitation of international innovations does not seem to be a problem facing Sierra Leone even though multinational affiliates of innovative companies are not presently moving to Sierra Leone. This is possibly a situation faced by countries with similarly low levels of industrial development, whose infrastructure and environment may not be highly conducive for local innovation and whose IP regimes are not strong enough to entice multinational corporations.
Hence, the hypothesis that at very low stages of development, weaker IPR protections are needed for innovation might be applicable here but only to the extent that it allows local innovators to learn from foreign innovations. When the companies reach a level of development where production is possible, then stronger IPR protections might be needed to provide incentive for more innovation. The major critique of this perspective is that it only takes into consideration the benefits from technology transfers and foreign innovations. But it could likely be assumed that when a country reaches the level that foreign companies are willing to transfer production where there are sufficient levels of IPR, domestic innovators would feel likewise. They would require more protection so that they too can leverage the productive capacities of the country and be protected from competitors or imitators doing the same with their technology.
Another alternative to a formal patent system that has been suggested, especially for developing countries is utility models. Utility models are generally used to offer protection for small incremental innovations, which would not meet the inventive step requirement for patents. According to Kim et al. (2012), utility models aid firm performance when those firms do not have strong technological capacities. They can develop minor innovations that they can later use as a learning device to create patentable inventions. Utility models are usually seen to be of most impact for countries that possess mostly small and medium enterprise and or are importers of intellectual property rather than exporters (Suthersanen, 2006). Suthersanen argues that in determining whether or not to use a utility model, a country “…should map out and evaluate their own industrial and innovation base and identify its current and long-term economic requirements...”. Prima facie, looking at the economic and technology status of the country, it seems Sierra Leone might be a good candidate for a utility model regime. Therefore, the provisions made for it in the law should be followed through by creating a well-regulated and functioning system for utility models in Sierra Leone.
7.2 RECOMMENDATIONS
7.2.1 Incentivize Technology Transfer and Local Innovation
Sierra Leone can position itself based on its current economic and technological capacity. This means that it should develop a strong IPR regime which would encourage technology transfers while simultaneously building a well-regulated and administered utility model regime that will grant protection to smaller innovations by local inventors.
i. If Sierra Leone wants to encourage technology transfers through licencing new technologies whether for Government or private sector and desires to encourage innovative companies to set up in Sierra Leone, then it needs strict IP laws and protection. While the three main IP laws are in many ways up to international standard, the gaps identified above should be remedied to provide security to technology companies and ensure fair administration of the IP laws. However, for all these efforts to work, there are several related factors. Sierra Leone needs greater confidence in our judicial system, reliable electricity supply, and several other factors that make business environments work effectively.
ii. If Sierra Leone wants to encourage domestic innovation and new product development, there must be security in the intellectual property rights and the protections that are offered under it, but efforts should also be focused on establishing a well-functioning utility model regime that protects smaller local innovations. By offering protection for smaller innovations, utility models will provide incentive to create more and more inventions, and in the long run build the capacity of local inventors to engage in bigger innovations.
iii. Sierra Leone should consider setting up a separate system, where innovators in Sierra Leone can contract to use each other’s inventions solely in the development of their products but if the product is made commercial, the owner’s right kicks in, as per the PAID Act. In the meantime, innovators who are part of such a system would not need to spend money licensing while developing, which is currently the case as Section 22 of the PAID act considers the making or using of a product or process to be infringement. This could potentially reduce the cost and increase the incentive for innovation. For this to work, people should have registered their innovations and for it to benefit those who most need it, the system could set a cap on the income of those who are allowed to join.
7.2.2 Build Systems and Institutional Capacity
The Intellectual Property Agency and Act The IP legislations have referred to
i. An Intellectual Property Agency
ii. A Registrar of Intellectual Property and a Registrar of Trademarks
iii. An Intellectual Property Tribunal
These institutions have not been set up and the first and last are meant to be set up under an Intellectual Property Agency Act, which has not been enacted.
