Protection of Patents in Nigeria – A Review

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ABSTRACT

This work intends to review the patents system in Nigeria as one of the Intellectual Property (IP) Rights, which protects the property rights of persons who engage in creative activities that bring about innovations in the technological world. The patents system in both the developed and developing countries play an important role of stimulating inventions of industrial utility.

Despite the long existence of the Patents Law in Nigeria, the dearth of Nigerian case law and the paucity of materials on the subject militate against a proper understanding of the patents system in Nigeria. The main reason for such a deplorable state of affairs is the apparent poor technological development, which grossly limits the application for patent registration in Nigeria. Since patent is invariably associated with industrial and technological development, the lack of it will inevitably affect the development of the law of patents.

The work also seeks to examine the extent of protection, use/application and benefits of patents as a tool for technological advancement in Nigeria. Patents are susceptible to infringements; therefore, the statutory provisions for remedy are also examined. There are obstacles to achieving a robust protection of IP Rights in Nigeria especially with regard to patents. This work, will discuss some of these obstacles with a view to bringing about solutions that will help in protecting IP Rights in Nigeria.

INTRODUCTION 

Intellectual Property Law is concerned with fostering human innovation and creativity without unduly restricting dissemination of it. It concerns the full spectrum of human creativity: literature, the visual arts, music, drama, movies, computer programs, biotechnology, electronics, agriculture etc. 

Intellectual property is a collective name for all the rights that protect the creations of the mind and these rights are broadly categorized as:

Industrial Property: patents, trademarks, industrial designs and geographical indications.

Copyright: literary works (e.g. novels, poems and plays), films, music, artistic works (e.g. drawings, paintings, photographs and sculptures) and architectural design.

IP Rights serve three main purposes:

  • They provide the legal means to ensure exclusive financial returns on innovations.
  • They facilitate the public disclosure of full informational content of an innovation especially with regard to patents.
  • They provide the platform for creation of markets in technology.

Patent Law protects new, non-obvious and useful inventions such as machines, devices, chemical compositions and manufacturing processes. Unlike a copyright or a trade secret, a patent protects the owner against independent development of the patented subject matter.

A patent is a grant from a government that confers upon an inventor the right to exclude others from making, using, selling, importing or offering an invention for sale for a fixed period of time. It is a time-limited, exclusive right that is granted for an invention. This invention may be a new product or process and the patent protects the owner/inventor from others who may attempt to make, use, distribute or sell the invention without the patent owners consent.

The importance of patents as an Intellectual Property Right cannot be over-emphasized.

Mark Twain in 1889 said: That reminds me to remark, in passing, that the very first official thing I did, in my administration and it was on the very first day of it, too
was to start a patent office; for I knew that a country without a patent office and good patent laws was a crab and couldn’t travel any way but sideways or back ways.

The 16th President of America, Abraham Lincoln had this to say on patents: The patents system added the fuel of interest to the fire of genius’.

Korekiyo Takahashi, Japanese first commissioner of patents, stressing the importance of patents said: what is it that makes the United States such a great nation? and we investigated and we found that it was patented and we will have patents’.

Some of the advantages of patents are:

  • They guarantee a return on investments.
  • They facilitate foreign investments.
  • They provide assurance for investors in the manufacturing sector of the economy.
  • They are the vehicles needed to market inventions via licences and assignments.
  • They provide the means of importing patented products.
  • They help inventors to monitor the activities of their competitors thus, providing the platform for healthy business rivalries.
  • They are sources of technological knowledge.

There are three types of patents:

  • Design Patents

These are granted to protect a unique appearance or design of an article of manufacture.

  • Plant Patents

They are granted for the invention and asexual reproduction of a new and distant variety of plants.

  • Utility Patents

This is the main type of patent. It applies to machines, chemicals and processes. To get a utility patent, one must file a patent application that consists of a detailed description telling how to make and use the invention, together with claims (formally written sentence fragments) that define the invention, drawings of the invention, formal paperwork and a filing fee.

Evolution of Patents System in Nigeria

The first patent legislation enacted in Nigeria was the Patents Ordinance No. 17 of 1900 and the Patents Proclamation Ordinance No. 27 of 1900. These statutes applied to the colony of Lagos and Southern protectorate of Nigeria. Subsequently, similar provisions were made to apply to the Northern protectorate of Nigeria by virtue of the Patents Proclamation Ordinance No.12 of 1902. After the amalgamation of the Southern and Northern Protectorates in 1914 these laws were repealed and replaced with the Patents Ordinance of 1916, which was later renamed and re-enacted as the Registration of United Kingdom Patents Ordinance 1925 Cap. 182 Laws of the Federation of Nigeria and Lagos 1958. This meant that the Nigerian patenting system relied wholly on United Kingdom Patent Laws. There was no provision for the original registration of a patent in Nigeria. Protection for inventions and their use were subject to the United Kingdom Patents Ordinance of 1955. Monopoly rights granted under this Law favoured only the colonial inventors to the detriment of Nigerians, coupled with the global protection of patent monopolies under the Paris Convention on the Protection of Industrial Property 1883, which was tailored to protect the interests of the developed countries as against the national interest of the developing countries. Only patents granted in the United Kingdom were registrable or renewable under the Registration of United Kingdom Patents Ordinance 1925 Cap. 182 Laws of the Federation of Nigeria and Lagos 1958. The effect of this is that, registration conferred on the patentee monopoly rights as though the patent had been issued in the United Kingdom with an extension to Nigeria.

