PATENTS AND DESIGNS ACT

ARRANGEMENT OF SECTIONS

Patents

SECTION

1. Patentable inventions.

2. Right to patent.

3. Patent applications.

4. Examination of application and grant of patent.

5. Form of grant, registration and publication.

6. Rights conferred by patent.

7. Duration and lapse of patent.

8. Surrender of patent.

9. Nullity of patent.

10. Licences of right.

11. Compulsory licences and official use.

Designs

12. Nature of industrial design.

13. Registrable designs.

14. Right to registration.

15. Applications for registration.

16. Examination of applications for registration.

17. Registration and publication.

18. Applications under sealed cover.

19. Rights conferred by registration.

20. Duration and renewal of registration.

21. Renunciation of registration.

22. Nullity of registration.

General

23. Contractual licences.

24. Assignments, transfers and joint ownership.

25. Infringement of rights.

26. Legal proceedings.

27. Foreign priority.

28. Registration: miscellaneous provisions.

29. Effect against the State.

30. Rules.

31. Repeals, and transitional and saving provisions.

SECTION

32. Interpretation.

33. Short title.

SCHEDULES FIRST SCHEDULE

Compulsory licences and use of patents for service of government agencies

SECOND SCHEDULE

Transitional and saving provisions

An Act to make comprehensive provisions for the registration and proprietorship of patents and designs in Nigeria and other matters ancillary thereto.

[1970 No. 60. L.N. 53 of 1971.]

[ 1st December, 1971]

1. Patentable inventions

[Commencement.]

Patents

(1) Subject to this section, an invention is patentable–

(a) if it is new, results from inventive activity and is capable of industrial applica- tion; or

(b) if it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.

(2) For the purposes of subsection (1) of this section—

(a) an invention is new if it does not form part of the state of the art;

(b) an invention results from inventive activity if it does not obviously follow from the state of the art, either as to the method, the application, the combina- tion of methods, or the product which it concerns, or as to the industrial result it produces; and

(c) an invention is capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture.

(3) In subsection (2) of this section, “the art” means the art or field of knowledge to which an invention relates and “the state of the art” means 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) be- fore the date of the filing of the patent application relating to the invention or the foreign priority date validly claimed in respect thereof, so however that an invention shall not be deemed to have been made available to the public merely by reason of the fact that, within the period of six months preceding the filing of a patent application in respect of the invention, the inventor or his successor in title has exhibited it in an official or offi- cially recognised international exhibition.

(4) Patents cannot be validly obtained in respect of-

(a) plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products); or

(b) inventions the publication or exploitation of which would be contrary to public order or morality (it being understood for the purposes of this paragraph that the exploitation of an invention is not contrary to public order or morality merely because its exploitation is prohibited by law).

(5) Principles and discoveries of a scientific nature are not inventions for the pur- poses of this Act.

2. Right to patent

(l) Subject to this section, the right to a patent in respect of an invention is vested in the statutory inventor, that is to say, the person who, whether or not he is the true inven- tor, is the first to file, or validly to claim a foreign priority for, a patent application in re- spect of the invention.

(2) The true inventor is entitled to be named as such in the patent, whether or not he is also the statutory inventor, and the entitlement in question shall not be modifiable by contract.

(3) If the essential elements of a patent application have been obtained by the pur- ported applicant from the invention of another person (or from that other person’s succes- sor in title) without the consent of that other person (or his said successor) both to the obtaining of those essential elements and to the filing of the application, all rights in the application and in any patent granted in pursuance of it shall be deemed to be transferred to that other person or his said successor, as the case may be.

(4) Where an invention is made in the course of employment or in 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:

Provided that, where the inventor is an employee, then–

(a) if-

(i) his contract of employment does not require him to exercise any in- ventive activity but he has in making the invention used data or means that his employment has put at his disposal; or

(ii) the invention is of exceptional importance,

he is entitled to fair remuneration taking into account his salary and the im- portance of the invention; and

(b) the entitlement in question is not modifiable by contract and may be enforced by civil proceedings.

(5) A person is not an inventor for the purposes of this section if he has merely as- sisted in doing work connected with the development of an invention without contribut- ing any inventive activity.

3. Patent applications

(1) Every patent application–

(a) shall be made to the registrar and shall contain–

(i) the applicant’s full name and address and, if that address is outside Nigeria, an address for service in Nigeria;

(ii) a description of the relevant invention with any appropriate plans and drawings;

(iii) a claim or claims; and

(iv) such other matter as may be prescribed; and

(b) shall be accompanied by-

(i) the prescribed fees;

(ii) where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent and giving his name and ad- dress; and

(iii) if the application is made by an agent, a signed power of attorney (so however that, notwithstanding any rule of law, legalisation or certifica- tion of the signature of the power of attorney shall be unnecessary).

(2) The description referred to in subsection (l) (a) (ii) of this section shall disclose the relevant invention in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates; and the claim or claims referred to in subsection (1) (a) (iii) of this section shall define the protection sought and shall not go beyond the limits of the said description.

(3) A patent application shall relate to only one invention, but may include in con- nection with that invention–

(a) claims–

(i) for any number of products;

(ii) for any number of manufacturing processes for those products; and

(iii) for any number of applications of those products; and

(b) claims–

(i) for any number of processes; and

(ii) for the means of working those processes, for the resulting product or products and for the application of those products.

(4) Where the applicant for a patent seeks to avail himself of a foreign priority in re- spect of an earlier application made in a country outside Nigeria–

(a) he shall append to his application under subsection (1) of this section a written declaration showing-

(i) the date and number of the earlier application;

(ii) the country in which the earlier application was made; and

(iii) the name of the person who made the earlier application; and

(b) not more than three months after the making of the application under subsec- tion (1) of this section, he shall furnish the registrar with a copy of the earlier

application certified correct by the Industrial Property Office (or its equivalent) in the country where the earlier application was made.

4. Examination of application and grant of patent

(1) The registrar shalt examine every patent application as to its conformity with sub- sections (1), (3) and (4) of section 3 of this Act, and–

(a) if subsection (1) of section 3 of this Act has not been complied with, the regis- trar shalt reject the application;

(b) if subsection (3) of section 3 of this Act has not been complied with, the regis- trar shall–

(i) invite the applicant to restrict the application so that it relates to only one invention; and

(ii) notify the applicant that he may within three months file in respect of the other inventions dealt with in the original application subsidiary applications which shall benefit from the date of filing of the original application and, if relevant, from the date of any foreign priority claimed under subsection (4) of section 3 of this Act, and, if the appli- cant does not comply with the invitation mentioned in sub-para- graph (i) of this subsection, shall reject the application; and

(c) if subsection (4) of section 3 of this Act has not been complied with, the regis- trar shall disregard any claim for foreign priority.

(2) Where the examination mentioned in subsection (1) of this subsection shows that a patent application satisfies the requirements of subsections (1) and (3) of section 3 of this Act, the patent shall be granted as applied for without further examination and, in particular, without examination of the quesrions-s-

(a) whether the subject of the application is patentable under section I of this Act;

(b) whether the description and claims satisfy the requirements of subsection (2) of section 3 of this Act; and

(c) whether a prior application, or an application benefiting from a foreign prior- ity, has been made in Nigeria in respect of the same invention, and whether a patent has been granted as a result of such an application.

