Nigeria Patent Protection: The Basics – Part 2 of a 2-Part Series

This is Part 2 of a two-part posting examining patent procurement and enforcement in Nigeria. You can view Part 1 by clicking here. This post examines working requirements, revocation proceedings, compulsory licenses and infringement.

Working Requirements

The invention described in a patent must be worked within four years of the date of filing of a patent application in Nigeria or three years from the issue date of the patent, whichever occurs later. Failure to work a patent in Nigeria may lead to the granting of a compulsory license (discussed in more detail below).

Revocation Proceedings

Any interested person or party can request the Federal High Court invalidate a patent based on any of the grounds listed in the Patents and Designs Act No. 60 {which is now the Patents and Designs Act (Act)}.  Specifically, a patent can be invalidated if:

1.  The subject matter is not patentable (for example, the subject matter lacks novelty and/or inventive activity);

2.  The description does not sufficiently describe the invention and/or the claims do not define the scope of protection or exceed the limits of the description; and/or

3.  A patent for the same invention has already been granted in Nigeria based on a prior application or an application entitled to an earlier filing date.

Compulsory Licenses

A compulsory license may be granted if:

1.  The patented invention is not being worked in Nigeria;

2.  The extent of the working does not meet the demand for the patented invention on reasonable terms;

3.  Working in Nigeria is being hampered by importation of the patented invention; and/or

4.  The establishment or development of industrial or commercial activities in Nigeria is being hampered by a lack of working of the patented invention.

A compulsory license can also be granted where a later patent cannot be worked without infringing an earlier issued patent (provided that the later patent constitutes technical progress or serves a different industrial purpose than the earlier patent).

Infringement and Enforcement

According to the Act, a patent confers on the patentee the right to prevent any other person from conducting the following acts:

1.  The making, importing, selling or using of the patented product;

2.  Stocking the patented product for sale or use;

3.  For process patents, the using or applying of the patented process; and/or

4.  Performing any of one or two with respect to a product obtained directly from a patented process.

However, exceptions to the above include:

1.  Acts not done for industrial or commercial purposes;

2.  Acts done with respect to products covered by a patent that are lawfully sold in Nigeria; and/or

3.  Acts done in Nigeria in good faith from a date prior to the filing of the patent application or the foreign priority date of the patent application (or if “serious preparations” have been made with a view of manufacturing a product or applying a process).

In Nigeria, the claims are used to determine infringement and the description (the specification and drawings) is used to interpret the claims.

The Federal High Court has exclusive jurisdiction for all patent infringement actions, and the remedies available to a successful patentee in an infringement action include:

1.  An injunction;

2.  Damages; and/or

3.  An accounts of profits.

Intellectual Property Jurisprudence & A Growing Legal Fraternity

During the last several years, a number of patent infringement lawsuits have been decided by the Federal High Court, giving credence to the fact that intellectual property jurisprudence is developing fairly well in Nigeria.

There is a growing legal fraternity of very well educated practitioners, most of whom have had overseas training.

An example of a patent infringement lawsuit in which a patent was found to be valid and infringed is Pfizer Limited v. Tyonex Nigeria Limited and Ebamic Pharmacy Limited (Federal High Court, January 23, 2007).

This case involved a Pfizer patent claiming amlodipine besylate, which was being sold in Nigeria under the brand name “NORVASC.” The defendants imported a generic version of this drug from Turkey and marketed it as “AMLOVAS.” Pfizer lodged a complaint with the appropriate regulatory authority in Nigeria, which moved swiftly to de-register the generic product, arrest the Managing Director of the first defendant company, and seal the premises of both defendants for one week.

In addition, the Federal High Court considered the validity and infringement of Pfizer’s patent and decided in favor of Pfizer, granting an injunction and damages accordingly.

Please watch the BRIC Wall for future updates on any patent litigation in Nigeria.

This post was written by Lisa Mueller and Nicky Garnett of Adams & Adams.

To read Part 1 of this two part blog, please click here.