The application of British Patent Laws came to an end in 1970 with the promulgation of the Patents and Designs Decree No. 60 of 1970. By section 31(1) & (2) of the Decree, all previous UK statutory provisions (Patent Rights (Limitation) Act, 1968, the Patent Act 1949 and its amendments, the Registration of UK Patents Act) were repealed.

Patentable and Non-patentable Inventions in Nigeria

An invention is any new article, machine, composition, process or a new use developed by a human.

Patentable inventions are inventions in respect of which the law will grant a patent.

The provisions of Section 1(1) of the Patents and Designs Act (PDA) state that an invention can only be patented if it meets the following criteria:

  • It must be new;
  • It must be the result of inventive activity and
  • It must be capable of industrial application. 

The above criteria also apply to improvements on patentable inventions.

From the provisions of the PDA, there are three distinct qualifications for patenting an invention.

These are:

  • Newness or Novelty

For an invention to be considered new or novel it must not form part of the art or prior art. The art is defined as the art or field of knowledge to which the invention relates and the prior art means any knowledge made available to the public before the filing date of the relevant patent application.

By the provisions of Section 1(3) of the PDA, any publication made available to the public by oral disclosure, a document or a prior use will destroy the requirement of novelty and ultimately make an invention non-patentable.

In determining whether an invention is new or novel, the most important questions to be resolved are: has the same invention already been made public and is the step over what is already known significant enough to be regarded as novel? Whether these questions should be answered in the affirmative is a question of fact to be proved in each given case. Novelty is a question of whether an invention has been anticipated by a previous patent, a publication or use.

Going by the provisions of the PDA, the anticipating patent or publication could occur anywhere in the world. The use of an invention publicly in any location will automatically render that invention non-patentable because the use has anticipated patent and has thus destroyed novelty.

The question to be answered is, has there being any disclosure, publication or use at anytime and in any place which will amount to an anticipation of patent? If the answer is in the affirmative, then an invention will not be patented. 

In the English case of, Windsurfing International Inc. V. Tabur Marine (Great Britain) Ltd. the court held that prior use of a sailboard, had effectively anticipated a later patent and was therefore declared invalid for lack of novelty.

It is easy to satisfy the requirement of novelty; all that is needed is for an invention to be totally different from what is already known to the public. Any difference, no matter how little will be regarded as being novel.

  • It must result from an inventive step/activity (non-obviousness)

An invention results from inventive activity if it does not obviously follow from the state of the art, either as to the method, the application, the combination of methods, or the products which it concerns, or as to the industrial result which it produces.

What this means is that, at the point of creating the invention, it would have been considered non-obvious to a person skilled in that technology or art.

Some examples of obviousness are:

  • Obvious combination of features;
  • Mere selection of optimal materials from known materials;
  • Substitution of a material for analogous use and

Routine experiments.

  • The main requirement of an inventive activity is obviousness. Obviousness is a matter of fact to be decided in the light of all relevant circumstances. This is different from novelty, which is usually decided as a matter of construction and comparison of two documents.

The test of obviousness has always posed a serious challenge and the courts have therefore formulated the CRIPPS QUESTION to tackle this challenge.

The question states thus: ‘Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent which consists of the chemical literature available (a selection of which appears in the Particulars of Objections) and his general chemical knowledge, that he could manufacture valuable therapeutic agents by making the higher alkyl resorcinol;…?’

This question was posed by Stafford Cripps in the British patent case, Sharp & Dohme Inc. V. Boots Pure Drug Company Ltd. and approved by the Master of the Rolls, Lord Hanworth in the Court of Appeal’s judgment. If the answer was yes, the patent was invalid for lack of inventive step or obviousness (or, in the terminology used at the time, want of subject matter).

  • It must be capable of Industrial Application (Utility)

An invention is capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture.

This requirement, underscores the main objective of the patent system, which is to encourage and sustain industrial development.

The subject matter of a patentable invention is a manufacture and not a mere idea. It must be a process or a product. A mere discovery cannot be the subject matter of a patent. For it to qualify as a patentable invention, a patentee must do something extra. He must make some addition not only to knowledge but to previously known inventions and must use his knowledge and ingenuity so as to produce or make possible the production of either a new and useful thing or result or a new and useful method of producing an old thing or result.