(3) Where the said examination shows that subsection (4) of section 3 of this Act has been complied with as respects a claim for a foreign priority, the foreign priority claimed shalt be mentioned in the patent.

(4) Patents are granted at the risk of the patentee and without guarantee of their va- lidity.

Form of grant, registration and publication

(1) A patent shall be granted by issue to the patentee of a document containing-

(a) the number of the patent in the order of grant;

(b) the name and address of the patentee and, if that address is outside Nigeria, an address for service in Nigeria;

(c) the dates of the patent application and the grant;

(d) if foreign priority is claimed–

(i) an indication of the fact; and

(ii) the number and date of the application on which the claim is based and the name of the country where it was made;

(e) the description of the invention (with any relevant plans and drawings) and the claims; and

(f) where appropriate, the name and address of the true inventor.

(2) The registrar shall maintain a Register of Patents which shall consist of duplicates of the documents issued under subsection (1) of this section, together with such further matter as is required by this Act to be registered.

(3) As soon as may be after a patent has been granted under subsection (1) of this section, the registrar shall cause to be published–

(a) a notification of the grant containing the details mentioned in paragraphs (a) to

(f) of that subsection (except the description and the plans and drawings, if any); or

(b) if a summary form of notification is prescribed, a notification in that form.

6. Rights conferred by patent

(1) A patent confers upon the patentee the right to preclude any other person 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 other acts mentioned in paragraph (a) of this subsection.

(2) The scope of the protection conferred by a patent shall be determined by the terms of the claims; and the description (and the plans and drawings, if any) included in the patent shall be used to interpret the claims.

(3) The rights under a patent-

(a) shall extend only to acts done for industrial or 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 notwithstand- ing this paragraph.

(4) 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-

(a) was conducting an undertaking in Nigeria; and

(b) 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,

then, notwithstanding the grant of a patent, there shall exist a right (exercisable by the person for the time being conducting the undertaking, and not otherwise) to continue the manufacture or application, or to continue and complete the preparation, and thereafter undertake the manufacture or application, as the case may be, and in respect of any re- sulting products to do any other act mentioned in subsection (1) of this section.

7. Duration and lapse of patent

(1) Subject to this Act, a patent shall expire at the end of the twentieth year from the date of the filing of the relevant patent application.

(2) A patent shall lapse if the prescribed annual fees are not duly paid in respect of it: Provided that-

(a) a period of grace of six months shall be allowed for the payment of the fees; and

(b) if the fees and any prescribed surcharge are paid within that period, the patent shall continue as if the fees had been duly paid.

(3) The expiration or lapse of a patent shall be registered and notified.

8. Surrender of patent

(1) Subject to subsection (2) of this section, a patent may be surrendered by the paten- tee by written declaration addressed to the registrar.

(2) The surrender of a patent–

(a) may relate to all or any of the claims made by the patent;

(b) subject to paragraph (d) of this subsection, shall be registered and notified;

(c) shall not be effective until it has been registered; and

(d) if it relates to a patent as to which a contractual licence or licence of right is registered, shall be registered only if it is accompanied by the written consent of the licensee.

9. Nullity of patent

(1) Subject to this section, on the application of any person (including a public officer acting in the exercise of his functions) the court shall declare a patent null and void–

(a) if the subject of the patent is not patentable under section 1 of this Act; or

(b) if the description of the invention or the claim does not conform with subsec- tion (2) of section 3 of this Act; or

(c) if for the same invention a patent has been granted in Nigeria as the result of a prior application or an application benefiting from an earlier foreign priority.

(2) Subsection (1) of this section may apply to the whole of a patent or to any par- ticular claim or claims made by it.

(3) For the purpose of disposing of an application under subsection (1) of this sec- tion, the court on the motion of the applicant or of its own motion may require the paten- tee of the relevant patent to produce in evidence any of the following–

(a) a list of any publications or earlier patents referred to in connection with a pat- ent application made in respect of the same invention by the patentee to the appropriate authority in any country outside Nigeria;

(b) any proceedings relating to the patent application in question or any patent granted in pursuance of it; and

(c) any publications or patents mentioned in any report sent to the patentee by a governmental or intergovernmental research or investigation institute.

(4) Where a declaration is made under subsection (1) of this sectiorr-

(a) the patent in question shall be deemed to have been null and void since the date of its grant, so however that it shall not be necessary to repay royalties paid by any licensee unless the court so orders; and

(b) the proper officer of the court shall inform the registrar, who shall register and notify the declaration.

(5) The court –

(a) shall not make a declaration under subsection (l) of this section without first giving the patentee an opportunity to be heard;

(b) in applying subsection (1) of this section, shall have regard only to the state of affairs existing when the proceedings were instituted; and

(c) shall dismiss an application under subsection (l) of this section if the applicant (not being a public officer) fails to satisfy the court that he has a material inter- est in making the application.

10. Licences of right

(1) Subject to this section, if a patentee (not being precluded by the terms of any pre- viously registered licence from granting a further licence) applies in writing to the regis- trar for the words “licences of right” to be registered in respect of his patent, the registrar shall enter the words accordingly in the register and notify the entry.

(2) Where an entry is made under subsection (1) of this section in respect of a pat- ent’-

(a) any person shall have the right to obtain a licence to exploit the patent on such terms as, failing agreement between that person and the patentee, shall be fixed by the court on the application of that person; and

(b) the amount of the annual fees payable in respect of the patent shall be reduced by half, the reduction first taking effect in relation to the annual fees first pay- able after the date of the entry.

(3) A patentee may at any time apply to the registrar for an entry under subsection (1) of this section to be cancelled; and, if no licences have been granted under this section or all the grantees agree, the registrar shall thereupon cancel the entry and notify the can- cellation, but only after payment of all annual or other fees which would have been pay- able if the entry had never been made.

(4) The grantee of a licence under this section shall not be entitled to assign the li- cence or grant further licences under it.

(5) Subsections (1) (b), (2) (a), (3) and (6) of section 23 of this Act shall apply in re- lation to licences granted under this section as they apply to licences and contracts under section 23 of this Act.

11. Compulsory licences and official use

The provisions of the First Schedule to this Act shall have effect in relation to com- pulsory licences and the use of patents for the service of government agencies.

[First Schedule.]

Designs

12. Nature of industrial design

Any combination of lines or colours or both, and any three-dimensional form, whether or not associated with colours, is an industrial design, if it is intended by the creator to be used as a model or pattern to be multiplied by industrial process and is not intended solely to obtain a technical result.

13. Registrable designs

(1) Subject to this section, an industrial design is registrable if–

(a) it is new; and

(b) it is not contrary to public order or morality.

(2) Where application is made for the registration of an industrial design, the design shall be presumed to be new at the time of the application except in so far as the follow- ing provisions of this section provide otherwise.

(3) An industrial design is not new if, before the date of application for registration, it has been made available to the public anywhere and at any time by means of description, use or in any other way, unless it is shown to the satisfaction of the registrar that the creator of the design could not have known that it had been made so available.

(4) An industrial design shall not be deemed to have been made available to the pub- lic solely by reason of the fact that within the period of six months preceding the filing of the application for registration the creator has exhibited it in an official or officially rec- ognised exhibition.

(5) An industrial design is not new merely because it differs in minor or inessential ways from an earlier design or concerns a type of product other than the type with which an earlier design is concerned.

