Nigeria: Monetising and licensing patents
Since the dawn of the industrial revolution, the use of patents has been one of the valuable tools used for the protection of inventions, particularly inventions that are considered to have commercial value and appeal.
Owning a patent gives you a valuable property right, it allows an inventor to commercially make, use, and sell inventions for a specified period.
A patent grants its proprietor the right to exclude others from utilising the patented invention, as it also allows inventors to profit from their rights of inventions. This article examines the provisions of the law regarding patent granting in Nigeria, the rights conferred by a patent, contractual licences, and its limitations under the act.
Patents under the Act
In Nigeria, the primary legislation that governs the grant of patents is the Patents and Design Act (PDA) Cap P2 LFN 2004, while the patent rules regulate the procedures adopted at the patent Registry.
Patent is an exclusive right granted for an invention, this invention can be a product or a process that provides a new way of doing something or offers a new technical solution to a problem. It is a grant from the government, as it confers on an inventor, the right to exclude others from making, using, selling an invention for a fixed period.
According to section 1(1) of the PDA, an invention is considered patentable if it meets the following conditions:
- It is new, results from inventive activity and is capable of industrial application. Or
- If it constitutes an improvement upon a patented invention, and is new, results from inventive activity and is capable of industrial application.
Under the PDA, patents cannot validly be obtained in respect of the following:
- Plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes for their products) or,
- Inventions the publication or exploitation of which would be contrary to public order or morality merely because its exploitation is prohibited by law) (section 1(4)(a) & (b) of the PDA).
Furthermore, the Act states that any publication made available to the public by oral disclosure, a document or a prior use will destroy the requirement of novelty and ultimately make an invention non-patentable (section 1(3) of the PDA).
However, an invention is not deemed to have been made public merely because, within six months preceding the filing of a patent application in respect of the invention, the inventor or his successor in title has exhibited it in an official or officially recognised international exhibition.
Rights conferred by patent under the Act
The right to a patent in respect of an invention is vested in the statutory inventor ie, first to file, or validly claim foreign priority for a patent application in respect of the invention, whether he is the true inventor (section 2(1) of the PDA).
However, the true inventor is entitled to be named in the patent. Where two or more people are involved in the making of an invention, they may apply jointly for a patent right in respect of that invention. However, the person who has merely assisted in doing work connected with the development of an invention without contributing any inventive activity is not considered to be the inventor (section 2(5) of the PDA).
The rights conferred on a patentee are not automatic, they require the statutory formality of registration as provided in section 2 PDA to bring them into effect. A patentee is entitled to the sole ownership and profits arising from his invention during the patent’s lifetime. A granted patent will confer certain legal rights on the inventor.
A patent confers upon the patentee the right to preclude any other person from doing any of the following acts:
- 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 the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process (section 6 (1) of the PDA).
Procedure for patent application
Section 3-5 of the PDA lays down the procedure to be complied with in order to secure patent protection in respect of an invention. The Registrar is charged with the duty of examining patent applications in order to determine suitability or otherwise of a grant.
The patent applications are to be made to the Registrar and shall contain:
