Author: Chikezie S. Ekeocha, Esq.
INTRODUCTION:
Patentability refers to the substantive conditions that must be met for a patent to be held valid. As patent laws are different in different countries, the patentability criteria also vary from country to country. The invention must satisfy the requirements under the context of a national or multinational body of laws to be granted a patent.
Although the criteria differ from country to country, depending on the law of the land, there exist some common grounds between them. In order to be patentable, an invention must be novel, arise from an inventive step and must be capable of industrial application. These standard requirements are given different shapes by the legislative and judicial systems of different countries.
A Patent has been defined by the World Intellectual Property Organization, as a document, issued, upon application, by a government office (or a regional office acting for general countries), describing an invention and creating a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the patent’s owner.
The term “invention” has also been defined by the world international property organization (WIPO) to mean a solution to a specific problem in the field of technology. It may relate to a product or process.
The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements.
A patent is, in effect, a limited property right that the government offers to inventors in exchange for their agreement to share the details of their inventions with the public. Like any other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away, or simply abandoned.
The matters that are patentable are those which relate only to inventions. The protection conferred by the patent is limited in time, which in most cases is 20 years.
Where the subject matter of a patent does not relate to a method or process leading to an invention they have been held not to be patentable. In the English case of MULLARD VALVE CO. v. PHILCO ETC., CO. the appellant was granted letters of patent for “improving in and relating to circuit arrangements and discharge tubes for amplifying electric oscillation.” The appellant in an action for infringement of the patent alleged infringement of claims 2 and 5 in respect of the sale of certain wireless valves.
Claim 2 was for “a discharge tube having at least three auxillary electrodes between the cathode and the anode, characterised in that the auxillary electrode nearest to the anode is directly connected to the cathode so as to be maintained continously at the cathode potential” and Claim 5 was for “the dicharge tube substantially as described”
The Respondent at first denied the fact of infringement, and subsequently did not dispute infringement but claimed that the letters of Patent were invalid for want of novelty or patentable subject matter, and by reason of prior grant and prior publication. The House of Lords in considering claim 2 at page 930 of that judgment Held:
“If then, claim 2 is read by itself, as it ought to be, it will be seen to be a claim for an article, not for a method or process. That there may be a good article is accepted law. But the article claimed must be a patentable article, that is to say, it must satisfy all the tests of validity which the law applies to an invention. It does not follow from the fact that an article may be the subject of an invention that every claim for a new article is good.”
This study will look at the general requirements for determining patentability, while limiting itself to the law as applicable in Nigeria, keeping in mind the fact that the patent laws are not uniform, the world over.
CONDITIONS FOR PATENTABILITY UNDER THE NIGERIAN LAW
In Nigeria, patents are at present regulated by the PATENTS AND DESIGNS ACT (hereinafter referred to as the Act).
The said Act does not define what a patent means but it is clear from the wordings of the Act that patents have to do with inventions. From a patent perspective, an invention can be defined as anything NEW, resulting from an INVENTIVE ACTIVITY and of INDUSTRIAL APPLICATION.
The Act provides for what is described as patentable inventions, when it states thus:
“Subject to this section, an invention is patentable –
- If it is new, results from inventive activity and is capable of industrial application; or
- If it constitutes an improvement upon a patented invention and also is new, results from inventive
activity and is capable of industrial application.” The above provisions of the Act create two situations under which an invention may be patentable and lays down the same
requirements in the two cases that will guarantee the patentability of such invention.
The first situation identified by the provision of the Act is where the invention is totally new or where the patent is said to have been invented from the beginning, independent of any other invention in that field of knowledge.
The second situation captured by the Act envisages and gives credence to an invention which is a result of an improvement of an already existing and patented invention.
In both situations as set out in the Act, the conditions for patentability of the inventions which emerge are the same. They include:-
- Novelty/Newness of the invention
- Inventive step
- The invention must be capable of industrial application.
NOVELTY/NEWNESS OF THE INVENTION
Novelty is a fundamental requirement and an undisputed condition of patentability. An invention will not be novel if it has been disclosed in the public through any type of publication anywhere in the world.
The Newness of an invention depends upon the state of existing knowledge as well as the similar inventions in that particular field.
The patents and Designs Act states that:
“an invention is new if it does not form part of the state of the art”
Nov elty or newness has been described as the prerequisite of patentability.
The Act clearly describes what is meant by the phrase ‘the art’ as “the art or field to which the an invention relates” and defines the phrase ‘state of the art’ to mean 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 written or oral description, by use or in any other way) before the date of 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 the reason of the fact that, within the period of six months preceding the filing of the patent application in respect of the invention, the inventor or his successor in title has exhibited it in an official or officially recognized international exhibition.
The disclosure or publication of an invention to the public before an application for its registration is filed will damage any claim of novelty.
Disclosure of inventions to the public is a critical element in determining whether an invention is patentable or not.