14. Right to registration

(1) Subject to this section, the right to registration of an industrial design shall be vested in the statutory creator, that is to say, the person who, whether or not he is the true creator, is the first to file, or validly to claim a foreign priority for, an application for reg- istration of the design.

(2) The true creator shall be entitled to be named as such in the register, and the en- titlement in question shall not be modifiable by contract.

(3) If the essential elements of an application for the registration of an industrial de- sign have been obtained by the purported applicant from the creation of another person without the consent of that other person both to the obtaining of those essential elements and to the filing of the application, all rights in the application and in any consequent registration shall be deemed to be transferred to that other person.

(4) Where an industrial design is created in the course of employment or in the exe- cution of a contract for the performance of specified work, the ownership of the design shall be vested in the employer or, as the case may be, in the person who commissioned the work:

Provided that, where the creator is an employee, then, if his contract of employ- ment does not require him to exercise any creative activity but he has in creating the de- sign used data or means that his employment has put at his disposal–

(a) he shall be entitled to fair remuneration taking into account his salary and the importance of the design which he has created; and

(b) the entitlement in question is not modifiable by contract and may be enforced by civil proceedings.

15. Applications for registration

(1) An application for the registration of an industrial design shall be made to the registrar and–

(a) shall contain-

(i) a request for registration of the design;

(ii) the applicant’s full name and address and, if that address is outside Nigeria, an address for service in Nigeria;

(iii) a specimen of the design or a photographic or graphic representation of the design with any printing block or other means of reproduction from which the representation was derived;

(iv) an indication of the kind of product (or, where a classification has been prescribed, the class of product) for which the design will be used; and

(v) such other matter as may be prescribed; and

(b) shall be accompanied by–

(i) the prescribed fee;

(ii) where appropriate, a declaration signed by the true creator requesting that he be named as such in the register and giving his name and ad-

dress; and

(iii) if the application is made by an agent, a signed power of attorney (so however that, notwithstanding any rule of law, legalisation or certifica- tion of the signature of the power of attorney shall be unnecessary).

(2) A single application may relate to any number of industrial designs not exceeding fifty, if the products to which the designs relate are of the same kind or, where a classifi- cation has been prescribed, of the same class.

(3) Where an applicant for the registration of an industrial design seeks to avail him- self of a foreign priority in respect of an earlier application made in a country outside Nigeria-

(a) he shall append to his application under subsection (1) of this section a written declaration showing-

(i) the date and number of the earlier application;

(ii) the country in which the earlier application was made; and

(iii) the name of the person who made the earlier application; and

(b) not more than three months after the making of the application under subsec- tion (1) of this section, he shall furnish the registrar with a copy of the earlier application certified correct by the Industrial Property Office (or its equivalent) in the country where the earlier application was made.

16. Examination of applications for registration

(1) The registrar shall examine every application for registration of an industrial de- sign as to its conformity with sections 13 (1) (b) and 15 of this Act, and–

(a) if the application fails in any respect to conform with section 13 (1) (b) or 15 (l) or (2) of this Act, the registrar shall reject the application; and

(b) if the application fails in any respect to conform with section 15 (3) of this Act, the registrar shall disregard any claim for foreign priority.

(2) Where the examination mentioned in subsection (l ) of this section shows that an application for the registration of an industrial design satisfies the requirements of sec- tions 13 (1) (b) and 15 of this Act, the design shall be registered in accordance with the application without further examination and, in particular, without examination of the question whether the registration might be contrary to section 13 (1) (a) of this Act; and, where the said examination shows that section 15 (3) of this Act has been complied with as respects a claim for foreign priority, the foreign priority claimed shall be recorded in the regi ster.

17. Registration and publication

(1) An industrial design shall be registered by the issue to the applicant of a registra- tion certificate containing-

(a) the number of the design in order of registration;

(b) the name and address of the registered owner and, if that address is outside Nigeria, an address for service in Nigeria;

(c) the date of the application and of the issue of the registration certificate;

(d) if foreign priority is claimed–

(i) an indication of the fact; and

(ii) the number and date of the application on which the claim is based and the name of the country where the application was made;

(e) a reproduction or representation of the design and an indication of the kind (or, where a classification has been prescribed, the class) of products for which it will be used; and

(f) where appropriate, the name and address of the true creator.

(2) The registrar shall maintain a register of industrial designs which shall consist of duplicates of the registration certificates issued under subsection (1) of this section, to- gether with such further matter as is required by this Act to be registered.

(3) As soon as may be after a design has been registered under subsection (1) of this section, the registrar shall cause to be published–

(a) a notification of the registration containing the details mentioned in para- graphs (a) to (f) of that subsection; or

(b) if a summary form of notification is prescribed, a notification in that form.

18. Applications under sealed cover

(1) An applicant for the registration of an industrial design may ask for the design to be kept secret for a specified period not exceeding twelve months from the date of the application; and, where he does so, then, notwithstanding any other provision of this Act-

(a) the specimen and other matters mentioned in section 15 (1) (a) (iii) and (iv) of this Act shall be enclosed in a sealed package, which shall be opened by the registrar-

(i) when the specified period has elapsed; or

(ii) if, before the specified period has elapsed, the applicant asks for the application to be converted into an open application; or

(iii) if the package is still sealed, at the expiration of twelve months after the date of the application;

(b) a provisional registration certificate shall be issued and a provisional notifica- tion published under section 17 of this Act, each of which shall exclude the re- production and other matters mentioned in section 17 (1) (e) of this Act;

(c) the said provisional registration certificate and provisional notification shall not confer any right to protection under section 25 of this Act; and

(d) when the sealed package has been opened pursuant to paragraph (a) of this subsection, the registrar shall proceed in accordance with sections 16 and 17 of this Act in so far as he has not already done so and, if authorised by those sec- tions, shall issue a revised registration certificate and publish a revised notifi- cation which shall have the same effect as any other certificate issued or notifi- cation published under section 17 of this Act.

(2) Notwithstanding subsection (1) of this section, a sealed package may be opened by the registrar at any time on the direction of a court and shall be resealed when the court no longer requires it:

Provided that, if the time at which the package may be opened under subsec- tion (1) (a) of this section arrives before the court has ceased to require it, the package shall be deemed to have been duly opened at that time and shall not be resealed.

19. Rights conferred by registration

(1) Registration of an industrial design confers upon the registered owner the right to preclude any other person from doing any of the following acts–

(a) reproducing the design in the manufacture of a product;

(b) importing, selling or utilising for commercial purposes a product reproducing the design; and

(c) holding such a product for the purpose of selling it or of utilising it for com- mercial purposes.

(2) The reproduction of a registered industrial design is not lawful for the purposes of subsection (l) of this section merely because it differs in minor or inessential ways from the design or because it concerns a type of product other than the type with which the design is concerned.

(3) The rights conferred by this section-

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

(b) shall not extend to acts done in respect of a product incorporating a registered industrial design after the product has been lawfully sold in Nigeria.

20. Duration and renewal of registration

(l) Subject to this Act, registration of an industrial design-

(a) shall be effective in the first instance for five years from the date of the appli- cation for registration; and

(b) on payment of the prescribed fee may be renewed for two further consecutive periods of five years.

