The article provides helpful information on patent and how to apply for a patent in Nigeria. It also discusses the rights conferred by a patent, duration, surrender, nullity, and infringement of patents.
What is a patent?
A patent is an intellectual property right that grants an exclusive right to an inventor. It is an exclusive right granted for an invention, a product or a process that provides, a new way of doing something, or offers a new technical solution to a problem. 1https://www.wipo.int/patents/en
In Nigeria, the principal legislation governing patents is the Patents and Designs Act Chapter P2 Laws of the Federation of Nigeria, 2004.
Types of inventions that can be patented in Nigeria
An invention for a patent according to section 1(1) of the Patents and Designs Act 1971,2Patents and Designs Act Chapter P2 Laws of the Federation of Nigeria 2004 should be new or an upgrade of a patented invention. A new activity that can be applied industrially e.g. agriculturally. ‘An invention is new if it does not form part of the state of the art’.3Patents and Designs Act 1971 1(1)(2)(a).
Although the Act does not explicitly provide when a patent can be obtained. However, it provides when a patent cannot be obtained. Under Section 1 (4) of The Patents and Designs Act, Patents cannot be validly obtained in respect of:
- Plant or animal varieties
- Inventions the publication or exploitation that is contrary to public order
A person cannot also patent principles and discoveries of a scientific nature under the Patents and Designs Act.
Right to own a patent in Nigeria
The Patents and Designs Act mentions two (2) types of patent owners: a true owner and a statutory owner.
A true owner is a person who created the invention. A statutory owner is the person who may not be the true inventor but is the first to file or claim a foreign priority in a patent application of an invention.
A patent can be owned by either a statutory inventor or a true inventor by virtue of Section 2 of the Patents and Designs Act. However, a true inventor is entitled to be named in the patent even if he isn’t the first to file for a patent i.e. a statutory owner.
If another person obtains the essential elements of a patent without the inventor’s consent, all rights in the application for a patent and in any patent granted in pursuance of the application shall be deemed to be transferred to that other person.4Patents and Designs Act 1971 s 2(3).
In a situation where an invention is created in the course of employment or the execution of a contract, the right to a patent in the invention is vested in the employer or the person who commissioned the work.
The employer’s entitlement to the invention created can be enforced by civil proceedings. However, if the employment does not require an exercise of any creativity, but data or resources provided by the employer were used in the creation and the invention is important, he is entitled to a fair remuneration considering his salary and the importance of the invention.5Patents and Designs Act. 1971 s 2(4).
A person that merely assisted in doing work connected with the development of an invention without contributing any inventive activity isn’t regarded as an inventor.6Patents and Designs 1971 s 2(5) Act.
How to apply for a patent in Nigeria
According to section 3 of the Patents and Designs Act, a patent application should contain:
- The applicant’s full name and address and, if the address isn’t in Nigeria, an address for service in Nigeria.
- A description of the invention with any appropriate plans and drawings.
- A claim or claims.
- Other matters as may be prescribed.
An application for a patent has to be made to the registrar who will examine the application as to its conformity with the provisions of the Patents and Designs Act.
The patent application should also be accompanied by the following:
(i) The prescribed fees
(ii) A declaration signed by the true inventor requesting that he be mentioned in the patent and giving his name and address if necessary.
(iii) if the application is by an agent, a signed power of attorney should be provided.
The Patent and Designs Act, however, restricts a patent application for only one invention Under Section 3(3) of The Act, but the application may include other information relating to the invention.
Rights conferred by a patent
A patent confers certain rights exclusively to only the owner of an invention. A patent confers upon the owner the right to preclude any other person from doing acts like making, importing, selling, or using the product or the process, or stocking it for sale or use.7Patents and Designs Act 1971 s 1.
The rights provided by a patent protect the owner from acts done for industrial or commercial purposes. However, the rights do not extend to acts done relating to a patented product after the product was sold legally in Nigeria.
Prior to the filing of a patent application, someone who was conducting an undertaking in Nigeria in good faith and manufacturing a product or applying a process that is the subject of a patent application may continue to do so.8Patents and Designs Act 1971 s 6.
Duration and lapse of a patent in Nigeria
A patent isn’t permanent for an invention and can expire due to duration or a lapse of time. The time duration for a patent in Nigeria is twelve (12) years from the application date. 9Patents and Designs Act 1971 s 7.
A patent can also expire when the patent owner fails to pay the prescribed annual fees. The expiration or lapse of a patent is registered and notified. After time-lapse for a patent, a six (6) months period of grace is allowed for the fee payment, during the period of grace if the prescribed fees are paid the patent will not expire.
Surrender of a patent
A patent can be surrendered by the patentee subject to Section 8 of the Patents and Designs Act. it is surrendered by a written declaration addressed to the registrar. When a patent is surrendered, the surrender is not effective until it is registered.
If the patent surrendered is for a contractual license or license of right it is registered and notified. However, for the surrender of a license to be registered, it has to be accompanied by the licensee’s written consent.
A court can also declare a patent null and void. Section 9 of The Patents and Designs Act, provides that on the application of any person the court will declare a patent null and void when:
- The invention is not patentable under the Act.
- The description of the invention does not conform with the Patents and Designs Act.
- If a patent has been granted for the same invention in Nigeria.
Infringement of patent rights in Nigeria
The right of a patent owner is infringed when another person without a license of the owner performs an act that is an exclusive right to the owner of the patent provided in the Patents and Designs Act.
Just as relief is available in corresponding proceedings in other proprietary rights infringement, a patent owner in an action for patent infringement can also seek relief by way of damages, injunction, etc available to a plaintiff.
When a patent is granted to a process for manufacturing a new product, and the same product is manufactured by another person, the product will be presumed to have been manufactured by the patented process if there is an absence of proof of its uniqueness.
Which court has jurisdiction in patent proceedings in Nigeria?
By virtue of Section 26 of the Patents and Designs Act, The Federal High Court has jurisdiction in legal proceedings regarding a patent in Nigeria.
The foregoing is intended to provide helpful information only and does not constitute legal advice. If you require professional legal service on patent matters in Nigeria, please contact us. You might also be interested in copyright protection and trademark protection in Nigeria.
- 2Patents and Designs Act Chapter P2 Laws of the Federation of Nigeria 2004
- 3Patents and Designs Act 1971 1(1)(2)(a).
- 4Patents and Designs Act 1971 s 2(3).
- 5Patents and Designs Act. 1971 s 2(4).
- 6Patents and Designs 1971 s 2(5) Act.
- 7Patents and Designs Act 1971 s 1.
- 8Patents and Designs Act 1971 s 6.
- 9Patents and Designs Act 1971 s 7.