The Legal and Institutional Mechanisms for the Protection and Enforcement of Patent Law in Nigeria: An Appraisal
Chukwunye Augusta Ojeih*
Abstract
The presence of a strong and effective patent system may bring numerous benefits such as the dissemination of information and providing an incentive to invest in the development of new products and processes which will eventually fall into the public domain. The basic rule is that a defendant should be sued ‘at home’. This paper seeks to examine the legal and institutional mechanisms for the protection and enforcement of patent law in Nigeria. The paper concludes by advocating for an all-round protection and enforcement of our Nigerian patent law.
1. Introduction
In the modern world, law has become the paramount agency of social control, and to a large extent, economic development; this is because law is a useful means of stimulating economic growth and development of the society. The survival of any given society is essentially dependent on the body of legal rules governing it. It does not matter whether the nature of the rule is primitive or civilised. Consequently, in any given state or society, there are laws, rules and regulations and a system of enforcement put in place by which life and human activity are governed in such society.
As such, law is a conscious means of economic development of the community and should accordingly ensure the orderly advancement and social progress of the community. Intellectual property law is part of such laws. Intellectual property gives rise to rights and duties. It establishes property rights, which give the owner the right to do certain things in relation to the subject matter[1]. For instance, there are situations where the right depends on the completion of an application and registration procedure, patents and trademarks being examples of such rights. Although IP law is concerned with rights, it also creates duties; for according to the legal theorist Hohfeld, every right has associated duty – there cannot be one without the other. Rights and duties have a distinct relationship and are called legal correlatives by Hohfeld[2].
In terms of intellectual property, the right is a right to do certain things, such as making copies of a work of copyright, making articles to a design covered by a design right or making products in accordance with a patented invention. The correlative duty is a duty owed by all others not to infringe the right. This duty exists even if the person infringing the right does not know of it[3]. This means that the right resulting from the operation of intellectual property law gives the owner of that right a corresponding privilege, that the privilege to exploit the work.
In the overall scheme of things, it must be added that in the area of intellectual property, the law strives to reach a balance between conflicting interests, and to reach a justifiable compromise. Justifiable on the grounds of protecting private interests and promoting investment while providing benefits for society at large in terms of increased wealth, knowledge and employment. In Nigeria, as in other parts of the world, one of the rights which make up intellectual property is Patent law. However, the patent system does not always stand up well to close scrutiny as many investors who have to deal with the system will testify.
Obtaining a patent is expensive and takes a long time. It may be several years before an action can be taken against an infringer. Another, perhaps more worrying, concern is that a system which was designed around technology from a simpler era, is unable to provide an appropriate level of protection, taking account of all the checks and balances, in the context of new and emerging technologies. Patents are territorial in nature and are usually expected to have effect only in the territory for which they have been granted, the rule is that patents should be litigated in the courts in the country of registration.
2. Patent Law Consideration in Nigeria
Patent law concerns new, industrially applicable invention. It is perhaps fitting that intellectual property law reserves a very special and powerful mode of protection for inventions that meet exacting standards. The grant of a patent effectively gives the inventor, or more commonly the employer[4], a monopoly to work the invention to the exclusion of others for a period of time not exceeding 20 years[5].
However, the monopoly is not absolute and there are a number of checks and balances to curb its abuse. The invention might concern a new or an improved product. Alternatively, the invention may concern some industrial process. Because of the strength of this form of property right, high standards are required – the invention must be new, and it must involve an inventive step[6]; that is, it must be more than merely an obvious application to technology. Furthermore, the invention must be capable of industrial application and must not fall within certain stated exclusions. Suffice it to say for now that patents are not granted lightly and an application is subjected to a thorough examination process[7].
In common with other intellectual property rights, a patent is a form of personal property that may be assigned, licensed or charged by way of a mortgage. Patent law grants a monopoly for a limited period of time in respect of an invention in return for disclosure of the details concerning the invention. These details are available for public inspection and are sufficiently comprehensive so that a person skilled in the particular art would be able to make practical use of the invention, in other words, he would be able to work the invention. Patent legislation uses the term ‘a person skilled in the art’[8].
