Patent law in Nigeria is designed to protect and encourage innovation by granting exclusive rights to inventors for their inventions.
The Patents and Designs Act, Cap is the core legislative framework governing patents in Nigeria. P2, Laws of the Federation of Nigeria 2004 (as amended). This article therefore provides an in-depth analysis of Patent Law in Nigeria, covering key concepts, processes, rights, and enforcement mechanisms.
Introduction:
According to Black Law’s Dictionary, a patent is a grant of a property right by a sovereign authority to an inventor. This grant provides the inventor with the exclusive right to make, use, sell, and offer for sale an invention for a specified period, typically twenty (20) years. The patent is granted in exchange for a public disclosure of the invention.
Thus, any grant granted by a country to an inventor of an exclusive monopoly right to preclude another person from exploiting, making, using, importing, or selling his/her invention without his/her consent for a fixed period of years qualifies as a patented right.
As stated in the Black’s Law Dictionary, a monopoly is granted in return for the inventor making his invention publicly known to those who will be able to use the invention after a fixed period of years.
The law of patent therefore envisages that an inventor, during the period of his/her enjoying such a monopoly as per the right granted, would have derived maximum financial benefit from the exploitation of the invention as a reward for his labour before letting it go into public domain.
It is therefore important to state here that patent law varies from country to country because every country has its laws to the extent of its territorial jurisdiction. For most countries, patents are granted as an incentive to invent or innovate, underscoring why patents can not be granted perpetually.
Scope of Patent Protection:
Today, Nigeria’s principal legislation regulating patents and patented rights is the Patents and Designs Act Cap. P2, Laws of the Federation of Nigeria 2004 (as amended) hereinafter referred to as “the Act”.
Under the said Act, a patent provides an inventor with the exclusive right over an invention only for a limited period of twenty (20) years as per Section 7(1) of the Patents and Designs Act.
The scope of protection under the Act extends to any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. However, it excludes certain subject matters such as scientific theories, mathematical methods, and literary or artistic works.
According to Section (1) of the Act, an invention is patentable if only it is new and results from inventive activity capable of industrial application.
Thus, to qualify for a patent under the Act, an invention must meet these three fundamental criteria as established in the above provisions of the law namely: (1) that the invention must be new and not have been known or already in existence (2) that it must involve an inventive step that is not obvious to someone with ordinary skill in the relevant field; and (3) that such invention should be capable of being used in the relevant industry and have practical application.
Procedure for Patent Application:
In Nigeria, Patent registration is handled by the Intellectual Property Department of the Trademarks, Patents, and Designs Registry which operates under the Federal Ministry of Industry Trade and Investment.
The formal requirements for a patent application according to the Act are set out in Section 3 which procedurally involves the following steps:
i. Filing: An application for filing a patent must include a detailed description of the invention, claims defining the scope of protection, and any necessary drawings followed by the payment of the relevant prescribed fees.
ii. Examination: Upon filing, the application shall be examined by the Registrar to assess its compliance with patentability criteria and to ensure it meets the requirements under the Act.
iii. Publication: Once the application is accepted, it is published in the official patent journal. This publication allows third parties to review and oppose the patent if they have valid grounds.
iv. Grant: If no valid opposition is raised and the examination is satisfactory, the patent is granted. The patentee then has exclusive rights to the invention for 20 years from the filing date, subject to payment of annual renewal fees.
The Act further provides under its Section 4 that the Registrar shall examine the application, and if he is satisfied that all the documents required to be submitted with the application have been submitted, shall grant the patent.
Duration and Renewability:
In Nigeria, the initial duration of a patent is twenty (20) years from the date of application. This period provides the inventor with exclusive rights to manufacture, use, sell, or license the invention. Patents can be renewed annually after the initial grant, but such renewals are contingent on the payment of the appropriate or requisite renewal fees.
Note however, that failure to pay these fees may result in the expiration of the patent rights before the end of the said twenty (20) years term as stated in Section 7 of the Act.
Patent Rights:
The right to a patent is initially granted to the “statutory inventor,” who under the law, is the person who first files a patent application or validly claims a foreign priority for that application. This individual may not necessarily be the true inventor of the invention.
However, the true inventor, the individual who conceived the invention has the right to be recognized as such in the patent document. It must be pointed out that this recognition cannot be altered or waived through a contractual agreement.
If a patent application is filed based on the invention of another person (or their successor) without obtaining consent for both the acquisition of the invention’s details and the filing of the application, the rights to the application and any resultant patent will be transferred to the original inventor or their successor. This ensures that the rightful creator of an invention retains control over the invention.
Inventions Created During Employment or Under Contract:
When an invention is made during employment or as part of a contract for specific work, the right to the patent generally belongs to the employer or the person who commissioned the work.
