IP 2.2 REGISTRATION OF PATENT IN NIGERIA
Not all inventions can be patentable. We take it one by one:
WHAT IS AN INVENTION?
Not defined in the act. There is no all-encompassing definition. An invention can ordinarily be seen as a thing which a person creates. It has been defined as “a step forward in an art”. To “invent” (according to Encarta Dictionary) means to create something new. Note the following Legal provisions/principles:
***An invention is not the same thing as a discovery-Section 1(5) of the Patents and Designs Act. A discovery or scientific principle must be put into a new invention or process. (e.g. Ade discovers a new principle in building a car engine that reduces fuel consumption by up to 80 percent. This is not an invention. An invention would be when Ade makes a car that actually runs on that engine at a reduced fuel consumption rate)
:: By Section 1(1) for an invention to be patentable:
- It must be New.
- It must have resulted from inventive And
- It must be capable of industrial application.
- The invention may be an improvement which is new, results from inventive activity and capable of industrial application.
The requirements shall be explained briefly: (Section 1(2)).
Newness: The invention must not form part of “the state of the art”.
Section 1(3) defines “state of the art” to mean everything concerning the art or field of knowledge that has been made available to the public anywhere, anytime and anyhow. Except an exhibition in an officially recognised international exhibition (provided such exhibition occurred within 6 months from application for the grant of patent).
In essence, the invention must not have been known or disclosed to the public prior to the application for patent.
This requirement/test of newness is very wide. For example, an invention that is available in London shall be regarded as made available to the Nigerian public. The United States of America seems to look at the use made of it.
In Van der Lely V Bamfords, the plaintiff’s claim was for a hay-raking machine with the special feature of turning upon contact with the ground. The invention was held to have been anticipated by a photograph in a journal which showed this feature.
In F.I.S.A V Mentmore Manufacturing Ltd, the court construed publication where ball-point pens (the subject matter of the application) had earlier been gifted to three people.
In Windsurfing International Inc. V Tabur Marine (GB) Ltd, the newness test was defeated when a young boy had used a similar surf board (which was the subject matter of the patent application) on the beach.
Take for example; a Local boy in Bar Beach conceives the idea of making a surfboard. If he makes the surfboard, an application for patent (i.e. to prevent other people from making surfboards) would fail because a surfboard is already a common invention (i.e. in the state of the art). He may apply for protection under industrial design to prevent people from making a surfboard that closely resembles his own design. Note however if he makes a surfboard that can fly without touching water or a surfboard that converts the water to ice upon mere contact, that appears to be new and he may succeed in an application for a patent grant.
We move on to the next requirement:
Inventive Activity: (in Britain they say inventive steps). What this inventive activity means is that it must not obviously follow from the state of the art. It should not be common-place. The inventor must have intelligently exercised his inventive faculty. This question looks at the fact that although the invention is new, it is not innovative. You ask; to what extent does the invention (subject matter) differ from what was previously known? The test is objective. The personal feelings or opinion of the inventor is irrelevant. E.g. Ade makes a phone with 80 gigabytes storage capacity. The truth is that although the existing phones run from 8-64 gb storage, it is obvious that the claimant just added some more storage… there is nothing spectacular. But if for example, Ade makes a phone screen that never cracks/shatters or automatically repairs its cracks, then he may be able to claim patent protection as people would be impressed.
In Hills V Evans the court noted that the invention would fail this test if the state of the art is such that a person of ordinary knowledge of the subject matter would at once perceive and understand and be able (practically) to apply the discovery without the making of further experiments.
In Windsurfing International Incorporation V Tabur Marine, the court laid down some guidelines. In determining inventive activity, we should consider:
- The differences between the invention in question and what previously existed.
- Whether the differences are too obvious to professional/skilled man in the field.
- Whether the invention satisfies a long felt want in the area.
Capability of Industrial Application: By Section 1(2), it should be capable of being manufactured and used in any kind of industry including agriculture. Simply put; it must be useful. If what the person invented is impressive but useless, he would not be granted patent. This is called the utility test in the U.K. e.g. there was a case where a person made a wheel that could spin for days. That is impressive but useless. It would just spin… that’s all. If however, he can input that technology in a car engine to make it run without fuel or gas, then the spinning wheel is useful. In essence, whatever a person is creating should be useful too.