This means a person (or a team of persons) having knowledge and experience of the science or technology concerned. Disclosure is a central prerequisite for the grant of a patent and it must be total, with nothing of substance withheld, otherwise it might be difficult for others to make use of the invention once the patent has expired. In Young v Rosenthal[9], the court held that:
Then he (the applicant) is bound so to describe it in his specifications as that any workman acquainted with the subject…would know how to make t; and the reason of that is this, that if he did not do so, when the patent expired he might have some trade mystery which people would not be able actually to use in accordance with his invention (although they had a right to use it after his invention had expired), because they would not know how to make it.[10]
The position of the court above finds ventilation in section 3(2) of the Patents and Designs Act which provides that:
The description referred to in subsection (1) (a) (ii) of this section shall disclose the relevant invention in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates…
The holding back of part of the invention runs counter to the whole rationale of patent law and such applications shall be rejected, or the applicant will be asked to modify and enlarge his disclosure accordingly[11].
After the expiry of the patent, the invention falls into the public domain and anyone is free to make use of it. One might wonder what the State or the general public get in return for this grant of privilege. The fact that the details of the invention are published means that the competitors, researchers, and the like have immediate access to this information which they may study and use subject to the scope of the infringing acts. The system benefits everyone by this because the wider availability of such information helps to spread and widen technical knowledge and importantly, because investment is encouraged, wealth and employment are created and maintained. The whole patent transaction can be thought of as a bargain or contract between the inventor (or his employer) and the State; both parties bringing consideration to that contract.
Without a patent system, inventors and their employers would attempt to keep the details of their invention secret, relying on the law of confidence for protection. In some cases, it would be impossible to keep the details of the invention secret. In the first case, obtaining a patent is the most effective way of protecting the invention and the investment incurred in developing it. Other ways do exist but are not usually as attractive. The duration of this lead-time is often proportional to the complexity of the technology required to put the invention into practice, although this lead-time might be dramatically reduced where the first product has to undergo rigorous safety testing and the competitor’s product can largely avoid this by reliance on the testing of the first product.
For example, in R v Licensing Authority, exp Smith kline and French Laboratories Ltd[12], information given by a drug manufacturer to a licensing authority, in order to obtain a product license in respect of a drug, was used by the authority in determining whether to grant a product license to a second manufacturer.
In the second case, where the invention relates to a process, the owner might be well advised to seek patent protection because of the uncertainty of the law of confidence. This flawed form of legal protection is little better than useless if details of the invention fall into the hands of third parties who have acquired the information in good faith. Depending on how light security measures can be made, a patent will usually be an attractive alternative to the law of breach of confidence.
In situations where the invention relates to a product rather than to a process, it may be possible to register some aspects of the shape of the product as a design or may fall within the unregistered design right[13]. Additionally, there will be copyright in the drawings and written descriptions of the invention.
However, copyright protection is a poor substitute for a patent, as in principle, copyright protects only the expression of an idea, whereas a patent can protect from exploitation by others the idea that is encapsulated in the invention. The strength of protection afforded to inventions through the patent system is one reason why patent protection is a shorter duration than that available for works of copyright[14].
3. Justification for Patent Protection[15]
An inventor owns a property in his invention. This is a natural right and accords with the views on property rights of philosophers as Locke. What the patent does is to guarantee a limited term of protection in return for the inventor’s agreement to disclose details of his invention and, ultimately, to abandon his property right in it. This accords with the contract view which is thought of as a bargain or contract between the inventor (or his employer) and the State, both parties bringing consideration to the contract. Inventors are offered a stronger and more effective property right than under natural rights on the condition that they will lose all rights in the invention when patent expires.