However, if the invention was created by an employee who was not required by their employment contract to engage in inventive activities, but used resources or data provided by their employment, or if the invention is of exceptional importance, the employee is entitled to fair remuneration in line with section 2(4) of the Patents and Design Act. This remuneration should consider their salary and the significance of the invention.
The said right to fair remuneration is non-negotiable and cannot be changed by contract either. Employees can enforce this entitlement through civil legal actions.
Similarly, individuals who have only assisted in the development of an invention without making any inventive contributions are not considered inventors under the law. Thus, only those who have made substantive, inventive contributions can be recognized as inventors.
Benefits of Patent Protection:
1. Exclusive Rights: Patent grants inventors exclusive rights to their inventions, preventing others from making, using, or selling the invention without permission. This exclusivity can provide a competitive edge in the market.
2. Monetization: Patent can be licensed or sold, providing inventors with financial returns. Licensing agreements can be a significant source of revenue, especially if the patent covers a groundbreaking technology.3. Market Advantage: Owning a patent can enhance a company’s market position by establishing a unique selling proposition. It can prevent competitors from entering the market with similar products or technologies.
4. Attracting Investment: Investors are often more inclined to fund businesses with patented technologies, viewing them as having a lower risk and greater potential for profitability.
5. Reputation and Branding: Patent contributes to a company’s reputation for innovation and can enhance its brand value. They signal to consumers and partners that the company is a leader in technological advancement. Section 6 (1) of the Patents and Designs Act 1970, provides that the grant of a patent confers on the patentee the exclusive right to make, use, sell, or import the patented invention. This means that only the patentee or their licensees can commercially exploit the patented invention.
Overall, we submit that the right of a patentee is territorial and as such, a patent cannot protect the territorial jurisdiction where it is granted. In the case of Dunlop Pneumatic Tyre Co. Ltd v. Holborn Tramways Co. Ltd (1902) A.C. 203, which decision was followed by the Nigerian Court in the case of Pharco Pharmaceuticals Ltd. v. Roche Products Ltd. (1967) NCLR 63, the Courts have affirmed the territorial nature of patent rights.
Infringement of Patent rights:
Patent infringement occurs when an unauthorized party encroaches upon the exclusive rights granted to a patent owner. Generally, infringement is associated with unauthorized acts, such as making a patented device without permission.
According to Section 25(1) of the Patents and Designs Act (PDA), infringement occurs when another person, without the license of the patentee or rights owner, does or causes the doing of any act which the other person is precluded from doing under the Act. In which case, makes, imports, sells, or uses the patented product or stocks it for sale.
In addition, applying a patented process or using a product derived from that process without authorization also constitutes infringement.
A patentee has the right to take legal action against a person(s) for the unauthorized use of the patentee’s invention. In which case, a patentee whose patent has been infringed, shall be entitled to the remedies of damages, injunction, and accounts.
The Federal High Court has the exclusive jurisdiction to entertain actions brought under the Patent and Designs Act.
Section 251(1) paragraph (f) of the 1999 Constitution of the Federal Republic of Nigeria (as Amended) grants the Federal High Court of Nigeria the exclusive jurisdiction in civil cases and matters “relating to any patent, trademark, copyrights, industrial design, and any other intellectual property”.
Similarly, Sections 7(1) paragraph (c) (ii) of the Federal High Court Act, Cap F12, Laws of the Federation of Nigeria, 2004 and 25(1) of the Patent and Designs Act also reaffirm the jurisdiction of the Federal High Court in matters relating to patents, designs and copyright.
Patent Registered in a Foreign Country:
It is important to point it here that the fact that a patent is registered in a foreign country does not mean the patent is automatically protected in Nigeria under the Nigerian legal jurisprudence. Hence, to exercise one’s rights in the event of patent infringement, the patent must also be registered in Nigeria.
However, the Patent Convention Treaty (PCT) to which Nigeria is a party thereto provides an opportunity for an investor who has registered in one country, which is a signatory to the Treaty, to have the right of priority for registration in another member country for a limited period.
Conclusion:
Patent law in Nigeria plays a crucial role in encouraging and protecting innovation. By granting inventors exclusive rights and the potential for economic benefits, it supports the development of new technologies and products. The twenty (20) year protection period, coupled with the possibility of renewal, offers long-term advantages to businesses and inventors. For brands, patents are not just legal instruments but strategic assets that contribute to competitive advantage, investment appeal, and market differentiation.
Somadina Eugene Okorie is the Lead Partner at
SENOCEAN LAW PRACTICE
Lekki Phase 1, Lagos State, Nigeria.
Email:[email protected]
