WHAT IS A PATENT?
A patent is a government authority or license vesting an exclusive right for a period of time, especially the solitary right to exclude others from making, using, or selling an invention in the country it is obtained without permission or consent during the lifespan of the patent.
Patents confer legal protection on the outcome of an inventive work in varied and sundry areas essential to development and general progression. Research and development activities that bring about new invention are all eligible to receive this protection. Such protection enables the patentee to prevent others from taking advantage and illicit benefits from the invention, in a manner that is not authorized by the patentee or permitted by the law.
REQUIREMENTS FOR THE REGISTRATION OF PATENT IN NIGERIA
The criteria and requirements for registering a patent in Nigeria is provided in The Patent and Design Act, Cap P2 LFN 2004 as follows:
Novel and Innovative Invention
The law requires that the invention must be new and must have an imaginative phase which is not apparent or palpable to anyone with erudition and experience of the subject. The technology must also never have been recognized, used or made public.
An Improvement upon an already existing Patent Invention (Inventive Activity)
While novelty and innovation deals with the variance between a claimed invention and prior art, the prerequisite of inventive activity deals with the extent of the difference between what was previously known and what the inventor claimed to have created.
Essentially, there must have been a noteworthy involvement to the state of art, in the sense that what is claimed, as invention must not be obvious. Section 1(2) (b) of the Act provides that an invention results from inventive activity if it does not obviously follow from the original design.
Consequently, to qualify for the grant of a patent, the innovative step taken by the new inventor must not be the one that is obvious, or which follows rationally from available information about the product or process. The inventor is required to have duly exercised his inventive aptitude in a manner considered satisfactorily ingenious and original to justify and rationalize the grant of the patent; otherwise, the patent may be nullified on the ground of lack of inventive activity.
In summary,hort, for the an inventor to meet the requirement of inventive/innovative step, the inventive step must be not evident or basic, but the product of the inventor's creativity.
Inventors are generally advised to keep their invention secret until the invention has been registered, or that inventor may be at risk of nullifying his or her own patent by prior publication.
Capable of Industrial Application
The invention must be capable of being made or used in some kind of industry. Industry in this context is in its widest form, essentially any feasible or practicable form distinct from being fully intellectual. This suggests that the invention goes beyond just an idea-, a scientific theory, an aesthetic creation, a computer program- but must take the practical form of an apparatus, product or a device.
Essentially, the innovation must not be, a scientific or mathematical discovery, theory or method, a literary, dramatic, musical or artistic work, a way of performing a mental act, playing a game or doing business, the presentation of information, or some computer programs, an animal or plant variety, a method of medical treatment or diagnosis.
Public Policy and Morality
The Patents Registry (the "Registry") may choose to reject an application for registration if it is of the opinion that the invention goes against public policy and morality.
Single Invention per registration
The application made to the Registry must be in regard 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.
Complete Description of Invention
In accordance to the provisions of Section 1 of the Act, the Registry prescribes that an application must precisely and fully disclose the details of the invention, the processes involved and all that it entails.
PROCEDURE FOR REGISTRATION OF PATENTS
The chief legislation governing the registration of patents in Nigeria is the The Patent and Design Act, Cap P2 LFN 2004Patents and Designs Act 1970. The agency that manages the grant of patents in Nigeria is the Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment.
The procedure to be compiled with to fully secure a patent protection in respect of an invention/innovation is prescribed in the Act. It is imperative to state that the right to a patent in respect of an invention is vested in the “statutory inventor”.
Where multiple persons are involved in the composition of an invention, they may apply jointly for a patent right in respect of that invention. However, the person who has merely aided in doing work linked with the development of an invention without contributing any inventive activity is not an inventor.
The Act additionally endeavors to balance the interest of parties. Under its provisions, where an invention is made in the course of employment or in the execution of a contract for the performance of designated work, the right to a patent is vested in the employer, or as the case may be the person who commissioned the work.
