EXPLOITING PATENT RIGHTS IN NIGERIA: THE CASE OF BEDDINGS AND STRANGE BEDFELLOWS

On the 5^th of June, 2012, a Federal High Court Judge delivered a remarkable judgment in Suit No FHC/ABJ/CS/82/11 instituted by Beddings Holdings Limited against INEC & 6 Others. The Hon. Justice A. Bello affirmed that the Patent and Industrial Design rights (RP 12994 and RD 5946 respectively), held by Beddings Holdings Limited (the Plaintiff) for the invention “Transparent Ballot Box” had been infringed by the Independent National Electoral Commission when it licensed the importation of transparent ballot boxes by 2 private Nigerian Companies also joined as parties to the suit, without seeking the requisite license from Beddings Holdings Limited. The imported Transparent Ballot Boxes were used for the 2011 General Elections. Beddings Holdings Limited had obtained both Patent and Design rights for the Transparent Ballot Box since January, 1998.

The Court’s ruling is significant in many ways, one of which is the somewhat extreme possibility that the outcomes of the 2011 General Elections and subsequent Electoral exercises may be nullified as a result of the unlicensed use of these ballot boxes by INEC. By importing and using these ballot boxes without the appropriate license or grant from the Inventor, INEC infringed on the right of the Patent Holder. Adopting the proposition that a bad tree cannot yield good fruit, it would appear that the infringement taints the results that proceed from the illegal use of the Transparent Ballot Boxes. This is a clear example of an instance where the courts have placed precedence on the personal rights of an individual over public policy.

A patent is a right granted to an inventor over an invention allowing the inventor to exclude others from manufacturing, using, importing, offering for sale or selling the patented invention.

Section 6 (1) of the Patents and Designs Act, Cap P3, LFN 2004 provides that:

6 (1) A Patent confers upon the Patentee the right to preclude any other person from doing any of the following acts-

(a) Where the patent has been granted in respect of a product, the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use; and

(b) Where the patent has been granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process, any of the acts mentioned in paragraph (a) of this subsection.

This case should serve as a lesson that Public (and Private) sector Organizations must respect and value the intellectual assets of any and all Nigerians. This is a Fundamental Right protected by the 1999 Nigerian Constitution.

Section 44 of the 1999 Constitution of the Federal Republic of Nigeria states that:

44. (1) No moveable property or any interest in an immovable property shall be taken possession of compulsorily and no right over or interest in any such property shall be acquired compulsorily in any part of Nigeria except in the manner and for the purposes prescribed by a law that, among other things –

(a) Requires the prompt payment of compensation therefore and

(b) Gives to any person claiming such compensation a right of access for the determination of his interest in the property and the amount of compensation to a court of law or tribunal or body having jurisdiction in that part of Nigeria.

Unfortunately the court did not expressly address the effect of the infringement on the 2011 Elections and INEC’s electoral activities as the Plaintiff didn’t raise clear-cut issues along that line.

Another significant point that must not be lost on us is the Nigerian Judiciary’s increasingly amicable disposition to speedily protecting the rights of Intellectual Property owners. In the past, the slow, protracted litigation system served as a disincentive to the prosecution of IP Infringement. Intellectual Property Owners became skeptical about seeking legal redress with no definite end in sight. In recent times, Nigerian courts have shown eagerness to rescue IP Owners, thereby giving hope to innovators and creators.

From an economic perspective, the Patent system rewards creativity and innovation through the guarantee of exclusive rights of ownership to inventors. In return for this protection, the inventor (also called the Patentee) is required to disclose the workings and components of the invention, in order to promote widespread dissemination of innovation. This information is available to the public and may be used to create newer inventions, technologies, goods and services and so on. Securing Patent protection is the first step towards exploiting and commercializing an invention.