Section 1(1)(b) of the PDA provides that an invention will also be deemed patentable if it constitutes an improvement upon an existing patented invention. What this means is that, despite the fact that the new invention is an improvement on an existing one, it must however, meet up with the demands of novelty, non-obviousness and utility for it to be patented.

In the case of James Oitomen Agbonrofo V. Grain Haulage and Transport Ltd., the plaintiff was granted patent by the court because his invention of an electric water boiler satisfied the requirements of novelty and utility (industrial application).

Non-patentable Inventions

A naturally occurring product cannot be patented even if its existence was unknown.

By the provisions of Section 1(4) of the PDA, a patent will not be granted for plant or animal varieties or essentially biological processes for the production of plants or animals (other than micro-biological processes and their products) or inventions the publication or exploitation of which would be contrary to public order or morality (it being understood that the exploitation of an invention is not contrary to public order or morality merely because its exploitation is prohibited by law).

The reason for the exclusion of these areas of economic and commercial activities from patentable inventions is because they touch on the very existence of humanity and therefore cannot be subjected to monopoly rights which patents confer.

The provisions of the PDA are quite archaic in this regard because research in the above areas has driven technological development in advanced countries especially in the areas of medicine and agriculture. A typical example is in the development of genetically modified foods usually referred to as GMO foods.

                        

Application for, Examination of and Grant of Patents

The rights conferred on a patentee are not automatic. They require the statutory formality of registration in order to bring them to effect. This is done through the office of the Registrar of Patents in the Commercial Law Department of the Federal Ministry of Industry, Trade and Investment.

The first step in the registration process is to make an application to the Registrar and the applicant must disclose his full name and address. If the address is outside Nigeria, he must provide an address outside Nigeria for service. The application shall also contain, a description of the relevant invention with any appropriate plans and drawings, a claim or claims and such other matters as may be required. The application must fully disclose the invention sufficiently to enable the performance of the invention.

When filing a patent application in Nigeria, the following documents must be filed in order to satisfy the requisite formal requirements:

  • Detailed information on the Applicant (this can be the inventor or a successor in interest). If the inventor is not the Applicant, then an assignment must be filed (assignments and voluntary licenses must be recorded at the Registry in order to be effective against third parties in Nigeria).

Power of Attorney.

  • An assignment from the inventor(s) or a statement by the Applicant justifying the right to the invention (if applicable).
  • A copy of the specification, including the claims, drawings and abstract (all in English).
  • A certified copy of the priority document, if necessary.

The prescribed fees.

  • A patent application is a set of papers that describe an invention and that are suitable for filing in a patent office in order to apply for a patent on the invention.

A patent application shall be in Form 1 and must relate to only one invention but may include in connection with that invention claims for any number of products, for any number of manufacturing processes and for the means of working that process.

It is therefore important that an inventor must clearly and adequately state the claims of his invention, which he desires to protect. A patent application must define the patent sought in patent claims that are fairly based on what is described.

This obligation was equally stated by Thorson P. in the case of Minerals Separating North American Corp. V. Noranda Mines that: ‘[T]wo things must be described in the disclosures of a specification, one being the invention, and the other the operation or use of the invention as contemplated by the inventor, and with respect to each the description must be correct and full.  The purpose underlying this requirement is that when the period of the monopoly has expired the public will be able, having only the specification, to make the same successful use of the invention as the inventor could at the time of his application.’

The reason for this obligation is because claims are the heart of patent law. Claims define the boundaries of the property right that the patent confers and they come at the end of the written description of the invention. They clearly define a patent owner’s property right.

The Registrar has a duty under the PDA to examine all patent applications to ensure that they are in conformity with the provisions of the PDA.

If an application satisfies all the requirements of the PDA, the Registrar will grant the application without any further examination of the fact of patentability or non-patentability of the subject matter of the application.

The right to the grant of patent in Nigeria is vested in the statutory inventor, employer, assignee or licensee.

Section 2(1) of the PDA defines a statutory inventor as the person who, whether or not he is the true inventor, is the first person to file or validly to claim a foreign priority for a patent application in respect of an invention.

This means that, a statutory inventor includes the true inventor but the true inventor may not always be the statutory inventor and any person who takes the first step to apply for a patent obtains the right of patent.

The Act has made adequate provision to protect the proprietary rights of the true inventor in order to forestall any fraud by providing in Section 2(2) that the true inventor is entitled to be named in the patent whether or not he is also the statutory inventor and the entitlement shall not be modified by contract.

This means that the right of a true inventor is inalienable and imprescriptible making it impossible to be changed by any agreement thereto.

