Patent as a tool to drive innovation
The dawn of industrialisation has been the start of progressive and developed economies of the world today and the reason is innovation. The aim of every inventor, visionary or innovator is primarily to profit from the creation/works of his hands. Therefore, the presence of a framework to facilitate the protection of his creation – intellectual property – will only spur efficiency, productivity and more innovation.
HISTORY OF THE NIGERIAN PATENT LAW SYSTEM
The first patent legislation enacted in Nigeria was the Patents Ordinance No. 17 of 1900 and the Patents Proclamation Ordinance No. 27 of 1900. These statutes applied to the colony of Lagos and Southern protectorate Nigeria. Subsequently similar provisions were made to apply to the Northern protectorate Nigeria by virtue of the Patents Proclamation Ordinance No.12 of 1902. The Patents Ordinance and Patents Proclamation Ordinance was repealed and replaced with the Patents Ordinance of 1916 later renamed and re-enacted as the Registration of United Kingdom Patents Ordinance of 1925 (Cap 182 Laws of the Federation of Nigeria and Lagos 1958).
The Patents and Designs Decree No. 60 (now Patents and Designs Act) (“The Act”) was enacted in 1970. The Act which created a Nigerian patent system and administration is still in force till today, and was published as CAP. P2 of the Laws of Federation of Nigeria 2004.
PATENTS IN NIGERIA.
The purpose of patenting is essentially economic. The government, in order to encourage innovation in areas of technology and industrial designs assures an inventor of a monopoly right to exploit the invention for a limited period of time. It is envisaged that the inventor, during the period of such monopoly would have derived maximum financial benefit from the invention. Thus, the government ensures that inventions which could improve the quality of life of the citizenry are exploited to the good of the greatest number of people.
REGISTRATION REQUIREMENTS
According to Section 1 of the Act, an invention will not be patentable unless it is new, results from an inventive activity and is capable of industrial application. If that invention is an improvement upon a patented invention, it must also be new; result from an inventive activity and must also be capable of industrial application. Emphasis is placed on novelty or originality in patents as it is in any other branch of intellectual property.
Every application for the registration of a patent shall be made to the Registrar and must contain the applicant’s full name and address and if that address is outside Nigeria, an address for service in Nigeria; a description of the relevant invention with any appropriate plans and drawings; a claim or claims. These shall be accompanied by the prescribed fees; where appropriate, a declaration signed by the true inventor requesting that he be mentioned in the patent as well as his name and address; and if the application is made by an agent, a signed power of attorney.
THE NEED FOR CHANGE IN OUR PATENT FRAMEWORK
The Act is the extant law that regulates the registration and proprietorship of inventions, technological and industrial innovations in Nigeria.
The need or reason for an amendment is simple and needs no logical inquisition. The world today is a global village with ideas and innovative reasoning being shared across borders and territories. There is bound to be a conflict in the regulation of how these ideas are protected, governed and regulated. Hence, there is a constant need to check the changes in the dynamics of creativity and invention. The speed at which the human thought process is rapidly evolving in this technological age drives home the constant need for up to date laws and regulations to ensure the protection of intellectual property rights such as patents.
Unfortunately, this knowledge is lost in the Nigerian perspective. The inefficacy of a law enacted over three decades ago with no substantial amendments can explain some of the reasons behind our vacuum in creativity/innovation.
A notable example of how out-dated our laws are can be found in Section 2 (4) of the Act where the Patent law provides that “in the case of an invention made in the course of employment or in the execution of a contract for the performance of a specific work, the right to a patent in the invention is vested in the employer or the person who commissioned the work”. The challenge in this case is that innovative employees risk the chance of losing the propriety of their creations to employers.
Section 2 (4) (a) of the Act further provides that where the employee, by the nature of his employment, is not required to undertake inventive activities but has utilized the facilities or data provided by his employer, or where the invention is considered to be of exceptional importance, the inventor is entitled to fair remuneration, taking into cognizance his salary and the importance of the invention
However, the lacuna here is that the Act did not indicate the nature of the invention that would be considered “exceptionally important” for the purpose of entitling an employee to remuneration, and this has its inherent difficulties. This invariably stifles the innovative drive of technicians working for private and public organisation. Intellectual property rights are personal rights and only transferrable on the consent and license of the innovator. Therefore, the default appropriation of inventions to employers does not appreciate the very foundation of Intellectual Property rights as a proprietary/personal right.
