By Kingsley Ani
In this article we will examine patent registration in Nigeria, the laws governing patents in Nigeria, among others.
What is Patent?
A patent is legal protection given by the Government to an inventor, which gives such inventor the exclusive right to make, use, sell, or even license their invention to the Public for a specific period of time, in exchange for the disclosure of the details of that invention to the public after the period of protection/exclusivity elapses.
Regulations that govern Patents in Nigeria
In Nigeria, the main law that regulations Patents is the Patents and Designs Act [“the Act”]. The Act contains the legal framework for patent protection within Nigeria, patentability criteria, and other anciliary matters related to patents in Nigeria.
Patentability/Requirements for Patent protection in Nigeria [Patent Eligibility Requirements]
To be eligible for patent protection the invention must meet certain criteria, as outlined below:
Patentable Subject Matter
An invention is patentable if it is new and results from inventive activity or if it is an improvement on existing patented invention.
Industrial Application
For a patent to be granted for an invention such invention must be capable of industrial application; this means that such invention can be used in any kind of industry, including Agriculture. Anything otherwise is incapable of being patented.
Novelty
The invention must not form state of the art; it must be new to the public and must not have been disclosed to the public before the patent filing date.
Exclusions
Not all inventions and innovations are eligible for patent protection; there are inventions that are legally excluded from patent protection. These include plant or animal varieties and inventions which would be contrary to public order if they are exploited.
Who files a Patent Application in Nigeria?
In Nigeria, a patent application is filed by the Statutory Inventor and the rights to the patent is invested in such statutory inventor. A statutory inventor is the person who is the first to file a patent application in respect of an invention or claim a foreign priority for the patent application in respect of the invention, whether or not he is the true inventor.
If the true inventor is not the statutory inventor for purposes of filing—for example in cases where the true inventor is an employee of the statutory inventor and made the invention in the course of his employment—then the true inventor is entitled by legal right to be named as the “true inventor” in the patent. This is not modifiable by contract under Nigerian law.
Patent Registration Process
Patent applications in Nigeria are made to the Registrar in the Commercial Law Department Trademarks, Patents and Designs, Ministry of Trade and Investment, Abuja. An applicant’s application is expected to contain:
- The applicant’s full name and address; if the applicant’s address is outside Nigeria, then an address for service within Nigeria;
- A description of the relevant invention with any appropriate plans and drawings,
- A claim or claims regarding the invention, and such other matter as may be prescribed;
- The prescribed fee;
- Where appropriate, a declaration signed by the true inventor (that’s if he is not the statutory inventor) requesting that he mentioned in the patent, with his name and address;;
- Signed Power of Attorney authorizing agent to file patent on their behalf. It is not necessary for the Power of Attorney to be certified or notarized.
How Many Inventions Does One Patent Application Cover?
An applicant filing a patent application files a single patent application in respect of one patent only. That said, the invention may include claims for any number of products, any number of manufacturing processes for those products and for any number of applications of those products.
Foreign Priority Applications
Nigeria is a signatory to the Paris Convention. An applicant filing a patent application in Nigeria can claim priority from an earlier filing of that patent internationally in other Convention countries if they file their (Nigerian) application within twelve months from date of the earlier filing. Once an applicant files a new patent application in Nigeria and claims “priority” in Nigeria within twelve months of their earlier filing, the date of the initial foreign application will become the “priority date” for their Nigerian application. What this means is that for purposes of assessing the novelty of their application, the later Nigerian application will be treated as if it was filed on the priority date. If an applicant is claiming priority, they are required to submit a written declaration showing the date and number of the earlier application, the country where they made the earlier application, the name of the person who made the earlier application, and certified copy of their foreign application, together translation of their foreign application if the same was not done in English.
Foreign priority patent applications in Nigeria have the advantage of allowing an inventor to protect their invention in multiple countries—Nigeria included—while still benefitting from the original filing date. This can thus aid an inventor to secure their patent rights without losing the novelty of their invention due to public disclosures.
Nigeria is also a Signatory State to the Patent Cooperation Treaty; Nigeria became a member on the 8th of May, 2005. Thus, foreign inventors and applicants filing an international patent application under the PCT can also file a PCT national phase entry patent application in Nigeria within a period of 30 months from the time of the international application. It should be noted that such applications must be filed within 30 months and the period cannot be extended. Under the PCT, if the Nigerian registry grants the patent, it will date back to the date of the original international application.
Examination of Patent Applications
In Nigeria, patent applications are scrutinized on form; there is formal examination of a patent application which checks whether the application adheres to all necessary administrative and procedural requirements as prescribed by the Act. This formal examination includes verifying that the application forms are properly filled, all necessary documentation is provided, and all prescribed fees were paid during the filing process.