The conventional justification for patent system is that inventors and investors are rewarded for their time, work, and risk of capital by the grant of a limited, though strong monopoly. This benefits society by stimulating investment and employment. Again because details of the invention are added to the store of available knowledge. Eventually, after a period of time, depending on how long the patent is renewed, anyone will be free to put the invention to use.
This utilitarian approach found favour with English philosophers such as Jeremy Bentham, who argued that because an invention involved a great deal of time, money, efforts, and also include a large element of risk, the exclusive use of the invention must be reserved for a period of time so that it could be exploited and thereafter used for the general increase of knowledge and wealth. He said that such exclusive use cannot “otherwise be put upon anybody but by the head of the law; and hence, the necessity and the use of the interposition of law to secure an inventor the benefit of his invention”[16].
Another factor is the marketing effort required to establish a demand for the product or process. However, the owner of the patent (the proprietor) does not have carte blanch[17] in fixing his prices for the following reasons:
1. Consumers have managed thus far without the invention and may continue to do so by refusing to pay high prices.
2. The equation between volume of sales and profit margin must be considered. Sometimes a cheaper price will make more money for the owner of the patent by increasing sales disproportionately.
3. The consuming public may not have a need for the invention and it may be difficult to attract sales at any price; and
4. There are various safeguards and controls to prevent abuse of patents both at the local and international levels.
A patent therefore is not necessarily a licence to print money, and a great deal of market research and economic judgment is essential before embarking upon the developments of inventions.
Encouragement, inducement and reward are the main factors underlying the patent system. The public interest, although apparently jeopardised by the grant of a monopoly, is secured by increased industrial activity, developing new technologies and disclosures of new and useful inventions. Thus, the presence of a strong and effective patent system will (most likely) bring numerous benefits such as the dissemination of information and providing an incentive to invest in the development of new products and processes which will eventually fall into public domain.
4. Requirements for Patentability
The Nigerian Patents and Designs Act provides in section 1 (1) as follows:
Subject to this section, an invention is patentable:-
- If it is new, results from inventive activity and is capable of industrial application; or
- If it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.
Thus, in stipulating the requirements for patentability in Nigeria, the Act provides that in order for an invention to be patentable it must be novel, result from an inventive activity, and be capable of industrial application.
An invention is regarded as novel if it does not fall within the confines of existing knowledge in the relevant field. An invention will result from inventive activity if it is not an obvious or logical outcome of existing knowledge either as to the method(s), the application of the method(s) or as to the outcome of such applications or processes. Finally, section 1 (2) (c) of the Act regards an invention as capable of industrial application if it can be manufactured or utilised within an industrial setting.
Section 1 (3) of the Act recognises “prior art” as existing technical knowledge in the relevant field as disclosed to the public anywhere and at any time (whether written or oral form); it makes an important exception for disclosures made within the six months immediately preceding a patent application, where such disclosures takes the form of an official exhibition at a recognised international forum.
Nigeria operates a national-exhaustion principle in respect of parallel imports and grey market goods in respect of patented products. Consequently, once a patented item has been initially sold lawfully in the country, no action for patent infringement may lie against anyone who resells or redistributes those products without the permission of the patentee or holder of a design patent[18].
5. Legal Mechanism for the Protection and Enforcement of Patent Law in Nigeria
5.i Under Civil Law
By the joint provisions of section 251 (1) (f) CRFN 1999, and section 26 PDA, there are legal provisions for the development, protection, and enforcement of Patent law in Nigeria. Section 251(1)(f) of the Constitution Federal Republic of Nigeria 1999 (as amended) vests the Federal High Court with the jurisdiction of hearing civil causes pertaining to patent rights in Nigeria. This is an exclusive preserve of the Federal High Court.
In line with the provisions of the Constitution, section 26 (1) of the Patents and Designs Act provides that an action for patent infringement may be instituted by a patentee or holder of a patent who alleges that its exclusive rights of ownership have been exercised without permission. In the case of Pfizer Inc v Polyking Pharmaceuticals Ltd & Anor[19], the defendants were importers of Rossiden capsules containing the active chemical compound piroxicam that were patented and sold by the plaintiff as Feldene (a non-steroidal anti-inflammatory drug prescribed for the treatment of arthritic pain and inflammation) and registered under number RPR-9708 in Nigeria.