Further to the above provision, Section 2(3) of the PDA states that, the applicant who is not the true inventor must of necessity obtain the consent of the true inventor (or his successors in title) before using his invention to file a patent application. If the applicant fails to comply with this requirement, all the rights acquired in the application will be lost and transferred to the original/true inventor or his successors in title.

Where an invention is made in the course of employment or in the execution of a contract for the performance of a specified work, the right to a patent in the invention is vested in the employer or in the person who commissioned the work.

This means that a patent will not be granted to an employee, he will only be entitled to a fair remuneration if the contract of his employment does not require him to exercise any inventive activity but has in making the invention used any data or means his employment has put at his disposal or the invention is of exceptional importance. The right to a fair remuneration is not modifiable by contract and it is enforceable by civil proceedings.

If it is not part of the employee’s job description to make an invention and he made one without using the materials or data of his employer, the employee will have the right to patent the invention. This was the view of the court in the English case of Greater Glasgow Health Boards’ application where one Dr. Montgomery who invented a spacing device for an ophthalmoscope at his private time appealed the decision of the Superintending Examiner and the Patent Court held that, his duty to treat patients did not extend to devising new ways of diagnosing and treating patients and since the invention was done outside his official working hours he was therefore entitled to the patent rights of the invention.

By the provisions of Section 24(1) of the PDA, rights acquired under a patent application are assignable. They may be assigned, transferred by succession or held in joint ownership. An assignment under the PDA must be in writing and signed by the parties. Such an assignment shall have no effect against third parties unless it has been registered and the prescribed fee paid.

The Court of Appeal per Justice Salami JCA (as he then was) restated these provisions in the case of Arewa Textiles Plc and ors. V. Finetex Limited.                         

Rights of a Patentee

A patent grants to a patentee, his heirs or assigns,

the right to exclude others from making, using, offering for sale, or selling the invention.

The grant of a patent gives an inventor monopoly rights for a limited period of time to make, use or apply the process or product of his inventive ingenuity. A patentee is entitled to the sole rights and profits arising from his invention during the life of a patent. The reason being to stimulate and protect technological inventions and innovations and to allow the patentee recoup his expenses within the prescribed period.

The following are rights enjoyed by a patentee upon grant of a patent:

A right to preclude others from certain acts.

  1. According to Section 6 of the Patents and Designs Act, a patent confers upon the patentee the right to preclude any other person from doing any of the following acts – 
  • Where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and
  • Where the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process, any of the acts mentioned above.
  1. A right to grant licences to work, to exploit the invention.

The first type of licence recognised under the Act is called ‘licences of right’. By the provisions of Section 10 of the PDA, a patentee who is not precluded from granting a further licence may apply in writing to the Registrar for the words ‘licences of right’ to be registered in respect of his patent and the Registrar shall enter the words accordingly in the Register and notify the entry. When this entry is made, any person can then apply subject to agreement between him and the patentee as to terms for licence exploitation of the patented product or process.

Where parties are unable to reach a consensus as to terms, the terms shall on the application of the person applying for licence be fixed by the court. On the application of the patentee, the Registrar may cancel the entry of ‘licence of right’ made by him if no licence has been granted or the grantee so agrees.

The grantee of a licence under ‘licences of right’ has no right to assign the licence or grant further licences under it because a patentee will use it.

Once the Registrar makes the entry of ‘licence of right’, any person who is desirous of working the patent has the right to obtain the licence and exploit the patent whether or not he agrees with the patentee as to terms unlike contractual licenses.

The second type of licences recognised under the PDA are ‘contractual licences’. The patentee may by a written contract signed by the parties grant a licence to any person to exploit the invention and such a licensee will be entitled to exercise any where in Nigeria all the rights of a patentee under section 6 of the PDA unless otherwise provided for in the contract. Under section 23(2) of the PDA, the grant must be registered and will have no effect against third parties until it is registered and registration may be cancelled at the request of the licensor, if the Registrar is satisfied that the licence has been terminated.

The third type of licences is called ‘compulsory licences’. This is contained in Part 1 of schedule 1 of the PDA. A compulsory licence confers on the licensee the same rights as the patentee except that he cannot grant further licences or embark on importation. Compulsory licences are given to avoid anti-competitive practices. They are also granted to prevent the abuse of a patent by the patentee or to respond to national health emergencies within or outside a country.

The application for grant of a compulsory licence must be made at any time after the expiration of a period of four years after the filing of a patent application or three years after the grant of a patent, whichever period last expires.

In making the application to Court for the grant of a compulsory licence, the applicant must satisfy the Court that he has attempted to obtain a contractual licence from the patentee and has been unable to do so within a reasonable time or on reasonable terms. The applicant would also have to offer guarantees that satisfy the Court that the applicant will work the patent to the extent that cures the deficiencies that had led to the application for compulsory licence.

