An Evaluation Of The Requirements For Patentability: Novelty, Inventive Step And Industrial Application In Nigeria

1. Introduction

The Industrial Revolution ushered in an era where the acquisition of patents became a vital tool for fostering innovation, creativity, and productivity, as a new wave of industrialization shaped the century.¹ While Europe was bustling with prospects of a renewed future built by the revolution, from across the Atlantic Ocean, the United States of America weaved the protection of patents into its constitution, becoming the first nation on earth to recognize the protection of intellectual property rights in its constitution. From then onwards, the USA has dominated the world with advancements in technology and innovation.

Patents are arguably the oldest form of intellectual property rights, they are the best-known and longest- standing, and possibly the most valuable form of protection of intellectual property rights conferred by law.² A patent is a document issued by government, which describes an invention in which the patented invention can only be exploited (manufactured, sold, used, licensed etc.) with the authorization of the owner who is the patent holder. Patents are territorial in nature and are granted by the relevant government agency to protect new inventions and improvements upon earlier inventions. Additionally, the issuance of letters patent is the equivalent of a market monopoly to inventors as an incentive to innovate and create. This monopoly or exclusionary rights exists for a specific period, usually for 20 years with compulsory annual renewals to maintain their validity.

In Nigeria, the applicable law is the Patents and Designs Act (PDA)³ and the relevant agency responsible for the protection of patents and designs is the Patents and Designs registry.

1.1 Component Parts of a Patent Application

In filing a patent application, there are three essential parts every patent application must contain before submission to the registrar for patents:

1.2 The Requirements of Patentability

The global standard for granting a patent is that the invention must be patentable. Notwithstanding that inventions are at the centre of patent law; the Patents and Designs Act did not provide a definition for that term. Modern English dictionaries have also not been able to capture the meaning of the term 'invention' within the scope of patent law as they do not account for the fact that inventions under patent law also includes processes and improvements on earlier inventions. Likewise, courts have not been able to provide a concise and satisfactory definition of that term. In Crossley Radio Corporation v. Canadian General Electric Co Ltd,⁴ the court stated that:

Having failed to define the term invention, section 1 of the Patents and Designs Act outlined the circumstances under which an invention can be patentable. Pursuant to that section, an invention is patentable if:

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

Flowing from the above, there are three requirements that must be fulfilled for an invention to be patentable, and these are – novelty, inventive step and industrial application.

2. Novelty

Establishing the novelty of an invention under patent law is an integral part of the official regulatory examination in the patent application process. Under section 1(2)(a) of the Act,⁶ any invention submitted for the grant of a patent must be new. Since patents are territorial, it is only required to be new in the country in which the registration is sought. The requirement of novelty is gauged against the "state of the art", in the applicable field of knowledge, and thus the aforementioned section clarifies that "an invention is new if it does not form part of the state of the art". The state of the art entails all matters made available to the public before the priority date i.e., before the date of the application. The state of the art comprises all the relevant knowledge that existed prior to the filing date of the patent application, whether it existed in writing or in an oral disclosure. Therefore, newness does not only mean the unavailability of the invention to the public but also the absence of descriptive information regarding it.⁷

If an invention forms part of the state of the art, it is said to be "anticipatory" in which case it does not meet the requirement of novelty and will not be granted patent protection. In Otto v. Steel⁸ the court held that '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. Similarly, in Windsurfing International v. Tabur Marine (Ltd),⁹ the Plaintiff was granted a patent for a windsurfing board. The Plaintiff found that the defendant was selling similar windsurfing boards and brought an action for infringement of their patent. The defendant questioned the validity of the alleged patent and sought to have it revoked. The court held that the use of similar windsurfing boards was anticipatory as a boy had used something similar in a public park.

Similarly, in Mode Nigeria Applications Limited v. Visocom Limited & Ors,¹⁰ the major issue was whether the said invention was patentable in Nigeria, considering that the subject technology already formed part of the state of the art – already known to the public as a technology or invention. The FHC dismissed the application of the Plaintiff and held in favour of the Defendant on the ground that the said invention is unpatentable, owing to its failure to meet the requirements of the PDA.

Furthermore, the disclosure required to make the invention a part of prior art and therefore disentitled to patent protection may take place in three ways:

1. Description of the invention in a published writing or publication or other tangible form.
2. Description of the invention in spoken words uttered in public.
3. Use of the invention in public or putting the invention in a position that makes any member of the public to use it.

These disclosures are referred to as disclosures in writing, orally and by use.¹¹ However, there are certain disclosures that are exempted, for example, disclosures given in confidence because of a professional relationship like lawyer-client, and doctor-patient confidentiality. In re Klopfenstein,¹² the US Federal Circuit held that a temporary display of a printed presentation at a scientific conference, even without distributing physical copies, could constitute a "printed publication" under U.S. patent law if it was sufficiently accessible to the public. The court emphasized that the absence of confidentiality or restrictions on access made the disclosure public, thereby potentially barring patentability. Also, disclosure of the invention at international expositions like world fairs are protected.

3. Inventive Step

In order to decide whether an invention is patentable, it must be novel, if the invention is novel, it is necessary to consider whether it involves any inventive step. In relation to the requirement of inventive step, the question is whether or not the invention 'would have been obvious to a person having ordinary skill in the art', and it is perhaps the most difficult of the standards to determine in patent examinations as to substance.¹³

It should be noted that novelty and inventive step are different standards of patentable criteria, albeit related. Novelty exists if there is any difference between the invention and the prior art. The inquiry as to whether an inventive step has been established arises if there is novelty. The expression 'inventive step' conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that difference must have two characteristics.¹⁴ Firstly, it must be 'inventive', that is, the result of a creative idea, and it must be a 'step', that must be noticeable. Secondly, it is required that the advance or progress be significant and essential to the subject invention.

