CRITERIA FOR PATENT IN NIGERIA

A patent is a government authority or license transferring an exclusive right or title for an invention for a particular period of time.

CHAMAN LAW FIRM

6/7/2022 4 min read

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CRITERIA FOR PATENT IN NIGERIA

A patent is a government authority or license transferring an exclusive right or title for an invention for a particular period; the exclusive right to hinder others from making, using, or selling an invention in the country it is obtained without permission or consent during the lifespan of the patent. It gives exclusive monopoly of the use of that invention at the discretion of the inventor.

CRITERIA FOR THE REGISTRATION OF PATENT IN NIGERIA

According to The Patent and Design Act (the “Act”) the criteria for registering a patent in Nigeria are as follows:

NOVEL INVENTION

New invention is of importance and it must not have already been patented, it must also have never been known, used or advertised.

An invention can be patented if it constitutes an improvement upon a patented invention. An inventor is usually advised to keep his/her invention secret pending the registration of the invention else such inventor plays with the risk of dis-confirming his own patent by prior publication.

The test of newness under Nigeria law is universal. The exposure, that defeats newness, is not restricted to the geographical boundaries of the country. According to Section 1(3) of the Act, where an invention has been put to use or published (orally or in writing), the invention has been anticipated and is therefore no longer new and a patent issued in respect of such anticipated subject matter may be invalidated for this reason. In the case of a written publication, it could be a book, journal or an earlier patent application, as long as the document was ordinarily available to the public. Newness may also be defeated by prior use, i.e. use or exercise in a public manner. Where, however, the use is secret or experimental, it may not defeat newness.

CAPABLE OF INDUSTRIAL APPLICATION

The invention must be equal to being made or used in a particular sector. This means that the invention should be more than just an idea, a scientific theory, an aesthetic creation, a computer program but must also be useful in solving a problem. Public

POLICY AND MORALITY

The invention must not be against public policy or morality as this forms a reason for an application to be rejected by the Patents Registry (the “Registry”).

ONE INVENTION PER REGISTRATION

The application to be made to the Registry must refer to only one invention but may include another invention that has a connection with that invention.

FULL DESCRIPTION

In addition to the provisions of Section 1 of the Act, the Registry posits that the application must clearly and fully provide the details of the invention, the processes involved and all that it entails.

PROCEDURE FOR THE REGISTRATION OF A PATENT IN NIGERIA

When the criteria for the registration of a patent as aforementioned have been met, an application shall be made to the Registrar of Patents and Designs (the “Registrar”) 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 refer to one invention only;

The application is to be followed by the prescribed fees as decided by the Registry from time to time;

Where appropriate, a declaration by the true inventor of the product providing his name and address and asking that he be mentioned as such in the Patent;

Where the application is submitted by an agent, a power of attorney is to be done to that effect.

WHO CAN REGISTER A PATENT?

Under Nigerian law, only accredited individuals 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 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.

BENEFITS OF REGISTERING A PATENT

The patent holder has the exclusive right to hinder others from using the registered invention or to decide to allow the use of the invention by other person’s under agreed terms.

The patent holder has the right to institute a legal action against anyone who infringes on the registered invention and to make a claim for damages.

A patent gives the inventor the exclusive right to commercially exploit the invention.

The Court may also in grant injunctive orders preventing the offending party from infringing further 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 business.

DURATION OF A PATENT IN NIGERIA

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

CONCLUSION

There is a misunderstanding about registering ideas and dreams as novel inventions, it is therefore very important to bear in mind that a patent license cannot be obtained for ideas and dreams.

The Act does not also grant patents in respect of certain area of inventions. These include inventions in relation to plants, animal varieties, biological processes for the production of plants or animals, except microbiological processes and their product. These exempted aspects of the law have resulted in setbacks in the areas of medical and agricultural advancement in the economy.

The Patents and Design’s Act, 1971, as same being 46 years old cannot be seen as capable anymore of meeting the current needs of Nigerians regarding the protection of their intellectual property rights. This is because the law has failed to provide solutions to some of the challenges faced by inventors during the process of registering a patent, such as the absence of a definite time line for the registration process due to the administrative bottle necks and bureaucracies that are in similar registration processes in most government agencies.

Patent on information technology especially media applications has created billionaires around the world and a stronger Nigerian Law can only help further development locally.

NB: This article is not a legal advice, and under no circumstance should you take it as such. All information provided are for general purpose only. For information, please contact chamanlawfirm@gmail.com

WRITTEN BY CHAMAN LAW FIRM TEAM

EMAIL: chamanlawfirm@gmail.com

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