Introduction
A patent is an exclusive grant or right issued by the relevant government authority within a country in order to ensure the protection of new inventions, developments, technical solutions or improvements which are considered to have created a positive modification in the way(s) the earlier inventions were made or utilized. Patent rights are like any other property rights which allow the inventor to benefit from his or her own invention. Invention means a solution to a specific problem in the field of technology[1]. These rights, just like every other intellectual property right, were first outlined in Article 27 of the Universal Declaration of Human rights[2], which sets forth the rights and benefits derivable from the protection of moral and material interest resulting from authorship of any scientific, literary or artistic production.[3]
The value of a patent is to then accord the inventor an exclusive market monopoly for a defined period of time towards maximizing the potential commercial benefits accruable from the invention. The patent thus incentivizes the inventor; providing fertile ground for enhanced productivity and the creation of more inventions.[4]
In the course of registering patents in Nigeria, some stakeholders i.e. inventors, professionals and the like, have internalized certain myths, which have no grounding in law and the practice of registering patents. This article seeks to inter alia, engage the process and importance of patents registration, and demystify some of the emerging stereotypes associated with the process, some of which actually impede the speedy completion of registration.
Brief summary of the process involved in the registration of patents In Nigeria
It is important to note that the law applicable to the registration of patents in Nigeria is the Patents and Designs Act of 1970.
The Patents and Designs Act provides that a patent may be granted for an invention where:[5]
The invention is new.
It constitutes an improvement upon a patented invention and is also new. It does not matter that such invention is similar to an earlier one. What matters is that the new invention satisfies all the requirement of novelty[6]. Once these two conditions are satisfied, the Invention will be deemed patentable.[7]
It is capable of industrial application (useful).
Inventions, the publication of which may discourage immoral or offensive behavior (although not expressly provided for in the Act). The TRIPS Agreement (Article 27.2) further specifies that members may exclude from patent protection certain kinds of inventions, for instance, inventions, the commercial exploitation of which would contravene public order or morality[8].
To ensure that a patent in Nigeria is duly registered, the first step is to confirm that the innovation has not already been patented, by conducting a search.
The under listed items are the requirements involved in processing the registration of patents in Nigeria[9]:
A petition or request for a patent signed by the applicant or his agent and containing the applicant’s full name and address[10];
A specification which includes a claim or claims in duplicate; plans and drawings, if any, in duplicate;
In appropriate cases, a declaration which is signed by the true innovator requesting that he/she be mentioned as such in the patent and giving his name and address[11];
A signed power of attorney or authorization authorizing an agent to act on behalf of the owner of the innovation in cases where the application is made by an agent[12];
An address for service in Nigeria in cases where the applicant’s address is outside Nigeria[13];
Payment of the prescribed fees[14].
Once an application for the registration of a patent is granted, the patent is valid for 20 years[15].
Some of the nuances that have become associated with the process of patent registration have proven to be merely clogs in the wheel of the registration process. We have sought to engage the more prevalent ones only in the succeeding paragraphs.
An inventor needs not conceal details of the invention in order to avoid intellectual theft.
Some Nigerian inventors wrongfully assume that the legal requirement to fully disclose details of one’s invention in the specification of claims form, plans and drawings, inadvertently exposes one’s invention to intellectual theft. Nothing could be further from the truth.
Indeed, the correct position is that, in the course of ensuring compliance with the legal requirement to fully disclose the details of one’s invention in the requisite forms, one is, in fact, afforded legal protection from intellectual theft. This is because under intellectual property law, the issuance of a patent gives the applicant (Inventor) the exclusive right over the invention[16]. This in turn bars third parties from making, selling, importing and utilizing any patented invention except with the consent of the inventor or after a period of twenty years from the date of conclusion of the filing of a patent application may have elapsed.[17]
Prospective applicants are therefore encouraged to rest, assured in the irrefutable knowledge that, they suffer no risk of theft if they disclose full details of their invention, and to take advantage of patents registration by fully disclosing those details, as failure to do so is what may, in reality, expose one’s invention to intellectual property theft.
Protection for innovators through registration under the Patents and Designs Act was reinforced in the case of Arewa Textiles Plc .v. Finetex Ltd.[18], where the Court of Appeal held to the effect that the right to apply for letters of patent with respect to an invention was not a mere moral adjuration but a duty under section 24(1) of Patents and Design Act to register assignment, transfer or interest held in a patent, if an inventor desires the protection of the law. This decision was followed in the case of Bedding Holdings Limited v INEC & 5 Ors [19].
