22.02.12

Invent

I have heard many persons bemoan the lack of scientific intuition in our country. Some persons have argued that in order for our country to truly develop, our people must invent and be a part of the process of creating solutions for the problems and recreational needs of the world. In these discussions, it is sometimes posited that science is not taught properly in schools or that we are lacking in entrepreneurial spirit and culture.

In my experience, I have come to believe that our people are inventing — from toys to cures for diseases. Since 2004, in my law practice, I have provided legal advice to at least four Jamaican inventors each year. I am not aware that any of their inventions have been commercially exploited to date.

Contrast this with the work of Thomas Edison, the pioneering American inventor, who filed 1,084 patents in his lifetime on everything from light bulbs to the first phonograph.

The main difficulty that prevents Jamaican inventors from commercially exploiting their inventions is a lack of funding. I believe that the country could benefit significantly from having an Inventors' Centre. The purpose of this centre would be to: provide inventors with information regarding patent procedures in Jamaica and significant markets, such as China, UK, Canada and US; provide inventors with information about the process of taking an invention from the laboratory to market; keep a register of local inventions, primarily to facilitate the function mentioned next; and play the role of match-maker by actively seeking investors and then matching inventors with investors (local or overseas) who will license, finance, manufacture and/or market the products.

Many inventors are skilled and knowledgeable in their particular field, but are not business people. Additionally, many inventors spend all their fortunes testing and coming up with their final invention and then have no money whatsoever to take their invention to those who would desire the product. It can cost approximately US$10,000 to US$15,000 to obtain a grant of patent in the United States or China, for example. The grant of patent allows the grantee to have exclusive ownership of the invention for the duration of the patent.  In Jamaica the duration of a patent is usually 14 years. Once the patent expires, anyone can manufacture and sell the product. This means that there is a limited time within which the inventor can exploit the product.

Additionally, one of the basics of patent applications is that the invention is novel. In Jamaica, the standard is that the invention was not previously known in the island. In some countries, the standard is that the invention was not previously known in the world. This would mean that once the details of the invention are published in a patent application in any country it may not be possible to apply for a grant of patent in countries with the higher standard of novelty. And, certainly, once the product has been manufactured, the likelihood of being able to rely on novelty in any country is significantly decreased because travellers, for example, may bring the product home with them. Thus, it is important that an inventor has at his disposal or at the disposal of his business partners or licensors, significant resources to patent and commercially exploit the invention within a relatively short period of time.

Once an inventor obtains a patent, he has valuable intellectual property, which will cost millions of dollars to translate into a marketable product. For inventors who are not employees of large corporations, the most feasible method for earning an income from the invention is by licensing or assigning the invention. Employees who invent would usually assign their rights in the invention to the employer, but of course, there is no strict rule and it depends on the contractual arrangements involved. Licensing involves granting permission, either exclusively or non-exclusively, to others to manufacture and distribute the product. The licensee (or inventor) would usually earn a lump sum initial payment and periodic royalty payments based on the sale of the product. An assignment of the patent is an outright sale of the invention. While there may be more than one licensee, there can only be one assignee.

The Scientific Research Council (SRC) in Jamaica carries out some of the functions that I would like to see in an Inventors' Centre. However, the policy of the SRC seems to be focused on developing specified industry sectors. (I would think that there is some degree of flexibility and responsiveness and so from time to time they may specify new industries or even support inventions that do not fall under a specified industry). What I have in mind is an Inventors' Centre whose policy would be focused on facilitating individual inventors from a myriad of disciplines, including toys, computer programmes, mobile applications, parachutes, herbal cures and multi-vitamins, household appliances, farming equipment, futuristic school bags, anything! This Centre would be driven by its ability to match inventors with financiers and licensors. It may even earn its income from success fees. The Centre ought not to be fraught with bureaucracy, but should appeal to persons with both simple and complex inventions. It may be that this would have to be a private and public sector partnership.

A results oriented Inventors' Centre may be the answer for unlocking the island's science intuition. It may be the catalyst for many to unfold the specifications that have remained in filing cabinets or attaché cases securely locked with golden keys.

Andrea Scarlett-Lozer is an Associate at Myers, Fletcher & Gordon and is a member of the firm's Commercial and Intellectual Property Department. Andrea may be contacted via andrea.scarlett@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.