Igniting The Next Revolution In Economic Diversification
The right to take action against any person exploiting a patented invention in its country of registration, is said to be the patent owner’s most potent recourse. This legal right also happens to offer a key to unlocking the vastly untapped commercial possibilities in the emerging tech startup ecosystem presently gaining traction in Nigeria. Beyond the favourable posturing of the Nigerian Government towards technology startups, it is critical that the legal infrastructure supports the ability of creators of new technologies to reap the material benefits of their creativity. This undoubtedly will ensure that the needed investment in the tech space will remain on the upswing. However, where, as appears to be the case in Nigeria, the law regulating the award of patent rights is still based on the outmoded deposit system, rather than the system of substantive examination of inventions to ascertain their patentability, it remains unclear how quickly technological innovation will bring about the economic diversification the country so urgently needs.
Nigeria has been in dire need of legislative reform to reinvigorate its intellectual property protection and enforcement regime, for quite some time. Patent rights deal with technological inventions, and so are particularly relevant in the current economic climate.
The current system for enforcement and protection of patent rights, was created in 1970 by the Patents and Designs Decree No. 60; now Patents and Designs Act: “the Act”. Under this system, an invention will be deemed to be patentable only if it meets certain criteria, including novelty, patentable subject matter, inventive activity, and industrial applicability. Where an applicant considers that his invention satisfies these criteria, he may then make an application to the Registrar of Trademarks in the required form, and upon payment of the prescribed fee. The Registrar of Patents is empowered at this stage to examine every patent application; curiously however, only as to form and not to the substance of the invention. In other words, the Registrar may not consider whether the invention is patentable, or whether it conflicts with any existing invention for which letters of patent have previously been awarded.
The unintended mischief created by this of this legislative faux pas are two-fold. First, ‘inventions’ which ordinarily do not qualify to be so called per the provisions of the Act, are able to acquire letters of patent. Where undeserving products and processes are protected by law from infringement, this naturally tends to impede deserving innovations from obtaining patents. Though a third party may challenge the award of the letters of patent by appropriate legal action, the Registrar – even where he takes a strong view that the subject matter of the application is undeserving of such an award, can do nothing to stop the award of letters of patent, to an undeserving application. In Okena v The Registrar of Patents & Designs [2001] 2 F.H.C.L.R 321, the Court held per Sanyaolu J as follows:
“…once an application satisfies the requirements of Section 4(1) set out above, the Registrar of Patents and Design is precluded under Section 4(2) thereof from examining whether or not the requirements of Section 1 of the same enactment as to patentability as well as Section 3(2) thereof as to sufficiency of description of the invention have been satisfied…..it is only an interested third party including a public officer acting in the exercise of his functions, who can challenge a patentee in Court for a declaration that the patent granted is null and void…”
Second, in the case of patentable inventions which may be appropriately awarded letters of patent, since the Registrar is not empowered to consider patentability, or conduct searches, the Registry will merely act as a depository – accepting all applications which comply as to form. The effect of this, is that he may inadvertently accept identical applications, and award multiple letters of patent over the same subject matter/invention. Ultimately, the lacuna in the extant depository system of obtaining patents, renders the holding of patent rights, potentially litigious and fraught with uncertainty. This is not in accordance with international best practice, and very much unlike the practice of substantive examination to ascertain patentability, as practiced in multiple jurisdictions around the world.
Under the Patent laws established by the World International Property Organization (“WIPO”); to which Nigeria is a contracting party, patent applications in member countries are to be subject to substantive examination to ascertain patentability. Nigeria, unlike many other member countries, is yet to pass these best international practice provisions into law. In the United Kingdom for example, the system of obtaining patents provides for the fulfillment of the requirements needed to file the application at the initial stage. Thereafter the patentee has a patent pending, and as such can only enter business negotiations on the premise that he/it is in the process of obtaining a patent. It is during this pending period of 18 months that rigorous searches and investigations are conducted to ascertain if the pending patent would infringe upon any other patents registered, and if indeed the patent has fulfilled the requirement necessary for a patent to be granted.
In the United States of America, a search is also conducted by the patent office to ascertain any prior art that is relevant to the application in question. The results of that search are then notified to the applicant in a search report. The examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step background) and to what claims they are relevant. The materials searched vary depending on the patent office conducting the search, but principally cover all published patent applications and technical publications.
In the final analysis, legal disputes, with their often-disruptive impact on business activities, could sound the death knell for budding tech startup ventures. These kinds of disputes tend to arise with much more frequency where there are gaps in the law, such as those highlighted here. The conventional wisdom is that business gravitates towards certainty, and so if the tech space in Nigeria is to attract the kind of investment that can scale-up technological innovations to become the big businesses of the future, there must be an enabling legislative environment to facilitate the unrestricted flow of commercial activity. The Patents & Designs Act is over 40 years old, and needs to be updated to match the level of commercial development in the country. It is highly recommended and long overdue, that Nigeria adopts a similar system to that of the United Kingdom, where the examination of the application is substantive, as this will adequately protect the patent rights of the owners of patented work, and give sufficient comfort to investors, that their investments will not end up embroiled in crippling legal battles. This will not prevent the applicant for the grant of a patent, from entering business arrangements and deriving some benefits from the use of the patent by using the “patent pending” title, pending rigorous examination of the invention that seeks to be patented, and the grant of the patent.
Ayokunle Ogundipe