In this case, the plaintiff was a limited liability company registered in Nigeria and specializing in the general fabrication and manufacture of products such as Transparent Ballot Boxes and Collapsible Polling Booths. The plaintiff contended that it had acquired patents rights over the process and application of Direct Data Capture machines for the compilation and collection of various biometric information. The first defendant is the federal government agency responsible for the conduct of elections in Nigeria while the 4th to 6th defendants were companies engaged by the 1st and 2nd defendants to procure Direct Data Capture machines and related items required to compile the Nigerian Voters’ Register.
The plaintiff filed the suit at the Federal High Court, Abuja seeking special damages in the sum of N17,258,820,000.00 (Seventeen Billion, Two Hundred and Fifty Eight Million, Eight Hundred and Twenty Thousand Naira Only) and alternatively, injunctive orders protecting its intellectual property rights and general damages of N20,000,000,000 (Twenty Billion Naira).The defendants denied infringing any rights and the 4th defendant counter claimed for the revocation of the patient rights.
Dismissing the counter claim of the 4th and 6th defendants, judgment was entered in favour of the plaintiff as he had proved his case from the preponderance of the evidence before this court. While he tendered evidence to show that he has the right to the said intellectual property, none of the defendant’s claimed to have any. Some of the defendants’ also did not even adduce any evidence in this case, to show that they did not infringe seriously on the plaintiffs two patented products.
Details of inventions must not be publicly disclosed before filing an application for patent registration:
Despite the legal requirement to make a full disclosure in the course of applying for Patent Protection by specifying claims and drawings, this should in no way, manner or form lead one to making the mistake of publicly disclosing details of one’s invention before the registration of the patent[20]. Therefore, publication by oral disclosure, by document or by prior use will invalidate novelty and render the product unpatentable[21]. A clear distinction between these two scenarios needs to be internalized from the outset.
However, an exception to the above rule is where an inventor, over the course of an official exhibition, displays his invention within a period of 6 months before filing the patent application[22].
3. Ideas are not patentable but there are no requirements to have an actual prototype
Under the laws of patent registration, ideas cannot be patented. As a result, inventions submitted for patent registration must be supported with a detailed written description of the invention such that a specialist in the field to which the invention pertains can understand the realities of the said idea.
This is not to suggest that ideas are not valuable. It is of course, undeniable that an idea is an essential first step towards any invention; obviously, nothing will happen without an idea which makes ideas a valuable tool for any innovation. Ideas are not monetarily valuable and without some identifiable manifestation of the idea, there can be no intellectual property protection obtained and no exclusive right will flow. The advisable means to protect an idea would be by executing a confidential and non-disclosure agreement at the early stage of an invention for the purposes of protecting such idea. However, if such agreement is breached, one could only sue for breach of contract. So, the goal of an invention should be to go beyond the level of an idea and progress to towards something concrete that will amount to an invention.
4. Patents on plants, Animals or other biological processes cannot be obtained in Nigeria
The Registry for Patents, Trade Marks and Designs does not grant patents in respect of plants, animals, varieties and biological processes for the production of plants. However, this is not the position in foreign jurisdictions like South Africa, Kenya and the United States of America.
See Section 1 (4) of the Patents and Designs Act, Chapter 344, Laws of the Federation of Nigeria, 2004 which provides as follows:
(4) Patents cannot be validly obtained in respect of-
plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products);
(5) Principles and discoveries of a scientific nature are not inventions for the purposes of this Act[23]
Obtaining a patent in a foreign jurisdiction does not amount to the protection of the invention in Nigeria
In view of the fact that patents are territorial in nature, it is important to note that each country owns its patents. In light of that, an inventor who registers a patent in a foreign country but fails to register same in Nigeria cannot sue for infringement of his patent in Nigeria. To sue for infringement of patents in Nigeria, any patent obtained from a foreign jurisdiction must also be registered in Nigeria.
However, this is different where the foreign country is a convention country to Nigeria. So long as there is in force an order declaring a country to be a convention country, a patent application or a design application in Nigeria, if an earlier corresponding application for the protection of an invention or the legislation of a design has been made in that convention country, shall be treated as having been made on the date when that earlier application was made. However, such earlier application must be made, in the case of an invention, twelve months before the date of application in Nigeria; while for designs, more than six months from the day of application in Nigeria[24].
Provided that this subsection shall not apply where the earlier application was made.
Where an inventor has filed an international application under the Patent Cooperation Treaty, the Trademarks, Patents and Designs Registry in Nigeria shall rely on the International Search Report thereby providing an opportunity for the inventor to save search fees.