It is very unfortunate that we lose our Newtons, Einteins, Steve Jobs and Bill Gates, daily. Many Nigerian inventors and innovators live in obscurity, working from hand to mouth under hard conditions. They are hidden away in dark hallways and dirty corridors; confined to dilapidated stairways in Computer Village, Alaba international Market, Ladipo Market and similar locations around the country. Many would-be inventors are deactivated or neutralized by JAMB and the educational system; they are forced into professions without regard to their natural aptitude and live repressed and unfulfilled among the working class.

Nigeria already loses Trillions of Naira annually in lost revenue and opportunity cost from unexploited Intellectual Assets. The commercialization process will create thousands of jobs, generate revenue for Government in the form of taxes and filing fees and improve the quality of life of the citizenry and significantly boost our GDP.

The Beddings Holding judgment presents a ray of hope for the Nigerian inventor. Current reality, based on a personal study conducted in conjunction with the Intellectual Property Institute Nigeria, shows that over 95% of the registered patents in Nigeria belong to foreigners and non-Nigerians. Does this mean Nigerians don’t invent or are not creative?

Nigeria can boast of Mohammed Abba, Oviemo Ovadje, Emeka Emeagwali and other notable inventors. A cursory perusal would show that Nigeria is a country of innovators replete with inventors in various fields. Tragically, the commercialization process is largely misunderstood and these inventions are neither protected nor properly exploited. For example, a common assumption is that Patents apply only to mechanical inventions. Patents can be obtained and exploited for inventions in practically all fields of endeavor. Nigeria is a country in need and Necessity, the mother of invention, is a Nigerian citizen. The multi-faceted problems in every area of society present us with the opportunity to invent our way out! In the 21^st Century, we must recognize the need to innovate our way to the future.

The Patents and Designs Act, Cap P2, LFN 2004, states the requirements for patentability in Nigeria. In particular, Section 1 (a) and (b) provides that (emphasis mine)

(1) Subject to this section, an invention is patentable-

(a) If it is new, results from inventive activity and is capable of industrial application; or

(b) If it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

We can create new innovative solutions that solve everyday problems. Young Nigerians need to see the bigger picture; if we are to build a future for this country, we must take advantage of innovation, invention and creativity to reinvent Nigeria.

©2012 Folarin Aluko.

Folarin Aluko, a Legal Practitioner, is a Director of The Intellectual Property Institute (Nigeria)

e: fola.aluko@ipinstitute.org.ng

INTELLECTUAL PROPERTY ORGANIZATIONS IN NIGERIA

REGULATORY AGENCIES

Nigerian Copyright Commission

In order to ensure the effective co-ordination and administration of activities relating to copyright, as well as to further strengthen the copyright system in Nigeria, the Nigerian Copyright Commissionwas first established by the 1988 Act as the primary agency with the responsibility of regulating copyright matters in Nigeria.

The Commission also regulates and oversees the establishment and operations of Collective Societies for the various classes of copyright protected works.

The Commission is currently set up as a Federal Agency under the supervision of the Federal Ministry of Justice.

www.copyright.gov.ng

 

The Nigerian Intellectual Property Office

Also known as the Trademarks, Patents and Designs Registry, The Nigerian IPO regulates the administration of Industrial Property in Nigeria. The IPO is set up as a department under the Ministry of Trade and Investment (formerly Ministry of Trade and Commerce) and is responsible for the management of Trademarks, Patents and Designs applications in Nigeria.

These management powers are conferred by the provisions of the Trademarks Act, and the Patents and Designs Act.

Filings and searches at the IPO are conducted manually as the IPO’s online web portal has not commenced.

The National Film and Video Censors Board

The National Film and Video Censors Board was established by Act No. 85 of 1993 as the official regulatory agency for the film and video industry in Nigeria. The Board censors, classifies and rates both films and video works produced in Nigeria, and foreign films and video works imported for the Nigerian market. The Board also licences and registers all film and video outlets across Nigeria and keeps a register of the registered outlets among other functions

www.nfvcb.gov.ng

The National Office for Technology Acquisition and Promotion (NOTAP)

NOTAP is a government Agency created to nurture creative talents, identify researchers and inventors and create an enabling environment for inventors and creative works among other things. NOTAP’s core activities include Evaluation/Registration of Technology Transfer Agreements; Promotion of Intellectual Property; Technology Advisory and Support Services.