Note that Improvement patents must not be a mere cosmetic adjustment. It must also satisfy the requirement of newness, inventive activity and capability of industrial application.
Section 1(4) of the Act provides:
- Plant/animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products).
- Inventions (the publication or exploitation) which would be contrary to public order or morality. Illegality is immaterial in this context.
Section 1(5) Principles and discoveries of a scientific nature:
Plants or Animal Varieties
This provision seeks to maintain the sanctity of life. It frowns at cross breeding, cloning and the like. Advancements are being made in genetics engineering and mutation. Scientists now perform certain repugnant cross-breeding practices where the DNA of different classes of animals (e.g. man and cow) are fused to create a hybrid specie. This is a serious threat to human existence and such inventions (maybe the pill to take or the merging machine) are not allowed.
Although some countries (like the U.S) now provide a limited exception for patentability of plant varieties because of the advantages derivable therefrom-see Plant Patent Act 1930, Plant Variety Protection Act 1970.
Article 27(3) of the TRIPS agreement admonishes countries to provide for patentability of plant processes and varieties and then leaves the issue of animal varieties to the discretion of the member states. See Monsanto V Bowman.
In the Harvard Oncomouse Case, Genetically modified mouse (highly susceptible to cancer) was produced for research purposes. A patent application was made in respect of the oncomouse. Article 53 of the European Patent Convention excluded animal varieties from patent. This notwithstanding, the European Patents Office (applying the utilitarian test) granted the patent noting that the advantages of the research outweighed the possible harmful outcome. As the research from the onocmouse would aid research into cancer. Same was accepted in US. The utilitarian position was rejected in Canada in Commissioners of Patent (Canada) V President and Fellows of Harvard College.
In the Upjohn Patent Application case, the utilitarian test was applied to hold that the harm of the experiment (hair loss gene injected in rats for research in anti-hair-loss) outweighed the advantages.
In Diamond V Chakrabarty, the question was whether human-made bacterium which breaks down crude oil could be patented. The Court of Customs and Patent Appeals (reversing the registrars decision) held to the affirmative (5-4 decision) noting that it could be used in treating oil spills.
Immoral Inventions and inventions Contrary to Public Policy.
Where the invention affects the moral senses of reasonable members of the society. Although in the Harvard Onco Mice case, it was held that the benefit of the invention outweighed the possible harm. As such, it all depends on the facts of each case.
Another non-patentable restriction can be found in Section 1(5) which talks of principles of a theoretical and scientific nature. A principle is a theoretical finding. A discovery is a revelation of a phenomena that has been in existence but previously unknown. To be patentable, the theory or principle must be embodied in an invention (or its working/process). See the earlier example of an engine with reduced fuel consumption.
Who is entitled to a patent grant?
Section 2(1) vests this right on the statutory inventor, who (within the meaning of this section) is the first to file a patent claim/validly claim a foreign priority in respect of an invention. Whether he is the true owner or not.
The reason for this is so that the true creator/owner of the invention would quickly file a patent claim instead of hoarding his invention. (In filing patent claims, there are certain documents that are filed/registered and these documents show how the invention is made or worked… such explanations can be used in education and research. But some inventors would (instead of filing for patent protection) hoard this knowledge and keep producing on the assurance that no one else would find out how he does it. Also, there are certain inventions made in the course of employment by an employee but the employer files for the patent. E.g. The statutory inventor of Iphone-7 may be Apple Inc but the true inventor may be one random Micheal Scofield working for Apple. There are a host of other reasons for entitling the statutory inventor to protection but you should note that the true inventor/owner is ALSO PROTECTED under Section 2(2 and 3). In the sense that he is entitled to be named as the true inventor in the patent (notwithstanding any contract to the contrary) AND If the essential elements of the patent were obtained without the consent of the true inventor, all right in the patent shall be deemed transferred from the statutory inventor to the true inventor.
In the United States and Britain, the first to file rule does not apply. The true inventor must however come forward and establish that he is the true inventor.
