3.1 What is a patent?
A patent is the grant by a country to an inventor of a monopoly right to preclude another person from exploiting his invention without his consent for a fixed period. The monopoly is granted in return for the investor making his invention publicly known.
3.2 Applicable law
The Nigeria law of patents is governed by the Patents and Designs Act 1970, which provides that a patent may be granted for an invention that:
(a) is new;
(b) involves an inventive step ("not obvious");
(c) is capable of industrial application ("useful");
(d) is not specifically excluded in the Act (e.g. inventions the publication of which may encourage immoral and offensive behaviour).
3.3 Procedure for registration
Application for the grant of a patent is made to the Registrar of Patents and Designs, Patents Registry.
The application consists of:-
(a) a petition or request for a patent with the applicant's full name and address (Form 1A);
(b) a "specification" including a claim or claims in duplicate (Form 3);
(c) plans and drawings if any in duplicate;
(d) a declaration by the true inventor where applicable;
(e) a signed power of attorney or authorisation of agent if the application is made by an agent (Form 2);
(f) an address for service in Nigeria if the applicant's address is outside Nigeria;
(g) the prescribed fee of =N= 3,000.00; and
(h) any other matter prescribed by the Registrar from time to time.
An application must relate only to one invention but may cover claims for any number of products or processes.
3.4 Convention applications
This is an application claiming priority on the basis of an earlier application to register the patent made in a foreign convention country. By virtue of the Patents and Designs Convention Countries Order 1971, provided the Nigerian application is made within 12 months of the making of the earlier application in the foreign convention country, such application will be treated as having been made on the same date on which the corresponding foreign application was made. An applicant seeking foreign priority should append to his application a written declaration (Form 1B) showing;
(a) the date and number of the earlier application;
(b) the country in which such application was made and;
(c) the name of the person who made it.
Furthermore, not more than 3 months after filing the application, the applicant must furnish the Registrar with a copy of the earlier application certified correct by the appropriate intellectual property authority of the foreign convention country.
3.5 Examination of application
The patent application is examined by the Registrar merely to ascertain formal compliance. Once the application satisfies the statutory requirements as to forms and fees and relates to only one invention, the Registrar is likely to grant the patent without enquiry as to its novelty, inventiveness and industrial application, or whether the specification sufficiently discloses the invention. Accordingly patents are granted at the risk of the patentee and without guarantee of their validity.
3.6 Grant and publication
The grant of a patent is made by the issue of a patent certificate (Form 4) to which is annexed a copy of the specification, drawings and plans. Thereafter, the Registrar enters particulars of the grant in the Register and causes a notice of the grant to be published in the Federal Gazette.
3.7 Duration, renewal and lapse
Patents remain in force for a period of 20 years from the date of filing the application. During the 20 years duration of the patent, it should be renewed annually by lodging the relevant application (Form 5) and the prescribed fee not later than the due date at the Registry. Failure to do this will result in the patent lapsing. If application for renewal is not made at the appropriate time a grace period of 6 months is allowed within which an application for extension of time to renew may be filed (Form 6) accompanied by the extension fee and the prescribed surcharge.
A patent may be exploited by its owner "working" the patent himself or by licensing third parties to do so.
The owner may grant contractual licenses to third parties to exploit his patent, with or without know-how, on an exclusive, sole or non-exclusive basis or may assign the patent rights to a third party. In certain circumstances, the owner of the patent is required to grant compulsory licenses to third parties.
The Registrar will on the application of the patentee register the words "licenses of right" in respect of his patent. The effect of this is twofold. First, any person has the right to obtain a license to exploit the patent on such terms as failing agreement between him and the patentee will be fixed by the court and secondly the annual renewal fees payable in respect of the patent is thereafter reduced by half.
All licenses, assignments and other transactions involving patents should be recorded at the Patents Registry.
Patent are enforced by the patentee or his assignee taking proceedings in the Federal High Court and claiming damages, costs and injunctive relief in respect of infringing acts. A licensee cannot sue in the first instance but must first of all by registered letter, request the licensor (i.e patentee) to sue to remedy the signified infringement. If the licensor unreasonably refuses or neglects to institute proceedings, the licensee may do so in his own name without prejudice to the right of the licensor to intervene in the proceedings.
In enforcing a patent it should be borne in mind that the fact that a patent has been granted does not mean it is valid - only a court can determine that question and patents are often found to be invalid on various statutory grounds, for example, where the invention disclosed in the patent is not new, or is obvious or where the disclosure of the invention is incomplete. Such patents are revoked following litigation.
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Akinjide & Co. is a leading corporate law practice based in Lagos, Nigeria, with branch offices in Ikeja and Ibadan.
This guide on intellectual property in Nigeria has been produced by the intellectual property group of Akinjide & Co. and is intended to provide general guidance and information only. It is not a major work of reference and specific questions and enquiries should be referred to:
Stephen Kola - Balogun Akinjide & Co. 10th Floor, Western House 8/10 Broad Street, Lagos - Nigeria. Tel: 234 1 263 5315 Fax: 234 1 264 5525. E-mail: Click Contact Link