NOTAP currently seeks to assist local inventors in the process of promoting and exploiting inventions and innovations carried out by government funded research institutes and private sector organizations.

www.notap.gov.ng

 

LEGISLATIVE INSTITUTIONS

The National Assembly

The National Assembly is the legislative arm of the Federal Republic of Nigeria. It is a bi-cameral legislature divided into the Senate and House of Representatives. The National Assembly is constitutionally vested with the law making responsibilities and powers for the enactment of Federal Law and the operation of the Federal Capital Territory.

Under the Nigerian Federal structure, the National Assembly (to the exclusion of the State Houses of Assemblies) has sole legislative powers to enact, amend and repeal laws pertaining to Copyright, Trademarks, Trade or Business Names, Patents, Industrial Designs, and Merchandise Marks.

The National Assembly is currently undergoing a review of the Nations IP Laws with a view to bringing the laws into conformity with current realities and Nigeria’s obligations under various International Treaties.

Minister for Trade and Investment (former Minister for Commerce and Industry­­­)

The Minister for Trade and Investment is empowered by both the Trademarks Act, and the Patents and Designs Act to make Regulations and Rules of procedure governing the administrative and procedural operations for the registration of Patents and Industrial Designs in Nigeria. The Minister may also declare by Federal Gazette what Countries are convention countries for the purpose of the registration of Trademarks, Patents and Industrial Designs.

The Patent and Designs Rules of 1971 are in the form of subsidiary legislation to regulate the procedure and operation of the Patents and Designs Act.

 

DISPUTE RESOLUTION INSTITUTIONS

The Federal High Court

The 1999 Constitution of the Federal Republic of Nigeria vests exclusive jurisdiction in the Federal High Court to handle disputes relating to copyright, patent, trademarks and passing-off, industrial designs and merchandise marks.

In addition to its original jurisdiction, the Trademarks Act and the Patents and Designs Act convey an appellate jurisdiction on the Federal High Court over the proceedings of the Registrar at the Tribunal.

 

The Trademark/Patent Tribunal

The Registrar of Trademarks sits as a Tribunal to adjudicate over disputes and applications arising from the operation of the Trademarks Act.

The Registrar has the power to hear and decide upon contentious and non-contentious applications including applications arising from Trademark Opposition proceedings. The Registrar may make, expunge or vary an entry into the trademark register at the application of an interested person.

The Tribunal also adjudicates on appeals against the refusal of trademark applications by Trademark Examiners.

The Trademarks Act also permits an Applicant to apply to the Federal High Court to exercise the powers of the Trademark Tribunal.

CIVIL SOCIETY ORGANIZATIONS

Collecting Societies

Copyright Society of Nigeria (COSON)

COSON is a non-profit making organization of all owners of copyright or neighbouring rights in musical works and sound recordings. In the year 2000, existing collective management structures in Nigeria came together as one body in order to create a stronger force in the fight against copyright infringement and other forms of piracy in Nigeria, this coalition however took effect between 2009 and 2010.

http://www.cosonng.com

The legal status of other unregistered collecting societies and associations for musical works (such as the Musical Copyright Society of Nigeria) is currently uncertain in the light of recent litigation regarding same.

 

REPRODUCTION RIGHTS SOCIETY OF NIGERIA

Reproduction Rights Society of Nigeria (REPRONIG), Nigeria’s collecting society for reprographic rights. REPRONIG was licensed to operate as a collecting society for reprographic rights in late 2003 with funding support from KOPINOR, the Reprographic Rights Organization of Norway.

www.repronig.org

 

Anti-Counterfeiting Collaboration (ACC) Nigeria

The Anti-Counterfeiting Collaboration (ACC) Nigeria, a brainchild of Aluko & Oyebode (an innovative Nigerian Law Firm), is a non-political, non-governmental, not-for-profit coalition formed as a pressure group to assist in the reform of Intellectual Property Laws in Nigeria. The aim of the ACC, Nigeria is to bring brand owners, regulatory agencies, interest parties and the public together in order to fight against counterfeiting, infringement and piracy in Nigeria.