The first schedule to the Act sets out the following grounds for the grant of a compulsory licence:

  • The patented invention, being capable of being worked in Nigeria, has not been so worked.
  • The existing degree of working, of the patented invention in Nigeria does not meet on reasonable terms the demand for the product.
  • The working of the patented invention in Nigeria is being hindered or prevented by the importation of the patented article.
  • That by reason of the refusal of the patentee to grant licences on reasonable terms, the establishment or development of industrial or commercial activities in Nigeria is unfairly and substantially prejudiced.

The court has power on the application of a patentee to cancel a compulsory licence, or on the application of either the patentee or licensee to vary the terms of the licence.

  1. The right to assign absolutely or conditionally or transfer by succession rights conferred by patents.

A person’s right in a patent application may be assigned, transferred by succession or held in joint ownership. An assignment must be in writing signed by the parties. An assignment or transfer by succession has no effect against third parties until registered and the prescribed fees paid. Joint owners of a patent may separately transfer their shares, exploit the patented invention but joint patentees may not grant a licence otherwise than jointly.

Infringement of Patents

Infringement is the unauthorized invasion of a patent owner’s exclusive rights as defined by the patents claims. Determining infringement involves interpreting the claim language, assessing the nature of the accused infringer’s acts and applying the interpreted claims to those acts. Only acts, such as unauthorized making of a device constitute infringement but it is commonplace to say that a device “infringes” when discussing the relationship of an accused device to a patent claim.

By the provisions of section 25(1) of the PDA, infringement of a patentee’s rights occurs when another person without the licence of the patentee does or causes the doing of any act which that other person is precluded from doing such as making, importing, selling or using the product or stocking it for purpose of sale or use or the act of applying the process or doing in respect of a product obtained directly by means of the process any of the forbidden acts.

An infringing activity must be of an industrial or commercial character as things done for private or domestic use or under the licence of the patentee or compulsory licences or activities of governmental organisations do not constitute infringement. The use of a patent after it has come into the public domain will not also constitute an infringement but natural and juristic persons will be adjudged liable for any unauthorised violation of the patentee by awarding him some relief.

In the case of Beddings Holdings Limited V. Independent National Electoral Commission INEC. & 6 Ors. the plaintiffs, invented a transparent ballot box which is to be used for the conduct of elections and obtained Patent and Industrial Design Rights, RP 12994 and RD 5946 respectively in 1998 for their invention. The defendants INEC, licensed the importation of transparent ballot boxes to two Nigerian companies (also joined in the suit) for the conduct of the 2011 General Elections without seeking and obtaining the requisite license from the plaintiffs. Hon. Justice A. Bello of the Federal High Court while delivering judgment in the suit held that, the Patent and Industrial Design Rights held by the plaintiffs, Beddings Holdings Limited had been infringed upon by INEC when it gave an unauthorized license of importation to the two companies.

The Federal High Court is vested with the original and exclusive jurisdiction for entertaining infringement actions brought under the PDA by virtue of Section 251(1)(f) of the 1999 Constitution of the Federal Republic of Nigeria.

Order 53, Rule 10 of the Federal High Court (Civil Procedure) Rules, 2009 provides that an action on infringement of a patent shall be commenced by a writ of summons. Previously, a writ on its own could be issued, however a writ of summons is no longer accepted for filing, unless accompanied by the following documents:

A statement of claim;

  •  Copies of every document to be relied on at trial;
  •  List of every witness to be called at trial; and
  •  A statement on oath of witnesses (also known as written depositions).

Upon service of the above-mentioned processes, the defendant shall, within thirty days (unless the court grants leave to the contrary), serve the following processes on the plaintiff:

a statement of defence;

  • copies of every document to be relied on at trial;
  • a list of witnesses to be called at trial; and
  • a statement on oath of witnesses (also known as written depositions).

Prior to the commencement of trial, the plaintiff shall, within one month after service of reply, take out a summons for direction as to the following:

Service of further pleadings or particulars;

  • Discovery of documents;

Making of admission;

  • Service of interrogatories and answers in relation thereto; and
  • Matters relating to taking expert knowledge by affidavit evidence.

The parties will then proceed to trial, having followed the due processes as explained above and upon conclusion of the trial, a judgment must be delivered within 90 days.

Remedies for infringement

In an action for infringement of patent, all such reliefs by way of damages, injunctions or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of the infringement of other proprietary rights.

The remedies or reliefs available to a person whose patent rights have been infringed are:

Injunctions

  • Preliminary Injunction – Preliminary injunction restrains an accused infringer while a suit is pending to prevent irreparable injury to the patent owner.

