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Learning Some Of The Nuances Of Patents Registration In Nigeria – Patent

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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
technology1 . 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

  1. The invention is new.

  2. 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 novelty6 . Once these two conditions
    are satisfied, the Invention will be deemed
    patentable.7

  3. It is capable of industrial application (useful).

  4. 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
    morality8.

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 Nigeria9:

  • A petition or request for a patent signed by the applicant or
    his agent and containing the applicant’s full name and
    address10;

  • 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 address11;

  • 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 agent12;

  • An address for service in Nigeria in cases where the
    applicant’s address is outside Nigeria13;

  • Payment of the prescribed fees 14.

Once an application for the registration of a patent is granted,
the patent is valid for 20 years15.

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.

1. 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
invention16. 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 ₦17,258,820,000.00
(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 ₦20,000,000,000 (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.

2. 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 patent20 .
Therefore, publication by oral disclosure, by document or by prior
use will invalidate novelty and render the product
unpatentable21 . 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
application22.

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:

  1. Patents cannot be validly obtained in respect of-

    1. plant or animal varieties, or essentially biological processes
      for the production of plants or animals (other than microbiological
      processes and their products);


  2. Principles and discoveries of a scientific nature are not
    inventions for the purposes of this Act23

 5. 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 Nigeria24.

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 void25.

Footnotes

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 :

  1. If it is new, results from inventive activity and is
    capable of industrial application; or

  2. 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

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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