(2) The fee mentioned in subsection (1) (b) of this section shall be paid within the twelve months immediately preceding the renewal period to which it relates:

Provided that-

(a) a period of grace of six months after the beginning of the renewal period shall be allowed for the payment of the fee; and

(b) if the fee and any prescribed surcharge are paid within that period, this subsec- tion shall be deemed to have been complied with.

(3) The fact that the registration of an industrial design has ceased to be effective or has been renewed shall be registered and notified.

21. Renunciation of registration

(1) Subject to subsection (2) of this section, the registered owner of an industrial de- sign may renounce the registration by a written declaration to the registrar.

(2) A renunciation under subsection (1) of this section-

(a) may be limited–

(i) to any particular kind or kinds of product; or

(ii) if a classification of products has been prescribed, to any particular class or classes of product; or

(iii ) if the application for registration comprised several designs, to anyone or more of those designs;

(b) subject to paragraph (d) of this subsection, shall be registered and notified;

(c) shall not be effective until it has been registered; and

(d) if it relates to a design as to which a contractual licence is registered, shall be registered only if-

(i) it is accompanied by the licensee’s written consent to registration; or

(ii) the licensee has in the licence contract agreed that this paragraph shall not apply.

22. Nullity of registration

(1) Subject to this section, on the application of any person (including a publ ic officer acting in the exercise of his functions) the court shall declare the registration of an indus- trial design to be null and void–

(a) if the design, because of its failure to conform with section 13 (1) (b) of this Act, ought not to have been registered; or

(b) if the design fails to comply with section 13 (1) (a) or 14 of this Act.

(2) Where-

(a) a declaration under subsection (1) of this section relates to an application com- prising several designs; and

(b) the grounds for making the declaration affect only some of those designs, the declaration shall apply only to the designs so affected.

(3) Where a declaration is made under subsection (1) of this section-

(a) the registration in question shall be deemed, to the extent specified in the dec- laration, to have been null and void ab initio, so however that it shall not be necessary to repay royalties paid by any licensee unless the court so orders; and

(b) the proper officer of the court shall inform the registrar, who shall register and notify the declaration.

(4) The court-

(a) shall not make a declaration under subsection (1) of this section without first giving the design owner an opportunity to be heard;

(b) in applying subsection (1) (a) of this section, shall have regard only to the state of affairs existing when the proceedings were instituted; and

(c) shall dismiss an application under subsection (1) of this section if the applicant (not being a public officer) fails to satisfy the court that he has a material inter- est in making the application.

General

23. Contractual licences

(1) Subject to this section–

(a) a patentee or design owner may by a written contract signed by the parties grant a licence to any person to exploit the relevant invention or design; and

(b) in the absence of any provision to the contrary in the contract, the licensee shall be entitled to do anywhere in Nigeria in relation to the patent or design any of the acts mentioned in section 6 or 9 this Act, as the case may be.

(2) Where a licence is granted under subsection (1) of this section–

(a) the licence shall be registered, and shall be of no effect against third parties until registration is effected and the prescribed fee paid; and

(b) the registration shall be cancelled at the request of the licensor if the Registrar is satisfied that the licence has been terminated.

(3) Any clause in a contract for a licence under subsection (1) of this section is null and void in so far as it imposes on the licensee in the industrial or commercial field re- strictions which do not derive from the rights conferred by the relevant patent or design or are unnecessary for the safeguarding of those rights:

Provided that-

(a) limitations concerning the scope, extent, territory or duration of the exploita- tion of the patent or design or the quality of the products in connection with which the patent or design may be exploited;

(b) obligations imposed on the licensee to abstain from all acts capable of preju- dicing the validity of the patent or the validity of the registration of the design; and

(c) in the case or a patent, limitations justified by the interest of the licensor in the technically efficient exploitation of the subject of the patent, are not restric- tions of the kind mentioned in this subsection.

(4) In the absence of any provision to the contrary in a contract for a licence under subsection (1) of this section–

(a) the grant of the licence shall not prevent the licensor from–

(i) granting further licences to other persons; or

(ii) himself exploiting the relevant patent or design;

(b) the licence shall not be assignable by the licensee; and

(c) the licensee shall not be entitled to grant further licences.

(5) Where a contract under subsection (1) of this section provides for a licensee to grant further licences, this section shall apply in relation to any such further licence as it applies in relation to licences granted under the said subsection (1).

(6) The Minister, if he is satisfied that it is in the interest of Nigeria and its economic development to do so, may by order in the Federal Gazette provide that contracts under subsection (1) of this section (or any specified class thereof) shall, in so far as they in- volve the payment of royalties outside Nigeria, be invalid without the approval of such authority as may be specified in the order.

24. Assignments, transfers and joint ownership

(1) SubjectlO this section, a person’s rights in a patent application, in an application for the registration of a design, in a patent or in a registered design may be assigned, transferred by succession or held in joint ownership.

(2) An assignment under subsection (1) of this section shall be in writing and signed by the parties.

(3) An assignment or transfer by succession under subsection (1) of this section shall have no effect against third parties unless it has been registered and the prescribed fee paid.

(4) In the absence of any provision to the contrary among themselves, joint owners of a patent or registered design may separately transfer their shares, exploit the patented invention, utilise the registered design or exercise the rights conferred by section 6 or 9 of this Act, as the case may be; but a licence under this Act may not be granted by joint owners otherwise than jointly.

(5) Any reference (however expressed) in this Act to an applicant for a patent, an ap- plicant for the registration of a design, a patentee or a design owner includes, unless the context otherwise requires, a reference to any predecessors or successors in title and, where appropriate, to joint applicants, joint patentees or joint owners, as the case may be.

25. Infringement of rights

(1) The rights of a patentee or design owner are infringed if another person, without the licence of the patentee or design owner, does or causes the doing of any act which that other person is precluded from doing under section 6 or 9 of this Act, as the case may be.

(2) An infringement of the rights of a patentee or design owner shall be actionable at the suit of the patentee or design owner in question; and in any action for such an in- fringement all such relief by way of damages, injunction accounts or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of the infringement of other proprietary rights.

(3) If-

(a) a patent has been granted in respect of a process for the manufacture of a new product; and

(b) the same product is manufactured by a person other than the patentee,

the product shall in the absence of proof to the contrary be presumed to have been manu- factured by that process.

(4) The grantee of a licence under this Act from a patentee or design owner may by registered letter require the licensor to institute proceedings under subsection (1) of this section in respect of any infringement indicated by the grantee in the letter; and, if the licensor unreasonably refuses or neglects to institute the proceedings, the licensee may institute them in his own name, without prejudice to the right of the licensor to intervene in the proceedings.

26. Legal proceedings

(1) Jurisdiction to hear and dispose of legal proceedings under this Act is hereby vested in the Federal High Court and, subject to this Act, the provisions of the Trade Marks Act applicable to legal proceedings under that Act shall apply with the necessary modifications to legal proceedings under this Act.

[Cap. T13.]

(2) The court hearing proceedings under this Act may sit with and be advised by two assessors having expert knowledge of matters of a technological or economic nature.

(3) The Chief Judge of the Federal High Court may make rules of court for the regu- lation of legal proceedings under this Act if he thinks it necessary to do so.

27. Foreign priority

(1) The Minister may, with a view to the fulfilment of a treaty, convention or other international arrangement or agreement to which Nigeria is a party, declare by order in the Federal Gazette that any country specified in the order is a convention country for the purposes of this section.

