Patents Lecture PDF

PATENTS AND THE NATURE OF PATENTABLE INVENTIONS Intellectual Property Law II LPP 406  Patents The dawn of industrialization globally and under the protection of intellectual property rights, ensures that every man has the right and potential to benefit from the fruits of his s...

PATENTS AND THE NATURE OF PATENTABLE INVENTIONS Intellectual Property Law II LPP 406  Patents The dawn of industrialization globally and under the protection of intellectual property rights, ensures that every man has the right and potential to benefit from the fruits of his sweat and ideas One of the mechanisms under intellectual property that has helped to ensure this consistency in protecting ideas and inventions over the years has been in the area of patents A patent is usually a grant made by the relevant government authorities within a country to protect new inventions or improvements that are considered to have improved the way(s) the earlier inventions were made or used In simple terms, a patent is simply a form of market monopoly granted to inventors as an incentive to invent or innovate  History of the Patent System in Nigeria The history of the patent system in Nigeria and many other developing countries can be traced to the 1879 Patent Conference in Paris where it was decided that patent laws of colonial masters should be extended to their colonies Nigeria’s patent system was established as a result of the colonial heritage from British Patent laws English laws including patent laws, were introduced to different parts of the country by a series of Proclamation and Ordinances The first patent legislation enacted in Nigeria was the Patents Ordinance of 1900 drafted by the British colonial authorities These statutes applied in the colony of Lagos and the Southern Protectorate. The Patents Proclamation Ordinance of 1902 was subsequently applied to the Northern Protectorate  Contd. The laws provided for the establishment of patent offices and an administrative system for the regulation, grant and control of patents in Nigeria Applications were made to the patents office for registration and granting of patents Any successful patent application was granted in the name of the British Crown by the High Commissioner Following the amalgamation of the Northern and Southern Protectorate, the Patent Ordinance and the Patent Ordinances of 1900 and 1902 were repealed  Contd. There was the enactment of the Patent Ordinance of 1916 which applied to all parts of Nigeria following the unification The 1916 Ordinance was later re-named and re-enacted as the Registration of United Kingdom Patents Ordinance of 1925 The 1925 Ordinance terminated the patent registration system in Nigeria and established a system of patent registration that was dependent on the grant of patents in the United Kingdom and so, a patent could not be granted in Nigeria again Patent rights granted in the United Kingdom were valid in Nigeria provided the application to register the patent was made to the Registrar of patents in Nigeria within 3 years from the date of the patent in the UK The validity of the Nigerian patent remained in force as long as the patent was still active in the United Kingdom  Contd. The statutory Act is the Patent and Designs Act 1970 which governs the patent system and administration in Nigeria It contains detailed provisions for the procurement of patents in Nigeria The Act relied heavily on the draft International Bureau for the Protection of Intellectual Property Model Law for Developing Countries  Definition of Patents The governing legislation on Patents is the Patents and Designs Act does not define ‘patents’ but the Act defines ‘patent application’ which is an application for the grant of a patent and a ‘patentee’ as the person to whom a patent has been granted WIPO however defines a patent as a legal protection and government-granted authority that confers its owner with certain limited exclusive rights which are to exclude others from using, making or dealing with the patented invention without a licence or permission of the owner for a specified limited period of time within the territory it is granted Contd. This exclusive monopoly right generally permits the inventor to exclude competitors from the marketplace A feature similar to copyright is that a patent is a bundle of monopoly authority granted to an inventor or his assignee for a stated duration permitting him to prevent others from exploiting his invention and control unauthorised access to the patented invention without his consent  Contd. A patent is an exclusive right granted in respect of an invention which may be a product or a process that provides a new and inventive way of doing something or offers a new and inventive technical solution to a problem It is a legal right given to an inventor which enables him to protect his invention for a number of years A patent is a document, issued upon application by a government office describing an invention and creating a legal situation in which the patented inventions can be exploited(used, manufactured, sold or imported) with the authorization of patent’s owner This grant provides the inventor exclusive rights to the patented process, design, or invention for a designated period in exchange for a comprehensive disclosure of the invention  Contd. A patent typically protects any product, design or process that meets certain specifications according to its originality, practicality, suitability and utility A patent as an invention is a useful, newly created product or process which results from the exercise of skill or ingenuity by the inventor Patents qualify as intellectual property because the subject