The court held that, regardless of the manner of process in which the offending Rossiden drugs were manufactured, the product fell within the scope of the specifications and claims of the plaintiffs registered patent, based on the uncontroverted testimony of the plaintiff’s expert witness[20]. Also, in James Oitmen Agbonrofo v Grain Haulage and Transport Limited[21], the court pointed out correctly that:
It is not necessary for infringement that there should have been actual copying of the patentee’s device or the patented specification. If the alleged infringement is substantially what is claimed although arrived at quite independently, there will be infringement.
Thus, if the infringement action succeeds, the patentee shall be entitled to damages, an injunction or an account of profits and/or the surrender of the infringing items for destruction, as a reviewing court may deem it appropriate to order – section 25 (2). In Cross-Lery v The Derby Gas Light Co[22], the Lord Chancellor accepted that the court could grant an injunction to prevent a person selling, after expiry of a patent, an article made during the subsistence of the patent. So far, in Nigeria, there have been very few fully contested cases on patent infringement; and this field of law has not been fully developed within case law. Nonetheless, there is an appreciation by the courts that a claim for patent infringement should be confined to the boundaries of the patent claims as disclosed in the specifications filed with the Patents and Designs Registry. Section 25 (4) of the Act further stipulates that a patent licensee shall be entitled to require the patentee to institute infringement proceedings against an alleged infringer and failing that, may institute action in its own name.
From the above, it can be seen that Patent in Nigeria is largely protected by civil law; this is because the act of infringing a patent is, of course a tort. The remedies available for infringement of a patent are an injunction, damages, an account of profits, an order for delivering up or destruction and a declaration that the patent is valid and has been infringed by the defendant. However, damages and an account of profit are alternatives and may not be by section 25 (2), both be awarded or ordered in respect of the same infringement.
The purpose of the account of profits is not to punish the defendant but to prevent his unjust enrichment. An account is limited to the profits actually made and attributable to the infringement and the plaintiff must take the defendant’s business as it is. However, accounts are rarely asked for in patent cases because of their complexity. It can be said that ‘innocent’ infringers may escape some of the remedies; however, it behoves such ‘innocent’ infringer to prove that at the time of the infringement, he was not aware and had no reasonable grounds for supposing that the patent existed, the latter being a form of constructive notice.
The application of the word ‘patent’ or ‘patented’ or words expressing or implying that a patent has been obtained for the product does not necessarily fix the defendant with constructive notice unless accompanied by the number of the patent or application. It would nonetheless, be difficult for a defendant to prove to the court that he did not know of the existence of the patent if he copied a product to which the word ‘patented’ was applied. The burden of proof in this matter lies with the defendant[23].
Finally, under this heading, as an infringement of a patent is a statutory tort, it can be expected that the normal tortious rules concerning damages apply as they apply to other torts. The basic rule is that the injured party should be restored to the position he would have been in had the tort not been committed. Recoverable losses are those that are foreseeable, caused by the tort and not excluded by public or social policy.
5.ii Under Criminal Law
Generally, the Patent and Designs Act is silent on the protection and enforcement of patent under criminal law in Nigeria. Infringement of patents associated with selling, distributing and importing products that are subject to a patent are dealt with as civil wrongs and there are no criminal penalties for such dealings; although, depending on the circumstances, trade description, forgery or trademark offences may be committed.
However, section 251 (3) CFRN 1999 provides that the Federal High Court shall also have and exercise jurisdiction and powers in respect of criminal causes and matters in respect of which jurisdiction is conferred by subsection (1) of this section.
