UNIT CODE: LLB 206 A

SUBMITTED BY: ADAMS R.K. BIRGEN

ADM: 22-2854
The commercialization of intellectual property rights (IPRs) involves the process of turning

intangible assets, such as patents, trademarks, copyrights, and trade secrets, into tangible

economic benefits. This can be achieved through various means, including licensing agreements,

partnerships, joint ventures, and outright sales of IPRs. In the case of1 c, the House of Lords held

that commercialization of property can be subject to government regulation and control in order

to protect public interests and prevent abuse

One common way to commercialize IPRs is through licensing agreements, where the owner of

the IPR grants permission to another party to use the intellectual property in exchange for a fee

or royalty payment. This allows the owner to generate revenue from their IPR without having to

manufacture or market products themselves.

Partnerships and joint ventures are another way to commercialize IPRs, where two or more

parties come together to collaborate on developing and commercializing a product or service that

incorporates the intellectual property. This can help spread the risk and costs associated with

bringing a new product to market.

Commercialization of Intellectual Property Rights also takes place in academic institutions just
like any other. Not being left behind in any way, it also has got its challenges in the quest for
commercialization.

The main issue affecting commercialization of IPRs in academic institutions is that most students
just like Kenyans in General are not aware of the fact that they need to commercialize and
protect their inventions.2

The audit indicated that a number of Kenyan inventors and innovators are unaware of the
different options that they have to protect and commercialize their products, which include
licensing, joint ventures and outright selling. Additionally, the level of awareness of IP in
universities and R&D institutions and, consequently, the level of commercialization of
research findings is low. Majority of the universities and R&D institutions in Kenya do not
1
R v. Secretary of State for Transport, ex parte Factortame Ltd [1990] 2 AC 85, t
2
A Gitonga and J Kieyah Overview of Intellectual Property Rights: The Case of Kenya (Kenya Institute for Public
Policy Research and Analysis Nairobi 2011) 51
 have an IP policy and those that have, introduced it recently. In fact, according to Sikoyo et
al. (2006), IPR is taught only in law schools, thereby leaving out other disciplines that may
require IP knowledge such as engineering and life sciences.
Availability and also efficiency of Technology Transfer Offices has also presented challenges.
‘Technology Transfer Offices are usually created within a university in order to manage its
intellectual property assets and the transfer of knowledge and technology to industry. Sometimes,
the mandate of TTOs with respect to collaborative research includes any contractual relation.’ 3

This is a shortcoming in that most universities are not equipped with Technology Transfer offices
and those which have their efficiency is questionable.4

Not all universities and research institutes have technology transfer offices (TTOs).
Furthermore, where they exist, most of the TTOs are deemed inefficient due to unclear
mission and mandate, insufficient skillset and manpower; lack of clear career path for
technology transfer managers, low visibility and recognition, low funding, unclear
placement within the university RD&I structure. Furthermore, it is not a requirement by the
Commission for University Education (CUE) and NACOSTI that universities and research
institutes have TTOs for the purpose of IP management, registration, commercialisation
and accreditation.
The issue of efficiency of TTOs was elaborated in the case of University of Nairobi v Kenya
Copyright Board and another 5 ‘without proper knowledge and skills in negotiation licencing
deals, academic institutions may struggle to maximize their commercial potential of their
intellectual property.’

Absence of commercial strategy in most academic institutions is also included in the challenges
facing commercialization of IPRs.6

In relation to commercialisation strategy, most universities and research institutes do not

have processes and procedures in place to manage innovation commercialisation or to
inform researchers and other stakeholders on goals and targets. There is need for a strategy
to guide the coordination of the commercialisation efforts of the different departments,
laboratories and centres.

3
WIPO Technology Transfer Offices< https://www.wipo.int/technology-transfer/en/organizations.html> ( Last
accessed 3 March 2024)
4
T Ogada Guidelines for strengthening commercialization in Universities and Research Institutes in Kenya
(Organization of African, Caribbean and Pacific States Secretariat Brussels 2023) 6
5
University of Nairobi v Kenya Copyright Board and another [2016] eKLR
6
n3 6
The governing bodies of universities also are not in tandem with various commercialisation
strategies.7