(2) So long as there is in force an order under subsection (1) of this section declaring a country to be a convention country, a patent application or a design application in Nige- ria, if an earlier corresponding application for the protection of an invention or the regis- tration of a design has been made in that convention country, shall be treated as having been made on the date when that earlier application was made:

Provided that this subsection shall not apply where the earlier application was made–

(a) in the case of an invention, more than twelve months; or

(b) in the case of a design, more than six months, before the application in Nigeria.

(3) Where a person has applied for the protection of an invention or the registration of a design by an application which–

(a) in accordance with a treaty, convention or other international arrangement or agreement subsisting between any two or more convention countries is equivalent to an application duly made in anyone of those convention coun- tries; or

(b) in accordance with the law of any convention country is equivalent to an appli- cation duly made in that convention country,

he shall be deemed for the purposes of this Act to have applied in each of those conven- tion countries or in that convention country, as the case may be.

(4) Where a patent application or a design application is to be treated by virtue of subsection (2) of this section as having been made on the date of an earlier application in a convention country, that earlier date is referred to in this Act as a foreign priority, and in this Act the expression “foreign priority” shall be construed accordingly.

28. Registration: miscellaneous provisions

(1) There shall be a registrar of patents and designs, who shall be appointed by the Federal Civil Service Commission.

(2) The registrar may correct any clerical error in an entry in the register, but before doing so shall give the person to whom the entry relates an opportunity to make repre- sentations.

(3) Any persons–

(a) may consult the register free of charge during the prescribed hours; and

(b) on payment of the prescribed fee, may obtain a copy of any entry in the regis- ter.

(4) A copy of an entry in the register sealed with the registrar’s seal shall be admissi- ble as evidence of what is stated therein; and any document purporting to be such a copy shall be presumed, until the contrary is proved, to be what it purports to be.

(5) Any person aggrieved by a decision of the registrar in the exercise of his func- tions under this Act may appeal to the court.

(6) If the Minister so directs, the registrar shall from time to time publish a journal to be known as the Patents and Designs Journal in which shall be published all such matters as are required by this Act to be published or notified and such other matters relating to patents and designs as the registrar thinks fit:

Provided that, if there is no such direction in force, any matter required by this Act to be published or notified shall be published by the registrar in the Federal Gazette.

(7) Subject to this Act and any rules made under section 30 (b) of this Act, the regis- trar shall maintain and make entries in the register in whatever manner appears to him to be most suitable and convenient.

29. Effect against the State

Subject to Part 11 of the First Schedule to this Act, a patent or registered design shall have the same effect against the State as against an individual.

[First Schedule.]

30. Rules

(1) The Minister may make rules-

(a) prescribing anything requiring to be prescribed for the purposes of this Act (including summary forms of notification of the grant of a patent and the reg- istration of a design, and classifications of products to which designs relate);

(b) regulating the manner in which the registrar shall maintain and make entries in the register; and

(c) containing such administrative or procedural provisions as appear to him to be necessary or expedient in order to facilitate the operation of this Act.

(2) The Minister of Industries with the approval of the President may make rules es- tablishing schemes to encourage inventive activity and without prejudice to the generality of the foregoing, any such scheme may include provision for the payment of grants to persons who have discovered or perfected, or appear to have reasonable prospects of dis- covering or perfecting, important inventions which cannot be further developed for finan- cial reasons.

31. Repeals, and transitional and saving provisions

(l) The Registration of United Kingdom Patents Act, the United Kingdom Designs (Protection) Act, the Patent Rights (Limitation) Act 1968 and (in so far as they are in force in Nigeria) the Patents Act 1949 of the United Kingdom and amendments thereof are hereby repealed.

[Caps. 182 and 204 of 1958 Laws of Nigeria. 1968 No. 8, 12, 13 and 14. Geo. 6. C. 87.]

(2) The transitional and saving provisions in the Second Schedule shall have effect notwithstanding subsection (1) of this section or any other provision of this Act.

[Second Schedule.]

32. Interpretation

(1) In this Act, unless the context otherwise requires–

“court” means the Federal High Court;

“design” means an industrial design;

“design application” means an application for the registration of an industrial design;

“design owner” means the registered owner of an industrial design; “foreign priority” has the meaning assigned by section 27 of this Act; “import” means import into Nigeria;

“the Minister”, except in Part II of the First Schedule to this Act, means the Minister for Commerce;

“patent application” means an application for the grant of a patent;

“patentee” means a person to whom a patent has been granted;

“register” means the register of patents, the register of industrial designs, or both, as the case may require;

“registrar” means the registrar of patents and designs.

(2) In this Act, unless the context otherwise requires, a reference to a numbered sec- tion or schedule is a reference to the section or schedule so numbered in this Act.

33. Short title

This Act may be cited as the Patents and Designs Act.

FIRST SCHEDULE

[Section 11.]

Compulsory licences and use of patents for service of government agencies

PART 1

Compulsory licences

1. Subject to this Part, at any time after the expiration of a period of four years after the filing of a patent application or three years after the grant of a patent, whichever period last expires, a person may apply to the court for the grant of a compulsory licence on one or more of the following grounds–

(a) that the patented invention, being capable of being worked in Nigeria, has not been so worked;

(b) that the existing degree of working of the patented invention in Nigeria does not meet on reasonable terms the demand for the product;

(c) that the working of the patented invention in Nigeria is being hindered or pre- vented by the importation of the patented article; and

(d) that, by reason of the refusal of the patentee to grant licenses on reasonable terms, the establishment or development of industrial or commercial activities in Nigeria is unfairly and substantially prejudiced.

2. 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 licence 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

(b) constitutes substantial technical progress in relation to that last-mentioned in- vention.

3. If the two inventions mentioned in paragraph 2 of this Schedule serve the same industrial purposes, a compulsory licence may be granted under that paragraph only on condition that a compulsory licence shall also be granted in respect of the later patent to the patentee of the earlier patent, if he so requests.

4. A compulsory licence shall not be granted in resect of a patent if the patentee satisfies the court that his actions in relation to the patented invention are justifiable in the circumstances, but he shall not be held to have so satisfied the court if he merely shows that the patented arti- cle is freely available for importation.

5. A compulsory licence shall not be granted unless the applicant-

(a) satisfies the court that he has asked the patentee for a contractual licence but has been unable to obtain such a licence on reasonable terms and within a rea- sonable time; and

(b) offers guarantees satisfactory to the court to work the relevant invention suffi- ciently to remedy the deficiencies (or to satisfy the requirements) which gave rise to his application.

6. A compulsory licence–

(a) entitles the licensee to do any act mentioned in section 6 to this Act except importation;

(b) does not entitle the licensee to grant further licences;

(c) shall be non-exclusive; and

(d) may contain additional obligations and restrictions as regards both the licensee and the patentee.

7. A compulsory licence may be transferred only with the industrial undertaking in which the relevant invention is used, and no such transfer shall be valid until the consent of the court has been obtained.

8. On hearing an application for a compulsory licence, the court shall first decide whether a compulsory licence may be granted and shall then, if it decides in favour of the grant and the parties cannot agree on the terms, proceed to fix the terms (including adequate royalties hav- ing regard to the extent to which the relevant invention is to be worked) which shall be deemed to constitute a valid contract between the parties.

