RIGHTS CONFERRED BY PATENT AND EXCEPTIONS

An invention, by itself, is not like physical property that we own. But when a
patent is used to protect an invention, the act of patenting makes it a kind of private
property that the owner can control. But, in some respects, the rights in a patent are
comparable to those of a title deed of a piece of land. A patent confers on its owner
a legal right, as in the case of land, to stop all others from trespassing on the
invention, just like the owner of a piece of land has the right to stop trespassers
from entering, using or occupying his land.1

By Section 6 (1) of the Patents and Designs Act Cap. P2, Laws of the
Federation, 2004, the grant of a patent confers on the patentee the right to
preclude all other persons 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

From the above provision of the Act, a Patentee enjoys monopoly in making,
importing, selling or using the product or applying the process for the duration of
the patent granted. In determining the scope of right conferred in Section 6(1) of
the Act, the terms of the claims and the description included in the patent will be
put into consideration.2 This principle was illustrated in the case of Abgoronfo vs
Grain Haulage and Transport Limited,3 wherein the court held that the
defendant was liable to the plaintiff for the infringement of his patent because the
key components of his invention were covered by the claims of the plaintiff.

1
World Intellectual Property Organization, Inventions and Patents, Module 3
https://www.export/sites/www/sme/en/documents/pdf/ip_panprama_3_learning_points.pdf,
accessed on 11th May, 2023
2
Section 6(2) of the Patents and Designs Act Cap. P2, Laws of the Federation, 2004
3
1997 (2003) 4 I.P.L.R. 139
Statutory Exceptions to the right conferred on a Patentee
The preclusive right is however limited by the further provisions of subsection 3 of
Section 6 aforesaid as follows:

(3) The rights under a patent –

(a) shall extend only to acts done for industrial and commercial
purposes; and

(b) shall not extend to acts done in respect of a product covered by the
patent after the product has been lawfully sold in Nigeria, except in so
far as the patent makes provision for a special application of the
product, in which case the special application shall continue to be
reserved to the patentee

It is clear from the above provision that whilst importation for private use of a
patented product is allowed, importation of or otherwise, dealing in the same
product for a commercial purpose would be in infringement of patent. In other
words, private, experimental, educational or research use is exempted.

Section 6(4) of the Act4 provides that where at the date of the filing of a patent
application or at the date of a foreign priority validly claimed in respect of the
application, a person other than the applicant was earlier conducting an undertaken
in Nigeria and was in good faith manufacturing the product or applying the process
or had made serious preparation with a view of doing so for the purpose of the
undertaking, that person can continue to exercise all rights conferred by section 6
of the Act for the time being conducting the undertaking.

Considering the requirement of newness and novelty in invention sought to be

patented, it would seem that if such a situation exists, then the patent granted could
not have been new at the date of filing. Therefore, the patent would be invalid5.

4
Patents and Designs Act Cap. P2, Laws of the Federation, 2004
5
An Overview of the Law of Patent http://www.nigerialawguru.com/articles/intellectual%20property
%20law/AN%20OVERVIEW%20OF%20THE%0LAW%20OF%20PATENTS%20IN%20NIGERIA.pdf, accessed
Compulsory Licensing
Since it is the object of Patent Law to encourage the development of new
industries, it would be pointless to allow an inventor to patent his invention and
then do nothing about it and indeed prevent anyone else from making the new
invention available to the public.6 Thus by the provisions of the First Schedule of
the Patentn and Designs Act, Cap P2 Law of the Federation, 2004, the right of the
patentee to his invention conferred by the Act is also subject to the issuance of
compulsory licence for the use of the patented invention.

A compulsory license is an authorization which is granted by the government

without the permission of the patent holder. A compulsory licence is also defined
as one that can be granted to third parties for the use of a patented product or a
product whose patent application is pending, and this, without the approval or
consent of the patentee or potential patentee. It is usually granted in a variety of
situations including but not limited to reasons of preventing the abuse of a patent
by the patentee or to respond to national health emergency within the country
concerned or abroad.7 For instance, if there are cases of the outbreak of Avian
Influenza (bird flu) and Cholera in some parts of Nigeria, such situations could be
declared a national health emergency that could empower the Federal Government
or the States concerned to grant compulsory licences for the manufacture of the
drugs used in treating such ailments without the consent of the right holders.

Paragraphs 15, 16 and 17, Part II of the 1st Schedule of the Act8 provides thus;
15. Notwithstanding anything in this Act, where a Minister is satisfied
that it is in the public interest to do so, he may authorise any person to
purchase, make, exercise or vend any patented article or invention for
the service of a government agency in the Federal Republic.
on 11th May, 2023.
6
Babafemi F.O. (2006) Intellectual Property Law and Practice of Copyright, Trade Marks, Patents and Industrial
Designs in Nigeria: Justinian Books Ltd 1st Edition
7
Ayodele and Damola (2017) Patentability of Inventions under the Nigeria’s Patents and
Designs Act: An Examination, Vol 8 (No 2)
https://www.ajol.info/index.php.naujilj/article/view/156739, accessed on 18 May, 2023.
th

8
Patents and Designs Act , Cap. P2, Laws of the Federation, 2004
 16. The authority of a Minister under paragraph 15 of this Schedule may
be given-
a) before or after the relevant patent has been granted;
b) before or after the doing of the acts in respect of which the
authority is given; and
c) to any person whether or not he is authorised directly or
indirectly by the patentee to make, use, exercise or vend the
relevant article or invention.
17. Paragraphs 15 and 16 of this Schedule shall have effect so as to
exempt-
a) the Government;
b) any person authorised under those paragraphs;
c) any supplier of the Government or of any such person; and
d) any agent of any such supplier, from liability for the infringement of
any patent relating to the relevant article or invention and from
liability to make any payment to the patentee by way of royalty or
otherwise.