The question as to who has the right to a patent under the Act is ergo based on the question of whether or not the invention was made “in the course of employment, or in the execution of a contract for the performance of a designated work”.
The Act only provides that in such circumstance, the employee inventor will only be entitled to wages as compensation.
When the requisite conditions making an invention eligible for a patent have been met, an application can be made to the Registrar of Patents and Designs and shall contain the following:
The applicant's full name and address, and if the address is outside Nigeria, there should be an address for service within Nigeria;
A description of the relevant invention with any appropriate plans and drawings;
A claim or claims (for any number of products, processes or applications), however, an application shall relate to one invention only;
The application is to be accompanied with 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 a requesting that he be mentioned named as such in the Patent;
Where the application is submitted by an agent, a power of attorney authorizing the donee of the power of attorney to that effect must be accompanied as well.
WHO CAN REGISTER A PATENT?
In Nigeria, only accredited persons or companies can register patents on behalf of the inventors. Any person interested in registering a patent will therefore need to hire the services of accredited agents for this process.
The handling and supervision of the grant of patents is vested in Trademarks, Patents and Designs Registry, Commercial Law Department, Federal Ministry of Industry, Trade and Investment,. where all applications are made to the Registrar of Patents.
Applications are made to the Registrar as mentioned earlier.
ADVANTAGES OF REGISTERING A PATENT
A patent gives the patent holder the right to stop others from using the registered invention or to choose to permit the use by other persons of such invention under agreed terms.
A patent also gives the patent holder the right to bring a legal action against anyone who infringes on the registered invention and to make a claim for damages.
The Court may also in appropriate circumstances, grant injunctive orders 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, as with any asset. This can provide an important source of revenue for your a business.
LIFESPAN OF PATENTS
A Patent expires after 20 years from the date of the filing of the relevant patent application.
The Act also provides for the expiration of a patent where the a patent holder fails to pay the prescribed annual fees after an extension of 6 (six) months following the year from which such fees are due.
UNIVERSAL EFFECT OF REGISTRATION
The Act provides that if a Nigerian application is made within 12 (twelve) months of the making of the earlier application in a foreign country in which Nigeria has signed a treaty or a convention, 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 to his application is expected to provide the following details:
· The date and number of the earlier application;
· The country in which such application was made;
· The name of the person who made it.
Furthermore, not more than 3 (three) months after filing the application, the applicant must furnish provide the Registrar with a copy of the earlier application, certified correct by the appropriate industrial property office of the foreign convention country.
It is important to seek foreign priority because where a person has applied for the protection of an invention by an application which is in accordance with a treaty, convention or other international arrangement or agreement subsisting between any two or more convention countries, such is equivalent to an application duly made in any one of those convention countries.
Also, where a person applies for the protection of an invention in accordance with the law of any convention country, such registration is equivalent to an application duly made in that convention country., Hhe shall be deemed to have applied in each of those convention countries or in that convention country, as the case may be.
Some of the Conventions and Treaties Nigeria is a party to are listed as follows:
Patent Cooperation Treaty (8th May, 2005)
Patent Law Treaty (28th April, 2005)
Convention establishing the World Intellectual Property Organization (WIPO), (9th April, 1995)
Paris Convention for the Protection of Industrial Property (2nd September, 1963)
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, Budapest (Adopted on 28th April, 1977, and Amended on 26th September, 1980).
Agreement on Trade-Related Aspects of Intellectual Property Rights (1st January 1995).
A patent holder desiring to protect his invention in specific countries which are not signatories to the relevant conventions or treaties will need to make such application in the country he so desires as industrial property rights are specific to countries.
A patent holder may 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
There is a mundane misconception about registering conceptions and ideas as novel inventions., Iit is very paramount to know that a patent license cannot be obtained for conceptions and dreams.
We hope the information provided herein is helpful. Should you require further information please do not hesitate to contact us.