Patent in Nigeria
A patent is an intellectual property that grants exclusive rights with regard to an invention.
All over the world, it is common knowledge that security is at the heart of human desires. A major benefit of intellectual property rights is the guarantee of economic security for human creativity. I would say, ‘Creativity is the soul of innovation, and innovation is the soul of entrepreneurship.’
Patent, like other IPs, protects the patented product or process from possible unauthorised reproduction, use, sale etc. Thus, granting exclusive rights to deal with the invention for a fixed period of time to the patentee.
In Nigeria, the statute regulating Patents is cited as the Patent and Design Act (hereinafter referred to as PDA). This Act contains provisions regarding the administration of patents, as well as designs. From clarifications on patentable inventions, to examination of applications and licenses of rights, the Act provides for the registration and proprietorship of patents.
Patent is granted by application to the Patent and Design Registry; examined by the Registrar under the authority of the Minister for Industry, Trade and Investment.
Patentability of Inventions in Nigeria
Patents can be obtained for both products and processes. The key determinant of eligibility for patent is newness of invention and industrial applicability.
According to Section 1 (1) of the PDA, an invention is patentable if it is a new invention or an improvement upon an already patented invention. In both cases, the invention must be a result of an inventive activity and must be industrially applicable.
An invention which has been made public or a product of common knowledge in a field is not new and therefore not patentable. Similarly, an invention that cannot be manufactured or used in any kind of industry, including Agriculture, is not patentable.
Moreover, a patent cannot be validly obtained in respect of plant or animal varieties, or essentially biological processes for the production of plants and animals (other than microbiological processes and their products). Inventions that are contrary to morality or public order are also not patentable.
Patent and Foreign Priority
Nigeria is a party to conventions and treaties relating to intellectual properties. For example, Nigeria is a signatory to the Patent Cooperation Treaty (PCT), in line with the Paris Convention for the Protection of Industrial Property (1883).
According to Section 27 of the PDA, the Minister may declare a country or countries as a convention country (ies) by an order in the Federal Gazette. When this is done, an application filed by a person in Nigeria who has earlier made the same application in a convention country shall be entitled to foreign priority.
In other words, the application filed in Nigeria shall be deemed to be filed as at the time the application was made in the other country. However, for such an application to enjoy foreign priority, it must be made within twelve months of making the foreign application.
Consequentially, the application with foreign antecedent shall be granted, over a new local application with no prior filing.
Patent ownership in Nigeria
In patenting an invention, the true inventor differs from the statutory inventor. The former is the one who invented the product or process. While the latter is the person to first filed for patent.
The right to a patent in respect of an invention is vested in the Statutory Inventor, whether or not he is the true inventor. However, the true inventor is entitled to be named in the patent. Moreover, if a statutory inventor obtains his position without the consent of the true one, the rights in such an application shall be transferred to the true inventor.
In case of an invention made by an employee in the course of his employment, the patent right shall be vested in the employer. This is the same for an invention made in the course of executing a contract for the performance of specified work.
In the case of an invention made by contributions from more than one person, they are all inventors. However, a person who has merely assisted in doing the inventive work without contributing any inventive activity is not an inventor.
Registration of Patent in Nigeria
Like trademarks, registering an invention for patent in Nigeria is pretty straightforward. For ease of process, engaging your legal practitioner or agent is well advised. Section 3 (1) of the PDA specifies the information to be provided in a Patent application.
Notably, Section 3 (3) provides that an application can only be made for one invention. Although may include claims for many products or processes in connection with such invention.
The registrar is saddled with the responsibility of examining every patent application. He may also reject an application that has failed to comply with prescribed procedure.
Deposit System of Patenting
The registrar is mandated by the PDA to verify if the application for patent has compiled with the requirement of the Act, not to check for its patentability. See section 4 (2) of the PDA.
In other words, Nigeria operates a Deposit System of Patenting, as opposed to the Examination system obtainable in some other countries.
This means that even though an application for patent is granted by the registrar, it is granted as applied for. It does not mean the invention in question is patentable. Deciding whether or not an invention is patentable is left to the decision of a court of competent jurisdiction.
That is to say the Court shall determine whether the invention complies with the provisions for patentability under Section 1 and 3 (2) of the PDA. If the Court decides that the invention does not pass the test of patentability, the granted patent shall be declared null and void.
Therefore, in Nigeria, the burden of proof is upon whoever is contesting a patent to prove that such an invention is not patentable.
Lifespan of Patent in Nigeria
Section 7 of the PDA provides that a patent shall expire 20 years after its application was filed. A patent can also lapse if its annual fees are not paid for six months after the due time.
Infringement on Patent
Patent protects an invention from acts that violate the rights of the inventor, whether in importation, sale or use. Any unauthorized act done with the invention for industrial and commercial purposes shall constitute an infringement of the patent.
In Beijing Cotec Tech. Corporation & Anor v. Greenlife Pharm. Ltd & 5 Ors (2003-2007) 5, I.P.L.R page 100, the Court held thus, “It is submitted on behalf of the Plaintiffs that by virtue of a Patent No. 13566 as contained in the Certificate of Registration Exhibit DIHYDRO 1B, the plaintiffs have shown a legal right worthy to be protected from invasion or infringement by others.
“It is settled that what the Plaintiffs need to show is not only the legal right but that the legal right is threatened. Refer to Akibu v. Oduntan (1991) NWLR (Part 171) 1 at 10.”
The Court that has exclusive jurisdiction to hear and determine matters of infringement of patents is the Federal High Court. The Court may grant remedies against the defendant in injunctions, damages, or an order for account of profits.