May 2, 2018

IP ABC: - Does a Patent give you complete protection | Infusion Lawyers



Question of the Week -

We are DigiMid, a digital media company in Nigeria. We have just developed a new product that will enable people watch videos at nights with their eyes closed so they don't strain their eyes. The product is a wearable electronic lens. Because it is new, we want to apply for patent in Nigeria. But the issue we have is the risk of having a third party make the same product by reverse engineering or other means. Before investing in patent application, we want to know what a grant of patent really gives us. Is it adequate protection? If not, what should we do to get complete protection?




Answer 

WOW, a wearable electronic lens that enables people watch videos with their eyes closed! Amazing stuff!


Now to your question, you want to know what a grant of patent in Nigeria gives DigiMid and if this will be adequate.


A patent gives DigiMid a monopoly over the invention for a period of 20 years. This protection is generally adequate.



What kind of monopoly? you might ask.


The Patents and Designs Act governs patents in Nigeria. Under the Act, a patent can either be a product or a process. An inventor who is granted a patent is called a patentee. A patent gives the patentee a monopoly by conferring on the patentee right to stop any other person from doing two major acts:-



If the patent is granted in respect of a product, the patentee has the right to stop any other person from making, importing, selling, using, or even stocking the product for the purpose of selling or using it;



If the patent is granted in respect of a process, the patentee has the right to stop any other person from doing two things:

(i) applying the process; or

(ii) making, importing, selling, using, or stocking for the purpose of selling or using a product that was obtained from applying the process.



In DigiMedia's case, your wearable electronic lens is a product. As a patentee, you will therefore enjoy the right to stop any other person from doing any of the acts in paragraph one above.


Now to your second question, will patent be an adequate protection for your invention?


Generally, yes. With the exclusive rights granted to a patentee, you have meaningful protection for your invention.


But note that DigiMid's rights as a patentee in respect of its watch-videos-with-eyes-closed lens only applies to acts done for commercial or industrial purposes. This means you can't stop an unauthorized person from making the invention if it is not for commercial or industrial, or both.

There are a number of reasons a patentee may not enjoy adequate protection.

One of these reasons is the way with which many inventors fail to protect their inventions right from day one. How?


In DigiMedia's case, the 3 points below show how:

If DigiMid's patent application is not well prepared for adequate protection, you may not have adequate protection. In your patent application, your claim or claims determine the scope of protection you will enjoy after patent is granted. This is why the scope of protection a patent confers is determined by 2 things: (i) the terms of the claims; and (ii) the description (with any plans and drawings). To prepare a patent application that protects you adequately, consult a patent agent or attorney;



If DigiMid already sold the watch-videos-with-eyes-closed lens in Nigeria, DigiMid no longer has any rights against unauthorized makers, importers, sellers, or users. This is so because by selling the product before patenting it, you have exposed the invention to the public. Under section 1(2) of the Patents and Designs Act, an invention is new as far as it does not form part of the state of the art. State of the art is everything concerning the field of knowledge to which your invention relates which has been made available to the public before the date of filing your patent application. So avoid selling your inventive product or process before getting a patent. If you must make your invention available to the public for some reasons, there is a safe procedure to do so under the Act; and



If DigiMedia exposed the invention in a local or unofficial exhibition, getting adequate protection or any protection at all is difficult. Making your invention available to the public before patenting it affects protection (and even eligibility of the invention for patent). Under the Act, there are 3 ways an invention is made available to the public: (i) by description (oral or written); (ii) by use, or (iii) by any other way. 'Any other way' is quite broad so it's best that you avoid any disclosure to the public in any way. The only public place that is excluded is any official or officially recognized international exhibition. So you don't compromise your proprietary interest, avoid disclosing details of your invention at both local and unofficial exhibitions.


What should DigiMid do to get complete protection?

First, be aware that even for real or movable property, there is no such thing as complete protection. A patent being an intangible property, protection is even less assured. This is why there are always risks of infringement. One way of minimizing these risks is by ensuring that your patent application contains specific claims, not general claims.


Second, since your invention is new—and excitingly so—consider getting patents internationally as well. You may start by focusing on the countries you wish to export your product to. For this purpose, there is a procedure that allows an already registered patent in a country to be given priority when applying for patent for the same product or process in another country. Nigeria's Patents and Designs Act recognizes this procedure.

Lastly, apart from patent, you may also consider trademarking the name of the product you have invented. Should any person successfully get away with unauthorized sale, import, or use of any invention as yours, you will be able to use your distinctive mark to compete, making it easier for your customers to distinguish your inventive product from others.

To explore all your options, we advise you contact an IP lawyer or law firm for professional assistance and guidance.

 

Best wishes

IP ABC

Photo Credit - Static World 
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