In 1997 South Africa effected an amendment to its health regulations to allow for
compulsory licences to be granted for AIDS drugs and for local pharmaceutical
companies to make cheap and affordable generic versions of those drugs. 9 Under
the TRIPs Agreement, countries have the right to issue such licenses. While the
Agreement does not limit the grounds or reasons for granting compulsory licenses,
countries can only use those grounds which are allowed by their national
legislation.10 TRIPs further states that the conditions under which a compulsory
license is granted should be regulated in accordance with the TRIPs Agreement
(Article 31). Under section 31 of the TRIPs Agreement, among other conditions, a

9
Someshwar Singh ‘Compulsory Licensing Good for US Public, Not others’
https://www.twn.my/title/public-cm.htm accessed on 22nd May, 2023 and cited by Ayodele and
Damola (2017) Patentability of Inventions under the Nigeria’s Patents and Designs Act: An
Examination, Vol 8 (No 2) https://www.ajol.info/index.php.naujilj/article/view/156739, accessed
on 18th May, 2023.
10
WCO, Indonesia. (2000).The TRIPS Agreement and Pharmaceuticals. WCO Indonesia
https://apps.who.int/iris/handle/10665/206475 accessed on 22 May 2023.
compulsory licence must be non-exclusive, non-assignable, be considered on their
individual merits, compensation to be paid to the right holder, and the legal validity
of the decision to grant such a licence and the decision on remuneration to be
subject to judicial review. In addition, it has to be established that the proposed
user would have sought the licence on reasonable commercial terms from the right
holder and has failed to get a positive response from the holder within a reasonable
time.

The Patent Act11 provides that, a person may apply to the court for a grant of a
compulsory license at any time after the expiration of four years after the filling of
a patent application or three years after the grant of a patent on the following
grounds
i. That the Patented invention, being capable of being worked in Nigeria
has not been so worked.
ii. That the existing degree of working of the patented invention in Nigeria
does not meet on reasonable terms the demand for the product.
iii. That the working of the patented invention in Nigeria is being hindered
or prevented by the importation of the patented article.
iv. That by reason of the refusal of the Patentee to grant license on
reasonable terms, the establishment or development of industrial
activities in Nigeria is unfairly and substantially prejudiced.

In addition to the grounds listed above, the Act12 provides that if an invention
protected by a patent in Nigeria cannot be worked without infringing rights derived
from a patent granted on an earlier application or benefiting from an earlier foreign
priority, a compulsory license may be granted to the patentee of the later patent to
the extent necessary for the working of his invention if the invention;
a. Serves industrial purposes different from those served by the invention
which is the subject of the earlier patent; or

11
Paragraph 1 (a-d), Part 1 of the First Schedule to the Patent and Designs Act, Cap. P2 Laws of
the Federation, 2004
12
Paragraph 2, Part 1, Ibid
 b. Constitutes substantial technical progress in relation to that last mentioned
invention.
c. Compulsory license can be granted where a patented invention in Nigeria
cannot be worked without infringing rights derived from an earlier patent.

However, if the two invention mention in the foregoing serve the same industrial
purpose, the compulsory licence may be granted only on the condition that a
compulsory license shall also be granted in respect of the later patent to the
patentee of the earlier patent, if he so request.13

For a successful grant of a compulsory license, the applicant must satisfy the court
that he has been unable to obtain such a license on reasonable terms and within a
reasonable time and also, he guarantees the court to work the relevant invention
sufficiently to remedy the deficiencies that gave rise to the application.14

After listening to both parties, the court shall decide whether or not to grant the
application. Where it grants the application, and the parties cannot agree on terms,
the court shall fix the terms having regards to the extent to which the relevant
invention is to be worked and this shall constitute a valid contract between the
parties.15

The licensee shall have the right to do any act mentioned in section 6 of the Patents
and Designs Act except importation. However, it does not permit the licensee to
grant further licenses and the grant may contain additional restrictions and
obligations on both parties. That is why a compulsory license is deemed non –
exclusive.16

On the application of the Patentee, the court may cancel a compulsory license if the
licensee fails to comply with the terms of the licensee or the condition which

13
Paragraph 3 Part 1, First Schedule to the Patents and Designs Act, Cap P2 Law of Federation,
2004
14
Paragraph 5(a) and (b), Ibid.
15
Paragraph 8, Ibid
16
Paragraph 6, Ibid
justified the grant of the license have ceased to exist 17 It is pertinent to note that,
the grant, cancellation or variation of a patent shall have no effect against third
parties until it has been registered.18

17
Paragraph 9, First Schedule to the Patents and Designs Act, Cap P2 Law of Federation, 2004
18
Paragraph 11, Ibid.