5.iii The Application of the TRIPS Agreement in Nigerian Law[24]
The Trade-Related Aspects of Intellectual Property Rights [TRIPS] Agreement, for the first time, clearly articulated the interface between intellectual property rights and international trade within the global economy by introducing minimum protection standards across the board. TRIPS also requires that basic enforcement mechanisms be available within the domestic laws of member States and that all related disputed be submitted for resolution to the WTO dispute settlement platform.
To a large extent, Nigeria complies with a significant portion of the TRIPS standards in the areas of Patents. Being already a signatory to the Berne and Paris Conventions, the transition to the new IP regime was not as onerous and steep as it was for certain other developing countries[25]. It must be noted that although international treaties may impose obligations on States that are party to them, they do not necessarily become laws regulating the conduct of persons and institutions within the territory of the State concerned. In Nigeria for any international law to have the force of law, it must have been domesticated by virtue of section 12 (1) of CFRN 1999. Nigeria became a signatory to the TRIPS Agreement since inception – January 1, 1955.
Article 41 of TRIPS places an obligation on members to make available in their laws, enforcement procedures that permit effective action against any act of infringement of intellectual property rights including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. In the same vein, Article 45 (2) of the Agreement permits judicial authorities to order infringers to pay damages to right holders even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity. Regrettably, the patent law has not necessarily measured up to standard. Thus, more legislative action is still expected in this regard; especially the incorporation of protecting/patenting areas of biotechnology, traditional knowledge, and new plant varieties for patents.
6. Institutional Mechanism of Patent Law Protection and Enforcement in Nigeria
It is often stated that it is part of the common law tradition to place the Judge at the heart of the legal cosmos and to emphasize the central and crucial role of the judiciary in enforcing Constitutionalism and the Rule of Law. It is also a time-honoured fact that the court is the principal institution for the resolution of disputes and punishment of offenders. The judiciary is the primary source of patent protection and enforcement in Nigeria. Regrettably however, there are no government departments or regulatory agencies empowered to administer specific statutes, as well as under informal arrangements, such as Alternative Dispute Resolution [ADR] processes, adopted to obviate the rigours of formal adjudicatory processes.
There are no express statutory provisions relating to the resolution of intellectual property disputes through ADR as the respective laws are silent and “there are no reported court decisions on the enforcement of arbitral awards related to intellectual property disputes referred to arbitration”[26].
The Patents and Designs Act makes provision in section 26 relating to legal proceedings for the resolution of disputes arising from the Act thus:
1. Jurisdiction to hear and dispose of legal proceedings under this Act is hereby vested in the Federal High Court and, subject to this Act, and provisions of the Trade Marks Act applicable to legal proceedings under that Act shall apply with the necessary modifications to legal proceedings under this Act.
2. The court hearing proceedings under this Act may sit with and be advised by two assessors having expert knowledge of matters of a technological or economic nature.
3. The Chief Judge of the Federal High Court may make rules of court for the regulation of legal proceedings under this Act if he thinks it is necessary to do so.
From the above, it can be surmised that the emphasis on the protection and enforcement of patent in Nigeria, especially on dispute resolution under the relevant Statutes (the Constitution and PDA), is on the regular court systems without any contemplation of institutional mechanisms like government departments, or regulatory agencies, or ADR processes with their attendant advantages for speedy and effective determination of disputes arising from issues of patent rights.
Be that as it may, it should be noted that the Federal High Court is empowered by section 17 of the Federal High Court Act[27], and Order 20[28] to promote amicable settlement of disputes before it and it “may refer any civil dispute” brought before it to arbitration as agreed by the parties or supervised by the court. It is therefore safe to say that since patent infringement is largely a civil dispute, it is therefore among the matters [section 6 (1) (a)][29] which the court may of its own volition or upon request by the parties, refer to arbitration. This is because arbitration, as an institutional mechanism, is a private civil action; the parties usually want to have as much control over the settlement measures of the arbitration as possible. The parties can choose to have a simplified or comprehensive procedure; they can choose the governing law and language used in the proceeding.