If an applicant complies with all requirements as to form, then the registrar shall grant the patent applied for without further examination as to the substance of same, particularly regarding any questions as patentability, description and claims.
If an applicant is claiming foreign priority and it turns out that the application does not conform with the provisions of the Law regarding all aforementioned requirements needed to be complied with, then the registrar will disregard the foreign priority application.
It should further be noted that patents are granted at the risk of the patentee, without guarantee of their validity.
Duration of Application
The patent registration process can take anywhere from two to four to six months from the date of application to grant of patent if the submitted patent application is eligible for protection.
Procedure for Patent Registration in Nigeria
Assess Patentability of Invention
The very first step to take before embarking on a patent application for registration in Nigeria is to first assess the invention and ensure that same complies with the provisions of the Act.
Conduct Patent Search
Conduct a prior art search at the Registry to ensure that the invention you are trying to apply for patent is indeed novel and does not form part of the state of the art. This step is not mandatory but is considered necessary a statutory inventor does not waste time in trying to secure a patent to an invention which is not novel.
Prepare Patent Application
- A patent application for filing in Nigeria is done in the prescribed form, with applicant’s name and address. If the applicant is a foreigner, or has a foreign address, then such applicant must include an address for service within Nigeria.
- A signed Power of Attorney authorizing local agent to file the application on applicant’s behalf.
- Specification including the claims in duplicate form.
- If there are plans and drawings, then same should be included in duplicate.
- Declaration by true inventor where applicable (that’s if the true inventor is not the statutory inventor for the purposes of the patent application)
Choose Patent Agent
To file patent application in Nigeria, an applicant can file same by themselves, or instruct a local agent to do so on their behalf. As qualified Patent & Trademark agents, our lawyers at Kabbiz Legal & Advisory can assist with your patent application.
File application [for your patent registration]
When the applicant has filled all necessary forms and gathered all required documentation, they can proceed and file the patent application either electronically or in hard copy at the Registry. The applicant must ensure the application is followed by the necessary filing fees.
Examination of Patent Application
Upon filing the application the application will be examined to ensure that same meets all administrative requirements in order to confirm that the form is correct.
Grant of Patent
Where a patent application is filed and there is no opposition to same within two months of filing and publication, the Registrar will grant the patent and issue a certificate of registration to the applicant.
Advantages of Patent Registration
Once a patentee has been conferred a patent, that patent offers numerous rights and advantages to them through which they can prevent any other person from:
(a) where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and where granted in respect of a process, the act of applying the said process or doing any act in respect of a product obtained through that process.
Lifespan of Patents
Patents in Nigeria has a standard term of 20 (twenty) years from the grant of the patent to the statutory inventor, conditional upon the payment of the prescribed annuity fees for that patent. Where a patentee fails to pay the annual dues, the Registry grants a grace period of six months within which to make the necessary payments. After the protection period of twenty years, the invention becomes open to the public. It is worthy to note that the government, under certain conditions, can issue compulsory licenses to ensure availability of a patented product or process in Nigeria.
Surrender of Patents
A patentee can surrender their patent by written declaration addressed to the Registrar. A patent surrender by patentee may relate to all or any of the claims made by the patent. Once done, this shall be registered by the Registrar.
Nullity of Patent
There are circumstances when a registered patent in Nigeria can be declared null and void upon application in Court, including by a public officer. A registered patent can be nullified if it is found that the invention is not patentable, or that the description of the claims covered by same does not conform with the provisions of the Act, or that the same invention was already granted in Nigeria as a result of an earlier priority application.
Strategies for Commercialization of Patents
Securing a patent to your invention is only one step across the hurdle. Thereafter the next step is to exploit your registered Patent. It should be noted that not all patented inventions hit the market to make a difference; in many cases it requires a push from the inventor to push their protected patent out. That said, there are a couple of strategies you can apply to secure gains from your patent, which includes selling the patent, or licensing of same to better equipped companies which better handle the invention than you can, self-manufacturing or self-sourcing.
Next Steps
If you would like additional information on trademarks in Nigeria, or you are interested in Patent registration in Nigeria, we invite you to contact our Intellectual Property Law department on contact@kabbizlegal.com Kabbiz Legal & Advisory is a specialist law firm in Nigeria dedicated to the protection of Intellectual Property rights of our clients locally and internationally.
To learn more about our overall Intellectual Property practice which includes our Trademarks, Patents and IP Licensing practices, we invite you to download our IP Brochure by clicking here.
If you wish to learn more about trademarks and other intellectual property-related areas in Nigeria, you can listen to our podcast here or visit our YouTube channel here.
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