Infringement in Nigeria: Understanding your rights and remedies

Patent protection is only as effective as the ability to enforce it. Izuchukwu Chinedo of Inventa explores the nuances of patent infringement in Nigeria and the options available to rights owners.

Patents are an important form of intellectual property (IP) because they give inventors the exclusive right to use and commercially exploit their inventions for a limited period.

This protection encourages innovation by allowing inventors and businesses to benefit from the time, effort and resources invested in developing new products and processes.

However, obtaining a patent is only the first step. A patent can only deliver its full value if the owner is able to prevent others from using the invention without prior consent.

As innovation continues to grow across different sectors in Nigeria, it is becoming increasingly important for businesses and inventors to understand what amounts to patent infringement, the remedies available under Nigerian law, and the practical steps they can take to protect their rights.

This article provides an overview of patent infringement in Nigeria, the available defences, and the remedies that may be available where infringement occurs.

What constitutes patent infringement?

Section 25 of the Patents and Designs Act 2004 provides that where a person other than the patentee, industrial design owner, or their respective assignees or privies does, or causes to be done, any act relating to the use of a patent or design, this constitutes an infringement of the relevant right.

Under Nigerian law, a patent grants its owner the exclusive right to prevent others from exploiting the patented invention without authorisation. Depending on the nature of the patent, infringement may occur where a person or business makes, uses, imports, sells or offers for sale a patented product without the consent of the patent owner.

In the case of a patented process, infringement may also arise where the process is used without permission or where a product obtained directly from that process is commercially exploited without the patentee’s consent.

Exceptions to patent infringement

As mentioned above, a patent grants an exclusive right of use to a patentee. However, not every use of a patented invention amounts to infringement. The Patents and Designs Act recognises certain situations where a person’s use of a patented invention does not violate the rights of the patent owner.

For example, Section 6(3) and (4) of the Patents and Design Act provides that the rights conferred by a patent extend only to acts done for industrial or commercial purposes.

Consequently, acts that are not carried out for industrial or commercial purposes generally fall outside the scope of patent infringement.

Similarly, where a patented product has been lawfully sold in Nigeria by the patent owner or with the patent owner’s consent, the purchaser is generally free to use or resell that product.

This principle, commonly referred to as the exhaustion of patent rights, prevents the patent owner from controlling the subsequent circulation of that particular product, except where the patent provides for a special application of the product.

The Act also protects the rights of a prior user. Accordingly, a person who, in good faith, was already manufacturing the patented product, applying the patented process, or had made serious preparations to do so before the patent application was filed or a valid priority date was claimed, may continue such use without infringing the patent.

Who can bring an action for patent infringement?

Under the Patents and Designs Act, an action for patent infringement may be brought by the patentee. Section 25(2) of the Act provides that infringement of the rights conferred by a patent is actionable at the suit of the patentee.

Where the patent has been validly assigned, the assignee, as the successor in title, may also institute proceedings to enforce the patent rights. This is reinforced by Section 24(5), which provides that references to a patentee include the patentee’s successors in title.

The Act also recognises the rights of a licensee in certain circumstances. Under Section 25(4), where a licensee requests the patentee by registered letter to institute infringement proceedings and the patentee refuses or neglects to do so within three months, the licensee may institute the proceedings in his own name. The patentee, however, retains the right to participate in the proceedings.

Remedies available for patent infringement

Section 25(2) of the Patents and Designs Act confers a right on the owner of a patent whose rights have been infringed to bring an action before the court for their enforcement.

Upon the occurrence of any of the infringements, the patentee may therefore bring a suit against such violator and may be entitled to reliefs by way of damages, injunction (including an Anton Piller order), rendering of account and such relevant reliefs as the court may deem necessary in the circumstance.

An Anton Piller order may be granted where there is a risk that an infringer, who is aware that an action has been brought against him in court, may hide or dispose of incriminating materials.

The Anton Piller order originated from the locus classicus case of Anton Piller KG v Manufacturing Processes (1976) and empowers the plaintiff and his solicitor to enter and inspect the defendant’s premises, as well as seize, copy or photograph materials that are relevant to the alleged infringement.

The Mareva injunction is granted ex parte to restrain the defendant from disposing of his property so as to render useless the judgment the plaintiff may obtain. This emerged from the case of Mareva Compania Naviera v International Bulk Carriers (1975).

The court may also grant any other relief it considers appropriate to ensure that the rights of the patent owner are adequately protected. In determining the appropriate remedy, the court will consider the facts of each case, including the nature and extent of the infringement and the evidence presented by the parties.

Challenges in enforcing patent rights in Nigeria

Although the Patents and Designs Act provides legal remedies for patent infringement, enforcing patent rights in Nigeria can still be challenging. One of the major issues is that the Act has not kept pace with technological advancements and the changing nature of innovation.

This can create uncertainty when dealing with emerging technologies and other modern inventions that were not contemplated when the law was enacted.

Another challenge is the delay often associated with litigation. Patent disputes are usually technical and may require expert evidence, making them more complex than many other commercial disputes.

As a result, resolving infringement claims can take time and involve significant costs, which may discourage some patent owners from pursuing legal action.

Enforcement is also affected by administrative and institutional challenges. Limited resources, procedural delays and other operational constraints can slow down the effective administration and enforcement of patent rights.

Addressing these challenges through legislative and institutional reforms will go a long way in strengthening Nigeria’s patent system and promoting innovation.

Patent protection goes beyond obtaining a certificate of registration. To fully enjoy the benefits of a patent, patent owners must take active steps to protect and enforce their rights.

This includes monitoring the market for possible infringement, maintaining proper records relating to the patent, and seeking legal advice promptly where unauthorised use is suspected. In appropriate cases, an amicable resolution through a cease-and-desist letter or negotiation may resolve the dispute without the need for litigation.

As Nigeria continues to encourage innovation and technological development, an effective patent enforcement system remains essential to protecting inventors and promoting investment.

By understanding their rights and taking timely action where necessary, patent owners can better safeguard their inventions and maximise the commercial value of their innovations.

Izuchukwu Chinedo is a trademark and patent attorney at Inventa, and can be contacted at ichinedo@inventa.com