Understanding Patent Rights in Nigeria

-Khalid Olalekan Abdulkareem Esq

Introduction

A patent is granted under the law to protect an invention that is new or essentially better in some way than what was made before, or for a better way of making it. This protection is of tremendous importance to technicians and technologists; to medical scientists and space scientists; to lecturers, researchers and professors in institutions of higher learning; to physicists, computer engineers, telecommunication and mechanical engineers and other professionals.

Notwithstanding the importance of the law of patents in this age of advanced technology, it is very saddening that the growth of industrial and technological development in Nigeria is very slow. As a result of this, there are very few inventions for which protection has been sought through  the grant of patent in Nigeria.

This article examines the various rights available to patent holders. It further discusses the benefits, categories of persons who can register patents in Nigeria and the duration of registered patents in Nigeria.

MEANING OF INTELLECTUAL PROPERTY

Intellectual property refers to creations of the mind – everything from works of art to inventions, computer programs to trademarks and other commercial signs.

While Intellectual Property Rights (IPR) have been defined as ideas, inventions, and creative expressions based on which there is a public willingness to bestow the status of property on a particular work or invention. IPR provides certain exclusive rights to the inventors or creators of that property, this is in a bid to give them opportunity to benefit economically from their inventions or creations.

Essentially, Intellectual Property Rights such as copyright, patents and trademarks can be viewed like any other property right. They allow the creators or owners of IP to benefit from their work or from their investment in a creation by giving them control over how their property is used. IP rights have long been recognized within various legal systems.

WHAT IS A PATENT?

A patent is the granting of a propriety right by a sovereign authority to an inventor. This grant provides the inventor exclusive rights to the patented process, design, or invention for a designated period in exchange for a comprehensive disclosure of the invention.

According to Collins dictionary, a patent is an official right to be the only person or company allowed to make or sell a new product for a certain period of time.

By patenting an invention, the patent owner secures an exclusive right over it, meaning that he or she can stop or prevent anyone from using, making or selling the invention without express permission from the owner.

CRITERIA FOR THE REGISTRATION OF PATENT IN NIGERIA

Section 1 of the Patent and Design Act (the “Act”) provides the criteria or requirements for registering a patent in Nigeria as follows:
Patentable Inventions

 (1) Subject to this section, an invention is patentable– (a) if it is new, results from inventive activity and is capable of industrial application; or (b) if it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

a. Novel Invention

The first requirement to be satisfied before an invention or creation is patented is that it must be new and have an inventive step that is not obvious to someone with knowledge and experience in the subject. The invention must also have never been known, used or made public. This means that newness or novelty of an invention is a sine qua non of patentability. The field of knowledge against which novelty is judged is referred to as the state of the art. Section 1(2)(a) of the Patent and Design Act states that an invention is new if it does not form part of ‘’the state of the Art’’

Subsection 3 defines ‘’art’’ as the art or field of knowledge to which an invention relates and “the state of the art” means

‘’everything concerning that art or field of knowledge which has been made available to the public anywhere and at any time whatever (by means of a written or oral description, by use or in any other way) before the date of the filing of the patent application relating to the invention or the foreign priority date validly claimed in respect thereof, so however that an invention shall not be deemed to have been made available to the public merely by reason of the fact that, within the period of six months preceding the filing of a patent application in respect of the invention, the inventor or his successor in title has exhibited it in an official or officially recognised international exhibition.’’

Secondly, an invention is also patentable if it constitutes an improvement upon a patented invention. In other words, it does not matter that a process similar to it has already been invented. As long as this new process constitutes an improvement on the old process and it satisfies the requirement of novelty.

• Capable of Industrial Application

The invention must be capable of being made or used in some kind of industry. Industry in this context is in its broadest form and it means “Anything distinct from being purely intellectual”. This suggests that the invention goes beyond just an idea, a scientific theory, an aesthetic creation, a computer program but must take the practical form of an apparatus, product or a device.

• Public Policy and Morality

The invention must not be against public policy or morality. An invention which is against public policy and morality may be rejected by the Patents Registry because its exploitation is prohibited by law.

• Full Description

In addition to the provisions of Section 1 of the Act, the Registry prescribes that the application must clearly and fully disclose the details of the invention, the processes involved and all that it entails.

Procedure For The Registration Of A Patent In Nigeria

When the conditions qualifying an invention for a patent as stated above have been met, an application shall be made to the Registrar of Patents and Designs (the “Registrar”) and shall contain the following:

1. The applicant’s full name and address, and if the address is outside Nigeria, there should be an address for service within Nigeria;
   1. A description of the relevant invention with any appropriate plans and drawings;
   1. A claim or claims (for any number of products, processes or applications), however, an application shall relate to one invention only;
   1. The application is to be accompanied by the prescribed fees as determined by the Registry from time to time;
   1. Where appropriate, a declaration by the true inventor of the product supplying his name and address and requesting that he be mentioned as such in the Patent;
   1. Where the application is submitted by an agent, a power of attorney authorising the donee of the power of attorney to that effect.

WHO CAN REGISTER A PATENT?

In Nigeria, only accredited individuals or companies can register patents on behalf of the inventors. Any person or company interested in registering a patent will therefore need to employ the services of accredited agents for this purpose. The Government agency that manages the grant of patents is the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment. Applications are made to the Registrar.

BENEFITS OF REGISTERING A PATENT

1. A patent gives the patent holder the right to stop others from using the registered invention without express permission.
2. A patent also gives the patent holder the right to bring a legal action against anyone who infringes on the registered invention and to seek for injunction and damages.
3. A patent gives the patent holder the right to grant others a license to use such invention, or sell it, as with any asset. This can provide an important source of revenue for your business.

CATEGORIES OF PERSONS WHO MAY APPLY TO REGISTER A PATENT

1. Statutory Inventors

Section 2(1) of the Patent and Designs Act provides that, the right to a patent in respect of an invention is vested in the statutory inventor, that is to say, the person who, whether or not he is the true inventor, is first to file, or validly to claim a foreign priority of the invention.

• Persons who employ or commission other to make an invention

Section 2(4) of the Patent and Designs Act provides that, where an invention is made in the course of employment or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or as the case may be, in the person who commissioned the work.

• Persons To Whom The Invention Has Been Assigned

The property, in whole or in part, in an invention in respect of which an application for patent has not yet been made may be sold and assigned in the same manner as any other chose in action. In the same vein, the application for patent when made and the rights arising under it, may be dealt with  fully and without hindrance. An assignment under the Act must be in writing, signed by the parties. Such an assignment will have no effect against third parties unless it has been registered and the prescribed fee has been paid.

DURATION OF A PATENT IN NIGERIA

Section 7 of the Patent and Designs Act provides for the duration of Patent.

(1) Subject to this Act, a patent shall expire at the end of the twentieth year from the date of the filing of the relevant patent application. (2) A patent shall lapse if the prescribed annual fees are not duly paid in respect of it: Provided that- (a) a period of grace of six months shall be allowed for the payment of the fees; and (b) if the fees and any prescribed surcharge are paid within that period, the patent shall continue as if the fees had been duly paid. (3) The expiration or lapse of a patent shall be registered and notified.

WHAT HAPPENS AFTER EXPIRATION OF PATENT?

After the Patent expires, the work goes into public domain. This in effect means that anyone may make, use, offer for sale, sell or import the invention without express permission of the Patent owner, provided that subject matter is not covered by an unexpired patent.

INFRINGEMENT OF PATENT

An infringement is committed where a person other than the patentee makes, imports, sells, uses such product, without the licence of the patentee. An actual infringement of the patent must occur before the cause of action can accrue. However, where there is a threat of infringement, a patentee may apply to the Court for an injunction restraining the infringement. In the case of Sunday Uzokwe V. Densy Industries Nig. Ltd & Anor (2002) Lpelr-3456(Sc) The Court held that: in a patent action for infringement, as in every other kind of action, the onus is on the plaintiff to prove that he has a definite cause of action against the defendant and he is not entitled to call upon the defendant to disprove the alleged infringement, in other words, to prove that plaintiff has no cause of action against him.

GLOBAL EFFECT OF REGISTERING A PATENT IN NIGERIA

Section 3(4) of the Patent and Designs Act provides that if a Nigerian application is made within 12 (twelve) months of the making of the earlier application in a foreign country in which Nigeria has signed a treaty or a convention, such application will be treated as having been made on the same date on which the corresponding foreign application was made.

An applicant seeking foreign priority to his application is expected to provide the following details:

1. The date and the number of the earlier application.
2. The country in which such application was made; and
3. The name of the person who made it.

Furthermore, not more than 3 (three) months after filing the application, the applicant must furnish the Registrar with a copy of the earlier application, certified correct by the appropriate industrial property office of the foreign convention country.

Also, where a person applies for the protection of an invention in accordance with the law of any convention country, such registration is equivalent to an application duly made in that convention country, he shall be deemed to have applied in each of those convention countries or in that convention country, as the case may be:

SOME OF THE CONVENTIONS AND TREATIES NIGERIA IS A PARTY TO ARE AS FOLLOWS:

1. Patent Cooperation Treaty (8th May, 2005)
2. Patent Law Treaty (28th April, 2005)
3. Convention   Establishing   the World Intellectual Property Organization (WIPO), (9th April, 1995)
4. Paris Convention for the Protection of Industrial Property (2nd September, 1963)
5. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, Budapest (Adopted on 28th April, 1977, and Amended on 26th September, 1980).
6. Agreement on Trade-Related Aspects of Intellectual Property Rights (1st January 1995).

A patent holder desiring to protect his invention in specific countries which are not signatories to the relevant conventions or treaties will need to make such application in the county he so desires as industrial property rights are specific to countries.

A patent holder may consider the option of applying to have his patent registered under the World International Property Organization (WIPO) which currently has over 189 member states including Nigeria.

CONCLUSION

Patents afford protection for a limited time to the inventor of a product to the exclusion of others, with few exceptions, as discussed above. This temporary (20years) protection affords added impetus for recouping of the fruit of the inventive ingenuity of the inventor and encourages further creativity and inventiveness by all and sundry. This creativity, in turn, engenders increased productivity and innovativeness, and acts as a catalyst for sustained industrialization of the country.

REFERENCES

1. https://www.mondaq.com/nigeria/patent/703362/registration-of-patent-in-nigeria
2. https://lawpadi.com/how-to-register-a-patent-in-nigeria/
3. Requirements and procedure for patent registration in Nigeria: https://www.lexology.com/library/detail.aspx?g=f0321f8b-0da4-4480-b424-ca31ca894726
4. Patents and Designs Act CAP P2 LFN, 2004
5. F.O. Babafemi, Intellectual Property: The Law and Practice of Copyrights, Trade Marks, Patents and Industrial Designs in Nigeria (2006) 342.
6. Sunday Uzokwe V. Densy Industries Nig. Ltd & Anor (2002) Lpelr-3456(Sc)
7. https://www.investopedia.com/terms/p/patent.asp
8. https://www.collinsdictionary.com/dictionary/english/patent 

Khalid Olalekan Abdulakareem Esq is a Senior Associate at Path Solicitors.