PATENT REGULATIONS IN NIGERIA
The Patent and Design Act 1971 (the Act) is the principal patent law in Nigeria. A patent is a grant by a country to an inventor of an exclusive monopoly right to preclude another person from exploiting, making, using, importing, or selling invention his invention without his consent for a fixed period of twenty (20) years. The monopoly is granted in return for the inventor making his invention publicly known to those who will be able to use the invention after 20 years from the date of filing a complete patent application.
It is envisaged that the inventor, during the period of such a monopoly would have derived maximum financial benefit from the exploitation of the invention. The regulatory body further ensures that such inventions which could improve the quality of life of the citizenry are exploited to the good of the greatest number of people.
It is important to state that each country owns its own patent registry for patent registration, as patenting is territorial in nature. The fact that a patent is registered in a foreign country does not mean the patent is automatically protected in Nigeria. 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) 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 of a period.
The Government agency that administers the grant of patents and the protection of patent right is the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment.
The court that has the jurisdiction to hear any matter related to patents in Nigeria is the Federal High Court. Patent applications are usually filed in the English Language in Nigeria.
The Patent and Design Act provides that certain matters are not patentable in nature. These are clearly set out in Section 1(4) and (5) of the Act. These include plants or animal varieties, or essentially biological processes for the production of plants or animals. Inventions the publication or exploitation of which will be contrary to public order and morality are also excluded, so also are principles and discoveries of a scientific nature. Apart from these exceptions, all products and processes, which meet the qualification for patentability under section 1(1) of the Act, are patentable.
Patents are granted for the invention of products or processes. However, for it to be patentable, the invention must meet the following requirements provided in Section 1(1) of the Act to wit;
- It must be new a new invention
- It must have an inventive step that is not obvious to someone with knowledge and experience in the subject.
- It must be capable of being made or used in some kind of industry and not be, a scientific or mathematical discovery, theory or method, a literary, dramatic, musical or artistic work, a way of performing a mental act, playing a game or doing business, the presentation of information, or some computer programs, an animal or plant variety, a method of medical treatment or diagnosis,
- The invention must not be against public policy or morality.
- An invention results from inventive activity if it does not obviously follow from the state of the art, either as to the method, the application, the combination of methods, or the product which it concerns, or as to the industrial result it produces; and
- An invention is capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture.
PROCEDURE FOR PATENT APPLICATION
The formal requirements for a patent application according to the Act are set out in Section 3 which provides that every patent application;
(a) shall be made to the Registrar and shall contain-
(i) the applicant’s full name and address and if that address is outside Nigeria, an address for service in Nigeria,
(ii) a description of the relevant invention with any appropriate plans and drawings,
(iii) a claim or claims, and
(iv) such other matter as may be prescribed; and
(b) it shall be accompanied by –
(i) the prescribed fee,
(ii) where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent and giving his name and address and
(iii) if the application is made by an agent, a signed power of attorney so however that, notwithstanding any rule of law, legislation or certification of the signature of the power of attorney shall be unnecessary.
The Act further provides under the Section 4 that the Registrar shall examine the application, and if he is satisfied that all the documents which are required to be submitted with the application have been submitted, shall grant the patent.
Procedure and Requirement for Patent Registration
Upon fulfilling the above-mentioned conditions qualifying an invention for patent registration, a formal application that contains a petition or request shall be made to the Registrar of Trademarks Patents and Designs Registry and shall contain the following information:
- The applicant’s full name and address, and if the address is outside Nigeria, there should be an address for service within Nigeria.
- A description of the relevant invention with any appropriate plans and drawings.
- A claim or claims for any number of products, processes or applications.
- The application is to be accompanied by the prescribed fees as may be determined by the Registry from time to time.
- 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 where applicable.
- Where the application is submitted by an agent, a power of attorney authorizing the donee of the power of attorney to that effect.
An official letter of acknowledgement that contains the application number, the official filing date of the application is generated and issued by the Registry to the Applicant after the application has been made. The Patent application after the acknowledgement letter has been issued will be examined by the Registrar to ensure the application conforms with the Requirement of the Act that it contains the required information as stated above.
Upon the satisfaction of the Registrar that the application conforms to the requirements of the Act, the Patent will be granted and the Patent Registrar shall issue, on behalf of the President of Nigeria, a Certificate that contains the following details:
- Number of the patent in the order of grant
- Name and address of the Patentee
- The date of the Patent application and the grant
- Number and date of the application on which the claim is based and the name of the country where it was made.
- The description of the invention with the relevant plans and drawings.
The Certificate issued is thereafter valid for a period of 20 years from the date of issuance.
Rights conferred by Patent:
Section 6 (1) of the Patents and Designs Act 1970, provides that the grant of a patent confers on the patentee the right to preclude all other persons from doing any of the following acts:
(a) where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and
(b) where the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process, any of the acts mentioned in paragraph (a) of this subsection.
Infringement of Patent
Section 25 of the Patents and Designs Act 1970 highlights the infringement of patent rights. Under this section, it is provided that it will be an infringement of patent if any person does or causes the doing of any act which is precluded under the provisions of Section 6, referred to above.
The section further raises an assumption in respect of process patent to the effect that if a process by which a new product is to be made is patented, it shall be presumed that a defendant who makes the product and issued for the infringement of the process has manufactured the product by means of the patented process. The onus of disproving the presumption lies on the defendant. The patentee, whose patent has been infringed on shall be entitled to the remedies of damages, injunction and accounts of proceeds.
The Federal High Court has the exclusive jurisdiction for entertaining any action brought under the Patents and Designs Act.
In closing, it is not every invention which is new or results from an inventive activity that can be patented. The patenting process is designed to promote industrial development. The objectives of patent registration are to provide incentives for the creativity of persons involved in various industries. Therefore, an invention will not be patentable, if it is not industrially applicable.
Also, a duly registered patent gives the patent holder the right to prevent others from using the registered invention or to choose to permit the use by other persons of such invention under agreed terms. It also gives the inventor the right to institute legal action against anyone who infringes on the registered invention and to make a claim for damages.
By Intellectual Property Law Team at Resolution Law Firm