Thus, an invention shall be taken to involve an inventive step if the invention is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art at the priority date of the invention. Just as a claim which lacks novelty is said to be anticipated, a claim which lacks inventive step is said to be obvious.

4. Industrial Application

Pursuant to section 1(2)(c) of the Patents and Designs Act, an invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture. Industry has been widely construed to include almost all commercial enterprises. Only that which is useable or capable of industrial use is regarded as deserving protection by the grant of a patent. Thus, if an invention is still at a theoretical stage, no matter how advanced, it will be premature to make an application for patent protection if its potential industrial applicability is yet to be demonstrated.

Also, an invention is not capable of industrial application if it is a method of treatment of the human or animal body. This treatment exclusion covers both product and process claims and methods of testing. The reason for this is based on public policy. It will be against public policy to grant a patent monopoly on a method of treatment. It is not in society's interest for medical practitioners to rely on a monopoly and deny the use of a method of treatment to other people, doctors and patients. The benefits of a new treatment should be available to all.

5. Documentation versus Examination System

Having discussed the three fundamental requirements for patentability, i.e., novelty, inventive step, and industrial application, it is crucial to point out that the Patents and Designs Act does not mandate a substantive examination of patent applications before grant. Rather, Nigeria operates a formal documentation system, also referred to as a registration-based system, where the patent is granted primarily based on the proper completion of procedural formalities, not on a detailed assessment of the substantive merits of the invention.¹⁵

This system is evident in several provisions of the Patents and Designs Act.¹⁶ The critical section is section 1(1) of the Act, which deals with the requirements for patentability reviewed in this paper as follows:

However, section 3(1) of the Act provides:

Crucially, section 4(2) provides:

This provision makes it clear that the Registrar's duty is limited to checking formal compliance — whether the documents are in order and fees are paid — not to examine the substantive merits of the invention (whether it is truly new, inventive, or industrially applicable).

Thus, under the Nigerian law, the Registrar is explicitly denied the authority to investigate or determine whether an invention meets the substantive requirements for patentability. Since the patent registry is not authorized to look into whether a patent application has satisfied the substantive requirements for grant of patent, patents are issued in Nigeria without any guarantees as to their validity.¹⁷ Consequently, the question as to the validity of patents is left by law to interested third parties who may institute an action before the Federal High Courts seeking to nullify or invalidate the issued patent.

6. Conclusion

The essence of patentability lies in its role as a gatekeeper for true innovation. By upholding the standards of novelty, inventive step, and industrial application, the system ensures that only inventions which advance the frontiers of knowledge and offer tangible value to society are rewarded. This not only protects the integrity of the patent system but also fosters a system where creativity is purposeful, and innovation is genuinely impactful.

Footnotes

* Favour Boyode, Graduate Intern, Intellectual Property and Technology Department, S.P.A. Ajibade & Co., Lagos, Nigeria.

1. Ahmad Saleh and Bachir Abou Chakra, 'Innovation & IP at the Core of the 4th Industrial Revolution' (Lexology,30 March 2018) (https://www.lexology.com/library/detail.aspx?g=af677072-0932-486c-9151-0615ca16c3dd) accessed 14 April 2025.

2. All Answers ltd, 'Comment on Patenting Sporting Apparatus' (Lawteacher.net, April 2025) (All Answers ltd, 'Comment on Patenting Sporting Apparatus' (Lawteacher.net, April 2025) (https://www.lawteacher.net/free-law-essays/sports-law/comment-on-patenting-sporting-apparatus.php?vref=1) accessed 14 April 2025.

3. Cap. P2 Laws of the Federation of Nigeria 2004.

4. (1936) D.L.R. 508.

5. Ibid.

6. Section 1(2) Patent and Designs Act, Cap P2, L.F.N 2004.

7. Monesh Mehndiratta, 'Patentability Criteria' (IP Leaders, 17 August 2022) (https://blog.ipleaders.in/patentability-criteria/) accessed 14 April 2025.

8. (1888) 13 App. Cas. 455 (HL).

9. [1985] RPC 59 CA.

10. Unreported Suit No: FHC/L/CP/273/2016, decided on 21.06.2017.

11. Section 1(3) Patent and Designs Act.

12. 380 F.3d 1345 (Fed. Cir. 2004).

13. 'Inventive Step: Everything You Need to Know About Inventive Step' (Up Counsel, 19 September 2022) (https://www.upcounsel.com/inventive-step) accessed 16 April 2025.

14. Thorsten Bausch, 'How to Deal with Unusual Prior Art in the Determination of Inventive Step?' (Kluwer Patent Blog, 11 February 2019) (https://patentblog.kluweriplaw.com/2019/02/11/how-to-deal-with-unusual-prior-art-in-the-determination-of-inventive-step/) accessed 16 April 2015.

15. Adejoke O Oyewunmi, Nigerian Law of Intellectual Property (University of Lagos Press, 2015) 169.

16. Patent and Designs Act, Cap P2, L.F.N 2004.

17. Section 4(4) Patent and Designs Act, Cap P2, L.F.N 2004.

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