IP rights have become increasingly relevant in today's innovation-driven economy. They play significant roles in the growth of businesses and constitute a considerable portion of the value of asset portfolios. They have the ability to set businesses apart from competitors and could play a significant role in aiding businesses in achieving and maintaining competitive dominance in the marketplace when properly leveraged. Hence, the need for businesses that wish to ensure continued relevance in the marketplace to optimally protect and enforce their IP rights.
At S. P. A. Ajibade & Co., we support clients across various industries effectively maintain, protect, and enforce their IP rights over patents, designs, trademarks, copyright and allied rights, trade secrets and commercially sensitive information, either in isolation or as an offshoot of related transactional matters. Some of the crucial strategies we employ are provided below.
- PROTECTING IP PORTFOLIOS
For adequate protection of IP portfolios, businesses require management strategies that are tailored to their unique nature and needs. As a preliminary step to managing IP portfolios, conducting an initial IP audit is necessary to identify the IP rights a business owns, evaluate the ownership and status of the rights, identify untapped IP assets, and IP related threats. The information obtained from the audit exercise will influence and determine the protection plan that will be developed for the business. Some of the recommended protection mechanisms for safeguarding IP portfolios are:
- Registration & Renewal of IPAssets
The registration and renewal of IP assets are crucial mechanisms for protecting IP rights as they grant proprietors of the assets exclusive rights to use and exploit the rights. In Nigeria, registration is a major requirement for acquiring IP rights such as patent,1 trademark,2 and industrial design.3 However, trademark rights may also be acquired through continuous use of the mark.4 One of the benefits of registering a trademark is the right of the proprietor to institute a trademark infringement action where proprietary rights have been infringed, an option that is not available to owners of unregistered marks.
Copyright and trade secret rights do not require registration as they enjoy automatic protection subject to the satisfaction of certain requirements under the law. The Nigerian Copyright Commission (NCC) has established a voluntary copyright notification scheme for owners of copyrights to notify the Commission of the creation and subsistence of works of authorship with the aim of maintaining an effective databank of verifiable copyrighted works.
For IP assets that require registration, renewal of the rights is also vital to maintaining these rights. Where renewals are not carried out as prescribed by the relevant IP laws in Nigeria, the owners may lose their rights.
We assist our clients to register their IP rights locally, and coordinate IP rights registrations and renewals in other jurisdictions through our network of associated firms. We monitor and ensure clients' IP rights are renewed before their due dates, as captured in the inventory of IP rights we develop for our clients, by giving them sufficient advance notice of impending renewals and annuity payments.
- IP Agreements & Clauses
The execution of IP agreements and inclusion of IP clauses in agreements are useful strategies for protecting IP portfolios as they clearly stipulate the rights and obligations of the parties. Some businesses may have to share their IP assets with third parties such as contractors, partners, employees, and investors out of necessity and will require adequate IP agreements or clauses to secure their rights. Examples of these agreements and other IP related agreements include assignment agreements, licensing agreements, confidentiality and non-disclosure agreements, non-compete agreements, employment agreements, contractor agreements, franchising agreements, as few examples.
- IP Policies
Another essential mechanism for protecting IP portfolios is the adoption of IP policies to govern the use and exploitation of IP assets by employees, contractors, customers and other third parties. These policies serve as guidelines which parties can place reliance on in carrying out their obligations. Some examples of such policies include general IP policies, trade secret policies and copyright notices.
IP clauses may also be included in company policies such as human resource policy, employment handbook, and internal data protection policy to protect the vital interests of a company. These policies provide information on the ownership status of a company's IP rights including guidelines on how the IP assets should be utilized, stored, and managed. Other related agreements which could also be used to protect IP rights include the clear desk policy, document security policy, IT security policy, and website terms and conditions.
1.4 IP Investigation
IP investigation involves monitoring IP markets to keep businesses abreast of possible threats to their rights. The publication of Trade Mark Journals by the Trade Mark Registry, and Patent Journals by the Patents & Designs Registry can be monitored and reviewed to notify clients of potential threats and infringements. IP market watch can also be conducted regularly to identify infringing products, keep a company informed of IP counterfeiting threats and advise on possible enforcement actions against the responsible parties.
1.5 IP Training
IP breaches may sometimes occur due to lack of general appreciation of IPRs, and IP terms in contracts or policies. This may also occur where parties did not read or understand the terms in executed IP agreements and policies. As a result of this, periodic IP trainingsmay be necessary for such parties including employees and contractors to highlight the significance of IP assets, the risks of IP breaches and organizational measures to be adopted to secure IP assets.