The ACC carries out regular meetings and programs including the ACC/INTA Annual Round Table organized in conjunction with the International Trademark Association (INTA).

www.anticounterfeiting.com.ng

 

Intellectual Property Institute Nigeria (IPIN)

The Intellectual Property Institute Nigeria (Ltd/Gte) is a non-profit organization established to promote the use of intellectual property and intellectual capital as tools for social, technological and economic growth. The Institute also seeks to increase the awareness and understanding of the use of intellectual property through activities including IP research, public enlightenment, specialized training and workshops, technical assistance, institution building and consultative forums.

www.ipinstitute.org.ng

www.facebook.com/ipinstitute.ng

PUBLISHING

Nigerian Intellectual Property Law Reports

The Nigerian Intellectual Property Law Reports is a dedicated report of judicial pronouncements and decisions on Copyright, Trademarks, Patents and Industrial Designs in Nigeria from 1917-2011.

The NIPLR is published by Alexander Payne & Co and is currently available in 6 volumes.

www.alexandernigeria.com

NIGERIA’S INTELLECTUAL PROPERTY PROFILE

LOCAL REGULATION

THE COPYRIGHT ACT

Copyright is a bundle of exclusive rights granted by Government to the creator of an original work for a limited period of time, in exchange for the public disclosure of the work. Copyright protected works fall into eight broad categories:

• Literary Works including books, software code, sheet music, poetry, short stories and plays and works that incorporate text.
• Musical Works including musical compositions, instrumental compositions, songs and compositions accompanied with words.
• Artistic Works including paintings, artwork, architectural designs and drawings.
• Cinematograph Films including videos, movies and recorded dramas or screenplays.
• Sound Recordings include any record of a sequence of sounds capable of being heard by the ear, other than musical compositions.
• Broadcasts including sound or video broadcasts through wired, wireless, satellite or cable transmission; and rebroadcasts of any broadcast.

In addition to these categories, the Copyright Act also protects ‘Neighbouring Rights’ including the Expressions of Folklore and Performer’s Rights. The Act grants Performers the exclusive right to control the performing, recording, live broadcast, reproduction and adaptation of a dramatic, dance, musical or literary performance.

The Copyright Act, Chapter C28 of the Laws of the Federation of Nigeria 2004 regulates the operation and administration of Copyright in Nigeria. The Act establishes the Nigerian Copyright Commission (NCC) to oversee the operation of the Act, the NCC is also and conferred with wide powers which include the authority to prosecute infringement, license collective management societies and manage licenses for indigenous works.

Collective Management Organisation Regulations 2007

The NCC in the exercise of its regulatory powers established the Collective Management Organisation Regulations to guarantee order and fairness in the administration of Collecting Societies licensed by the NCC to operate in Nigeria.

Optical Discs Plant Regulations 2006

The NCC regulates the operation of Optical Disc Production Plants to improve the operation of local production of optical discs and to curb the unauthorized (pirated) local manufacture of optical discs.

The Nigerian Copyright Commission also runs and administers the Copyright Notification Scheme for the administrative registration of copyrightable works; and the Video Rental Scheme to govern the accreditation, registration and regulation of Video rentals in Nigeria.

 

TRADEMARKS ACT

A trademark is any brand, word, mark, logo, design or combination of any of these characters used in the course of trade. Trademarks are the principal form of protection for securing brand identity and goodwill which are integral to the operation of businesses in Nigeria. A trademark owner has the exclusive right to

• Use the trademark to identify goods and/or services
• Prevent others from using or marketing goods and/or services under the same or similar trademark
• Authorize the use of the trademark by others for a fee or interest.

