QUALIFICATION AND RIGHTS OF AN INVENTOR UNDER PATENT LAWS IN NIGERIA

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Sandra Eke                      Franklin Okoro

  1. Introduction

The inception of novel and creative ideas often leads to new inventions and innovations. Inventions are a confirmation of the boundless ingenuity inherent in the human imagination and date back to the pre-industrial age, where the early men (hunter gatherers) handcrafted various farming, agricultural, and hunting tools to survive. The industrial age marked the popularity of mechanical tools and machines and led ultimately to the introduction of the concept of technology. An example is how James Watt’s steam engine played a pivotal role in transforming industries, transportation, and society during the Industrial Revolution. The Watt engine powered factories and mills, providing a reliable and efficient power source. In comparison, the early 20th century to the 21st century witnessed the evolution of inventions, from the creation of automobiles, information technology, and telecommunication innovation to the development of computers, the internet, advanced artificial intelligence, and sophisticated digital technologies. These discoveries influenced industries and various aspects of human existence in many eras during these stages.

Developing a concept into a viable invention involves creativity, research, hypothetical testing, legal protection, market analysis, production, marketing, and continuous improvement from inception to entry into the commercial space. Amongst these phases of creating an invention, the area of legal protection will be explored in this article from the viewpoint of the eligibility requirements and rights of an inventor in securing legal protection for an invention under requisite patent laws in Nigeria.

  1. Eligibility Requirements and Rights of an Inventor under Nigeria Patent Laws

To credit an innovator or creator of a new, inventive, and industrially applicable product or process, a form of legal protection known as a Patent, is usually granted to such innovator or creator to guarantee monopoly of use and commercialization for limited time before such rights go into the public domain. Under patent laws, such innovator or creator is described as an inventor.

The Nigeria Patents and Designs Act (1971), (the Act), governs all patent matters including the eligibility and rights of an inventor in securing the grant of letters patent or certificate of patent registration from the Nigeria Patents Registry.

  1. Eligibility and Rights of an Inventor during Patent Registration Process

Section 2 of the Act specifies the types of patent applicants that are eligible to file for a patent protection in Nigeria and they are described as statutory inventors and/or true inventors. A statutory inventor is described as a person or corporate entity who is the first to file, or validly to claim a foreign priority for a patent application, whether or not he/she is the true inventor, and thereby vested with the right to a patent upon grant of letters patent in respect of the invention.

The Act also recognizes the position of the true inventor (the original inventor) who is entitled to be named as such in the patent application process and letters patent, whether or not the individual or corporate entity is also the statutory inventor, and the entitlement in question shall not be amendable by contract.

It is worthy of note that an inventor could either be an individual or corporate entity to further qualify as a patent applicant under the Nigeria patent laws. A statutory inventor and true inventor can be the same individual or corporate entity, or they can include an independent individual or corporate entity and/or vice versa.

Where a purported statutory inventor gets the key parts or crucial elements of a patent registration application from a true inventor’s invention without their permission, then the rights to that patent registration application and any letters patent resulting from it are automatically deemed to revert to the original inventor or their rightful successor, who holds the title to the invention.

  1. Eligibility and Rights of an Inventor during Employment or Work Contract

Under the Act, if an invention is created during employment or under a specific work contract, the rights to the patent typically belong to the employer or the person who commissioned the work. However, if the inventor is an employee and the inventor either uses resources provided by the employment or is exceptionally significant, then the employee is entitled to a fair compensation, considering the employee’s salary and the importance of the invention. Notably, this entitlement cannot be changed by a contract and can be enforced through legal action, if necessary, via a civil suit.

However, an individual or corporate entity would not be regarded as an inventor under the Nigeria Patent laws if the individual or corporate entity has merely assisted in doing work connected with the development of an invention without contributing any inventive activity.

Rights of a Patentee

After the grant of the letter patent, a statutory inventor is regarded as a patentee, that is, an individual or corporate entity to whom letters patent has been granted, and the following patent rights arise and are only exercisable by the statutory inventor or successor-in title:

  1. For or a product patent, a patentee has the right to prevent others from making, importing, selling, using, or stocking the patented product for sale or use;
  2. For a process patent, a patentee has the right to prevent others from applying the patented process or performing actions on a product directly obtained from that patented process.

Nonetheless, these patent rights apply only to acts conducted for industrial or commercial purposes.

It is noteworthy that after a patented product is lawfully sold in Nigeria, the scope of patent rights already given to another patent holder of a similar product does not cover activities done on the sold product unless the granted scope of patent rights explicitly outlines a distinct application for the product, such distinct application within the granted scope of patent rights remains reserved for the patent holder. The idea of first sale in Nigeria within this context is related to the exhaustion of patent rights and the Nigerian patent law is silent on exhaustion of patent rights. However, in practice, the concept of national exhaustion of patent rights means that once a patented product is lawfully sold in Nigeria, the patent holder cannot control or claim rights over subsequent actions or further sales involving that specific product within the country. This, therefore, allows for a free market and enables competition among various sellers of the same product, benefiting consumers by potentially leading to lower prices and increased accessibility.

Significantly, the Act provides for the preservation of vested rights by stipulating that if, at the time of filing the patent application or claiming foreign priority, a third party aside from the patentee was conducting business in Nigeria, and in good faith, and for business purposes, was manufacturing the already patented product or applying the already patented process, despite the patent being granted, this third party still retains the right to continue manufacturing, applying the process, completing and undertaking related actions on resulting products.

