Patents confer legal protection and recognition on the outcome of inventive work in diverse areas useful to human existence and progress. Research and development activities that result in the new invention are all worthy of recognition and protection. Such protection enables the patentee to prevent others from taking advantage of the invention, in a manner that is not authorized by the patentee or permitted by the law.
In this way, a properly operating patent system provides a conducive legal environment for an inventor of a new and useful product to benefit from the intellectual effort exerted and also the investment of time and resources, free of the hindrance of copiers and imitators.
The requirements for Patent Ability
Although all patents are made up of inventions consisting of products or processes, however, not all inventions can be a subject matter of valid patents. To be patentable, an invention must satisfy the criteria set out under the Patent and Design Act Cap P2 LFN 2004. To this end, Section 1 of the Act provides that an invention is patentable:
This requires is that the invention, in respect of which a patent is sought, must be new. In other words, it must not have been known or disclosed to the public prior to the date of application for patent. In addition, the test of newness under Nigeria law is universal. In other words, the disclosure, which defeats newness, is not restricted to the geographical boundaries of the country. Accordingly, Section 1(3) of the Act is that where an invention has been put to use or published (orally or in writing), the invention has been anticipated and is therefore no longer new and a patent issued in respect of such anticipated subject matter may be invalidated on this ground. The anticipatory document in the case of a written publication could be a book, journal or an earlier patent application, so long as the document was ordinarily accessible to the public. Newness may also be defeated by prior use, i.e. use or exercise in a public manner. Where, however, the use is secret or experimental, it may not defeat newness.
While newness deals with the difference between a claimed invention and prior art, the requirement of inventive activity deal with the extent of the difference between what was previously known and what was previously known and what the inventor claimed to have devised. In other words, there must have been a significant contribution to the state of art, in the sense that what is claimed, as invention must not be obvious. Section 1(2)(b) of the Act provides an invention results from inventive activity if it does not obviously follow from the state of art. Hence, to qualify for the grant of a patent, the inventive step taken by the inventor must not be the one that is obvious, or which follows logically from available information about the product or process. The inventor is required to have duly exercised his inventive faculty in a manner considered sufficiently ingenious to justify the grant of the patent; otherwise, the patent may be invalidated on the ground of lack of inventive activity.
In a nutshell, an inventor satisfies the requirement of inventive activity where the inventive activity is not obvious or ordinary but has resulted from the inventor ingenuity.
Procedure for registration of Patents in Nigeria
In Nigeria, the primary legislation that governs the grant of patents is the Patents and Designs Act. The Government agency that manages the grant of patents is the Trademarks, Patents And Designs Registry, Commercial Law Department, Federal Ministry Of Industry, Trade And Investment.
The Act lays down the procedure to be complied with in order to secure patent protection in respect of an invention. It is very instructive to state that the right to a patent in respect of an invention is vested in the “statutory inventor” i.e. the first person to file, or validly to claim foreign priority for a patent application in respect of the invention, whether or not he is the true inventor. Where two or more persons are involved in the making of an invention, they may apply jointly for a patent right in respect of that invention. However, the person who has merely assisted in doing work connected with the development of an invention without contributing any inventive activity is not an inventor.
The Act also attempts to balance the interest of parties. Under its provision, where an invention is made in the course of employment or in the execution of a contract for the performance of a specified work, the right to a patent is vested in the employer, or as the case may be the person who commissioned the work. The question as to who has the right to a patent under the Act is therefore hinged on the question of whether or not the invention was made “in the course of employment, or in the execution of a contract for the performance of a specified work”. This has been interpreted by judicial authorities to mean that the use of the employer’s materials. The Act only provides that in such circumstance, the employee inventor will be only entitled to remunerations.
Applications to register patent is dealt with under Section 3-5 of the Patents and Designs Act which provides that patent applications are to be made to the Registrar and shall contain:
The application shall also contain such other matters as may be prescribed, and be accompanied by
This implies that in situations where an application for a patent grant has been made in another country; and subsequently a corresponding application is made in Nigeria (for the same invention) the latter application (in Nigeria) shall be treated as having been made on the date when an earlier application (in that other country) was made. Thus, for the purpose of determining whose application is earlier in time, such foreign application will be deemed to be earlier or senior to the subsequent application by another person in Nigeria, provided the foreign applicant also filed for registration in Nigeria, although at a later date than the local person’s application.
Where an applicant for a patent seeks to avail himself of a foreign priority in respect of an earlier application made in a country outside Nigeria. Here, the Nigerian application is to be accompanied by certain information concerning the earlier foreign application such as date, number, country of application and name of the earlier applicant. The Registrar shall also be furnished with a certified copy of the earlier application within three months from the date of the application in Nigeria. It should also be noted that foreign priority is only accorded to applications made in ‘convention’ countries, i.e. countries so declared by the Minister by Order published in the Federal Gazette.
Examination and Grant of Patents
The Registrar is charged with the duty of examining patent applications, in order to determine suitability or otherwise for a grant. It should be noted however that the power of a Registrar in this regard is limited to a formal examination of the application to ensure conformity with the procedural requirement of the Act. Once these have been complied with, the patent shall be granted as applied for without further examination of the substance of the application.
Where the formal requirement for registration have been met, the Registrar grant the patent by the issue of a certificate containing the number of the patent, the name and address of the patentee, the date of application and other information’s as may be required. Soon after the grant, the registrar causes to be published a notification of the grant.
Certainly, a duly registered patent with a grant will confer certain legal rights on the patentee in respect of the invention and this will include that the patent will confer upon the patentee the right to preclude any other person from making, importing, selling or using it. Where it is a product, or where it is a process, the act of applying the process in respect of a product obtained directly by means of the process.
A patent shall expire after 20 years from the date of filing of the relevant patent application. Once expired, the invention (the subject matter of the patent) falls into the public domain and becomes available to be used freely by members of the public.
Written by Trademark & Intellectual Property Law Department at Resolution Law Firm, Nigeria