The TMA provides that only registered marks can seek redress for Trademark infringement. Unregistered brands can however seek redress through the law of Passing-Off.

The Trademarks Act, Cap T 13, LFN 2004, was enacted on the 1^st of June 1967. The Act regulates the registration, renewal, assignment and administration of trademarks, logos, symbols and emblems including Collective Marks.

The TMA establishes the office of the Registrar of Trademarks, who is the administrative head of the Trademarks registry and Trademark Tribunal to adjudicate over disputes arising from or related to the TMA. The Registrar is vested with both administrative and semi-judicial powers.

Trademark Regulations

The Registrar of Trademarks is empowered by the TMA to make Regulations governing the practice, prescribing fees, imposing restrictions, classifying goods and for regulating the business of registration of Trademarks in Nigeria.

The Trademark Regulations form the Rules of Procedure that guide both Contentious and Non Contentious Trademark applications.

  

PATENTS AND DESIGNS ACT

The Patents and Designs Act (PDA) serves the dual function of providing for the procedure for the administration and registration of both Patents and Industrial Designs in Nigeria.

 

Patents

A Patent is a monopoly right granted by the Government of a country to the Creator or owner of an invention. The Act protects mechanical, pharmaceutical, electrical/electronic, medical, aesthetic, utility inventions among others). A Patent right grants the Inventor sole control (to the exclusion of all others) over the financial, technical and logistical aspects of the invention, subject to general restrictions. Patent rights are granted to reward inventor’s contribution to the development in society in exchange for the Inventor’s publishing the technical details of the invention.

Sections 1-11 of the PDA provide the general legal framework governing the registration and administration of Patents in Nigeria, from the requirements for patentability to Compulsory licenses.

Section 30 PDA empowers the Minister for Trade and Investment (formerly Minister for Trade and Tourism) to make Rules for the administrative and procedural regulations necessary to facilitate the registration of Patents under the Act.

Patent Rules 1971

The Patent Rules are enacted by the Minister of Trade and Investment pursuant to the Patents and Designs Act, to serve as the administrative and procedural framework regulating the registration of Patents in Nigeria.

The Patent Rules oversee the payment of fees, the use of forms and other documents, the procedure for application, procedure for examination, registration and publication of patent grants, the use of evidence and the judicious exercise of the Registrar’s discretionary powers among others.

Industrial Designs

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features, such as the shape of an article, or two-dimensional features, such as patterns, lines or color. Industrial designs are applied to a wide variety of products of industry and handicrafts such as technical and medical instruments, watches, jewelry, house-ware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and other luxury items.

Industrial designs make an article attractive and appealing, thereby adding to its commercial value and increasing its marketability.

Under the Patents and Designs Act, the owner of a protected industrial design is granted the right to prevent unauthorized copying or imitation of the design by others. This includes the right of making, offering, importing, exporting or selling any product in which the design is incorporated or to which it is applied.

Designs Rules 1971

The Designs Rules 1971 were also enacted pursuant to the Section 30 of the PDA. The Rules also lay out the administrative and procedural framework governing the registration of Industrial Designs in Nigeria.

Patents and Designs (Convention Countries) Order 1971

The Patents and Designs Order of 1971 contains a list of 76 Countries declared to be Convention Countries for the purpose of claiming Foreign Priority in the registration of Patents and Industrial Designs under the PDA.

MERCHANDISING MARKS ACT

The Merchandising Marks Act was enacted to prohibit and criminalize the counterfeiting of registered trademarks by unauthorized persons; and the importation and sale of counterfeit goods. The operation of the Act applies to trademarks registered in Nigeria.