  1. Brief Case Study on Patent Eligibility under Nigeria Patent Laws

Uwemedimo & Anor. v. Mobil Producing (Nig.) Unlimited

The Nigerian Court of Appeal held that having applied for the patent and letters patent was issued, the 2nd appellant became the registered patentee in the invention, Anti-Corrosive Special Paint for QIT. The Nigerian Court of Appeal further held that the right to the patent in the invention would be vested in the respondent if there was a contract to that effect. However, since the appellants alleged that there was an oral contract, which the respondent denied, the right to the patent in the invention still resided in the appellants, who were the statutory inventor.

  1. Conclusion

The Nigerian legal jurisprudence continues to champion legal safety nets for innovation and creativity by recognizing the efforts of an inventor, either as an actual or statutory inventor, invested in creating a new, inventive, and industrially applicable invention by making available a category of legal safeguards through the patent system. These rights are enshrined in the Nigeria patent laws and enforced to temporarily grant a patent holder monopoly of use, preventing nullification and infringement from third parties subject to certain legal exceptions.

As an inventor qualified to obtain patent protection in Nigeria, it is necessary to abide by the eligibility requirements of Nigeria’s patent law to enable the acquisition of the applicable patent rights for enforcement. Regrettably, the registration process for securing a patent certificate in Nigeria does not accommodate a thorough examination system for reviewing a patent registration application, especially the lack of a detailed assessment of the claims and specifications of an invention. Nigeria currently adopts a documentation style that ensures that submitted registration documents comply with the Registry’s requirements in assessing patent registration documents before a patent certificate is granted to an applicant. This documentation system potentially gives room for the grant of a patent certificate without any guarantee as to the validity of the patent. Under the Nigeria patent laws, there is only one route for nullifying a patent grant, i.e., submitting a petition at the Federal High Court. Unlike what is obtainable under the Nigeria Trademarks Laws, where a trademark opposition can be commenced at the Nigerian Trade Marks Tribunal, making it easier for the Federal High Court upon appeal from the Tribunal to decide on further debatable legal issues, patent legal matters are decided at first instance at the Federal High Court, therefore crowding the court with patent opposition matters that should have been initially and judicially dispensed with at the Nigeria Patent Registry. The authors suggest that future Nigeria patent laws and practice should consider adopting and implementing an examination-based system in compliance with international best practices, which will enable an exhaustive and comprehensive review of patent registration documents to reduce the submission of frivolous patent registration applications, prevent multiplicity of unpatentable inventions and solidify the commercial place of a statutory inventor in Nigeria.

It is also vital to identify all inventors involved in creating an invention. To exclude or misrepresent an inventor’s contribution can lead to legal disputes, challenges to the patent’s validity, or even invalidation. Therefore, as a potential inventor, understanding the eligibility and rights of an inventor under requisite patent laws provides a patent registration applicant with the relevant knowledge and process for securing legal protection for an invention in Nigeria.

___________________________________________________________

For further information on this article and area of law, please contact
Franklin Okoro and Sandra Eke at
S. P. A. Ajibade & Co., Lagos by
Telephone (+234.1.270.3009; +234.1.460.5091), Fax (+234 1 4605092)
Mobile (+234 706.054.1804, +234.811.389.8102,
+234.811.249.1286, +234.703.385.7874)
Email: fokoro@spaajibade.com, seke@spaajibade.com
www.spaajibade.com

Footnote

    1. Associate, Intellectual Property and Technology Department, S.P.A. Ajibade & Co., Lagos, Nigeria.
    2. Associate, Intellectual Property and Technology Department, S.P.A. Ajibade & Co., Lagos, Nigeria.
    3. Yara Simon, History of the Watt Steam Engine, available at https://science.howstuffworks.com/innovation/inventions/watt-steam-engine.htm#:~:text=James%20Watt’s%20steam%20engine%20played,and%20efficient%20source%20of%20power. accessed 24th November 2023.
    4. Nigeria Patents and Designs Act (1971), Cap. P2, Laws of the Federation of Nigeria, 2004.
    5. Section 2 (1) of the Nigeria Patents and Designs Act (1971).
    6. Section 2 (2) of the Nigeria Patents and Designs Act (1971).
    7. Section 2 (3) of the Nigeria Patents and Designs Act (1971).
    8. Section 2 (4) (a) & (b) of the Nigeria Patents and Designs Act (1971). See Uwemedimo & Anor. v. Mobil Producing (Nig.) Unlimited, (2011) 4 NWLR (Pt. 1236) 87.
    9. Section 2 (5) of the Nigeria Patents and Designs Act (1971).
    10. Section 32 of the Nigeria Patents and Designs Act (1971).
    11. Section 6 (1) (a) & (b) of the Nigeria Patents and Designs Act (1971).
    12. Section 6 (3) (a) & (b) of the Nigeria Patents and Designs Act (1971).
    13. Section 6 (4) (a) & (b) of the Nigeria Patents and Designs Act (1971).
    14. (2011) 4 NWLR (Pt. 1236) 86.
    15. Section 9 of the Nigeria Patents and Designs Act (1971).
    16. Order 53, Rule 8 of the Nigeria Federal High Court (Civil Procedure) Rules, 2019.
    17. Section 26 of the Nigeria Patents and Designs Act (1971). Also, see Section 251(1)(f) of the Constitution of the Federal Republic of Nigeria, (1999) (as amended).

     

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