By Adaka Eloghene Esq.
A patent is a type of intellectual property right which affords protection and monopoly over an invention created, in the case of Arewa Textile &ors v Fintex Ltd a patent was defined as a document issued by the government upon application by an inventor which describes the invention and confers the right to prevent others from commercial exploitation such as use, sale, manufacture, export, storage for sale of the invention, as a means of promoting technological and industrial development.
As it relates to patents right, the laws governing the protection of a patent differ from one country to another, and patent protection enjoyed in one jurisdiction does not guarantee patent protection in another jurisdiction this is because intellectual property rights are territorial. This simply means that if a person registers his invention in Nigeria to enjoy a patent right, he shall only enjoy protection over his invention in Nigeria and this protection would be limited to Nigeria alone, and such if a person would wants to enjoy protection over his invention in any jurisdiction .he would need to register his invention in such country he wishes to enjoy protection.
In Nigeria, the Patents and Designs Act Provides for the regulations which guide an invention or a patent right in Nigeria, the registration of a patent in Nigeria gives the inventor an exclusive right to use, manufacture and exploit the product or process so invented for twenty years (20) . For an invention to qualify for patent registration Section (1) of the patent act provides for three requirements which include for such invention to be
- New
- Result from an inventive activity
- Capable of industrial application
New – The first requirement, newness or novelty, entails that a discovery must be completely unknown anywhere in the world when the application for the patent is filed, thus where anybody had made the discovery before the applicant, or even if the applicant himself had disclosed the discovery before the filing of the patent application, a valid patent could not be granted to him. Thus, an invention ought not to be disclosed either by publication at any time either oral, written or by usage .
The next element inventive activity entails an invention must stem from a creative idea and should be a step not noticeable to persons skilled in a particular field . Essentially, this means that the invention should not be obvious to a person skilled in the art of the field to which the invention relates, and where it is obvious to such experts. It lacks inventiveness and cannot be termed an invention. In Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd.]; it was held that in considering whether an invention is obvious, it is necessary to examine the question of whether the new product or process could have been suggested by persons skilled in the art and undertaking a study of other relevant documents which a diligent researcher would know about.
The last element considered under the Act is industrial application entails the invention capable of “being manufactured or used in any kind of industry” and useful to provide some practical benefit .
OWNERSHIP OF A PATENT MADE IN THE COURSE OF EMPLOYMENT IN NIGERIA
In determining ownership of a patent in Nigeria, the legal principle of inventorship status and ownership has to be clearly understood as it relates to patent. Inventorship status under patent right deals with an individual or set of individuals who have contributed to the creation of subject matter , while The concept of ownership is associated with the parties (individuals or entities) who own the proprietary or exclusive rights of an invention and can enjoy the commercial benefits of such invention provided which include bargaining power, market exclusivity and licensing power.
While it is very straightforward in most cases as to who owns a patent, in the course of employment it’s common for issues to arise as to who owns the patent over an invention made by an employee under the course of employment, or when a person has been commissioned to make an invention for a fixed price on behalf of another.
In determining who owns the right to a patent made by an employee in the course of employment in Nigeria, Section 2(4) of the Patent and Designs Act gives guidance as it provides that “Where an invention is made in the course of employment or the execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or, as the case may be, in the person who commissioned the work”. An invention can however be said to be in the course of employment where an employee makes use of an employer’s time, resources such as data, money, lab, materials equipment etc in coming up with an invention.
In The common law case, Patchet v Sterling the court further interpreted the phrase “ in the course of employment “ to mean where an employee makes use of an employer’s time and resources in making an invention which falls within his duty.
in an instance where an employee makes an invention in his spare time (outside of his working hours ) and does not make use of any of his employer’s materials , such an employee would own the right over such invention.
Questions might also arise as to who owns the right over an invention when an employee makes such an invention during his spare time but uses the materials on his employer .or makes an invention that his contract of agreement did not require him to make in the course of employment . The Act in Section 2(4a) answers this by stating that where an employee makes an invention which his contract of employment does not require him to exercise any inventive activity but he has in making the invention used data or means that his employment has put at his disposal such employer shall have the right over such invention and such an employee shall be entitled to fair remuneration taking into account his salary and the importance of the invention.
The Act also goes further in Section 2(4)b to provide that in an instance where an employee in the course of employment makes an exceptional invention, such an invention shall belong to his employer and he shall also be entitled to a fair remuneration taking into account his salary and the importance of his invention . For instance, where an employee scientist who works in a university invents the cure for cancer or covid 19 in the course of his employment such would be viewed as being of exceptional importance, and such an employer (the university ) would be deemed to be the owner of such an invention and provide such employee with fair remuneration for coming up with such an invention
In conclusion, it can be seen that where an invention is made by an employee in the course of employment, his or her employer would be deemed to own the rights over such an invention, and in an instance where such an employee applies for a patent over such an invention, his or her employer has the right to order for the transfer of such a patent to himself
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Adaka Eloghene Esq. can be reached on her Email: Adakaelo@gmail.com
