Overview of International Design Patents Protection
“Design Patents” are protected under Chinese Patent law, and they are a type of intellectual property which protects the ornamental appearance of a product. The China Intellectual Property Administration is responsible for granting design patents to eligible designs submitted for registration in China by creators and their IP agents. Due to the globalization of the business world, creators do not only seek regional protection for their Designs in their local markets but also seek international protection, usually with the United States Patent and Trademark Office [USPTO] and other regions which are signatories to the Hague Agreement. Being a member of the Hague Agreement simplifies the process of filing Design Patents across multiple jurisdictions, so Chinese creators often take advantage of this to seek protection not only in their home jurisdiction, but in other jurisdictions as well.
Is Nigeria a member of the Hague Agreement?
Nigeria is not a member of the Hague Agreement, so a Chinese creator applying for a Design Patent for the protection of their industrial design cannot automatically apply for same in Nigeria. Such creator will have to file a separate application in Nigeria for the protection of their Design in Nigeria.
If Nigeria is not a member of the Hague Agreement, what international Treaty is it part of?
Nigeria is a member of the Paris Convention and has been for decades. What this means is that foreign applicants whose countries are members of the Paris Convention can seek protection in Nigeria under the Paris Convention; they can file for protection and seek right of priority by making a Priority Claim. Thus, a Chinese creator seeking international protection of their IP [Design] can file in Nigeria and seek priority within the priority period. The priority period is six months from the date of filing their application in China.
Key considerations for Chinese Creators expanding to Nigeria
It is very important for Chinese creators seeking Design protection in Nigeria to familiarize themselves with Nigerian Intellectual Property laws, in particular the Nigerian Patent and Designs Act. They should note that the procedure for Design applications with the China Intellectual Property Administration is different from the procedure with the Nigerian Ministry of Trade and Investment. They should note further that Designs are called “Industrial Designs” in Nigeria, not “Design Patents” like is obtainable in China.
Finally, it is very important to seek legal guidance from IP attorneys in Nigeria who are familiar with the country’s IP landscape and can provide proper guidance on the requirements and procedure for protection in Nigeria.
Nigerian IP Laws and Regulations for protection of Industrial Designs [Design Patents] in Nigeria
In Nigeria, the Patents and Designs Act, 1971 provides for the registration, protection and enforcement of industrial designs in Nigeria. Thus, applicants must follow its guidelines when seeking protection in Nigeria or else their application might be rejected.
Specifics of Design Patents protection in Nigeria
In Nigeria, industrial designs must be new and original, not previously disclosed in public. Industrial designs must also be novel and original; thus, if a similar design has been publicly disclosed before the filing date, then such disclosure may affect the novelty requirement and affect the entire application.
Assessing Design Patents Eligibility for Protection in Nigeria
A Chinese creator seeking international IP protection of their design patent in Nigeria must ensure that their proposed application meets the requirements for protection in Nigeria. There are differences in requirements and procedure in Nigeria that differ from what is obtainable in China, so Chinese creators have to ensure that their Designs meet the necessary criteria for protection in Nigeria before seeking protection in Nigeria. It is important to begin scrutiny and the process early though if the Chinese applicant is making a priority claim in Nigeria with their application that’s already before the China Intellectual Property Administration.
Document Requirements for Chinese Design Patents protection in Nigeria
The following documents are required for an application for industrial design in Nigeria:
- Statement of Novelty specifying detailed features of the Design for which Novelty is claimed.
- Graphic Representation[s] of the Design from different angles
- Photographs of the real Design [actual images, not graphic]
- Certified copy of Priority Document [if you are claiming Priority]
- Certified copy of translation of Priority Document from Chinese to English.
- Actual specimens of the Design
- Deed of Assignment of Design rights to applicant [if the applicant is not the true creator of the Design]
- Power of Attorney appointing IP Agent [does not require notarization of same]
Tailoring Design application to meet Nigerian Registry Requirements
In China, the requirements for Design Patent registrations are quite simplistic, and entails including a very brief description of the product design, graphic representations of the Design from certain angles, and payment of necessary filing fees. In Nigeria, we require applications to include a comprehensive Statement of Novelty which will detail what actually makes the design novel.
In China, the Design Patent Certificate is rendered in Chinese. For a Chinese applicant trying to lay a priority claim in Nigeria the Design certificate must be accompanied by an English translation of the Priority Document, else the priority claim will be rejected by the Nigerian Registry.
Step-by-Step Guide to filing an application for Industrial Design in Nigeria
The applicant should first gather all their [aforementioned] documents, send down specimens of their design to their IP representative in Nigeria, and then leave the application to their attorneys. The attorneys will fill the necessary forms, and submit them together with all documents, images and specimen of the Design for which the applicant is seeking protection.
Challenges for Chinese Creatives seeking protection of their Industrial Designs in Nigeria
The most common challenge such persons will face are Language barriers which they will likely encounter due to the differences in the lingua franca of both countries. However, these are minor issues that can be addressed through translation services.
Another problem might be shipping timeframe for sending specimens of their design to Nigeria, particularly where the applicant is running out of time if they are claiming priority. That is why we advocate they begin the process early and seek out local counsel of attorneys [like Kabbiz Legal & Advisory] in Nigeria quickly enough to guide them through the process.
Conclusion
The global IP landscape can be quite complex and challenging, particularly where creatives seek protection in more than one jurisdiction. Chinese creatives venturing into Nigeria for the protection of their Design Patents [“Industrial Design” in Nigeria] should ensure they have a nuanced understanding of both the Chinese system and the Nigerian system so they are not caught unawares by our local requirements in the course of their application.
Next Steps: Secure your Design Patents in Nigeria with Kabbiz Legal & Advisory
If you are a Chinese creative seeking to register your Design in Nigeria, or a dedicated IP attorney or law firm in China representing the interest of your clients who are seeking expansion into Nigeria, we invite you to reach out to us at contact@kabbizlegal.com or call us on +234864231176, or alternatively click the link here to chat us on WhatsApp. We respond to all business enquiries within twenty-four hours.
This article was written as a Thought Leadership post for our Intellectual Property Law practice group with the Patents and Trademarks sub-practices at Kabbiz Legal & Advisory.
Additional Resources:
Comprehensive Guide to Registration of Industrial Designs in Nigeria
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