Hence, the first recommendation on institutional capacity is to draft and enact the Intellectual Property Agency Act, which would not only bring the IP Agency and Tribunals into being but also define the role of the Registrar of IP, whose role should include the Registrar of Trademarks. See Appendix C for a full breakdown of technical and organisational capacity required. Currently, the OARG deals with IP matters and it might be useful to incubate the IP Agency within the OARG for a period until the required personnel is trained, regulations are made, and the necessary processes and systems are established.
The Intellectual Property Tribunal
The Tribunal should have a similar jurisdiction to the High Court but with exclusive original jurisdiction solely on matters arising from the IP legislations and other regulations arising therein.
The Tribunal, should, therefore be composed of Judges who are qualified to sit in the High Court but also have expertise and experience in IP law. Judges could be appointed independently by the Judicial Service Commission as is the case for other High Court Judges. If the Tribunal is to be accorded the same powers as the High Court, it should be accorded the same independence and could be instituted as a branch of the Judiciary
The Tribunal should also have a fair representation from the relevant sectors and institutions that affect IP development in Sierra Leone including but not limited to representatives from the Attorney General’s office, the IP Agency, the Collective Management Organization (CMO), the Ministry of Trade, the Ministry of Justice and other relevant Ministries and organisations.
The Patent and other IP Process
Usually, the patent process generally includes
i. Preparation and filing, which involves provision of invention specification and claims,
ii. A search to determine whether the invention anticipates a prior art. A database of prior art is needed to carry out this search and ensure that new patents are new.
iii. Examination - For trademarks, patents, and copyrights to be granted, they generally need to be examined to ensure they meet the criteria required for the granting of rights over them. For patents particularly, this examination usually needs to be done by persons with technical knowledge in the relevant industries.
iv. Prosecution does not refer to legal proceedings with regards infringement but the process of negotiation with the patent office usually through its examiner on the patentability of an invention. Appeals and opposition sometimes also come up during the prosecution stage.
For this patent and other IP registration process to be institutionalized in Sierra Leone under the IP Agency, it is important to
1. Build a digital database for prior art
2. Create a digital system and database for IP applications, examinations, grants and refusals
3. Train substantive examiners of patent and other IP applications – Currently patent applications are only formally examined in Sierra Leone while ARIPO does the substantive examination of the patent. Patent and other IP examiners are very important as they determined whether an IP should be granted. To do that they need to have knowledge of the legal criteria and a very good grasp and understanding of the industry and innovations in it. They should be able to understand the IP application and conduct thorough searches of prior art, which includes prior IP and applications, literature contained in scientific or other relevant databases.
7.3 EDUCATION AND TRAINING OF REQUIRED PERSONNEL
The personnel generally involved in running a well-functioning IP system are primarily
1. The Registrar of Intellectual Property
2. IP examiners 3. IP Judges
4. Patent attorneys/agents – these are persons who are qualified to represent patent or other IP applicants in examinations. If not lawyers, they also work with lawyers in representing clients in IP matters at the tribunal or courts.
All of these persons, if they do not already have such training, need to be trained in IP law and procedures and tested on their understanding of it. This would require setting up a formal examination that can be administered in the country. See Appendix C for details on what the examination should involve and qualifications necessary for the above-mentioned personnel.
Currently, including 3 IP Masters holders in the IP Unit of the OARG there are 7 experts in IP trained by WIPO and ARIPO. If more staff and or experts are needed, for a transition period, the GoSL should consider hiring Sierra Leoneans outside the country with such qualifications or qualified persons from African countries with laws similar to Sierra Leone. Further, considering that there have been no original patent applications under the Act, the size of personnel should be small with similar roles being combined until no longer needed. See Appendix C for qualifications necessary for the above-mentioned personnel.
7.3.1 Should we send lawyers to study IP?
● Studying IP law solely would give lawyers knowledge about the international IP regime and also give Sierra Leone expertise knowledge, which is needed if Sierra Leone enters into IP related treaties or agreements to strengthen its IP regime. It might also be necessary to train lawyers in patent prosecution. ARIPO and WIPO, together with other higher tertiary institutions in Africa currently offers a Master’s in Intellectual Property at Universities in Zimbabwe, Tanzania and Ghana. It might be useful to look into a possible partnership for Sierra Leonean officials.
