Nigeria Patent Protection: The Basics – Part 1 of a 2-Part Series
This is Part I of a two-part posting examining patent procurement and enforcement in Nigeria. This post examines the basics for filing and prosecuting a patent application in Nigeria. Part II will examine revocation proceedings, infringement, enforcement and compulsory licenses.
Nigeria is a federal constitutional republic comprising 36 states and is located on the west coast of Africa on the Gulf of Guinea. Nigeria is known as the “Giant of Africa” and is the most populous country in Africa. Specifically, its population is roughly 152.2 million people. The official language of Nigeria is English and its currency is the Naira (1 Naira is approximately 0.0062 U.S. dollars).
In 1970, Nigeria enacted the Patents and Designs Act No. 60 (which is now the Patents and Designs Act (Act)). The Act created the Nigerian patent system and is presently in force today and was published as the Patents and Designs Act, Chapter 344 Laws of the Federation of Nigeria 1990. Additionally, Nigeria has been a member of the Paris Convention since 1963, a member of the World Trade Organization (WTO) in 1995 and a member of the Patent Cooperation Treaty (PCT) since 2005. Patent and design applications are filed, examined and granted by the Trademarks, Patents and Designs Registry (Registry) (http://www.iponigeria.com/). Applications can be filed with the Registry either manually (namely, a paper filing) or electronically (using the electronic filing system).
When filing a patent application in Nigeria, the below documents must be filed in order to satisfy the requisite formal requirements:
1. Detailed information on the Applicant (this can be the inventor or a successor in interest). If the inventor is not the Applicant, then an assignment must be filed (assignments and voluntary licenses must be recorded at the Registry in order to be effective against 3rd parties in Nigeria);
2. Power of Attorney;
3. An assignment from the inventor(s) or a statement by the Applicant justifying the right to the invention (if applicable);
4. A copy of the specification, including the claims, drawings and abstract (all in English);
5. A certified copy of the priority document, if necessary; and
6. The prescribed fee.
A patent application can be filed in Nigeria as a: (1) “non-convention” filing (namely, directly in Nigeria without claiming priority to any other patent application); (2) as a “convention” filing (namely, the application claims priority to an application filed within the last 12 months under the Paris Convention); or (3) National phase patent application off of a PCT application. It is important for Applicants to understand that although Nigeria is a member of the PCT, it has not yet amended its laws to implement the PCT. Despite this, the Registry is accepting timely filed National phase applications, examining these applications, and granting patents off of such applications. This raises the question of whether any such patents granted off a National phase application in Nigeria are valid; however, as of yet, we are not aware of this issue being raised in any litigation.
Under the Act, any invention that is new, possesses inventive activity and is capable of industrial application constitutes patentable subject matter. The following is not considered to constitute patentable subject matter: (1) plants or animal varieties or essentially biological processes (although microbiological processes and products produced by such processes are considered to be patentable subject matter); (2) inventions that are contrary to the public order or morality; and (3) scientific principles or discoveries.
Under the Act, absolute novelty is required. In other words, an invention is considered to be “new” provided that it does not form part of the state of the art (“state of the art” is defined as referring to “everything concerning that art or field of knowledge which has been made available to the public anywhere and at any time whatever (by means of a written or oral description, by use or in any other way) before the date of the filing of the patent application relating to the invention or the foreign priority date validly claimed in respect thereof, so however that an invention shall not be deemed to have been made available to the public merely by reason of the fact that, within the period of 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 recognized international exhibition”). As mentioned in the definition of the “state of the art, a six-month grace period is available for the inventor or legal successor if the invention is displayed at an official or officially recognized international exhibition.
According to the Act, an invention results from inventive activity if it does not “obviously” follow from the state of the art. Additionally, an invention is capable of industrial application if it can be manufactured or used in any kind of industry (such as agriculture).
In Nigeria, applications are subject only to formal examination. Thus, there is no examination for either novelty or inventive activity. Thereupon, if the formal requirements for filing the application are satisfied, a patent will be granted (while the Act and patent regulations do not provide a provision to delay acceptance (such as in South Africa), it may be possible to file an informal request for the Registry to delay acceptance but only if the application is filed manually as the electronic filing system does not make any provision for “special requests” such as this). Therefore, Applicants filing and prosecuting patent applications in Nigeria need to be vigilant that the claims filed possess novelty and inventive activity. With respect to making any amendments during prosecution, the Act is silent regarding an Applicant’s right to amend the specification, drawings and/or claims during prosecution. However, the patent regulations give the Registry discretion in allowing entry of any document (including a change to a drawing) it sees fit. These regulations are broadly interpreted to provide the Applicant the right to make amendments to a pending application or even to an issued patent.
The Act requires that the details of all granted patents are published in the official Journal after grant (although such publication is not routinely followed). Any patent granted will have a term of 20 years from its filing date (provided that the annual renewal fees are paid (for which there is a six-month grace period)).
The Act does not provide for an opposition procedure. Rather, any interested person can request the Federal Court to invalidate a patent based on any grounds listed in the Act, such as:
1. The subject matter of the patent is not patentable (namely, it lacks novelty, inventive activity and/or industrial applicability);
2. The description of the invention does not sufficiently describe the invention and/or the claims do not define the scope of protection or exceed the limits of the description; and/or
3. A patent for the same invention has already been granted in Nigeria based on a prior application or an application entitled to an earlier filing date.
Nicky Garnett of Adams & Adams also contributed to this article.