In other words, after the filing of an international patent registration application in line with the requirements of the Patent Corporation Treaty, an international search report will be issued to the applicant/ inventor. In the circumstance, the patent registry in Nigeria would then consider same as an evidence of a prior art.
In a nutshell, it bears reiterating that the above issues are critical elements for individuals or companies to bear in mind before or during the course of undertaking patents registration in Nigeria. Failure to comply with these rules could lead to non-registration of such designs and even in cases where such designs are already registered, the Court could render such registration null and void[25].
THIS ARTICLE WAS WRITTEN BY BLESSING AJUNWO-CHOKO
[1] WIPO, Intellectual Property Handbook ([WIPO 2004 2nd edn], WIPO Publication NO.489(E))18.
[2] United Nations Universal Declaration of Human Rights 1948.
[3] The importance of intellectual property (Patent, Copyrights and Trademark) was first recognized by the two fundamental intellectual treaties administered by World Intellectual Property Organisation (WIPO), the Paris convention for the protection of industrial property in 1883, and the Berne convention for the protection of literary and artistic works in 1886.
WIPO believes that Intellectual property is native to all nations and relevant in all cultures, and has proven to have contributed to the progress of societies. The great Africa-American chemist and inventor, George Washington Carve, born in the 1960s recognized the truth of this message. Carve is the inventor of crop rotation method for conserving nutrient in soil and he also discovered hundreds of new use for crops such as peanuts, which created new markets for farmers in United States of America.
[4] Section 2(2) of the Patents and Designs Act, Cap P2LFN 2004 accords statutory protection on the right of the true inventor. The section provides that the true inventor is entitle to be named as such in the patent, whether or not he is the statutory inventor and the entitlement in question shall not be modified by a contract.
Section 2(4) of the Patents and Designs Act states 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 patent in the invention is vested in the employer or as the case may be in the person who commissioned the work. Provided that where the inventor is an employee, then if his contract of employment does not require him to exercise any inventive activity but he is making the invention through the use of data or means which his employment has provided or put at his disposal or the invention is of exceptional importance, he is entitled to fair remuneration taking into account his salary and the importance of the invention.
[5] Section 1(1)(a)&(b) of the Patents and Designs Act states that an invention is patentable :
If it is new, results from inventive activity and is capable of industrial application; or
If it constitutes an improvement upon a talented invention an also is new, results from inventive activity and is capable of industrial application.
[6] F.O. Babafemi, Intellectual Property: The law and Practice of Copyrights, Trademarks, Industrial Designs in Nigeria (1st edn, Justinian Books ltd.2007) 354.
[7] James Oitomen Agbonrofo v. Grain Haulage and Transport Ltd [1998] f.h.c. 1. 236.
[8] WIPO, Intellectual Property Handbook ([WIPO 2004 2nd edn], WIPO Publication NO.489(E))18
[9] Section 15(1), Patents and Designs Act
[10] Section 15(1)(i) & (ii), Patents and Designs Act
[11] Section15(1)(b)(ii), Patents and Designs Act
[12] Section 15(1)(b)(iii), Patents and Designs Act
[13] Section 15(1)(a)(ii), Patents and Designs Act
[14] Section 15(1)(b)(i), Patents and Designs Act
[15] Section 7(1), Patents and Designs Act
[16] Sections 6(1) and 19, Patents and Designs Act; See further Dyktrade Ltd v. Omnia Nig. Ltd. [2000] 12N.W.L.R.(Pt. 680)8.
[17] Section 25(1) of the Patents and Designs Act provides that the rights of a patentee or design owner are infringed if another person, without the licence of the patentee or design owner, does or causes the doing of any act which that other person is precluded from doing under Sections 6 or 9 of the Act, as the case may be.
[18] Arewa Textiles Plc v. Finetex Ltd. [2003] 7 N.W.L.R. (Pt. 819) 322
[19] Beddings Holding Limited v INEC &5 Ors (2014) 3CLRN
[20] Section 13(3), Patents and Designs Act
[21]F.O. Babafemi, Intellectual Property: The law and Practice of Copyrights, Trademarks, Industrial Designs in Nigeria (1st edn, Justinian Books LTD. 2007) 350.
[22] Section 13(4), Patents and Designs Act
[23] Lindley J. in the case of Fox v. Kensington and Knightsbridge Electric Lighting Co. Ltd (1891) 8 R.P.C. 277, stated that “An invention is not the same thing as a discovery. When Volts discovered the effect of an electric current from the battery on a frog’s leg, he made a great discovery, but no patentable invention”.
[24] Section 27(2), Patents and Designs Act
[25] Section 22, Patents and Designs Act