matter in respect of which a patent is granted is the outcome of extraordinary mental or intellectual effort, skill and resourcefulness  Nature of Patentable Inventions Patents protect all inventions, processes or products in all fields of technology An invention is a unique or novel process, method, composition, device or technology that solves a specific problem An invention is the result of an ingenious effort or original idea that has not existed before or is new Patents are often granted for inventions to show that the claimant has thought of something first The process of seeking patents is to document, protect and control the new invention through a legal process Contd. Patents are not granted for every invention The invention must satisfy the pre-determined conditions for the grant of a patent right to inventors, which state that the invention addresses an identifiable problem or provide a new and useful solution that is of high inventive quality A patent can be granted to an invention that is an improvement on an invention so long as the improvement is new, results from inventive activity and is capable of industrial application The novelty of patent is satisfied when the inventiveness has not been disclosed in the prior art Patentable products Patentable products could include electronic, mechanical or chemical products eg. motor vehicles, cosmetic products, industrial machines etc Processes include industrial processes for the making of products Arewa Textile Plc & Ors v Finetex Ltd [1997-2003] where the subject matter in dispute was a patented process used in the textile industry What is a patent(cont’d) Patents are granted On payment of a fee, for new, non-obvious a patent gives the product or process owner a monopoly in inventions that have a particular territory, an industrial enabling them to application and exploit the invention which have not been exclusively for a excluded from period of up to 20 patentability years Why patents? It is an incentive to creating New new technology technolog y it provides an environment that facilitates the successful industrial application of new Technolog PATEN Instrumen t of T y transfer planning technology It facilitates technology transfer Tech planning It serves as an instrument and strategy of technological planning and strategy  Things that a patent cannot protect include: A patent can only cover patentable subject matter such as a process, a method, a machine or an article of manufacture Therefore, laws of nature, such as concepts like gravity or photosynthesis; living things that breed ordinarily like dogs or horses; abstract ideas or anything that has entered the public domain cannot be patented Patentability What is patentability S 1(1) PDA If it is new An invention is new if it breaks new ground in the If it results from an field of knowledge to which inventive activity it relates If it is capable of industrial If it does not follow from application what is already known to If it is an improvement on a the public anywhere in that patented invention particular field Contd. There are three requirements of patentability Newness or Novelty Section 1 (2) states that an invention is new if it does Inventiveness or non- not form part of the state of obvious the art which means that Industrial application publication or disclosure defeats novelty Disclosure to another person who is not under an obligation of secrecy defeats novelty Contd. Novelty contd. Where a person is free to An invention is new if it disclose to others, whether does not form part of the knowingly or unknowingly or fraudulently, there has been a state of art disclosure State of art refers to If disclosure is made in everything about that field confidence by the inventor or that has been made someone with whom he has a available to members of the non-disclosure agreement or some kind of confidential public or disclosed obligation, then novelty is not Therefore, publication or defeated disclosure defeats novelty  Examples of publication are describing the invention in an article or any document accessible to members of the public is a disclosure When an invention is displayed or used in a place where the public can have access to it, can affect novelty Contd. A patentable invention must In use by the public or be new or original Otherwise available to the To be considered novel, a public before the inventor claimed invention cannot files an application have been: Inventions that exist in the Previously patented public domain before an application filing are known Described in a journal as prior art and it cannot be Already on sale patented Contd. A requirement of patent is While it must describe how the that the invention must invention will achieve one or more goals, the invention does have a real, immediate use not necessarily have to achieve that the inventor can that goal on its own demonstrate or at least Non-obviousness is considered describe with specificity one of the most difficult elements to prove in a patent The patent application application, especially if it cannot be based on a concerns an invention based on, speculative use or a or is iterative of an earlier invention possible future use Contd. Inventive activity indicates that the invention must be a creative idea It must be different from previous efforts in the field It must significantly advance or progress from the state of art It must be considered original and creative to qualify for the grant of a patent Inventive activity is also called non-obviousness and it means that the differences between the invention and the prior act should not be so obvious to a person reasonably skilled in that art or field of