9. On the application of the patentee, the court may cancel a compulsory licence it=–

(a) the licensee fails to comply with the terms of the licence; or

(b) the conditions which justified the grant of the licence have ceased to exist,

so however that in that latter case a reasonable time shall be given to the licensee to cease working the relevant invention if an immediate cessation would cause him to suffer substan- tial damage.

10. On the application of the patentee or licensee, the court may vary the terms of a compul- sory licence if new facts justify the variation, and in particular (without prejudice to the gener- ality of the foregoing) if the patentee has granted contractual licences on more favourable terms.

11. Where the court grants, cancels or varies the terms of a compulsory licence–

(a) the proper officer of the court shall inform the registrar, who shall register the grant, cancellation or variation without fee; and

(b) the grant, cancellation or variation shall have no effect as against third parties until it has been registered.

12. A representative of the Minister shall have the right to appear and be heard at the hearing of an application for a compulsory licence.

13. The Minister by order in the Federal Gazette may provide that, for certain patented prod- ucts and processes (or for certain categories thereof) declared by the order to be of vital im- portance for the defence or the economy of Nigeria or for public health, compulsory licences may be granted before the expiration of the period mentioned in paragraph I above and may permit importation.

14. For the purposes of this Part, references to the working of a patented invention are to be construed as references to–

(a) the manufacture of a patented article; or

(b) the application of a patented process; or

(c) the use in manufacture of a patented machine,

by an effective and serious establishment existing in Nigeria on a scale which is adequate and reasonable in the circumstances.

PART II

Use of patents for service of government agencies

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 pat- ented article or invention for the service of a government agency in the Federal Republic.

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.

18. Where any act is done in respect of an article on the authority of a Minister under para- graph 15 of this Schedule, then, unless it appears to the Minister that it would be contrary to the public interest to do so, the Ministry concerned with the act shall furnish the patentee with such information as to the extent of the act as the patentee may from time to time require.

19. The provisions of any licence, assignment or agreement made before or after the com- mencement of this Act between a patentee and any person other than the Government or a Ministry shall be of no effect in so far as those provisions restrict or regulate the use of a pat- ented article or invention or provide for the making of payments in respect of any such use, or are calculated by reference thereto.

20. During any period of emergency the powers exercisable in relation to a patented article or invention on the authority of a Minister under paragraph 15 of this Schedule shall include power to purchase, make, use, exercise and vend the article or invention for any purpose which appears to the Minister necessary or expedient-

(a) for the efficient prosecution of any war in which the Federal Republic may be engaged; or

(b) for the maintenance of supplies and services essential to the life of the commu- nity; or

(c) for securing a sufficiency of supplies and services essential to the well-being of the community; or

(d) for promoting the productivity of industry, commerce and agriculture; or

(e) for fostering and directing exports and reducing imports (or any class or classes of imports) from all or any countries and for redressing the balance of trade; or

(f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community.

21. Where a patented article is purchased, made, used, exercised or vended by or on behalf of a government agency, the benefit of this Part shall extend to the agency and to persons acting in any capacity on its behalf.

22. This Part shall apply to a patented article forfeited under any law relating to customs and excise; and, on any such forfeiture, the Government may use or sell the article as if it had been imported for the use of a government agency in Nigeria.

23. In this Part, unless the context otherwise requires-v-

“articles” includes-

(a) any drugs or pharmaceutical preparations, substances or materials; and

(b) any plant, machinery or apparatus, whether fixed to the land or not after im- portation,

patented under the law of a country other than Nigeria;

“export” means export from Nigeria;

“Federal Republic” means the Federal Republic of Nigeria, and includes any State of the Federation;

“Government” means the Federal Government, and includes the Government of any State of the Federation;

“government agency” means any Federal or State Ministry or Department of Govern- ment, and includes-

(a) a voluntary agency hospital, that is to say, any hospital in Nigeria (not being a hospital operated by the Government) which is wholly or partly maintained by the Federation or a State by way of grant in aid or otherwise;

(b) a local authority, that is to say, any administration, council or other authority exercising limited governmental powers in a defined area within a State;

(c) a statutory corporation, that is to say, a body corporate directly established by law to which in the performance of its functions the Government or a Minister is empowered by law to give directions; and

(d) any company which is owned or controlled by the Government;

“Ministry” means a Federal or State Ministry or Department of Government;

“Minister” means a Minister of the Federation and includes a State Commissioner;

“period of emergency” means any period of emergency however declared or notified by or on behalf of the Government or any successor Government;

“person” includes the Government or a Ministry;

“war” includes civil war.

SECOND SCHEDULE

[Section 31.]

[Cap. 204 of 1958 Edition. 1968 No. 8.]

Transitional and saving provisions

1. The person who, immediately before the commencement of this Act, was registrar of pat- ents under the former patents law shall on the commencement of this Act become registrar of patents and designs for the purposes of this Act.

2. Where a patent has been registered in Nigeria under the former patent law and the privi- leges and rights conferred by the registration were effective immediately before the com- mencement of this Act, then–

(a) subject to the following sub-paragraphs, the patent shall be treated in Nigeria as if it had been granted under this Act;

(b) the patent shall expire as regards Nigeria when those privileges and rights would have expired if this Act had not been made;

(c) the certificate of registration shall be admissible as prima facie evidence of the

date and fact of registration; and

(d) an action for infringement shall lie under this Act only if the alleged infringe- ment occurred on or after the commencement of this Act, and in any other case may be instituted and disposed of as if this Act had not been made.

3. So far as is necessary for the purposes of paragraph 2 of this Schedule, the register of pat- ents under the former patent law shall be maintained as nearly as may be, and shall be re- garded and dealt with, as if it were part of the register under this Act.

4. Where immediately before the commencement of this Act any person enjoyed any privi- leges or rights in respect of a design by virtue of the United Kingdom Designs (Protection) Act-

[Cap. 204 of 1958 Edition.]

(a) that person shall continue to enjoy those privileges and rights for twelve months after the commencement of this Act or, if he applies within those twelve months for registration of the design under this Act, until the application is disposed of;

(b) at the end of the said twelve months or on the disposal of the said application, as the case may be, those privileges and rights shall cease to exist; and

(c) so long as that person continues to enjoy those privileges and rights, no other person shall have any right to registration of the design under this Act.

5. Any authorisation given under the Patent Rights (Limitation) Act 1968 shall, if it was still effective immediately before the commencement of this Act, be deemed to have been given under Part 11 of Schedule I and shall continue in force accordingly.

[1968 No. 8.]

6. The Patents (Fees) Regulations 1961 shall, as far as may be–

(a) apply in relation to patents under this Act as they applied in relation to patents under the former patent law; and

(b) apply in relation to designs under this Act as they apply in relation to patents under this Act,

and may be amended or revoked by rules made under section 30 of this Act.

7. In this Schedule, “the former patents law” means the Registration of United Kingdom Patents Act.

[Cap. 182 of 1958 Edition.]

SUBSIDIARY LEGISLATION

List of Subsidiary Legislation

1. Patents and Designs (Convention Countries) Order.

2. Patents Rules.

PATENTS AND DESIGNS (CONVENTION COUNTRIES) ORDER

[L.N. 95 of 1971.]

under section 27 (1)

[1st December, 1971]

[Commencement.]

1. Declaration of convention countries

The countries specified in the Schedule to this order are hereby declared to be con- vention countries for the purposes of section 27 of the Act.

[Schedule.]

