Nigeria: Understanding Patents And How It Differs From Trademarks, Trade Secrets And Patents In Nigeria

Last Updated: 17 April 2018
Article by Davidson Oturu

PATENT

WIPO defines a patent as an exclusive right granted in respect of an invention, which may be a product or a process that provides a new and inventive way of doing something, or offers a new and inventive technical solution to a problem1.

A patent can also be described as a legal right that is given to an inventor which enables him protect his invention for a number of years. The owner of a patent can exclude others in the territory covered by the patent from making or selling the invention without his consent.

Patents also provide incentives to inventors as it offers them recognition for their inventions and ensures that they are rewarded for creating inventions which are beneficial to the general public.

An example of an interesting invention is the ballpoint pen which was patented by Mr. László József Bíró in 1938. The name, "Biro", has become so notorious that it is synonymous with different types of pens. It became such a popular term that it eventually became a registered trademark!

Another notable invention is the telephone which was invented and seemingly patented by two different persons on the same day! The story behind this patent shows the importance of patenting an invention.

Messrs. Alexander Graham Bell and Elisha Gray were renowned inventors. On February 14 1876, Elisha Gray's attorney filed a patent caveat with a diagram. However, on the same day, Graham Bell's attorney also filed a patent application on the harmonic telegraph, including its use for transmitting vocal sounds at the US Patent Office.

Elisha Gray narrated that his patent caveat was taken to the US Patent Office early in the morning but remained near the bottom of the in-basket until later in the day. On the other hand, Graham Bell's application was filed shortly before noon and his attorney requested that the filing fee be entered and taken to the examiner immediately2. Even though the filing fee for Elisha Gray's caveat was eventually issued, the caveat was not taken to the examiner until the following day.

However, the controversy was eventually laid to rest when it was discovered that Graham Bell's application had been notarized on January 20, 1876. Elisha Gray therefore abandoned his caveat and did not contest the priority. As a result, Bell was granted a patent for the telephone on March 7, 1876.

Patentable inventions

Not all "inventions' can be patented. There are certain conditions which have been set out by the law and these must be satisfied before a patent can be granted for an invention.

An invention will only be protected by a patent if it fulfils the following conditions3:

  1. It is new or novel, results from inventive activity and is capable of industrial application or;
  2. It constitutes an improvement of a patented invention and also is new, results from inventive activity and is capable of industrial application.

It is important to note that an invention will not be patented where it has been made known to the public by oral disclosure or by a document or there has been some form of prior use4. However, if the invention is exhibited in an officially recognised international exhibition within the period of six months preceding the filing of the patent application, the invention can still be protected.

Thus if an inventor discusses his invention with third parties then this will be regarded as oral disclosure. Furthermore displaying the patent in a journal or in a bookshop will be regarded as public disclosure, even if the materials are not for sale.

Non-patentable inventions

A patent cannot be granted for the following inventions5:

  1. plant or animal varieties, or essentially biological processes for the production of plants or animals;
  2. inventions which would be contrary to public order or morality
  3. Principles and discoveries of a scientific nature
  4. scientific theories, mathematical methods, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products6).

Even though some of these "inventions" cannot be protected as patents, they can be protected as trade secrets. We will discuss this under the last phase of this three-part article.

Obtaining a patent

A patent is granted by the patent office of the country where the applicant intends to protect his invention. The first step in securing a patent is the filing of a patent application. The application must be signed by the applicant or his agent and must be on Form 17. The application shall consist of the following8:

  1. a request for a patent with the applicant's name and address
  2. a specification, including the claim(s) in duplicate
  3. plans and drawings, if any, in duplicate
  4. a statutory declaration
  5. a signed power of attorney or authorisation of agent
  6. the prescribed filing fee
  7. such other matters as may be prescribed from time to time by the registry.

There are categories of persons who may apply for the registration of a patent. They include the following:

The statutory owner

The 'statutory owner' and not necessarily the 'true owner', has the right to patent the invention. The statutory owner is the person who was the first to file an application or who validly claims a foreign priority of the invention9.

Although the first to apply doctrine no longer applies in the United States since 2011, it still applies in Nigeria due to its outdated IP laws. However, the law still protects the true owner in situations where his invention may have been fraudulently obtained as the Patents and Designs Act 1971 (PD Act) provides that if the essential elements of a patent application have been obtained by the purported applicant from the invention of another person without his consent, then all rights to the application and in any patent granted in pursuance of it shall be deemed to be transferred to the true owner10.

Employers or commissioners of inventions

The PD Act provides that where an invention is made during the course of employment or was commissioned by a patron, the right to the patent will be vested in the employer or in the person who commissioned the work as the case may be11.

The effect of the foregoing is that where the employee's job functions required the inventor to create the invention, the employer would have the right to patent it. However, in a situation where it was not the employee's job to make an invention and he made one without using any data or materials belonging to his employer, the employee would have the right to patent the invention.

The PD Act also provides that where the inventor is an employee and his contract does not require him to exercise any inventive activity but he has, in making the invention, used data and materials that his employment has put at his disposal, he is entitled to a fair remuneration, taking into account his salary and the importance of the invention12.

Contractual Licensee

The owner of a patent may by a written contract, grant a licence to any person to exploit the relevant invention and where there are no limitations in the contract, the licensee shall be entitled to use the patent anywhere in Nigeria13.

Where a licensee is granted, the licensing contract will not take effect against third parties until registration is effected and the filing fee has been paid. It should be noted that a licensee is not free to assign the patent or grant further licences to third parties. However, exception there is a prohibition to that effect, the holder of a patent can still use the patent or licence it to other parties.

Assignee

A patent can be assigned to a third party but it must be in writing and executed by the parties14. The assignment will not be effective against third parties until it has been registered with the Patents Office and the filing fees duly paid15. Joint owners of a patent can also transfer their shares and exploit the patented inventions as though they are the statutory owner16.

Duration and protection

A patent is valid for twenty years17 and is subject to annual renewals18.. Patents may also be granted by a regional office such as the European Patent Office (EPO), African Regional Industrial Property Organization (ARIPO) and the Organisation Africaine de la Propriete Intellectuelle (OAPI).

Under the regional filing systems, regional patent offices grant regional patents, which have the same effect as thought the applications were filed in the Member states of that region. However, the enforcement of such regional patents lies within the jurisdiction of each Member State.

The WIPO-administered Patent Cooperation Treaty (PCT) is a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein.

However, the PCT does not provide for the grant of "international patents" as the responsibility for granting patents is that of the respective Patent Offices where applications are made.

Footnotes

[1] World Intellectual Property (WIPO), 'DL 001 – Primer on Intellectual Property' (2018)

[2] The Telephone Patent Conspiracy of 1876: The Elisha Gray-Alexander Bell Controversy and Its Many Players First Edition

[3] Section 1(1) of the Patent and Designs Act 1971

[4] Section 1 (3) ibid

[5] Section 1 (4) (a-b) ibid

[6] Rule 8 (1) of the Patents and Designs Rules

[7] Rule 8 (1) of the Patents and Designs Rules

[8] Rule 11 ibid

[9] Section 2 (1) ibid

[10] Section 2 (3) ibid

[11] Section 2 (4) ibid

[12] Section 2 (4) (a)

[13] Section 23 (1) and (2) ibid

[14] Section 24 (2) ibid

[15] Section 24 (3) ibid

[16] Section 24 (4) ibid

[17] Section 7 (1) ibid

[18] Section 7 (2) ibid

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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