INTRODUCTION

Patent is an exclusive right granted for an invention, a product or process providing or offering a new practical solution to a problem or dilemma. Patent application in Nigeria is regulated by the Patents and Design Act Cap P2 LFN 2004. Patent right grants the “statutory inventor” (first to file) a temporary, but exclusive right to the commercial exploitation of an invention. It gives the inventor the exclusive right to exclude others from producing, using, or selling the patented invention in that country without the patent owner’s consent or permitted by law, for the duration of 20 years subject to renewal.  

The article contains the criteria for patenting an invention, process, registration and the administration responsible for granting patent application in Nigeria.

WHAT IS ELIGIBLE FOR PATENT REGISTRATION?

A patent in invention consist of products or processes. Contrary to widely held view, not all inventions qualify for a valid patent. For an invention to be patentable, the invention must satisfy the criteria set out in Section 1 of the Patent and Design Act Cap P2 LFN 2004 The Act provides that before an invention could be eligible for patent, it must:

    • Must be new;
    • Must have an inventive step that is not obvious to someone with knowledge and experience in the subject;
    • Must be capable of being made or used in some kind of industry and 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;
  • It must not be against public policy or morality.

PATENT APPLICATION IN NIGERIA

Section 3, 4, and 5 of the Patents and Designs Act provides that patent application is to be made to the Registrar at the Trademarks, Patents and Designs Registry and shall contain certain information. This is to ensure the invention has not already been patented, by conducting a search. If the result of the search shows there is no previous registration, the application is made to the Registrar containing:

    • A petition or request for a patent signed by the applicant or his agent and containing the applicant’s full name and address;
    • a specification, including a claim or claims in duplicate; plans and drawings, if any, in duplicate;
    • where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent and giving his name and address;
    • a signed power of attorney or authorization of agent if the application is made by an agent;
  • an address for service in Nigeria if the applicant’s address is outside Nigeria; and payment of the prescribed fee.

Afterwards, the patent application is examined by the Registrar. This is done to ascertain formal compliance with the requirement of the Act. Once the application satisfies the statutory requirements, the Registrar is likely to grant the patent without enquiries to its novelty, inventiveness and industrial applicability or whether the specification sufficiently discloses the invention. In Nigeria, patents are granted at the risk of the patentee and without guarantee as to their validity. Whether an invention is a product or process, the same registration procedure is adopted.

FOREIGN PRIORITY

If an applicant has a convention application, that is an application claiming priority on the basis of an earlier application to register the patent made in a foreign country, such can also be registered in Nigeria by virtue of the Patent and Designs Convention Order 1971. The Convention provides that if the Nigerian application is made within 12 months of the making of the earlier application in the foreign convention country, such application will be treated as having been made on the same date on which the foreign application was made.

Procedure

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

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

Furthermore, not more than 3 months after filing the application, the applicant must furnish the Registrar with a copy of the earlier application, certified copy by the appropriate industrial property office of the foreign convention country.

CONCLUSION

Beyond patent registration, it is important for the patent owner to commercialise and create value for the invention through licensing, assignment and other intellectual property management mechanism.

Authors

Woye Famojuro – woye.famojuro@famsvillesolicitors.com

Adeola Oyeola