knowledge The test to determine whether the invention is obvious is to ascertain whether a person reasonably or ordinarily skilled in the art Importance of Patents Patents provide an incentive Without patents, the drugs and for companies or individuals medicine of such companies could to continue developing be duplicated and sold by innovative products or services without the fear of companies that did not research or infringement invest the needed capital for R&D For example, large Patents protect the intellectual pharmaceutical companies property of companies to help can spend billions of dollars their profitability and could also on research and serve as bragging rights for development companies demonstrating their innovativeness Types of Patents There are three types: Design patents: are patents utility, design and plant issued for original, new and patents ornamental designs for manufactured products. Utility: issue legal Design patents protect the protection to people who design or look of something invent a new and useful process, an article of They require the invention manufacture, a machine, or to which the design belongs a composition of matter to be original These are the most common type of patent Contd. Plant patents go to anyone who produces, discovers, and invents a new kind of plant capable of reproduction Patentable inventions An invention is capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture which is that it must be useful and provide some sort of benefit and be capable of being manufactured in an industry Patents cannot be obtained in respect of -plant or animal varieties or biological processes for the production of plants or animals or inventions whose publication or exploitation would be contrary to public policy S1(4) PDA New plant varieties are registered in National register for Crop varieties and Livestock breeds in Nigeria but no rights are granted for registering new crop varieties Provisions of S 27(3) TRIPS agreement requires member states to use their discretion in providing protection for plant varieties using the patent system or through any other system Plant Varieties Protection Act 2021 Highlights of the new Plant Varieties Protection Act 2021  Promote increased staple crop productivity for smallholder farmers in Nigeria  encourage investment in plant breeding and crop variety development  Promote increased mutual accountability in the seed sector  Protect new varieties of plants Plant Varieties Protection Act 2021 The Plant Variety Protection Act provides legal intellectual property rights protection to breeders of new varieties of plants which are sexually reproduced by seed or tuber-propagated The duration of protection of registered varieties differs Trees and vines -18 years Other crops- 15years Who may apply for a patent? An applicant for a patent need not be the true inventor Any person can apply for a patent in respect of an invention and the first to apply is known as the statutory inventor S 2(1) PDA However, the true inventor is entitled to be named in the patent Where a person without the inventor’s consent goes ahead to apply for and obtains the patent, the rights arising therefrom are deemed transferred to the inventor Who may apply for a patent? Where an invention is made in the course of employment, or in the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or in the person who commissioned the work S2(4) PDA However, where such inventor is an employee and his contract of employment does not require him to exercise any inventive activity, but he has used data or means that his employment has put at his disposal; and the invention is of exceptional importance, then such employee is entitled to a fair remuneration taking into account his salary and the importance of the invention Patent application procedure Every patent application is made to the Registrar containing the applicant’s full name and address It should also include a description of the relevant invention with appropriate plans and drawings where necessary all in duplicates Since Nigeria is a signatory to the Paris Convention, the Act provides that an application for a patent or design be first filed in a convention country By virtue of the Patents and Designs (Convention Countries Order 1971), 75 countries were declared to be convention countries for the purpose of the Paris Convention and these are virtually all European Countries and the US Patent application procedure (S3-5 PDA) The Registrar examines every application and ensures its conformity with the provisions of the Act He may reject the application where the Act has not been complied with, or grant the patent The Registrar maintains a Register of patents in which he enters the information contained in the patent as well as other matters required by the Act to be registered The Registrar issues out a notification of the grant in a Federal Gazette containing the details of the grant S5 PDA Rights conferred by a patent S6(1) PDA  The patent confers upon the owner the right to prevent any other person from doing any of the following acts:  Making, importing, selling or stocking the product for the purpose of sale and use  A patent shall expire at the end of the twentieth year from the date of filing the relevant patent application  A patent will lapse if the prescribed annual fees are not duly paid in respect of it ( 6 months period of grace is given) Statutory exceptions to the exclusive right to use a patent Assignments Patents are a form of property and as such, they can be assigned and transferred S 24(1) The assignment or transfer shall be in writing and signed by the parties Once this has been done, the Registrar enters