7. Conclusion
Law is a synthesis of order and justice and serves the purpose of resolving conflicts and protecting the interests of human in an orderly manner. The Constitution and Statutes of Nigeria provide for the protection and enforcement of laws from violations or unreasonable intrusions by persons, organisations, or governments. However, the single most important deficiency of Patents in Nigeria is the absence of the substantive examination of patent applications. Applications to register patents are, routinely, only scrutinised for formal compliance with documentary evidence. This leaves much to be desired and is an unsatisfactory safeguard in a developing economy like Nigeria. It is advocated that an all-round protection and enforcement of our Nigerian Patent law in a market driven economy will serve as a formidable force to reckon with if steered in the right direction and manner.
*Chukwunye Augusta Ojeih, LLM, BL, LLB, COMM. ARTS [HONS], PGDE, ACIArb [UK], ANIPR; Lecturer Faculty of Law Godfrey Okoye University, Enugu.
[1]D. Bainbridge, Intellectual Property [4th edition; Hampshire: Ashford Colour Press, 1999] p.11.
[2]W.N. Hohfeld, “Fundamental Legal Conceptions as Applied in Judicial Reasoning”, in Introduction to Jurisprudence, Lloyd Lord (ed) [Hampstead: Stevens, 1979] p.260.
[3]Knowledge of the existence of the right may be relevant in terms of the applicability and measure of some remedies for infringement.
[4]Section 2 Patents and Designs Act, Cap P2 LFN 2004.
[5]Section 7 ibid.
[6]Section 1 ibid.
[7]Section 4, PDA LFN 2004
[8]Section 3 (2) ibid.
[9] [1884] 1 RPC 29.
[10] Per Grove J at 31.
[11]C. A. Ojeih, “The Role of Patent Law in the Transfer of Biotechnology to Third World Countries: Nigeria as a Case Study”, being thesis submitted to School of Post-graduate Studies, Faculty of Law, Nnamdi Azikiwe University, Awka, 2015, p.33.
[12] [1989] 1 All ER 175
[13]The equivalent of an unregistered design right in Nigeria is that it shall be null and void. This is as provided by section 22 PDA.
[14] See section 2 (3) and First Schedule Copyright Act, Cap C28, LFN 2004
[15]C.A. Ojeih, supra, pp.35-37
[16]J. Bentham, “Manual of Political Economy”, reprinted in W. Stark (ed) [1952] Jeremy Bentham’s Economic Writings [vol. 1 Allen & Unwin, 1952] p. 263.
[17]An authorisation signed in blank to be filled at discretion; an unrestricted authority.
[18] See sections 6 (3) (b) and 19 (3) (b) PDA respectively.
[19][1998] FHCL 1
[20]John Onyido, Yetunde Okojie, “Intellectual Property Law and Litigation in Nigerian Courts: Current Statutory and Judicial Posture” in A Review of Contemporary Legal Trends in Nigeria Law, [Lagos: Lexis Nexis, Pinetown Printers, 2017] p.88.
[21][1998] FHCL 236 @ 254.
[22][1834] 4 LTT Ch 25.
[23]Pfizer Inc v Polyking Pharceuticals Ltd & Anor, supra.
[24]J.Onyido, Y. Okojie, op cit, pp.90-91.
[25]Countries like Guatemala, Indonesia, Hong Kong and Singapore were not parties to either the Berne or the Paris Conventions before joining the WTO, whereas Bangladesh, India and Uganda had ratified one or the other of these prior IP related international instruments.
[26] Amucheazi Offornze, Nkem Itanyi, “Arbitration of Intellectual Property Disputes in Nigeria”, in Law Making, Good Governance and Administration in Nigeria: Essays in Honour of Senator Effiong Dickson Bob, F.E. Ojeih & F.J. Oniekoro (eds) [Lagos: Ekidio Limited, 2014] p.644.
[27] Cap F12 LFN 2004.
[28] Federal High Court (Civil Procedure Rules) 2009
[29] Patents and Designs Act, supra.