It is not clear from whose perspective the term ‘exceptionally important’ should be considered. The Act should be amended to accommodate an individual’s right to the ownership of his innovation. It is suggested that in determining or defining the term “exceptionally important” in relation to inventions created while under employment, such determination should be based on the reasonable man’s test. Thus, if an invention is perceived to be “exceptionally important”¸ an employer should adequately compensate the inventor for his creative efforts.
Another notable issue is our dependence on the deposit system of patenting. The Nigerian Patent system operates the deposit system of patenting as opposed to the examination system adopted in the industrialised countries, where rigorous examination as to compliance with the requirements for patentability is undertaken. The grant of the Nigerian patent is made without a guarantee of validity. Section 4(4) of the Act provides that patents are granted at the risk of the patentee and without guarantee of their validity.
Curiously, Sections 4 and 16 of the Act provide for examination of those patent applications before registration. However, a critical examination of these provisions reveal that the power of examination vested in the Registrar is merely administrative or clerical and not substantial. The Registrar only examines the application to ensure that all the fundamental requirements of Sections 1 and 2 are met and the necessary documents which are required to be filed have been filed. Once the Registrar is satisfied that the formal requirements have been met, he proceeds to register the patent. This practice is an affront to the established principles of patenting and defeats the entire purpose of registration as a condition precedent for patentability.
There is an argument that this system of patenting is more suitable to developing economies like Nigeria and there is an obvious lack of expertise and personnel who can effectively accommodate the examination system. Proponents of the deposit system will argue that it is cost effective and cheaper to maintain. However, this system is not beneficial to us as it weakens innovation and stifles creativity.
Our existing patent registration framework has created an avenue for foreign companies to file blocking-patents in Nigeria without the Registrar properly evaluating the patent application to decide if such application can be denied on public policy grounds. The concept of blocking patent occurs majorly in jurisdictions that operate the deposit system because there is no requirement of the examination of an invention. This has only encouraged multi-nationals to file for various patents in Nigeria, obtain certificates and leave them redundant. These grants by the Registry leave the individual inventors stifled with no real incentive and room for growth and innovation.
Studies show that between 1972 and 2000, 6,099 Patents were registered. Of the total of 6,099 patents registered between 1980 and 2000, 5,752 were conventional (foreign) and 347 were non-conventional (local)1. The stark contrast in the figures show the apparent flaws of the deposit patent system in Nigeria.
Some have suggested that if the Registrar lacks the expertise to ascertain the novelty of a particular invention, he should be assisted by experts who possess the requisite knowledge and technical understanding for the effective examination of patent applications. The Act needs to be amended in order to empower the Registrar to conduct substantial search and examinations in patents and designs applications.
Furthermore, we suggest that for the effective enforcement of patents in Nigeria, there has to be a review of the out-dated laws currently in force. A Patent is a two-edged sword. As much as it can spur and stimulate inventions, innovations and technology which will in turn enhance the Nigerian economy, it can also stifle creativity, innovation and intellectual productivity. It is for this reason the Act should be reviewed to reflect the country’s economic standpoint.
As the world is constantly evolving, so should the laws regulating Intellectual Property and as such the proper recommendation will be to examine, review and amend our extant Patent Laws to cater to the present and future needs of inventors and to protect their proprietary rights in their inventions and innovations by taking into consideration the current trends in the industry and in patent registration and enforcement worldwide.
Nigeria may consider a proper and globally accepted procedure for examination of application and reinstatement of applications where wrongly rejected, review of the provision that excludes the government from liability to compensate patentees for use of patents for service of government agencies and the creation of dispute resolution mechanism for disputes that arise from the government’s use of patents without compensation.
We believe that the time has come for the National Assembly and all relevant stakeholders to urgently kick start a reset in the protection of intellectual property rights, especially patents. The need for amendments cannot be over-emphasized in view of the country’s desire for industrialisation of the economy and technological advancement.
ARTICLE WAS WRITTEN BY THE LAW FIRM OF DUALE, OVIA & ALEX-ADEDIPE (DOA).
DUALE OVIA & ALEX-ADEDIPE