- ENFORCEMENT OF IP RIGHTS WORLDWIDE
We assist clients in enforcing their IP rights in Nigeria and in other jurisdictions through collaborating with associate law firms after ascertaining the nature of their rights and their enforceability in such jurisdictions.
Enforcement is a major mechanism for protecting IP rights. IP rights may be enforced through alternative dispute resolution mechanisms, opposition proceedings at agency tribunals and before regulatory bodies such as Nigeria Customs Service, and through the judicial process i.e., civil, and criminal actions. The remedies available for enforcement through the judicial process include damages, orders for inspection and seizure, anton piller or class injunctions, account of profits, delivery up for destruction of infringing materials and conversion rights in appropriate cases. Prior to instituting a civil or criminal action at the Federal High Court, a cease-and-desist letter may be issued to an infringer to refrain from the infringing activity.
Enforcement actions should be instituted in a timely manner to lessen the negative impact of infringements, piracy and counterfeiting and prevent the depreciation of the commercial value of an IP right.
Exposing IP assets to both internal and external parties without implementing protective measures may pose risks of IP theft and infringement, which could consequently subvert the value of an IP portfolio.
One of the mistakes companies make is failing to protect their IP rights or portfolios at the early stage of their business and leaving the protection to a later period when infringement may have occurred. Where an IP right has been infringed, it is usually a herculean and expensive task to start implementing protective measures to secure affected rights. Enforcement of the IP right also becomes more difficult and a rightsholder may lose valuable rights if unable to prove ownership of the IPR or provide proof of IP related claims. Furthermore, the monetary implication of instituting IP disputes can also be enormous including the cost of reputational damage, disrupted business, and replacing terminated employees or contractors.
Effective management of IP portfolios has been said to be instrumental for the commercial survival of businesses Therefore, it is paramount that businesses adequately manage and protect their IP portfolios to sustain their relevance in the market.
In protecting clients' IP portfolios and for seamless enforcement, we prioritise proper documentation of all IP related documents (including those obtained from regulatory bodies), agreements, and correspondences. The mechanisms we adopt for each client in respect of IP protection and enforcement is unique and subject to their specific nature, needs, and corporate goals. In our experience, the consequence of not seeking expert local knowledge regarding the enforceability of IP rights at the earliest opportunity can be dire. Sometimes, otherwise credible claims are afflicted by and ultimately derailed by the non-applicability of certain international and regional arrangements. In other instances, trademark proprietors fail to ensure the use of registered trademarks in local markets through registered user (license) agreements; non-compliance with NOTAP5 requirements in terms of local content additions and technology transfer obligations.
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1 Yetunde Okojie and Oluwasolape Owoyemi, "How do I Register an Invention in Nigeria? Substantive-and-Procedural Requirements for Registration of an Invention," available at: http://www.spaajibade.com/resources/how-do-i-register-an-invention-in-nigeria-substantive-and-procedural-requirements-for-registration-of-an-invention-by-yetunde-okojie-and-oluwasolape-owoyemi/, visited on 6th September 2021.
2 Yetunde Okojie and Oluwasolape Owoyemi, "How do I Register a Trademark in Nigeria? Substantive and Procedural Requirements for Registration of a Trademark," available at: http://www.spaajibade.com/resources/wp-content/uploads/2019/01/How-do-I-Register-a-Trademark-in-Nigeria-by-Yetunde-Okojie-and-Oluwasolape-Owoyemi.pdf, visited on 6th September 2021.
3 Bisola Scott, "How do I Register an Industrial Design in Nigeria? Substantive and Procedural Requirements for Registration of an Industrial Design," available at: http://www.spaajibade.com/resources/wp-content/uploads/2020/01/How-do-I-Register-an-Industrial-Design-in-Nigeria-Substantive-and-Procedural-Requirements-for-Registration-of-an-Industrial-Design-Bisola-Scott.pdf, visited on 6th September 2021.
4 See Bisola Scott, "Recommended Ways to Protecting Business Concepts as Intellectual Property Rights in Nigeria," available at: http://www.spaajibade.com/resources/recommended-ways-to-protecting-business-concepts-as-intellectual-property-rights-in-nigeria-bisola-scott/, visited on 6th September 2021.
5 The National Office for Technology Acquisition and Promotion is a parastatal under the supervision of the Federal Ministry of Science and Technology. It was established by NOTAP Act, Cap. N62 LFN 2004 to regulate the inflow of foreign technologies into Nigerian economy.
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.