Patent as an IP Consideration for Startups

Patents is a fundamental component of intellectual property (IP) that plays a vital role in safeguarding the technological advancements and creative solutions that many startups bring to market. By securing exclusive rights to their inventions, startups can prevent competitors from exploiting their hard work and innovation, while also enhancing their market value and appeal to investors. This article explores the significance of patents as a strategic IP consideration for startups, outlining how they can serve as a protective shield for innovation and a valuable asset in the pursuit of business success.

What is a Patent?

The World Intellectual Property Organization defines a patent as an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers anew technical solution to a problem. In other words, a patent is a form of market monopoly granted by the relevant government authorities within a country to inventors as an incentive to innovate more. Because of its monopolistic nature, it is granted to an inventor for a limited period, to allow him to exploit the invention financially before the patent expires and falls into public domain. Patent in Nigeria is regulated by the Patent and Designs Act 1990. The regulatory bodies saddled with the responsibility of enforcing this Act are the Trademarks, Patents and Designs Registry, Commercial Law Department of the Federal Ministry of Industry, Trade and Investment.

What Criteria Must Your Invention Meet to Qualify for Patent Protection?

The Act does not give a precise definition of what qualifies as an invention, but it does outline specific requirements that an invention must meet to be eligible for patent protection. They are:

• The invention should be new, result from the inventive activity, and be capable of industrial application;
• If it constitutes an improvement upon a patented invention, and also, is new, results from inventive activity, and is capable of industrial application; or
• The invention should not have been made available to the public within six months preceding the filing of the patent application of such invention.

What Determines “Newness”?

An invention is said to be new if it results from an inventive activity and 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. Also, an invention is considered capable of industrial application if it can be manufactured or used in any kind of industry, including agriculture in Nigeria.

Art is defined as 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 that has been made available to the public anywhere.  

What Right is Conferred by Patent Protection?

Upon grant of a patent, the patentee has the exclusive right to preclude all other persons from doing the following acts:

1. 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 sale or use; and
2. where the patent has been granted in respect of a process, the act of applying the process of doing, in respect of a product obtained directly using the process or any other acts mentioned in paragraph(1).

It is important to note that the scope of these rights shall only extend to commercial or industrial purposes.

How Can an Infringement on a Patent Occur?

An infringement of these rights will occur when someone, without the permission of the patentee owner, performs an action that is prohibited under the provisions of the act. When such infringement occurs, the patentee or design owner has the right to take legal action. In such a legal action, the plaintiff (the patentee) can seek various forms of relief, including damages, injunctions, accounting for profits, or other remedies, similar to what is available in cases involving the violation of other property rights.

What Categories of Items or Inventions are Ineligible for Patent Protection?

The patent law in Nigeria grants patent rights to various inventions, but it also outlines certain exceptions. Specifically, it excludes plant varieties, biological processes, and products of plants or animals from patent protection. Additionally, inventions contrary to public order and morality are prohibited. If an invention meets the Act's requirements and does not fall into these exceptions, it can be eligible for a patent in Nigeria.

In a Contract of Employment, Who Owns The Patent? The Employee or The Employer?

The Act provides that if an employee creates an invention while performing their job duties, the patent rights will typically belong to the employer. However, if the invention is developed during the employment contract but not directly related to the employee's duties and involves the use of the employer's resources, the employee may be entitled to fair compensation. This compensation should consider the significance of the invention and the employee's salary.

What Should my Patent Application Contain?

The Registrar of Patents and Designs (Registrar) is the body that receives and authorizes patent applications. The application must contain:

1. the applicant’s full name and address, and if the address is outside Nigeria, there should be an address for service within Nigeria;
2. a description of the relevant invention with any appropriate plans and drawings;
3. a claim or claims (for any number of products, processes, or applications), however, an application shall relate to one invention only;
4. the application shall also be accompanied by the prescribed fees as determined by the Registrar from time to time;
5. be accompanied in appropriate cases by a declaration by the true inventor of the product supplying his name and address that he/she be acknowledged as such in the patent;
6. where the application is submitted by an agent, then a power of attorney authorizing the donee of the power of attorney to that effect shall be included. Upon application, the registrar shall examine the invention subject to the provisions of the Act and grant the patent if it meets the requirements.

What is the Duration of a Patent?

According to the Act, a patent for an invention typically lasts for twenty years from the date the relevant patent application was filed. However, there are circumstances in which a patent can expire before reaching its twentieth year:

1. A patent will expire if the required annual fees are not paid on time. There is a grace period of six months allowed for fee payment. If the fees and any applicable surcharge are paid within this grace period, the patent will remain in force as if the fees had been paid on time.
2. The expiration or lapse of a patent will be officially recorded and notified.

Final Thoughts

As we have explored in this article, patent protection isa critical consideration for startups aiming to carve out their niche in the market and secure their place in the ever-evolving landscape of entrepreneurship. By obtaining patents for their inventive ideas, startups cannot only protect their intellectual property but also gain a competitive advantage, attract investment, and fuel future growth. As you embark on your startup journey, remember that patents are not just legal documents – they're the keys to unlocking the full potential of your innovation and shaping the future of your business.