INFRINGEMENT OF PATENT

By Amaka Ezeno, MCLArb

The Patents and Designs Act, Cap P 2, Laws of the Federation 2004 grants protection to inventions that are new or essentially better than what was made before it, or for a better way of making it. This protection is particularly necessary to creators such as technologists, technicians, pharmacists, engineers, etc. It ensures that they reap the financial and reputational fruits of their hands.

However, for some reasons like ignorance and mischief, patent rights are still infringed upon. The right to patent is infringed if another person, without license of the patentee does or causes the doing of any act which that other person is precluded from doing. It is important to state that, for infringement to occur, there must be a subsisting right of patent over the invention. Thus, unless an invention is patentable, and has, indeed, been patented, it cannot be infringed.

REQUIREMENT FOR GRANTING PATENT IN NIGERIA

To be patentable, the Patents and Designs Act has set out the conditions that an invention must meet. They are:

1. IT MUST BE NEW, RESULTS FROM AN INVENTIVE ACTIVITY AND IS CAPABLE OF INDUSTRIAL APPLICATION

The field of knowledge against which newness of a patent monopoly is judged is called state of the art.

State of art is everything concerning that art or field of knowledge which has been made available to the public anywhere and at any time whatever (by means of a written or oral description, by use or in any other way) before the date of the filing of the patent application relating to the invention or the foreign priority date validly claimed in respect thereof….

It follows, therefore, that publication by oral disclosure to another who is free to pass on the information whether fraudulently or inadvertently, in document and/or prior use will disqualify novelty. However, exhibition in an internationally recognized exhibition within six months preceding the filing for patent is an exception to the requirement of newness.

Publication includes display on a library shelf. It is not necessary that the document should have been sold in order to amount to publication. In the case of  Vander Lady v. Bamford, the court held that a patent had been anticipated by a photograph in a journal, and therefore, the filing for patent failed.

On being a result of inventive activity, inventive step is considered to be present, if having regard to the state of the art, the invention is not obvious to a person skilled in the art. Therefore, an invention is deemed to result from inventive activity if as regards method, application, the combination of methods or the product which it concerns or the industrial result which it produces, it differs from previous effort in the field. Industrial application is fulfilled if the invention can be manufactured or used in any kind of industry including agriculture.

2. THE INVENTION MUST CONSTITUTE AN IMPROVEMENT UPON A PATENTED INVENTION AND MUST ALSO BE NEW, RESULTS FROM AN INVENTIVE ACTIVITY AND IS CAPABLE OF INDUSTRIAL APPLICATION

This second condition for patentability means that the invention could be like another already in use. However, the new process must be an improvement on the old process and must also satisfy the requirement of novelty, inventive activity, and industrial application. The case of James Oitomen Agbonrofo v. Grain Haulage and Transport Ltd is instructive in this regard. In this case, the plaintiff sued the defendant for infringing his patent grant. The plaintiff had invented a harmless electric water boiler which, unlike the imported ring boiler, would prevent fire disasters.

It does not shock but will glow red and hot like the imported ring boiler. The plaintiff’s device could prevent fire disasters because it would not work if it were not filled with water, the reason being that water was made one of the components in its working mechanism. The plaintiff also used a stainless feel product which he claimed no one  has ever used before in a heating device. He was granted a patent for his invention on the ground that he satisfied the requirements of novelty and industrial applicability.

THE EXTENT OF RIGHTS CONFERRED AND INFRINGEMENT OF PATENT

Patent rights subsist for a period of twenty years from the date of filing the relevant patent application. It also renewed annually, otherwise it is rendered invalid. Consequently, where patent right has not expired and lawfully subsists, the right to patent will be infringed if another person, without license of the patentee does or causes the doing of any act which that other person is precluded from doing.

Generally, where a patent right has been granted in respect of a product, others are precluded from the act of making, importing, selling or using the product, or stocking it for the purpose of sale or use. They are also precluded, where the patent has been granted in respect of process, from the act of applying the process or importing, selling, or using the product, or stocking it for the purpose of sale or use, in respect of a product directly by means of the process.

The right of patent extends only to acts done for industrial or commercial purposes. It does 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 will continue to be reserved to the patentee.

There are also statutory exceptions to the exclusive right to the use of a patent. They are compulsory licence, or where the minister is satisfied that it is in the public interest to do so, he may authorize any person to purchase, make, exercise or vend any patented article or invention for the service of a government agency. An exception is also taken where at the date of the filing of a patent application in respect of a product or process or at the date of a foreign priority validly claimed in respect of the application, a person other than the applicant

1. Was conducting an undertaking in Nigeria and
2. In good faith and for the purposes of the undertaking was manufacturing the product or applying the process or had made serious preparations with a view to doing so.

REMEDIES FOR INFRINGEMENT

Where a claim of infringement has been successfully established, the patentee will be entitled to remedies for his loss. They include damages, injunction, account for profits, delivery up.

The plaintiff successfully showed that the defendants infringed their patent in Pfizer Inv. V. Polyking Pharmaceutical Ltd and Anor, by importing for sale Rossiden Capsules which contained the same compound Piroxicam as that of the plaintiff’s. In favour of the plaintiff, the court stated that, “Where the patentee manufactures the invention for profit, the measure of damages is the actual loss caused to the plaintiff…”

The court can also grant an order of injunction as in the case of James Oitomen Agbonrofo v. Grain Haulage and Transport Ltd, where the court the plaintiff an injunction to restrain the defendant, whether acting by its directors, officers, servants or agents from further infringing the plaintiff’s registered patent. The court can also order an account of the profits made by the defendant as a result of their infringement of the plaintiff’s patent. In appropriate circumstances, the court can also give an order for delivery up for destruction all the infringing articles in his possession or custody.