By the clear wordings of the Patent and Design Act, the following forms of disclosure will affect the novelty of any invention sought to be patented in Nigeria:
- Written disclosure: These may take the forms of manuscripts, book chapters, journal articles, proceedings, thesis, posters, proceeding abstracts. The date of the disclosure of the thesis is the date when it is actually indexed and made available to the general public on the library shelve. In cases, where you wish to preserve the confidentiality of the information contained in the thesis you can request that the thesis be placed in a secure section and not be made available to the public. In respect of Posters, Abstracts and Proceedings, their date of disclosure is the date they are made available for circulation.
- Oral disclosure: If at a presentation you distribute a copy of your presentation in which your invention is disclosed, it is clearly a disclosure. It has also been argued that even if handouts are not distributed at such gathering but someone in the audience takes a detailed note that describes the invention, it would also constitute disclosure.
- Public use or sale: Distribution of research materials or prototypes that embody the invention will constitute
disclosure, where there is no restriction as to use and where further distribution of it may be made to the general public. If they are clearly provided only for testing and/or evaluation or for research purposes under written agreements clearly specifying same, it would not be considered publication or disclosure.
Furthermore, mere exhibition in a book shop or display on a library shelve has been held to constitute publication. In other words, the document embodying the invention need not be sold to constitute publication.
In the case of Van der Lady v. Bamford, where the patentee claimed a hay raking machine in which the rake – wheels were turned not by an engine but by contact with the ground, the patent was held to have been anticipated by a photograph in a journal which showed a hay rake with this feature. It was held that the photograph in the journal was clear enough to reveal the invention to an informed person.
Also, in the case of FEMENTO INDUSTRIAL S.A. V. MENTIMORE MANUFACTURING CO. LTD, the court of Appeal had to consider the question whether the prior user of certain ball-point pens by three individuals to whom gifts of them were made in circumstances which left the recipients of the gifts free to use the pens as they wished amounted in law to an anticipation of the invention. Lord Evershed M.R. relied on the dictum of Bowen L.J in the English case of HUMPHERSON V. SYER (1887) 4 RPC 87 CA and put the position succinctly thus:
“Therefore in the view of the Lords justices the knowledge of anyone here was enough to give the public possession of the invention…… it may seem at first a hard result for the patentee but in the light of that authority (Humpherson v. Syer) it is I think clear that if the cases of these few pens were proved, pens having the characteristics so as to bring them within the scope of the patent 609817, if those few pens came to the hands of the three recipients in circumstances which left them free at law and in equity to do whatever they liked with them and what they discovered from them…..then it would appear to follow that the plaintiffs in this case must fail.”
However, the Patents and Designs Act applicable to Nigeria is silent on whether the public use of the invention may take place before the filing of the patent application, if it can be shown that experimentation in respect of the invention had to take place before the patent specification can properly be draw up, and that having regard to the nature of the invention it was not feasible to carry out the experiment other than in public.
In other words, Prior use of invention before filing an application for patent will destroy novelty in the invention.
On the other hand, Oral description of the invention in some seminar/conference can adversely affect novelty in the invention, if the patent application is not filed within a stipulated time period, which is six months in Nigeria.
The fundamental questions which are uppermost in considering the issue Novelty of an invention vis-à-vis prior publication are as follows:-
First, was the publication available to the public before the relevant date?
Secondly, did the publication disclose the invention?
It is also pertinent to observe that in Nigeria, the Act is silent on whether the disclosure of invention which robs it of novelty is in respect of the whole invention or just that part of the invention disclosed.
Where only a part of the invention is published for instance the question would normally arise, whether what was new in the invention which was not disclosed by the prior publication is sufficient to form the subject matter of a valid patent. Where what is left undisclosed is new and qualifies as an invention. I believe the prior publication should not invalidate the novelty in the invention sought to be patented.
In order for a publication or disclosure to bar patenting of any invention, it has to be enabling. In other words, such disclosure has to provide enough of a description of the invention for a person skilled in the art to understand and practice it.
However, the PATENTS AND DESIGNS ACT, CAP P2, LFN, 2004 has also created certain exceptions to the general rule that a publication or disclosure of the invention would invalidate the novelty in the invention and render any subsequent patent granted to such invention invalid for reason of lack of novelty and prior disclosure.
The said exception exists where the invention is exhibited in an official or officially recognized international exhibition within the period of six months preceding the filing of the patent application.
INVENTIVE STEP/ACTIVITY
In Nigeria, an invention is said to result from an inventive activity
If it does not follow from the state of the art, either as to the method, the application, the combination of methods, or the product which it concerns, or as to the industrial result it produces.
An inventive step is said to be present, if having regard to the state of the art, the invention is not obvious to a person skilled in the art.
In the English case of WINDSURFING INTERNATIONAL V. TABUR MARINE, the Court of Appeal,identified four tests to determine the issue of what constitutes an “inventive step” as follows:
- Identifying the inventive concept embodied in the patent;
- Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
- Identifying the differences if any between the matter cited and the alleged invention; and
- Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.