Commercialisation are not recognised as a priority by senior management at universities

and research institutes. The current focus is primarily on research and publications, which
is directly linked to the reward system that awards publication and fails to provide
incentives for commercialisation. Recently, a few universities have begun recognising IP
applicants and patents for the purpose of promotion; a practice not widespread within
academia. Furthermore, current internal research is funded by universities and research
institutions, with little or no resources allocated to commercialisation. There needs to be
specific incentives that reward commercialisation. Additionally, this should form part of
the staff promotion policy criteria.
Lack of intellectual policies in place in the academic institutions is also an issue which poses as a
challenge in the commercialization of IPRs in the institutions. It was stated in the case of Board
of Trustees of Moi University v Moi University Academic Staff Union and another 8 that ‘without
clear policies in place, disputes can arise between academic staff and institutions regarding
ownership and commercialisation of Intellectual Property Rights.’ This showed and illustrated
that the absence of clear policies contributed to institution of that suit. This poses a challenge to
commercialisation of IPRs in the academic institution. The issue on intellectual property policies
is also contained in the journal 9

Intellectual property policies: only a few universities and research institutes have IP
policies. An IP policy is an important tool for promoting technology transfer and
commercialisation. Of the few policies in existence, many are not effective and staff and
students are unaware of them. The incentive structure is rarely implemented even where
revenue has been generated. While existing IP policies provide for equity distribution, no
guidelines exist on establishing spin-offs/start-ups or the role of the researcher. Clarity on
benefit sharing policies will set the benchmark for positive outcomes. A strategy to convert
students’ projects into products and business is evidently absent.
There are those universities with IPRs policies in place but bear other challenges some as a
result.10

7
n1
8
Moi University v Moi University Academic Staff Union and another [2015] eKLR
9
n1
10
G Sikoyo, E Nyakusi, J Wakhungu Intellectual Property Protection in Africa: Status of laws, research and policy
analysis in Ghana, Kenya, Nigeria, South Africa and Uganda (Acts Press Nairobi 2006) 4
 A number of universities, especially the more research-intensive institutions, have specific
policies that encourage Academics to spend time on commercialisation and incorporate it
within university career structures. However, there Are barriers to universities taking this
approach, such as the nature of academic career paths and the need to Balance teaching and
research priorities. Commercialising existing IP is also only one route to impact; other
forms of collaboration with business such as collaborative and contract research are also
priorities
Another challenge is lack of screening of publications for innovations. ‘ Most universities and
Research institutes do not have a policy On research proposal screening for possible IP
emanating from research with potential for protection and commercialisation. As a result, there is
a loss of potential third stream income generation.’11

Gaps in regulatory framework also is a challenge in the commercialization of IPRs in academic

institutions.12

A major challenge in Kenya is lack of a policy framework to implement intellectual

property rights. Furthermore, there have been some institutional and enforcement
weaknesses where entities have experienced infringement of their rights, some of whom
have failed to obtain the necessary legal attention. Some of the IPR-related legal statutes
lack sufficient provisions for enforcement. The Trade Descriptions Act and Weights and
Measures Act were used to fight against counterfeiting and piracy. However, these laws are
often limiting and sometimes inadequate (Wako, 2007). Lack of an adequate legal structure
to fight counterfeits has been apparent and is a contributory factor to the upsurge of
counterfeits in the country. Furthermore, the penalties in the IP-related laws addressing
right infringements (prior to the Anti-Counterfeit Act), may have been too lenient and
insufficient in deterring intellectual property rights infringements
Ownership disputes in the institution itself is one of the shortcomings of commercialization of
IPRs in academic institutions. ‘One of the challenges of commercialization of IPRs in academic
institutions is ownership disputes between researchers, faculty members and the institution
itself.’ 13
In conclusion, Commercialization of IPRs in academic institutions is faced with challenges
which need urgent attention in order for the innovators to protect and obtain profit from their
work with ease.

11
n37
12
Jenny Irwin (Project Director) Research into issues around the Commercialization of University IP (2018) 6
13
n 11
REFERENCES

1. A Gitonga and J Kieyah Overview of Intellectual Property Rights: The Case of Kenya (Kenya Institute for
Public Policy Research and Analysis Nairobi 2011)
2. G Sikoyo, E Nyakusi, J Wakhungu Intellectual Property Protection in Africa: Status of laws, research and
policy analysis in Ghana, Kenya, Nigeria, South Africa and Uganda (Acts Press Nairobi 2006)
3. Jenny Irwin (Project Director) Research into issues around the Commercialization of University IP (2018)
4. Moi University v Moi University Academic Staff Union and another [2015] eKLR
5. T Ogada Guidelines for strengthening commercialization in Universities and Research Institutes in Kenya
(Organization of African, Caribbean and Pacific States Secretariat Brussels 2023)
6. University of Nairobi v Kenya Copyright Board and another [2016] eKLR
7. WIPO Technology Transfer Offices< https://www.wipo.int/technology-transfer/en/organizations.html>
( Last accessed 3 March 2024)