the particulars in a register, the parties are not entitled to any certificate  Contd. Licences: The owner of a patent is expected to exploit the patent and should ordinarily work the patent but may be unable to do this due to logistics and financial reasons or other reasons The law provides for granting licenses, either voluntarily or compulsorily, in working the patent Voluntary licenses consist of licences of right and contractual licences Licence of right: A patentee who is not precluded by the terms of any prior registered licence from granting a further licence, may apply in writing to the Registrar for the words, ‘Licence of Right’ to be registered in respect of the patent Contd. The license of right is an agreement between the patent owner and another party that allows the licensee to use the protected work without infringimg on the rights of the owner A license of right can be beneficial for both the owner and the licensee  Contd. The Registrar will register the words accordingly in the Register and notify the entry The effect of the notification is to give notice to all that the patent is available for granting licences Thereafter, any person may obtain a licence to exploit the patent on such terms as may be agreed by the parties or fixed by the court The annual fee is reduced to half upon the granting of the licence The licensee is not entitled to assign the licence or grant a further licence. It should be noted that a grantee of licence of right under this section cannot make further licence grants The patentee at any time, may apply to the Registrar to cancel the entry in the Register If licences have already been granted in pursuance of the entry, cancellation is possible only with the consent of the licensee. Section 10, PDA  Contd. Contractual licence: section 23, PDA By a written agreement, a patentee may grant a licence to any person to exploit the relevant invention Unless provided by the agreement, the patentee remains entitled to exploit the patent or to grant further licences The licensee ( the third party) cannot assign the licence If the contract permits the licensee to grant further licences, such a grant shall be governed by the same conditions that regulate the granted licence A contractual licence must be registered and is not effective against third parties until registered and prescribed fees paid Contd. The essence of the registration is to notify the public of the existence of such a licence in the Register Registration of a contractual licence is cancelled at the request of the licensor if the Registrar is satisfied that the licence has been terminated A licence can be exclusive where the right owner grants a single licensee a licence in respect of the acts in the contract or it can be non-exclusive where the right owner is free to grant licenses to other people Any agreement for the grant of either licence is void to the extent that it imposes restrictions on the licensee in the industrial or commercial field which do not derive from the rights conferred by the relevant patent or are unnecessary for safeguarding these rights Contd. In other words, a licensor can only grant a licence in respect of the rights that he has himself Where the scope of the licence extends beyond what the law has conferred to the right owner, the licence shall be void to such an extent Where joint owners are involved, a licence cannot be issued separately as it must be done jointly unless there is a contrary provision  Contd. Compulsory licence: this is a non-consensual licence permitting a third party to exploit a patented invention without the consent of the owner but is done in the interest of the public It is an important mechanism which may help in overcoming any impediment in the path of the patent system in achieving its objectives, that is, the non-working of patents locally The patent owner still has rights over the patent, including a right to be paid compensation for copies of the products made under the compulsory licence Under section 11 and in the First Schedule, the Government has the authority to grant compulsory licences Compulsory licenses can be used to address issues such as high prices of patented medicines, anti-competitive practices of patentee, failure of the patentee to meet the market demand for the invention, public health emergencies and the need for establishing a pharmaceutical industry within the jurisdiction Contd. The TRIPs Agreement does not specifically list the reasons that might be used to justify compulsory licence but the Doha Declaration on TRIPs and Public Health confirms that countries are free to determine the grounds for compulsory licences and determine what constitutes a national emergency Some of the treaties ratified by Nigeria which regulate CL worldwide is the World Trade Organisation’s agreement on intellectual property, TRIPs Agreement, the Doha Declaration 2001 and the Protocol Amending TRIPS 2005 Contd. An example is the case of pharmaceuticals, in the event that a patented drug is unavailable or unaffordable, a compulsory license may be granted to produce cheaper generic versions of the drugs locally. Articles 7 and 8, TRIPs In health emergencies, developing countries can capitalize on the use of compulsory licenses for the purpose of gaining access to affordable medicines Contd. The Patents and Designs Act provides that a person may apply to the FHC for the grant of a CL. The Act further provides that any such application shall be made upon expiration of three years after the grant of a patent or four years after the filing of a patent on any of the following grounds: Contd. A) that the patented invention, being capable of being worked in