Making the Nigerian Patent System more Efficient through Pre-Grant Opposition Mechanism: Lessons from India and Botswana

• Citation: (2016) IPLJ 64
• Date: 24 May 2019
• Pages: 64-92
• Author: Desmond O Oriakhogba
• Published date: 24 May 2019

64

MAKING THE NIGERIAN PATENT

SYSTEM MORE EFFICIENT

THROUGH PRE-GRANT

OPPOSITION MECHANISM:

LESSONS FROM INDIA AND

BOTSWANA

 

Lecturer, Faculty of L aw, University of Benin, Nigeria.



PhD Candidate and Le cturer, Law Faculty, University of Benin Niger ia.

 

       

 

parties. It confers monopoly on the i nventor over his invention. This enables

the inventor to allow third par ties access to the i nvention either by way of

assignments or license s upon the payment of agreed fees (royalties), or to

refuse access enti rely subject to relevant patent law. Where access is a llowed,

third par ties are enabled to manufact ure, use, or sell the invention to the

extent permissible unde r the assignment or license. However, a patent does

not vest automatically on an inventor merely by the act of inventing. A pate nt

is vested in an inventor by the govern ment of the state involved only when the

inventor and his invention comply with relevant procedu ral and substantive

requirements of par ticular patent law. Thus, the monopoly conferre d on an

inventor through the g ranting of a patent could be seen as ‘a trade-off be tween

him (the patentee) and the government for the disclosu re of the invention’.1

It should be noted that the exclusive right that a patent confers on a n inventor

is neither for life nor unlimite d. It has a life span and the patent law unde r

which the patent is grante d dictates this. Usually, a patent is granted to last for

 BL (Nigeria), LLB LLM (Un iversity of Benin), PhD Candid ate, Commercial Law Dep artment,

Law Faculty, Universit y of Cape Town, South Africa. Th is work is not related to, neithe r does it

form part of, t he PhD research of the author s. The views expressed as well as a ny errors in the

work are solely those of th e authors.

 BL (Nigeria), LLB LLM (Un iversity of Benin).

1 A Adewopo ‘P ublic health, acces s to medicines and t he role of patents systems i n Nigeria’ (2011)

NIALS Jour nal of Intellectual Prop erty 164 -190.

(2016) IPLJ 64

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     

national patent law.2

Patent law is part of intellectu al property law and it ai ms to promote

innovation, enha nce technological development, disseminat ion and transfer

‘by granting a lim ited exclusive right to prevent others from using a patente d

invention without the consent of the patent owner a nd, at the same time,

requiring t he patent owners to fully d isclose the invention to the public’.3

Thus, there is a public interes t angle in patent system. The public inte rest in

a patent system dictates t hat only patents that promote societ al welfare by



growth, etc, are g ranted.4 In essence, a n effective patent system should

adequately balance the pr ivate interest of inventors and the public inte rest

of the rest of society.5 This is possible through a patent law th at rewards the

inventive geniuses of inventors by granti ng them limited monopoly that w ill

enable the inventors to exercise control over their invention for thei r economic

            

of technological information and t he development of quality patent for the

6

The pre-grant pate nt opposition mechanism has been r egarded as one of

the mechanisms in a pat ent system that would ensure th is balance, especially

in developing countries.7 The pre-gr ant opposition mechanism is an

 

8

Depending on the applicable national l aw, such mechanism may be explored

after an application for patent has b een published or after the applicat ion has

              

patent.9 The Nigerian patent regime does not have a pre-g rant opposition

mechanism.

Undoubtedly, Nigeria is a developing country and largely an imp orter

            

inadequate public in frastr ucture; inadequ ate electric power relevant to

2 For in stance, pate nts in Nigeria are g ranted to la st for a period of 20 year s from the date of

the filin g of the patent application subject , among others, to the payme nt of annual fees by the

patentee. See s 7 of t he Patent and Design Act, Cap P 2, Laws of the Federation of Niger ia, 2004.

3 WIP O Standing Comm ittee on the Law of Patents O pposition System s and other Administra tive

Revocation and Invalidation Mechanisms (2012) 10, available at http://www.wipo.int/edocs/

mdocs/sc p/en/scp _18/scp _18_4 .pdf (viewed on 5 Aug ust 2016).

4 Adewopo (n1) 167.

5 T Manu ‘Deployin g pre-grant opposition me chanisms in Africa to m onitor abuse of the patent

system’ (2015) 41(3) Commonwealth Law Bulletin 399- 421.

6 S ee generally, WIP O Standing Com mittee on the Law of Patents Repor t on the International

Patent System (2008) 7-12, available at http://www.wipo.int/edocs/mdocs/scp/en/scp_12/

scp _ 12_ 3 .p df (viewed on 5 Augu st 2016).

7 See gen erally, WIPO Stand ing Committee (n3); Manu (n5); W P uasiri ‘Improvi ng patent quality

through pr e-grant oppositio n in Thailand’ (2013) 8(4) Journal of Internat ional Commercial La w

and Technology 219-2 53.

8 Manu (n5); Puasi ri, (n7); K Weatherall , et al ‘Patent opposition in Austr alia: The facts’ (2011)

34(1) University of New South Wales Law Jour nal 93-135.

9 WIP O Standing Commit tee (n3) 6; Manu, (n5); Puasiri , (n7); Weathera ll, (n8).

MAKING THE NIGERIAN PATENT SYSTEM MORE EFFICIENT 65

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