Preliminary injunctions are available and usually granted at the discretion of the courts on the following conditions:

The existence of a legal right;

a substantial issue to be tried;

  • Balance of convenience: the court considers this where the violation and not the existence of a plaintiff’s right is denied;
  • Irreparable damage: this is usually granted where the applicant is able to show that he will suffer irreparable damage or injury if the defendant’s acts are not restrained;
  • Conduct of the parties: here the court will consider the conduct of the parties.  Thus, where the applicant is in substantial breach of contract he cannot get such order against a defendant alleged to be in breach of the same;

Undertaking as to damages;

Likelihood of success on the merits and

  • Public interest.
  • Permanent injunctions – They are granted if the claimant is successful at trial. That is where he has established his right and there has been an actual or threatened infringement of that right.

In the case of James Oitomen Agbonrofo V. Grain Haulage and Transport Limited the court granted the plaintiff an injunction restraining the defendants whether acting by its directors, officers, servants, agents or otherwise from further infringing the plaintiff’s registered patent.                                                                                                                          

Damages

  • Compensatory damages. These may include the patentee’s lost profits, an established royalty and a reasonable royalty.
  • Increased damages for willful infringement. The court will not increase damages if the infringer acted in good faith, for example without knowledge of the patent or with a reasonable belief he did not infringe or the patent was invalid.

The main objective for the award of damages is to compensate the plaintiff for harm caused him by the legal injury.

In the case of Pfizer Inc. V. Polyking Pharmaceutical Limited & Anor. the defendants were found guilty of infringing the patent rights of the plaintiffs by importing for sale, ROSSIDEN CAPSULES which contained the same compound PIROXICAM as that of the plaintiffs. The court awarded damages in the sum of N23, 902,328.74 (Twenty three million, nine hundred and two thousand, three hundred and twenty eight Naira, seventy four Kobo).

In a similar case, Pfizer Limited V. Tyonex Nigeria Limited and Ebamic Pharmacy Limited, Pfizer filed a suit against two pharmaceutical companies in Nigeria, Tyonex Nigeria Limited and Ebamic Pharmacy Limited for importing a drug from Turkey and selling it under the name “AMLOVAS”.

According to Pfizer, the active ingredient contained in Amlovas was “Amlodipine Besylate” which was invented by pfizer and patented in Nigeria under Patent No. RP 9970. Delivering judgement in the suit, Justice B.B. Aliyu of the Federal High Court ruled that the two Nigerian companies had infringed on Pfizer’s patent rights by importing and selling Amlovas which contained Pfizer’s patented product Amlodipine Besylate and which Pfizer sells under the brand name, NORVASC. The court subsequently granted an injunction and awarded damages in favour of Pfizer.

                                                                                                                

Account of profits

In the case of James Oitomen Agbonrofo V. Grain Haulage & Transport Limited the court ordered the defendants to give the account of the profits made from their infringing activity. The court awarded this relief because the plaintiff failed to prove damages of N10 million which he had claimed.    

                                                                                                                   

Delivery up

The court in appropriate cases will order that all infringing articles in the possession, custody or control of a person found guilty of infringing a patent be delivered up for destruction.

An action for infringement of patent can be brought at any time. There is no time limit for bringing an action for infringement of patent.

Some possible defences available to an alleged infringer of patents include:

An assertion that the plaintiff is not entitled to sue.

  • In the case of Beijing Cotec New Technology Corp./Churchbells Pharmaceuticals Ltd. V. Greenlife Pharmaceuticals Ltd. & Ors. A Federal High Court presided over by Justice C.P.N. Senlong had earlier ruled that the plaintiffs were the owners of a registered Patent No. 13566 and issued an exparte order restraining Greenlife Pharmaceuticals Ltd. from making, importing or selling the anti-malaria drugs “ALAXIN” which was manufactured from “DIHYDROARTEMSININ”. The defendants were able to provide counter evidence, which led the Federal High Court, presided over by Justice Mohammed Shuaibu to vacate the order.

Invalidity of the patent.

  • A defendant can assert that the patent is null and void because it is not new, lacks industrial applicability, is a non-patentable matter, that the descriptions as contained in the patent specifications do not disclose the relevant information in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates or that the claims do not define the protection sought or that they go beyond the limit of the protection.

Experimental or Personal Use.

  • The unauthorised making and using of a patented process or product is not infringement if it is done solely for research or experimentation. If it is for commercial use it will constitute an infringement.

Implied license.

  • A license is a defence to a patent infringement charge because the definition of infringement includes absence of the patent owner’s authority.

Exhaustion/lapse of patent rights.

                                 

  • Impediments to patents protection in Nigeria
  • Lack of specialized patent courts and Intellectual property IP-trained judges in Nigeria.

The provisions of Section 26(1) of the PDA vest the Federal High Court with original and exclusive jurisdiction to hear and dispose of IP matters. The court is however not specialized to entertain only IP cases. This is a serious impediment to the development of intellectual property in Nigeria. By the provisions of Order 53, Rule 11(1) of the Federal High Court (Civil Procedure) Rules, 2009 the Court may, on or without the application of either party, appoint an expert to assist it by inquiring or reporting on any question of fact. The reverse is the case in the UK and the U.S., which have patent courts that deal only with patent matters. If we have judges who are trained in Intellectual Property Law and courts dedicated solely to IP cases there will be timely adjudication of IP cases, accurate and consistent rulings.

