OVERVIEW
The background facts are that BHL sued INEC and 5
others at the Federal High Court (the Court) for infringing its Patent Right
No. RP 16642 relating to Electronic Collapsible Transparent Ballot Boxes, and
Patent Rights No. RP NG/P/2010/202 in respect of Proof of Address System/Scheme
(PASS) (I refer to Patent Right No. RP 16642 and Patent Right No. RP
NG/P/2010/202 collectively as the “Patents”). The Court in arriving at its
decision held that the Defendants violated the Patents and consequently made a
declaration inter alia that BHL is entitled to 50% of the total contract sum
amounting to N17, 258, 820, 000. 00 (Seventeen Billion, Two Hundred and Fifty
Eight Million, Eight Hundred and Twenty Thousand Naira Only) as the minimum
reasonable royalty accruable for the infringement committed by INEC and the
other Defendants.
In this
article, the writer explained with reasons why he did not agree with the
decision of the Court in this case based on the following:
1. BHL
did not identify the particular claims contained in the Patents that were
allegedly infringed. In support of this he submitted that whether or not a
patent is infringed depends on the identification of the claims contained in
the Patent in accordance with Section 6 (2) of the Act. Section 6 (2) of the
Act provides that: The scope of the protection conferred by a patent shall be
determined by the terms of the claims; and the description (and the plans and
drawings, if any) included in the patent shall be used to interpret the claims,
accordingly the question of patent infringement will ultimately depend on the
identification of these claims
2. BHL
did not make a clear showing that the allegedly infringing DDC machines applies
the same process protected by his Patents.
3. The
Court misconstrued the meaning of “new” or “novelty” in the Act that by section
1 (2) (a) of the Act states that an invention is new if it does not form part
of the state of the art. Section 1 (3) defines the “art” to mean 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 which has been made
available to the public anywhere and at any time whatever (by means of a
written or oral description, by use or in any other way) before the date of the
filing of the patent application relating to the invention… Therefore, novelty
is really a question of whether the invention is “new” or has been
“anticipated” for example, by a previous patent, or by publication or use.
He concluded that the Court wrongly
proceeded to affirm the novelty (validity) of the Patents because BHL was able
to establish that he owns the Patents, and Defendants failed to prove
otherwise. In this regard, the Court misconstrues novelty to mean proof of
existence (and/or ownership) of a patent right rather than whether the
invention (or process) subject to that patent right is new, or is anticipated
by prior art.
He concluded by noting that the precedent set by the
decision of the Court will give rise to a new breed of patent trolls (Wikipedia
defines a patent troll as a person or company who enforces patent rights
against accused infringers in an attempt to extort licensing fees) who will
apply to patent just about anything patentable under the sun in other to claim
ownership to the invention, (rather than proving novelty) in accordance with
the decision of the Court. This is especially so because the Act does not require
patent examiners to conduct a substantive examination as to whether the
invention (contained in the patent application) is in fact patentable, thus
giving patent trolls the ability to “game” the patent system in Nigeria.
MY
COMMENT
The
Chief Judge of the Federal High Court, Justice Ibrahim Auta , in his judgment,
maintained that having gone through the totality of evidence adduced before it
by both the company and INEC, it was satisfied that the electoral body,
violated a subsisting patent right over the process, application and use of DDC
machines for voters’ registration, solely acquired ab initio by the firm.
The
CJ held that in the award and execution of the contracts, INEC, its chairman
and three companies involved in the transaction, infringed on a valid right of
the plaintiff.
Consequently, the court ordered INEC, Jega and the others to pay
BHL N17.25 billion as compensation for infringing on its valid and subsisting
patent rights. He held that the nation’s Patent and Design Act precludes
anybody from using a patented invention without the consent of the inventor.
He said Section 6 of the Act provided for the protection of a
patent right, adding that it was the duty of the court to ensure such
protection. He also frowned on the decision of INEC and Jega to award the
contracts without BHL’s consent, despite being aware it had the patent right
over the invention and I quote:
“INEC, like every other government agencies has the
responsibility of obeying the law of the land.
“INEC as an electoral body should realize that the business of
election is important. It touches on the life of the nation.
“So, INEC should always play by the rule, so that its conduct
does not affect the outcome of elections,”
I will like to align myself with the position of the Honourable
CJ.
In view of the 3rd issue raised by the writer that
the
Court misconstrued the meaning of “new” or “novelty” in the Act as its provided
for under Section 1 of the Act. I will like to submit that section 9 of the patent Act provides that on the application
of any person (including a public officer acting in the exercise of his
functions) the court shall declare a patent null and void:
a.
If
the subject of the patent is not patentable under section 1 of this Act or
b.
If
the description of the invention or the claim does not conform with subsection
2 of section 3 of this Act or
c.
If
for the same reason a patent has been granted in Nigeria as the result of a
prior Application or an Application benefiting from an earlier foreign priority.
It is my humble view that the validity
or otherwise of BHL’s patent right goes to the root of this case and INEC and
Ors ought to have applied for the nullification of the patent right through a
Preliminary Objection. Therefore in the absence of any Preliminary Objection or Counter Claim as
to validity of the patent right and the existence of a patent right in favour
of BHL, in effect BHL was the
sole owner of the patent rights over the process and its rights was infringed by
the conduct of INEC and Ors.
CONCLUSION
Thus the CJ was right when he held that the nation’s Patent and Design Act precludes
anybody from using a patented invention without the consent of the inventor, the
electoral body therefore violated a subsisting patent right over the process, application
and use of DDC machines for voters’ registration, solely acquired ab initio by
the BHL.
Yinka Olaiya
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