2. Short title

This order may be cited as the Patents and Designs (Convention Countries) Order.

Algeria Argentina Australia Austria

SCHEDULE

[Section 1.]

Ireland Israel Italy

Cote de Ivoire

Belgium Brazil Bulgaria Cameroons Canada

Central African Republic Sri Lanka

Chad Cuba Cyprus

Czechoslovakia Republic of Benin Denmark Dominican Republic Finland

France Gabon Germany Greece Haiti Holy See Hungary Iceland Indonesia Iran

Switzerland

Syrian Arab Republic Tanzania

Togo

Trinidad and Tobago Tunisia

Turkey Uganda

Union of Soviet Socialist Republic

Japan Kenya Lebanon

Liechtenstein Luxembourg Madagascar Malawi Malta Mauritania Mexico Monaco Morocco Netherlands New Zealand Niger Norway

People’s Republic of the Congo Philippines

Poland Portugal Romania San Marino Senegal Spain Sweden

United Arab Republic United States of America

United Kingdom of Great Britain Northern Ireland

Burkina Fasso Uruguay Vietnam Yugoslavia Zambia

PATENTS RULES [L.N. 96 of 1971.]

under section 30

[1 st December, 1971]

[Commencement.]

Fees

1. The fees to be paid in relation to patents shall be those prescribed in the First Sched- ule. Such fees shall be paid to the registrar who shall pay all fees received by him pursu- ant to these Rules into the Consolidated Revenue Fund of the Federation.

Forms

2. (1) The forms herein referred to are those contained in the Second Schedule (that is to say, Patent forms 1 to 7) and such forms shall be used in all cases to which they are applicable and may be modified as directed by the registrar to meet other cases.

(2) Any other forms mentioned in these Rules shall be prescribed by the Minister.

Documents

3. Subject to any other directions that may be given by the registrar, all applications, notices, statements, papers or other documents authorised or required by the Act or these Rules to be made, left with or sent to the registrar shall be upon foolscap paper and, ex- cept where otherwise required, on one side only, of a size of approximately fifteen centi- metres by nine centimetres and shall have on the left-hand part thereof a margin of not less than two centimetres.

4. (1) A document lodged on behalf of joint applicants shall contain the names of all the joint owners in full and shall be signed by all the owners or by any other person who sat- isfies the registrar that he is authorised to sign the document.

(2) A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the registrar that he is authorised to sign the document.

5. Any notice, application, or other document lodged by post shall be deemed to have been lodged at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put in the post and addressed to the Registrar of Patents and Designs, Patents Branch, Federal Ministry of Trade, Federal Capital Territory, Abuja, Nigeria.

Agent

6. An agent shall be authorised to lodge an application on Form 2.

Application for registration

7. An application for the grant of a patent shall be signed by the applicant for registra- tion or by his agent.

8. (1) An application for the grant of a patent shall be on Form I and shall relate to only one invention, but may include in connection with that invention-

(a) c1aims-

(i) for any number of products;

(ii) for any number of manufacturing processes for those products; and

(iii) for any number of applications of those products; and

(b) c1aims-

(i) for any number of processes;

(ii) for the means of working those processes, for the resulting product or products and for the application of those products.

(2) Every applicant claiming priority under section 27 of the Act by reason of an ap- plication for the grant of a patent made or deemed to have been made in a convention country as defined in section 27 (1) of this Act which country shall be named, shall ap- pend to his application a written declaration showing the date and number of the earlier application, the country in which the application was made, the name of the person who made the earlier application, and shall furnish within three months thereafter, a copy of the earlier application certified correct by the Industrial Property Office (or its equivalent) in the country where the earlier application was made. Where an application is in a lan- guage other than English, a translation together with the name of the language shall be signed by the applicant or his agent and attached to the certified application.

(3) If the applicant fails to supply the certified copy as required by this rule, the reg- istrar shall disregard any claim for foreign priority.

9. (1) In the case of an appl ication for the grant of a patent in respect of more than one invention, the registrar shall invite the applicant to restrict the application so that it relates to one invention only and notify the applicant that he may within three months file in respect of the other inventions dealt with in the original application, subsidiary applica- tions.

(2) If the applicant does not comply with the invitation mentioned in paragraph (1) of this rule, the registrar shall reject the application.

Address for applications

10. All applications for the grant of patents shall be made, addressed and sent to the Registrar of Patents and Designs, Federal Ministry of Trade, Commercial Law Division, Federal Capital Territory, Abuja.

The application

11. An application for the grant of a patent shall be made to the registrar and shall con- sist of-

(a) a petition or request for a patent with the applicant’s full name and address;

(b) a specification, including a claim or claims in duplicate;

(c) plans and drawings, if any, in duplicate;

(d) a declaration as required by section 3 of the Act;

(e) a signed power of attorney or authorisation of agent if the application is made by an agent;

(f) an address for service in Nigeria if the applicant’s address is outside Nigeria;

(g) the prescribed fee; and

(h) such other matter as may be prescribed from time to time by the registrar.

The specification

12. (l) The specification shall describe the relevant invention in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates.

(2) The claim or claims shall define the protection sought and shall not go beyond the limits of the said description.

Examination and g rant of patent

13. If on examination of an application, it is discovered that the formal requirements of rule 11 of these Rules have not been complied with, the registrar shall reject the applica- tion.

14. Where the examination shows that the application satisfies the requirements of rules 8 and 11 of these Rules, the registrar shall grant the patent.

15. Upon the grant of a patent, the registrar shall issue to the applicant a document in Form 4 which shall bear the relevant number, the name and domicile of the patentee or his successor or assign if any, the dates of the patent application and the grant, the title of the invention and the period of its validity, with reservations as to the rights of third par- ties, the number and date of the application on which a claim of foreign priority is based and the name of the foreign country concerned and where appropriate the name and ad- dress of the true inventor; a copy of the specification and a copy of the relevant drawings and plans, if any, shall be annexed to it.

Registration and publication

16. As soon as may be, after the grant of a patent, the registrar shall-

(a) enter the particulars of the grant in the register and this shall consist of the par- ticulars named in rule 15 of these Rules; and

(b) cause to be published in the Federal Gazette a notification of the grant con- taining the details mentioned in rule 15 of these Rules (except the description and the plans and drawings, if any) or a summary thereof if a summary form of notification is prescribed.

Duration of patents

17. Subject to regular payment of the annual fees due, patents shall be valid for twenty years from the date of the filing of the relevant patent application.

Fees

18. (1) Patents Form No. 5 together with the prescribed fee shall be lodged in the patent office not later than the due date, otherwise the patent will cease. Only one half of

such prescribed fees is payable if, and so long as, the patent is endorsed “Licences of Right” – this reduction takes effect in relation to the annual fees first payable after the date of the entry. If the form with the fee is not lodged in the patent office until after that date it cannot be accepted unless application for an extension of time is made on Patents Form No. 6 accompanied by the prescribed surcharge fee for this purpose; extension be- yond six months cannot be obtained.

(2) No reduction of extension fees shall be made in the case of a patent endorsed “Li- cences of Right”.