The above stated test has been slightly reworked in the more recent Court of Appeal case Pozzoli Spa v BDMO SA & Anor as follows:
- (a) Identify the notional “person skilled in the art”, (b) Identify the relevant common general knowledge of that person;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
- Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
An invention will be deemed to result from an inventive step activity if as regards method, application, the combination of methods or the product which it concerns or the industrial result which it produces, it differs from previous efforts in the field. A person with ordinary brain and skill in the art should not be able to derive the claims of the invention.
In the American case of KSR V. TELEFLEX, the issue before the Court related to the usage of electronic sensor based adjustable gas pedals. Teleflex accused KSR International of using a gas pedal technology claimed in one of Teleflex’s patents. KSR, in its defence argued that Teleflex should not have been granted a patent for that pedal in the first place, as the combination of an electronic sensor and gas pedal technology was obvious based on prior art.
The US Supreme Court reversing the decisions of a lower court held that the sensor based gas technology was obvious from the teachings of other patents and invalidated Teleflex’s patent. In his opinion, Justice Anthony Kennedy wrote for the Court, “The results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise, patents might stifle rather than promote the progress of useful arts.”
INDUSTRIAL APPLICATION
An invention is said to be capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture.
Industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of “industry” is far-reaching: it includes agriculture, for instance.
The requirement that an invention is susceptible of an industrial application has generally been taken to be more or less automatically fulfilled but a 2005 decision of the Boards of Appeal of the European Patent Office saw this requirement analysed in new detail. In decision T870/04 of the European patent office (E.P.O) it was held that the mere fact that a substance can be made in some way does not necessarily mean that the requirements of industrial application is fulfilled, unless there is also some “profitable use” for which the substance can be employed.
In other words, for an invention to be capable of industrial application, it must be shown that such industrial application is one aimed at the profitable use of the invention.
It is good law that an invention shall be capable of industrial application if it can be made or used in any kind of industry, including agriculture.
The term ‘industry’ should be understood in its broad sense including any useful and practical, as distinct from intellectual or aesthetic, activity. It does not necessarily imply the use of a machine or the manufacture of a product, and covers such things as a process of dispersing fog or a process of converting energy from one form to another. In the English case of CHIRON CORPORATION v. MUREX DIAGNOSTICS LTD AND ANOTHER (1996) R.P.C 353 AT 607, the Court of Appeal held that the requirement that the invention can be made or used “in any kind of industry” so as to be “capable of industrial application” carries the connotation of trade or manufacture in its widest sense and whether or not for profit.
Although the definition of what would constitute industrial application for the purpose of patentability includes agriculture, a process used in agriculture will not be patentable if it is a method of surgery, therapy or diagnosis practiced on animals, or if it is an essentially biological process for the production of the animals or plants.
NON-PATENTABLE INVENTIONS
There are species of inventions that have not been accorded the patentable status under Nigerian Law. Though recognised as inventions, they are therefore not patentable for some reason.
By the provisions of the Act inventions arising from the following are not patentable, they include:
- Plants or animal varieties, or essentially biological processes for the production of plants and animals(other than microbiological processes and their products); or
- inventions the publication or exploitation of which would be contrary to public order or morality (it being understood for the purpose 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).
In addition, mere principles or discoveries of a purely scientific nature are not inventions for the purpose of the PATENT AND
DESIGNS ACT, CAP P2, LFN 2004.
CONCLUSION
In the light of the purpose giving rise to the grant of patent in respect of inventions, in my view, I believe that the statutory requirements for patentability are sound and unassailable. They are justified because; by the nature of rights conferred on an inventor the entire world is restricted once it is granted.
Therefore, it is only rational and reasonable that any claim for invention be properly scrutinized so the members of the society are not restricted on account of what they already know.
On the Patent and Designs Act, 2004 applicable to Nigeria, I find it quite encouraging that the provisions contained in it are on equal terms with those of most countries of the world, as far as patentability is concerned.
It is a step in the right direction in seeking to strike a balance, of some kind, between the right of the inventor to protect his invention and the need to ensure that what he brandishes as an invention is not already in the public domain.
CASES REFERRED TO
- MULLARD VALVE CO. v. PHILCO ETC., CO. (1936) 2 ALL E.R 920
- VAN DER LADY v. BAMFORD (1963) R.P.C 61
- FEMENTO INDUSTRIAL S.A. V. MENTIMORE MANUFACTURING CO. LTD (1956) R.P.C 87
- WINDSURFING INTERNATIONAL V. TABUR MARINE (1985) R.P.C 59
- POZZOLI SPA v BDMO SA & ANOTHER (2007) EWCA CIV 58 [22NDJUNE 2007]
- CHIRON CORPORATION v. MUREX DIAGNOSTICS LTD AND ANOTHER (1996) R.P.C 353 at 607
STATUTES REFERRED TO
1. PATENTS AND DESIGNS ACT, CAP P2, LAWS OF THE FEDERATION OF NIGERIA, 2004.