Who is entitled to a patent grant in respect of inventions made in the course of employment?
“Course of employment” is not an easy phrase to define. In determining whether an invention was made in the course of employment, we ask:
- Whether the employee provided his own materials or used the materials and provisions of the employees.
- Whether the work was done within the scope and time of employment or in the claimant’s spare time.
- Whether he was employed to create the invention. E.g. a Hyundai employee creating a car.
At common-law, inventions created in the course of employment were generally regarded as that of the employer. As in Patchet V. Sterling, lord Simmonds noted that it is implied that the result of a work done by one employed under a contract of service belongs to his employer.
Section 2(4) maintains the common law position by stating that (in the absence of a contract to the contrary) the right (over works made in the course of employment) vests in the employer or whoever commissioned the work.
So therefore, a wise employee could have a contract negating the common law position. However, the reality is that, there is inequality of bargaining power and the employee would not usually be able to draw up (or ask for) any such “contract to the contrary” in his favour.
However, Section 2(4) provides… WHERE:
- The contract of employment does not require the employee to exercise any inventive skill but he has, in making the invention used the materials the employment has put at his disposal.
- Where the invention is of exceptional importance.
The employee shall be entitled to additional remuneration taking into cognisance his salary and the importance of the invention.
The entitlement in question is not modifiable by contract.
Unlike copyright (which does NOT require registration for enforceability), registration is a condition precedent to instituting a patent suit.
Section 3 to 5 of the act.
Section 3 every patent application.
- Shall be made to the registrar (accompanied by the prescribed fee) containing;
- Name and address of applicant. Where outside Nigeria, his address of service in Nigeria.
- Description of the relevant invention. Disclosing it sufficiently well for another in the field to put it into effect. Section 9 sanctions failure to fully disclose.
- A claim or claims: stating the invention that the applicant seeks to protect and defining his monopoly.
- Such other matters.
- Shall be accompanied
- (Where appropriate) with a declaration signed by the true inventor that he be mentioned as such (usually where the applicant is not the true owner).
- (If the application is made by an agent) a signed power of attorney.
Section 3(3) provides that a patent application shall relate to only one invention but may include in connection with that invention, claims for any other number of products, their application or manufacturing processes.
Section 3(4) provides for foreign priority. Where an earlier application (in respect of the same invention) had been made in a foreign country within 12 or six months (for patents and industrial designs respectively) the applicant can claim foreign priority. He is expected to append the following to his application: (and furnish the registrar within three months),
- A written declaration showing the date and number of the prior application.
- The country where the prior application was made.
- The name of the earlier applicant
- Then furnish the registrar within three months.
After application and all; Section 4(1) provides that the registrar shall examine every patent in order to ensure it conforms with Section 3(1 and 3) (filing particulars and connected products). Where it conforms, he shall grant the application and SHALL NOT consider any of the following:
- Whether the subject of the application is patentable under Section 1 of the act.
- Whether the description provided sufficiently discloses the invention Section 3(2).
This seems to make the registrar a mere instrument of registration rather than examination. In Britain, examination officers and professionals in the field are utilised to examine if the invention is new and innovative. Note however that the requirements of the law (newness, inventive activity, etc…) can be used by a person in the court to challenge the patent or to defend himself when he is caught infringing the patent. Even by looking at Section 4(4) which provides that patents are granted without any guarantee as to their validity. We can see that such patents can later be withdrawn where it does not meet the requirement of the law.
So the Patent Registrar in Nigeria should just ensure that the application merely conforms in terms of form and procedure (like filing particulars) rather than substance (like newness, etc.) required by law.
Section 5 provides that where the procedural requirements have been met, the registrar should issue a document containing THE:
- Patent Number.
- Name(s) and address of the patentee
- The date of application and date of grant.
- Title of the invention and the period of its validity.
African Regional Intellectual Property Organisation (Zimbabwe) (ARIPO) acts as the regional organisation for English speaking African countries and entertains applications. However, since Nigeria is not a member of this organization, any person desirous of having protection in Nigeria still has to apply for patent in Nigeria.
In conclusion, by Section 5 the registrar shall publish a notification of the grant of a patent.