INTELLECTUAL PROPERTY SERIES: PATENTS AND DESIGNS

Patent is an exclusive right granted to confer legal protection on an invention for a given period, which exclusive right expressly excludes others from making, using, or selling said invention in the country from which it is obtained without permission or consent during the existence of the patent. Patent in Nigeria is regulated by the Patent and Design Act Cap P2 LFN 2004.

For an inventive work to be capable of being registered as a Patent it must:

  • Be a product or process that is providing a new practical solution to a problem, better put, a novel invention
  • Have an inventive step that is not obvious to someone with knowledge and experience in the subject. The invention must also have never been known, used or made public, it can however be an improvement upon an already patented invention.
  • Be capable of being made or used in an industry. Industry in this context relates to “Anything distinct from being purely intellectual”. It therefore means that the invention must go beyond just an idea, a scientific or mathematical principle or discovery, or a computer program but must take the practical form of an apparatus, product or a device.
  • Not be specifically excluded in the Patent and Design Act, for example, inventions that are against public policy or morality, or which may encourage offensive behavior, as this constitutes a ground on which an application may be rejected by the Patents Registry.

It follows therefore that plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products) cannot be patented.

This is also true for principles and discoveries of a scientific nature and inventions that are otherwise new but have been used publicly or in a public manner.

Aluko Adeyemi & Associates

For an application for patent to be successful;

  • A search must be conducted in the registry to ascertain the novelty of the invention.
  • The application must relate to only one invention but may include or have in connection with that invention, claims for a number of products or for a number of manufacturing processes or applications of those products.
  • The application must clearly and fully disclose the details of the invention, the processes involved and all that it entails, including plans and drawings.
  • It must include an address for service in Nigeria if the applicant’s address is outside Nigeria.
  • The application is to be accompanied by the prescribed fees as determined by the Registry from time to time.
  • Where appropriate, a declaration by the true inventor of the product supplying his name and address and requesting that he be mentioned as such in the Patent.
  • Where the application is submitted by an agent, it must be accompanied by a power of attorney authorizing the agent to act on behalf of the owner of the patent.

According to the Patent and Design Act, there may present situations where an applicant has a convention application, meaning where an application for patent is claiming priority on the basis of an earlier application to register the patent already made in a foreign country. It is a convention application if the foreign country is a signatory to a treaty or convention bordering on Intellectual property, to which Nigeria is also a signatory.

In such a situation, the applicant must ensure that the Nigerian application is made within 12 months of making the earlier application in the foreign convention country. Once the Nigerian application is successful, it will be treated and registered as having been made on the same date which the foreign application was made.

An applicant seeking foreign priority to his application will complete Form 1B and a written declaration showing:

  • The date and the number of the earlier application.
  • The country in which such application was made.
  • The name of the person who made it.

The applicant must, not more than 3 months after filing the Nigerian application, provide the Registrar a Certified True Copy (CTC) of the earlier application, certified by the appropriate industrial property office of the foreign convention country.

In essence, the global effect of applying for patent in one country that is a signatory to an international treaty or convention to which many other countries are signatories is that, applying in one convention country is equivalent to applying in those other convention countries.

Aluko Adeyemi & Associates

The following are some of the Conventions and Treaties that Nigeria is a party to:

  • Convention   Establishing   the World Intellectual Property Organization (WIPO)
  • Paris Convention for the Protection of Industrial Property
  • Patent Cooperation Treaty
  • Agreement on Trade-Related Aspects of Intellectual Property Rights
  • Patent Law Treaty
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, Budapest

A patent holder may in the alternative, consider the option of applying to have his patent registered under the World International Property Organization (WIPO) which currently has over 189 member states including Nigeria.

Some of the benefits of registering patent is that:

  • A patent gives the patent holder an exclusive right to their invention and as such, to stop others from using it.
  • A patent also gives the patent holder the right to institute an action in court against anyone who infringes on their exclusive right to the registered invention, thereby claiming damages (monetary reward) and/or an order of injunction restraining the offending party from further infringement on the rights of the patent holder.
  • A patent gives the patent holder the right to grant others a license to use such invention, or sell it, just like any asset. This can provide an additional source of revenue for a patent holder.

A Patent expires after 20 years from the date of the filing of the relevant patent application or where the patent holder fails to pay the prescribed annual fees after a grace of 6 (six) months following the year from which such fees are due.

Aluko Adeyemi & Associates

Who can make an application to register patent?

In accordance with the Act and rules of procedure, only accredited individuals or corporate entities can register patents on behalf of inventors. Any person interested in registering a patent will therefore need to hire the services of accredited agents for this process. 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.

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