(c) 2012

*Published in Eureka! Nigerian IP and Innovation Magazine

THE ENTREPRENEUR’S 6 TIPS: PROTECTING YOUR PROPOSAL IDEA

Entrepreneurs (Runs Men) face several challenges when trying to sell ideas to prospective investors/companies. Let’s face it, we all hear stories of Company ‘X’ turned down Mr. Y’s proposal then suddenly developed a prototype that was strikingly similar making tons and tons of profit in the process!

Whether these tales are true or not, they contain a seed of truth concerning ideas and proposals: In today’s knowledge economy, the entrepreneur must take the necessary precautions to protect his/her ideas.

Here’s a short list of helpful suggestions.

🙂

• SHARPEN THE SAW: CONDUCT AN IP AUDIT

In simple terms, an Intellectual Property audit involves identifying the IP assets in an idea, reviewing the processes in place to generate and protect your intellectual property rights. Business ideas often contain a variety of intellectual property components so you need to identify what the IP assets are and how they can be exploited. For example, your idea may incorporate an invention or a novel business process which you will need to patent, a brand which you may have to register as a trademark; software, music or artistic creations which would enjoy copyright protection.

Identifying the IP components of your idea proposal will open up your eyes to several profitable ways in which you can exploit your idea. You may start to consider whether to assign or grant a non-exclusive license; whether to transfer only distribution rights while retaining production rights; or whether to be remunerated through royalties, a one-off payment or both etc.

• THE BIG PICTURE: A DETAILED PROPOSAL

Yes! As basic as this may sound, your idea must be reproduced in a detailed, concise document highlighting the key features of the concept and its various components. You should also include a financial outlay showing as clearly as possible the cost of implementing the idea and the financial benefits to the potential investor or company. Your proposal should also highlight the value of non-financial assets such as patents; copyrights; trademarks; goodwill and brand value. 😉

• GET PROTECTION: REGISTER IT!

Once your idea has been set to paper (or any presentation format), and you have identified the various intellectual components, you will need to secure the various expressions of your idea. You might consider applying for a patent license for an invention or a novel business process; registering a trademark to protect a brand or design; applying for a copyright notification certificate for the artistic, visual or audio components of your idea.

Truthfully, proving originality of an idea proposal could be rather onerous; however, your proposal document is a literary work and qualifies for Copyright protection under the Nigerian Copyright Act. A Copyright Notification Certificate, issued by the Nigerian Copyright Commission, may be used to show that you had the idea before approaching the recipient company. The Certificate also contains information, given under oath, regarding the name(s) of the creator(s), the date of creation and details of any license or assignment.

• THE SECRET WEAPON: THE CONFIDENTIALITY/NON-DISCLOSURE AGREEMENT

You should request that the recipient company sign a simple confidentiality/non-disclosure agreement before submitting your proposal, especially if the recipient can steal the idea and implement it. A confidentiality agreement offers specific protection when you need to disclose information about your idea to a prospective buyer. It states that the information contained in your proposal is proprietary and should not be shared, copied or disclosed without your permission. Disclosure is essential to the security of your idea. Always disclose the minimum necessary to seal the deal, without being fraudulent or misleading. This allows you maintain substantial control over your idea. Also, ensure that the representative of the recipient you are dealing with has the authority to receive the idea on behalf of the company.

• BLAZE YOUR PATH: ALWAYS LEAVE A PAPER TRAIL

When submitting your proposal for consideration, be sure to obtain an acknowledged duplicate copy of the proposal as proof of submission. The recipient should acknowledge receipt of the proposal and indicate the name and designation of the receiving officer, the date and time of receipt and the recipient’s official stamp or seal. Your acknowledgment copy serves as evidence of submission of the idea to the company in the event of litigation.

Also, far as possible, use letters for all correspondence with the company.

• TYING IT ALL UP: CONSULT AN EXPERT

Seeking professional advice from a Lawyer, Accountant, Marketing or other business development professional throughout the entire process will save you loads of time, effort and money in the end.  You will need professional advice throughout the entire process. Be sure to keep your Lawyer in the loop as developments occur.

(c) Folarin Aluko.