Lack of criminal sanctions for infringements.

  • In Nigeria, there is no criminal sanction for the infringement of patents. Under Section 25(2) of the PDA, a patent owner whose patent rights have been infringed may bring a civil action against the infringer for damages, injunction and accounts.

This is unlike the U.S. where patent infringements attract criminal sanctions.

There has being an attempt to remedy this situation through the proposed Intellectual Property Bill, titled: A Bill for an Act to provide for the Establishment of the IP Commission of Nigeria, Repeal of Trademarks Act CAP T13 LFN 2004 and Patent and Designs Act, CAP P2 LFN 2004 and make comprehensive provisions for the registration and protection of trademarks, patents and designs, plant varieties, animal breeders and farmers’ rights and other related matters.

The Bill makes provision for criminal sanctions for patent infringements by its Articles 161 and 162. The sanctions include imprisonment and a fine.

Lack of a patenting culture amongst Nigerian Researchers.

  • There is a dearth of patenting of inventions by local researchers for some of the following reasons: poor culture of patenting, lack of a specific law on IP creations and lack of awareness of the procedure for patenting.
  • Government’s passive involvement in Intellectual Property Law and inadequate policies on Intellectual Property.
  • The law in Nigeria requires only a formal examination of patent granted under the PDA and makes no requirement for substantive examination. A substantive examination will require that an invention sought to be patented will be measured against the state of the art, that is the current state of knowledge as is existing in the field concerned. It involves using current technology to access the technology being patented. Most patent practitioners are not abreast with the current technology, which results in a lack of absorptive technology. Absorptive technology has been defined as the ability to tap into the world technology. The lack of expert patent examiners is one of the biggest challenges confronting patent rights in Nigeria. Patent examiners in Nigeria are not experts in the fields of science, engineering and technology. They are not required to have advanced degrees or trainings in these fields. The result is that rather than carrying out substantive examination the examiners only do a cursory research of the registry records in order to locate prior art. In addition to this is the fact that there are very few training modules or patent examination guidelines that have been developed to educate patent examiners in Nigeria.

Dearth of litigated cases for patent infringements.

  • There are few legal precedents on patents infringements in Nigeria because many patents infringements are settled out of court. This has affected case law in this area of Law.

                                       

  • The enactment of the Patent and Designs Act was not based on any policy consideration because none existed at the time of enactment but was fashioned on the United International Bureau for the Protection of Intellectual Property (BIRPI) Model Law for developing countries. Nigeria at that time was yet to formulate any national economic, industrial or technology development Policies. This has obviously caused a low level of implementation of the Act.

                               

Duration, Lapse and Surrender of Patents

In Nigeria, patent monopoly rights relate to products and processes and must expire at the end of the 20th year from the date of the filing of the relevant patent application.

A patent shall lapse if the prescribed annual fees are not paid in respect of it but a period of grace of 6 months is allowed for the payment of the fees and if the fees and any surcharges are paid within that period, the patent shall continue as if the fees had been duly paid. The expiration or lapse of patent shall be registered and notified. When a patent lapses, its information enters the public domain and thus can be used by anyone without reference to the patentee.

A patentee may surrender a patent by a written declaration addressed to the Registrar. The surrender may relate to all or any of the claims made by the patent. It shall be registered and notified and shall have no effect until registered. Where it relates to a patent as to which a contractual licence or licence of right is registered, it shall be registered only if it is accompanied by the written consent of the licensee.

Securing Foreign Priority

Under the PDA, the Minister (of Trade and Investment), with a view to the fulfillment of a treaty, convention or other international arrangement or agreement to which Nigeria is a party, may declare by order in the Federal Gazette that any country specified therein is a convention country for the purposes of the section. When such a declaration is made, a patent application, if an earlier corresponding application for the protection of an invention has been made in that convention country shall be treated as having been made. The earlier date is what is called “foreign priority”. This foreign priority shall not apply where the earlier application was made more than 12 months before the application in Nigeria.                                              

                          

