INTRODUCTION

A lot of companies, especially in the technology sector, are using inventions to solve everyday issues and with that comes the need to protect the said inventions from being imitated or duplicated by third parties. Whether it is a payment company patenting a point-of-sale device or a robotics company patenting a drone, such patent will serve to protect the interest of the owner of the invention and the integrity of the invention.

In this newsletter, we highlight the important information you need to know about registering a patent at the Trademarks, Patents, and Designs Registry (the "Registry") in Nigeria.

1. What is a Patent?

A Patent is an intellectual property right granted under the Patents and Designs Act (the "Act") to protect inventions, creations, ideas, and other intangible assets; and to promote development in these areas.

2. Who Owns a Patent?

Under the Act, the person who is the first to file a patent application or validly claim foreign priority for an invention is known as the 'statutory inventor' and considered to be the owner of the patent, whether or not they are the true inventor. Nonetheless, the true inventor is entitled to be named on the application and this right can not be modified by contract.

3. What Right Does an Employer Have To a Patent?

If an invention is made while someone is working or performing a specified job under a contract, then the employer or the person who commissioned the work has the right to the patent for that invention.

However, if the inventor is an employee and their employment contract does not require them to come up with new ideas, but they use resources from their job to create the invention, or if the invention is considered to be of exceptional importance, then the employee is to be compensated fairly for the invention in addition to their standard remuneration. This entitlement to compensation cannot be changed by a contract and can be enforced through legal action.

4. How Can an Invention Qualify for a Patent?

For an invention to qualify for a patent, it must meet the eligibility requirements below.

  • The invention should be new (i.e. not similar to any existing product, service or invention) or it should improve on an existing invention.
  • It must result from an inventive activity (i.e. it is an invention that could not have easily or obviously been developed by someone in a similar field).
  • It capable of industrial application (i.e. it must be functional/useable in some kind of industry or sector of the economy).
  • It is not merely sufficient that an invention meets the requirements above. Inventions must not fall within those prohibited from being patented by the Act. Examples of prohibited inventions are:
  • literary, dramatic, musical or artistic works;
  • principles and discoveries of a scientific nature;
  • methods of medical diagnosis or treatment;
  • biological processes for the production of plants or animals other than microbiological processes and their products; and
  • scientific or mathematical discoveries, theories or methods

5. Will a Software Qualify for a Patent?

It should be noted that a computer program in itself may not qualify to be registered as a patent because it is regarded as a "literary work" under the Copyright Act. If, however, as a result of the interaction between a software and hardware, an obvious invention is derived, it is possible that the developer or owner may have a right to apply for a patent.

6. What is the Process for Registration?

The process for registering a patent involves submitting an application to the Registrar of the Registry. The application must include:

  • the full name and address of the applicant, along with an address in Nigeria if the applicant's address is located outside the country;
  • the description of the invention, along with any relevant plans and drawings, a claim or claims, and any other information required by law;
  • if appropriate, the true inventor may sign a declaration requesting that they be named as such in the patent and provide their name and address; and
  • if the application is made by an agent, a power of attorney must be signed and submitted.

Please note that the success or otherwise of such an application will depend on the determination of the Registry as to whether the invention sufficiently meets the criteria set by the Act.

7. What is the Duration of a Patent Registration?

A successful patent application is valid for 20 years from the date of the filing of the patent application, however, annual fees must be paid during the 20-year validity period otherwise the patent will lapse.

8. What are Alternatives to Grants of Patents?

If an invention does not fit the criteria for registration, there are other ways to protect it including by properly drafting terms and conditions for use of the invention and clearly

stating the inventor as the proprietor of the invention. Please click here to see our article on qualifying for a patent for more tips.

CONCLUSION

Patent applications can be complex and involve several steps. Therefore, it is advisable for applicants to seek legal expertise for expert advice and guidance throughout the entire process.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.