(3) Patents fees shall be paid direct to the patent office by means of money orders, postal orders, banker’s draft and banker’s cheques, (adhesive stamps shall not be ac- cepted in payment of fees), the prescribed fee must be submitted together with the appro- priate completed patents form; in addition each form or batch of forms shall be accompa- nied by a fee sheet showing details of the form and the amount of the fee. Money orders, etc., shall be made payable to “The Registrar of Patents, Federal Ministry of Trade, Fed- eral Capital Territory, Abuja”, and crossed. Patents forms together with the fees and fee sheets may be delivered to the patent office in Abuja either by hand or by registered post.

Assignments

19. (1) An application for the registration of the title of any person becoming entitled by assignment, transmission or operation of law to a patent or to a patent application or

becoming entitled as mortgagee, licensee or otherwise to any interest in a patent shall be made to the registrar on Form 8.

(2) Application may be made on Form 9 for entry in the register of notification of any other document purporting to affect the proprietorship of a patent.

20. (1) An official or certified copy of any instrument or other document which is re- ferred to in an application under rule 19 and is a matter of record in the Federation shall be produced to the registrar with the application.

(2) Any other document so referred to shall, unless the registrar otherwise directs, be produced to him with the application and a certified copy of any such document shall be filed.

21. An application under rule 19 (1) of these Rules shall contain the name, address and nationality of the person claiming or stated to be entitled together with full particulars of the instrument, ifany, under which title is claimed or given.

22. Where the name of a person is entered in the register as mortgagee or licensee, such person may on making an application for the purpose on Form 10 have a note entered in the register that he no longer claims to be mortgagee or licensee, as the case may be.

23. (1) An application by a patentee for the alteration of a name, nationality, or address or address for service entered on the register in respect of his invention shall be made on Form 11.

(2) Before acting on a request to alter a name or nationality the registrar may require such proof of the alteration as he thinks fit.

(3) If the registrar is satisfied that the request should be allowed, he shall cause the register to be altered accordingly.

Correction of errors

24. Where an applicant for the grant of a patent or a patentee desires to correct any er- ror, he shall make the appl ication of Form 12.

Cancellation and surrender of patent

25. (1) Where a patentee desires to cancel his grant, he shall make the application in a written declaration accompanied by the patent.

(2) Where the application relates to some of the claims only made by the patent the written declaration shall not be accompanied by the patent; and the registrar shall register the cancellation of the particular claims only and notify the applicant accordingly.

(3) Where the applicant relates to a patent as to which a contractual licence or licence of right is registered, the written consent of the licensee shall be attached to the written declaration, otherwise, the application for surrender shall not be registered.

Death of applicant

26. In case of the death of an applicant or joint owner for the grant of a patent after the date of his application, and before the grant of a patent has been effected, the registrar may, on being satisfied of the applicant’s or joint owner’s death, enter in the register, in place of the name, address and nationality of such deceased applicant or joint owner the name, address and nationality of the successors in title or personal representative of the applicant or joint owner on such succession being proved to the satisfaction of the regis- trar.

Discretionary power

27. Except as otherwise provided in these Rules, before exercising any discretionary power given to him by the Act or these Rules adversely to any applicant for the grant of a patent, the registrar shall give at least ten days notice to the applicant of the time when he may be heard.

Amendments

28. If the registrar thinks fit, any document or drawing relating to an invention may be amended, and any irregularity in procedure may be rectified, on such terms as the regis- trar may direct.

29. Where a certificate is required for the purpose of obtaining a patent abroad, or for any legal proceedings, or other special purpose, as to any entry, matter or thing which the registrar is authorised by the Act or these Rules to make or do, the registrar may, on the lodging of a request on Form 14 give such certificate which shall also specify on the face of it the purpose for which it has been issued as aforesaid.

Copy of patent

30. An application for a copy of a patent shall be made on Form 15 and shall be accom- panied by evidence setting out in full and verifying the circumstances in which the origi- nal patent was lost or destroyed or cannot be produced.

Evidence before registrar

31. Where under these Rules, evidence is required to be filed, it shall be by statutory declaration or affidavit, unless otherwise expressly provided in these Rules.

32. (1) The statutory declaration and affidavits required by these Rules, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, and shall be divided into paragraphs consecutively numbered, and each paragraph shall, so far as possible, be confined to one subject.

(2) Every statutory declaration or affidavit shall state the description and true place of abode of the person making the same, and shall be typed, lithographed or printed.

33. The statutory declaration or affidavit shall be made and subscribed as follows, that is-

(a) in the Federation, before any justice of the peace, or any Commissioner for oaths or other officer authorised by law in any part of the Federation to ad- minister an oath for the purposes of any legal proceedings; and

(b) in a foreign country, before any diplomatic or consular officer of Nigeria authorised to administer oaths, or before any officer having an official seal and authorised to administer oaths in the foreign country in which the applicant may be.

34. Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised by the last foregoing rule to take a declaration in testimony that the declaration was made and subscribed before him, may be admitted by the registrar without proof of the genuineness of the seal or signature, or of the official character of the person or his authority to take the declaration.

35. At any stage of any proceedings before the registrar, he may direct that such docu- ments, information or evidence as he may require shall be lodged, and may fix the period for the lodging thereof.

Application for compulsory licences

36. An application for the grant of a compulsory licence under Part I of the First Sched- ule to the Act shall be made on Form 7. Such application shall be accompanied by an unstamped copy thereof and a statement in duplicate setting out fully the nature of the

applicant’s interest and the facts upon which he bases his case. Copies of the application and the statement of the case shall be transmitted by the registrar to the patentee.

37. If the patentee desires to oppose the application, he shall within such time as the registrar may allow, lodge a statement fully setting out the grounds on which the applica- tion is to be opposed and shall deliver to the applicant a copy thereof.

38. The applicant shall, within such time as the registrar mad allow, lodge evidence in support of his case and shall deliver to the patentee a copy thereof.

39. Within such time as the registrar may allow, the patentee may lodge evidence in answer and shall deliver to the applicant a copy thereof; and within such time as the Registrar may allow, the applicant may lodge evidence confined to matters strictly in reply and shall deliver to the patentee a copy thereof.

40. No further evidence shall be lodged by either party except by leave or on direction of the registrar.

41. On completion of the evidence or at such other time as he may see fit, the registrar shall inform the applicant thereof in writing and thereafter the case shall be deemed to stand for the determination of the court.

42. (1) Where a case stands for the determination of the court pursuant to rule 41 of these Rules, the registrar shall require the applicant within two months, or such further time as the registrar shall allow, to make a written application to the court for an order

granting a compulsory licence to the applicant on any of the grounds enumerated in Part 1 of the First Schedule.

(2) The applicant shall thereupon make his application or take such other proceedings as aforesaid within the period of two months above named or such further time as the registrar may allow, and shall also within the like period give notice thereof to the regis- trar.

(3) If the applicant shall fail to make such application or to take such other proceed- ings, of which failure, or the non-receipt by the registrar of the said notice shall be suffi- cient proof, the applicant shall be deemed to have abandoned his application.

43. On the grant, cancellation or variation of the terms of a compulsory licence by the court the proper officer of the court shall transmit the necessary order to the registrar who shall register the grant, cancellation or variation without fee.

Contractual licences

44. (1) On the grant of a contractual licence the licensee shall apply on Form 16 for the registration thereof and the original and an attested copy of the relevant documents shall be filed along with the said form; the original shall be returned to the applicant after the registration of the licence.

(2) No contractual licence shall have effect against third parties unless the provision of paragraph (1) of this rule is complied with.

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