Nigeria, has not been so worked on; B) that the existing degree of working on the patent in Nigeria does not meet the demand for the product C) that the working of the patent in Nigeria is being hindered by the importation of the patented invention; and D) That the patentee refused to grant a patent license on reasonable terms, and the establishment or development of industrial or commercial activities in Nigeria is unfairly and substantially prejudiced Contd. The compulsory licence entitles the licensee to do any act which a patentee is entitled to do under the Act, but does not entitle the licensee to grant further licences The court may cancel the licence on application by the patentee if the licensee fails to comply with the terms of the licence or the conditions which justified the grant have ceased to exist Before an invention can be worked in Nigeria, there is a need to obtain licence in respect of an existing invention and a compulsory license may be granted to use the earlier invention if the inventor refuses to grant a voluntary license under reasonable conditions Contd. Hence, a compulsory license would only be granted where the latter invention serves industrial purposes different from those served by the earlier invention or it constitutes substantial technical progress in relation to the earlier invention A CL on a patent may be granted where working on another patent subsequently granted will amount to a breach of the initial patent The CL is non-exclusive and so, the CL licensee cannot grant a further license A CL may contain additional obligations and restrictions as regards both the licensee and the patentee Importance of Compulsory Licensing CL comes in handy in relation to pharmaceuticals and other life saving solutions The regulatory authority may grant a CL to a patented invention without the consent of the patentee( that is, the owner) The owner of a CL may go on to produce generic copies of the invention The generic copy is produced mainly for the domestic market and not for export The owner of the CL is typically required to pay compensation to the patentee for copies of the products made under the CL  Infringement of Patents Once a patent owner has been granted exclusive rights, and an act is carried out by a third person without the authorisation of the patent owner, an infringement of patent right will occur. Section 25, PDA An action for infringement can be brought before the Federal High Court and there will be two assessors that have expert knowledge of matters of a technological or economic nature The essence of the assessors is to understand and analyse certain technical matters in relation to patents and substantial matters bordering on novelty, inventive activity or interpretation of its claims In instituting any infringement action, the person entitled to sue may be the patent owner or an assignee Contd. Where there are acts of infringement, the licensee by a registered letter, require the licensor to institute infringement proceedings in respect of any acts of infringement indicated by the licensee in the letter. Section 26(4) If the licensor unreasonably refuses or neglects to institute the proceedings, the licensee may institute them in his own name, without prejudice to the right of the licensor to intervene in the proceedings To succeed in an action for infringement, the court established four grounds: A. that the invention was patentable and had been registered as a patent under PDA Contd. B) that the defendant did an act reserved for the patentee under section 6 which constituted an infringement of the patent right C) That the act of infringement was done without the consent or licence of the claimant D) that the act of infringement falls within the scope of a valid claim of the claimant’s patent The above points was established in the case of James Oitomen Agboronfo v. Grain Haulage and Transport Ltd. Under the infringement of patent, an assignment or a licence shall not be enforceable against third parties unless it has been registered; Sections 23(2) and 4, PDA Contd. Arewa Textiles Plc v. Finetex Ltd. Where an assignee and licencee have not registered these contracts with the Patents Registry, such cannot validly bring an action for the infringement of rights transferred under the assignment or licence Liability for infringement can only arise where the acts of the defendant takes place after the date of filing of the patent since upon grant, the term of the patent commences from the date of filing of the patent under section 7(1) PDA Therefore, acts carried out before the date of filing of the patent would therefore be non-infringing since no monopoly rights existed with respect to the invention Contd. For an infringement to lie against the defendant, the defendant should be directly responsible for the infringing act or linked to the infringing act. Where however, such infringing products are transported by carriers, they will not be liable for infringement. Smith, Kline & French Laboratories Ltd. v. RD Harbottle (Mercantile) Ltd. & Ors Remedies for patent infringement Although the PDA expressly makes provision for damages, injunction and accounts as available remedies but such remedies are not limited to what is in the Act Such remedies include damages, injunction, account of profit, order for seizure and inspection, conversion/delivery up, destruction Defences to infringement actions: the usual defence is that the alleged infringement does not fall within the scope of the patent in the suit The defendant can state that the patent lacks novelty, that the invention is obvious, that the invention is not useful, or that the registration of the patent is invalid