The flaws in Patents and Designs Act By Abdullahi Mustapha


I read the article by Dr. Jibrin Ibrahim titled “Scandals galore as judiciary becomes direct threat to electoral democracy” in the Daily Trust of June 15, 2018.
Indeed, what he observed about the process of registering patents in Nigeria has been a source for concern for Nigerian engineers because of the ease with which patents are readily granted, even for frivolous claims to inventions.
Patent registration the world over, is a serious and rigorous exercise, usually carried out through checking, verification and evaluation of products and processes by highly qualified persons familiar with technological inventions.
The exercise cannot be carried out in less than a year, unless if the patent request happens to be an extension of previous patents granted earlier.
First, what is a patent? It is an exclusive right granted for an invention which must be a new product or process of doing something.
Also, it could be a new technical solution to a problem.
What is patentable? A material for patenting must meet the criteria of inventiveness, novelty and industrial applicability.
Thus, a concept, idea, mathematical formulation or publication likely to incite or encourage immoral behavior are all not patentable.
Also, in the case of Nigeria, plant and animal varieties, or biological processes for the production of plants and animals other than microbiological processes are not patentable.
Similar exclusions of non-patentable products are made in other countries.
For example, in the United Kingdom, computer programs are not included under products to be patented.
The Patents and Designs Act of 1971, Cap 344 governs the registration of Patents in Nigeria.
The licensing of patents is by the Registrar of patent, trademark and industrial design under Department of Commercial Law of the Ministry of Commerce and Investment.
Waiting time after submission of application Waiting time, from the time of submission to granting a patent varies from one country to another.
For example, patenting in the UK is through the process of first submitting patent application to UK Intellectual Property Office.
From the date of submission, is established, a priority date.
To obtain foreign patent protection under the Patent Cooperation Treaty (PCT) involving about 135 countries, the whole process from the date of submission to granting of patent would take up to 36 months.
In the case of USA, the average waiting time until the U.S.
patent and Trademark Office USPTO grants application for a patent is 32 months.
In Nigeria, examination of application for patent registration is by the Registrar who is required by law to only ascertain that the application is in conformity with the sated procedure.
These include, request for a patent, applicant’s name and address, specification of claim or claims, plans and drawings, if any, a declaration by the true inventor and lastly, payment of the prescribed fees.
The law does not require the Registrar to verify the claims as to the novelty, inventiveness and industrial applicability of the invention.
Patent is thus granted at the risk of the patentee without guarantee as to its validity which is one of the serious flaws in the Patents and Designs Act.
Thus, without the requirement for claims to be verified, waiting time is likely to be much shorter.
That was how patents were granted to Bedding Holdings, just 2 weeks after submitting an application.
Although one can apply directly to the Registrar for patents, it would appear that because it is a highly technical exercise, processing of patents is carried out by the National Office for Technology Acquisition and Promotion (NOTAP) under the Federal Ministry of Science and Technology, on behalf of the Registrar, who invariably, is a lawyer to eventually grant the license.
Unfortunately, NOTAP in its current form, would appear to lack the expertise with the necessary technical know-how to undertake the rigorous exercise of checking, verifying and evaluating often, complex technical and engineering inventions.
The Office would need among its Principal Officers, highly qualified engineers and technologists with experience in applied research, who can evaluate the technicality and novelty of new engineering machines and designs.
There is thus, the need to build the capacity of NOTAP if it has to carry out the functions of processing with due diligence, applications for patenting complex engineering equipment and designs otherwise, patents issued in Nigeria will not attract international rating or patronage of either foreign or local industrialists and manufacturers.
The case of the Minister revoking the patents issued to Bedding Holdings in 2014 could have been dealt with conveniently much earlier, under Section (15) of the Patents and Design Act which states, “ Notwithstanding anything in this Act, where a Minister is satisfied that it is public interest to do so, he can authorize any person to purchase, make, exercise, vend any patented article or invention for the service of a government agency in the Federal republic” This authority can be given before and after the relevant patent has been granted.
It would however appear that, there was laxity by government because the Ministry of Commerce did not issue such an order before INEC awarded contracts for the supply of items it needed for elections in 2011 or thereafter.
That, perhaps, would have absolved INEC and its contractors from liability for infringement.
Nigeria standing in the world on patents In assessing a patent, holding a US patent has been the yardstick to measure the inventiveness of any nation and its individuals.
For example, from 1977-2014, America produced the highest number of patents in the world, put at 2,874,103, followed by Japan-1,014,977.
Among the African countries on the list, South Africa had the highest number with 4,401 followed by Egypt-245, Kenya – 85, Morocco- 51 and Nigeria- 36 patents.
Indeed, unknown to many, including perhaps NOTAP staff, is a Nigerian, Dr.
Patrick Usoro from Akwa Ibom State who was the best graduating student in the Faculty of Engineering in ABU Zaria in 1977.
He went on to obtain doctorate degree in engineering from MIT, USA and joined GM motors, rising to Senior Technical Fellow.
He is now listed among the prolific inventors in the world, with 205 patents as at 2016.
He has since been receiving numerous awards for his inventions and being a US citizen, all his patents are credited to USA.
NOTAP and the Registrar should invite this brilliant Nigerian to come and assist them to develop appropriate procedure for registering patents.
In conclusion, it is recommended that the Patents and Designs Act of 1971, Cap 344 should be reviewed urgently to ensure, all applications for registration of trademarks, patents and industrial designs undergo rigorous peer review.
This will prevent a future recurrence of the current scandalous situation and also, enhance the status of patents granted in Nigeria.
Professor Mustapha writes from Abuja


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