● We could also send people to study IP within the context of economics and development. The literature shows that there are different levels of IP depending on what your technological capacity/state and development goal, and it might be useful to have people with that expertise. Alternatively, they could study it within the context of technology and innovations. This could be in the form of an MSc or an LLM in Innovation/IP/Technology law
● Importantly, lawyers in Sierra Leone should have knowledge of Sierra Leone’s current IP law. Hence, it could be offered in the Sierra Leone Law School as an option class. It might be useful to also engage with Fourah Bay College, University of Makeni, and IMAT College (University of London affiliate) to include it in their curriculum.
7.4 TAKING ADVANTAGE OF THE ESTABLISHED SYSTEM
If the above recommendations are followed and Sierra Leone builds a strong IP system that works for both small and big inventions, foreign and local innovations, the next step would be to make sure the system is being utilised and the benefits it brings is being accrued.
7.4.1 Create awareness for utility models, patents and other IP
In incentivizing local innovation through the grant of adequate and fit for purpose IP protection, it is also very important to create awareness among inventors, the business community, and the general public. The value of IP protection is in the economic returns inventors get by having an exclusive right over an innovation. Inventors will not harness such returns if –
● they are not aware that they can obtain such protection and the rights that come with it,
● the business community is not aware and does not update its practices to reflect the value that such a right, grants the inventor
● the general public is not aware of such protection and its value, so they too are incentivized to obtain it and its consequent advantages
This awareness can be created through media campaigns, workshops and working groups with various stakeholders such as banks and loan institutions, so that they are aware and are willing to work with the GoSL and other stakeholders to institute practices that take into account the value of an IP right.
7.4.2 Business and Entrepreneurship Training for Inventors
Inventors should be supported and trained in marketing and selling their products locally and regionally through trade fairs, advertisements, etc. Only by producing and selling products to which they have exclusive rights will owning the IP rights make them money. For as long as they have such an exclusive right, they have a monopoly over the production of their invention. They should learn how to take advantage of their inventions and the rights it gives by making their inventions visible and marketable not only to consumers but to manufacturing companies, who might have a better capacity to produce on a large scale and would therefore be willing to procure a licence to do so.
7.4.3 Pitch Sierra Leone to technology companies and companies innovating new technologies in their industry.
While having a strong IP regime is a major factor that foreign technology companies would consider so that they are protected from imitation, Sierra Leone also has to be truly open for business for them to operate. Therefore, the legal and regulatory environment should be fair, dependable and efficient. Power, infrastructure and labour also matters. Sierra Leone should be able to provide an advantage to such companies over other countries that have similarly strong IP regimes.
8 CONCLUSION
An established intellectual property regime is essential for the growth of innovation and industrial development in Sierra Leone, but it is also important that we utilise it in ways that are mindful of our technological capacity and level of development, while still positioning ourselves for industrial and economic growth.
Sierra Leone has relatively modern IP laws and while there are gaps to be addressed, it is very important that Sierra Leone should make strides in ensuring the establishment of well-functioning systems and institutions for the various types of IP. Without this, the laws would not achieve their intended purpose and would remain mere words.
To ensure the innovation and industrial development that comes with having a strong IP regime, Sierra Leone should (i) strengthen the legal framework for IP by making new laws and regulations where required and amending the current ones where necessary, (ii) establish a well-functioning IP system and institutions and build their capacities, (iii) incentivise technology transfers and local innovation, and (iv) create and implement strategies to take advantage of the benefits provided by the available laws and systems.
By creating the necessary legal and institutional framework for IP, while implementing strategies to harness the benefits they provide, Sierra Leone will position itself for the innovation and industrial development it requires to ensure its progress and prosperity.
Editor: For more information please visit: https://www.dsti.gov.sl/dsti-policy-brie-intellectual-property-in-sierra-leone-status-prospects-policy-recommendations/
Photo: The author, Oluwagbemileke Joy Jegede
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