The Paris Convention on Protection of Industrial Property

The Paris Convention for the Protection of Industrial Property “Paris Convention” or “Convention” 1883 is one of the first, and arguably most important, of the various multilateral treaties protecting intellectual property. It addresses patents, trademarks, unfair competition and the related industrial property of industrial designs, utility models and geographical indications. The Convention secures for nationals, those domiciled, and those having a real and effective industrial or commercial establishment within a country party to the Convention, the important procedural advantages of national treatment and priority rights in respect of patents and trademarks. The Convention for the most part neither defines the rights it purports to protect nor guarantees any minimum level of protection for these rights. The scope and quality of the protection member nations are obligated to provide under the Convention are, in most instances, left to domestic legislation and tribunals to develop and define. While the enumerated protections serve primarily industrial interests, the Convention allows party states to retain some protectionist legislation, in the form of limited working requirements and compulsory licenses. Prior to the Convention, those wanting protection for inventions in multiple countries needed to file patent applications in all such countries simultaneously, and needed to do so prior to any publication or exhibition of the invention at a trade fair, in order to avoid the unintentional loss of eligibility of patent protection in one or more of the countries. The challenge then facing inventors caused many who had been invited to the Austria-Hungary international exhibition of inventions held in Vienna in 1873 to be unwilling to exhibit their inventions, leading to the enactment of a special Austrian law that secured temporary protection to exhibitors and to the Congress of Vienna for Patent Reform, convened that same year.  The Convention from the time of its enactment on March 20, 1883 has undergone several amendments: Rome 1886, Madrid 1890, Brussels 1897 and December 14, 1900, Washington June 2, 1911, The Hague November 6, 1925, London June 2, 1934, Lisbon October 31, 1958, Stockholm July 14, 1967 and finally September 28, 1979.

Paris Convention has imposed restrictions on the sovereignty of member nations. These restrictions such as national treatment for citizens of member countries, right of priority, absence of adequate provisions for remedying possible monopoly rights granted the patentee, minimum standard requirements in Articles 2, 3, 4 and 5 of the convention circumscribe and dilute whatever freedom that is granted to the state parties to the Convention. The combined effect of all these obnoxious provisions is to strengthen the position of the patentee against national interests. About 95 percent of patents needing protection belong to the industrialized nations.

The Nigerian Patent Law has by and large followed the basic principles of the Paris Convention in propagating the monopoly rights of the patentee to the detriment of national interests. However, the PDA excludes from the field of patentable inventions areas envisaged by Article 3 of the convention. These areas are branded non-patentable inventions under Section 1(4) of the PDA. The governments of developing countries have also commenced to subject patent licensing agreements to scrutiny and control by institutions established for these purposes with a view to mitigating and/or eliminating the impact of the negative provisions inherent in the Paris Convention. The National Office is entrusted with this role and function in Nigeria.

Recommendations

There is an urgent need to improve and expedite civil judicial enforcement procedures in order to ensure timely adjudication of patent infringement matters. Some patent matters take many years to reach a final verdict. A typical example is the case of  Rev. (Dr.) C.J.A. Uwemedimo and Comandclem Nigeria Ltd. V. Mobil Oil Producing (Nig.) Unlimited which has lasted over a decade.

Nigeria should follow the trend in other jurisdictions by setting up IP Courts that will handle only IP matters. These courts should be presided over by IP-trained judges which will ensure the expeditious handling of IP rights infringements. This will definitely strengthen the protection of IP rights through the timely delivery of judgments.

Most Nigerian companies do not make any efforts to file patents internationally. Patents registered in Nigeria offer only territorial protection, so it is important that companies take advantage of the priority filing by filing internationally. One option is to file under the Patent Cooperation Treaty (PCT), which will facilitate the application process, and give companies valuable patentability such as the PCT international search report and the Written Opinion of the International Searching Authority, to base their decision as to whether or not to further pursue patent protection.

Under the PDA, patents on employees’ inventions are automatically assigned to the employer. The usual practice is for employers to reward its employees who have come up with useful inventions with monetary ccompensation. The problem with this strategy is that such employees are often not compensated for subsequent use of the patent on the grounds that the employee made use of the employers’ data. The provision of the PDA on fair remuneration based on the employee’s salary and the importance of the invention is problematic because, firstly, the quantum of the remuneration that will be regarded as fair is subjective depending on the individual concerned. Secondly, the salary of the employee-inventor may be meager compared to the pecuniary benefit accruing from the invention; this may work injustice to the employee. The importance of the invention may not be immediately evident, it may acquire great importance over time and yield so much money and the true inventor will be at a loss because he is paid once. However, it is suggested that the quantum of compensation to be given to the employee–inventor in such circumstances should be an agreed percentage between the employee and employer, which should be paid annually from the profit that accrues from the invention.

Conclusion

The necessary tool for technological development is invention and inventive activities. The mechanism for their protection is patent or by the grant of Certificate of Invention. Patents differ from Certificate of Invention because they confer the exclusive right to make, use and sell an invention on a patentee while a Certificate of Invention permits the inventor to collect royalties but does not permit the inventor to exclude others from practising the invention. Patents confer enormous commercial advantage on a patentee and they are inevitable tools for technological development and advancement for every nation. They provide incentives for new inventions and thus must be protected by the enactment of good laws that will regulate the patents system. The PDA has been in existence for several years without tangible changes; this anomaly must be addressed to provide a robust legislation for the protection of patents in Nigeria.

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