IP 2.3 PATENT RIGHTS AND DURATION
RIGHTS CONFERRED BY PATENT.
By Section 6(1) NO PERSON (except the patentee) can make/reproduce, sell, stock (for the purpose of sale or use) or apply (in the case of a process) the invention or process. The scope of protection shall be determined by the terms of the claims and description provided by the patentee-Section 6(2).
Rights under the patent shall extend only to acts done for commercial or industrial purposes- Section 6(3). Acts done for private, educational and experimental purpose are excluded.
In Fearson V Loe, the court held that the protection should not extend to those that are not reproducing or selling the patentee’s invention. In Jones V Pearce, the court held that there was no infringement where the invention was used as a model for the defendant’s amusement.
However, in United Telephone co V Sharples, the court found infringement where the patentee’s invention was used to instruct pupils as to its operation.
Section 6(4) where at the date of filing application or for claiming foreign priority, a person other than the applicant was conducting an undertaking in Nigeria in good faith manufacturing the product or applying the process, the grant of a patent to the patentee shall not preclude the person from continuing the manufacturing or application. This seems contrary to Section 1(1)(newness) and 9 of the act. But don’t worry, this provision can be regarded as a shield rather than a sword.
See Agbonorfor V. Grain Haulage and transport ltd. 1977 – 2003 vol4 iplr page 139. 29 ch 164.
Worthy of note is the doctrine of Exhaustion and parallel imports which constitute one of the limits of intellectual property rights. Exhaustion generally connote where the rights are expended. Parallel imports occurs where there is differential pricing of the same product in different markets (countries). This may be due to local manufacturing costs, or based on the poverty level of the country. Take for example, the market price for hetrmans eye-drop in Nigeria is N50 while in the US, the same eyed-drop goes for $15(N2,300) the patentee/company would need some assurance that the (cheaper) ones in Nigeria would NOT be imported to US. So as to prevent undercutting its profits.
INFRINGEMENT OF A PATENT.
Section 6 confers certain rights on a patentee (noted earlier in this work).
Where anybody does any of the acts listed in Section 6 without authority or consent of the patentee (or the law) would be liable for infringement.
There should be some intention/positive act of the defendant which infringes the patent. In Smith Kline V Harbottle– the court found that the British Airways, acting as carrier and keeper of the infringing articles was not liable. Noted that the warehousing and transport of the infringing articles was a passive act. Assuming they were selling and distributing, then they might be said to be infringing.
In James Otoimen Agbonrofo V. Grains Haulage and Transport ltd, The plaintiff in this case had invented a harmless electric boiler “Oitomen Harmless Boiler” which unlike others, did not shock nor could it cause a fire outbreak because it would not work without water. 4 years after it had been patented, the plaintiff discovered that the defendant was selling a similar product in look and function as the plaintiff’s. He therefore sued for infringement. The defendant (amongst other grounds) argued that the plaintiff’s boiler was not being sold in the market and that the plaintiff did not have any means of producing the boiler as he did not have any production machinery. The court laid down the requirements to be satisfied by the plaintiff (patentee) in an action for infringement. He must establish (all of the following) THAT:
- The invention is patentable and has been registered– In Uwemedino Mobil Producing Nigeria ltd, the court held that the registration of a patent was a condition precedent to the institution of an infringement suit. His action must fail as he had applied but has not been granted a patent.
- The defendant did an act which constitutes an infringement– Pfizer V Polyking Pharmaceuticals.
- The act of infringement was done without the consent or licence of the plaintiff.
- The act of infringement was covered by a valid claim of the plaintiff’s patent.
In Arewa Textile V Finetex Limited, the court declined jurisdiction where the patentee had failed to register transfer of his patent. In Pfizer V. Polyking Pharmaceuticals, the court noted that it is NO defence allege that the products were manufactured through different processes. So long as the result is same as the patentee’s invention. In the instant case, “Piroxicam” made by the plaintiff and defendant were the same in potency and outcome even though the process for making it was different. The court held that there was infringement.
Section 6(4) provides defences which the defendant can plead. Some defences include:
- That the patent is invalid or unregistered.
- That the patent has lapsed and fallen into the public domain.
- That the act complained of does not constitute an infringement within the ambit of Section 6.
- That he has got a compulsory licence (compulsory licenses shall be discussed later.
- That the patentee has surrendered his patent right.
- That the infringer has been licenced or assigned.
- That the infringement was not done for commercial purposes.
Jurisdiction: By Section 26(1) jurisdiction in determining patent suits is vested in the Federal High Court. Two assessors with knowledge of the subject matter may advise the court. See for example Amavo V Bendel Textile Mills, the defendant instituted an action in Bendel State High court. The suit was struck out.
DURATION OF A PATENT
Section 7(1) provides that a patent shall expire at the end of the twentieth year (20th year) from the date of filing the relevant patent application. When a patent expires/lapses, such shall be notified and duly registered. Then, it goes into the public domain. Meaning that the exclusive rights which were granted to the patentee can now be exercised by any member of the public.
By Section 7(2) a patent can also lapse if periodic (monthly) fees are not paid. A 6-months grace period shall be provided. Liability for payment of monthly fees starts to count from the date the patent grant is made-Pfizer Incorporation V. Polyking Pharmaceuticals.
In Janssen Pharmaceutical MV V. Registrar of Patents and Designs, the patentee was granted a patent in Nigeria 1969 (same drug had also been registered in the UK). The appellant paid the annual fees of UK but failed to pay that for Nigeria. In 1973 when it sought to do so, the registrar refused to accept the fee. The court held that non-compliance with Section 7(2) lapsed the patent.
Surrender of Patent– by Section 8, anytime before the 20 years, the patentee may surrender the patent (i.e. give up his patent) by a written declaration addressed to the registrar. The surrender should then be registered. Note that if he has granted a licence to another person to exploit the patent, he cannot surrender without the consent of the licensee.
