Tuesday 19 June 2012

Darren Olivier

Federal High Court in Nigeria Restrains Registrar of Patents over Collapsible Ballot Box

Collapsible Ballot Boxes
In the ruling of the Court on June 5th 2012, the Registrar of Patents was restrained from granting to the Defendants, Emchai Limited, Tambco United Nigeria Limited and Anowat Project and Resources Limited any patent or design right to Transparent Ballot Boxes and Electronic Collapsible Transparent Ballot Boxes, which are respectively covered by a design right already issued to the Plaintiff, Beddings Holding on January 12, 1998 and November 27, 2006.

In the words of his Lordship:

“That by virtue of Sections 1, 2, 6 (1) and 13 of the Act, the plaintiff’s Certificate of Registration of Patent Rights RP16642 and Registration of Industrial Designs Rights Number RD13841 issued to the plaintiff on November 27, 2006 in and over the invention, named Electronic Collapsible Transparent Ballot Boxes by the first defendant, takes priority over subsequent registration of Industrial Designs, especially the registration of Industrial Designs Rights Number NG/RD/2010/708 to the fourth defendant , and subsequently registered by the first to the fourth defendants on October 14, 2010 in and over the same invention renamed Collapsible Transparent Ballot Box, and thereby precluded the defendants and other persons from infringing on the plaintiff’s exclusive right, as the fourth defendant’s invention is not new to the express provision of Section 13 (3) (a) of the Patent and Designs Act.

That by virtue of Section 1, 2, and 6 (2) of the Act, the Certificate of Registration of Patent Rights No: 16571 and Registration of Industrial Designs Rights Number RD13610 issued by the first defendant to the second defendant in and over the purported invention named Envopak Ballot Boxes on August 31, 2006 was done contrary to the provisions of Section 6 (2) of the Patent and Designs Act.

That by virtue of reliefs 1, 2, 3, 4 and 5 and Sections 1, 2, 3 and 6 (2) of the Patent and Designs Act, any action or actions taken or purportedly taken by the defendants relating to the said products without the prior and express license, consent and approval of the plaintiff is unconstitutional.”

This injunction also restrained the Independent National Electoral Commission (INEC) from using any invention covered by the said design right in conducting the upcoming gubernatorial election in Edo State.

It would be recalled that the plaintiff in this case has in the past successfully injuncted INEC and the other defendants, from awarding any contract for the manufacture, sales or distribution of any product/invention covered by these design rights, thereby stalling the conduct of the upcoming general elections in Nigeria. However this injunction was subsequently discharged on public interest considerations by his Lordship, Justice Ibrahim in the hearing of the substantive suit.

My general concern is that the Patent and Designs Act should be amended to require the patent registrar to conduct an examination as to patentability of the invention. This should reduce incidence of patents where the subject matter claimed already anticipates a prior art. For instance under § 13 (1) (a) of the Patent and Designs Act, for a design to meet the threshold of registrability, it must be “new” among other things. The section of the Act granting patent provides that “an invention is new if it does not form part of the state of the art,” this meaning is consistent with the plain meaning of “new” as used under § 13 (1) (a).

In interpreting “state of the art,” Nigerian courts should in my view not be restricted to only evidence of the state of the art available within Nigeria neither should it be limited to evidence of a prior Patent/Design grant obtained in Nigeria as the standard of been made available does not necessarily entail the prior grant of a Patent/Design right but rather that information concerning the claimed invention or design has been previously disclosed to the public by way of a written or oral description, by use or in any other way.

Though case laws in this area of law is still developing, I would very much like to see how Nigeria courts would decide when the issue of patentability comes before them.

Afro Leo wishes to thank Chukwuyere Izuogu for his synpopsis of the case an insightful comments. It is good to see that hard IP rights are enforceable in Nigeria, and also that local companies are using them.

Darren Olivier

Darren Olivier

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