NLIPW Patents Law Volume 2 Number 1
(Patent Infringement Lawsuits in Nigeria)
December 1, 2013
|| Patent Infringement ||
1. Which court handles actions for patent infringement in Nigeria?
By virtue of Section 25(1) of the Constitution of the Federal Republic of Nigeria 1999, the Federal High Court is vested with the original and exclusive jurisdiction to entertain patent infringement actions brought in accordance with the provisions of the Patents and Designs Act (Cap P2) Laws of the Federation of Nigeria 2004.
2. On what grounds can a patent infringement action be brought in Nigeria?
A patent infringement action can be instituted when a third party, without the consent of the patent holder, makes, imports, sells products, or applies the subject matter of the patent in order to create a product for commercial purposes. For example, in Pfizer Limited v. Tyonex Nigeria Limited and Ebamic Pharmacy Limited, Pfizer filed a suit against two pharmaceutical companies in Nigeria, Tyonex Nigeria Limited and Ebamic Pharmacy Limited, for importing a drug from Turkey and selling it under the name “Amlovas”.
According to Pfizer, the active ingredient contained in “Amlovas” was Amlodipine Besylate, which was invented by Pfizer and patented in Nigeria under patent No. RP 9970. Delivering judgment on the suit, Justice B.B. Aliyu of the Federal High Court, ruled that the two Nigerian companies had infringed Pfizer’s patent right by importing and selling Amlovas which contained Pfizer’s patented product, Amlodipine Besylate, and which Pfizer sells under the brand name Norvasc. The court subsequently granted an injunction and awarded damages in favor of Pfizer.
Relevant Provision: Sections 6, 9 and 25 of the Patents and Designs Act
|| Patent Enforcement ||
3. How long do patent infringement actions typically last?
Depending on each individual case, a patent infringement action can last from two years up to any number of years. For example, the patent infringement dispute between Rev. (Dr.). C.J.A. Uwemedimo and Comandclem Nigeria Ltd on the one hand and Mobil Producing (Nigeria) Unlimited on the other, has lasted for more than a decade with Suit Nos. SC. 69/2011, CA/C/6/2003, CA/C/15/2009, FHC/UY/CS/47/2003, SC. 198/2005 (but keep in mind that this dispute has its own unique issues and is not the norm).
4. What are the possible defenses?
(a). Plaintiff is not entitled to sue.
In defense of a patent infringement action, where the circumstances are relevant, the defendant can assert that the plaintiff is not entitled to sue. For example in Suit No. FHC/L/CS/718/03, between Beijing Cotec New Technology Corp./Churchbells Pharmaceuticals Ltd., v. Green Life Pharmaceuticals and ors., a Federal High Court presided by Justice C.P.N. Senlong had earlier ruled that the plaintiffs were the owners of registered patent No.13566 and issued an ex-parte order restraining Greenlife Pharmaceuticals Limited from making, importing, or selling of the anti-malaria drugs “Alaxin”, which was manufactured from Dihydroartemsinin. However, the defendants were able to provide countering evidence leading the Federal High Court, presided by Justice Mohammed Shuaibu, to vacated the order.
(b). Invalidity of the patent.
The defendant could assert that the patent is null and void because it is not new; lacks industrial applicability; is a non-patentable matter e.g. a plant or animal variety; that the descriptions as contained in the patent specifications do not disclose the relevant information in a manner sufficiently clear and complete for the invention to be put into effect by a person skilled in the art or field of knowledge to which the invention relates; or that the claims do not define the protection sought or they go beyond the limit of the protection.
The defendant could assert any of the above notwithstanding the grant of an existing patent issued by the Registry in Nigeria. This is because in reviewing an application for the grant of a patent, the registry will not conduct a substantive examination to determine whether the descriptions and claims satisfy the requirements of Nigerian law. The Registry usually issues patent certificates when all the required documentation are filed.
Relevant Provision: Sections 1, 3, 4(2)(b) and 4(4) of the Patents and Designs Act
(c). Exhaustion of rights:
In relying on the exhaustion of patent rights defence, the defendant would assert that the holder cannot use the exclusivity powers conferred by patent rights in order to oppose the further commercialization of genuine products incorporating or protected by such rights once these products have been placed in the market by him or with his consent.
The defendant could assert that the acts complained of are permitted under Nigerian laws and as such he is not infringing on the patent. For example, if the act complained of is not done for commercial purposes, it may be permissible.
(e). Laches and acquiescence (that is, the right has lapsed due to not being exercised).
(f). Proof that the defendant was granted a license: Since licenses can be contractual or compulsory, the defendant can assert that they were granted a license by a person who had the capacity to issue such licenses.
Relevant Provision: Section 9 of the Patents and Designs Act
5. What forms of relief can be obtained for patent infringement in Nigeria
(a). Injunction: Both preliminary and final injunction are available reliefs. Preliminary injunctions are typically granted at the discretion of the courts while final injunctions are granted when a party succeeds in showing that an actual or threatened infringement of his intellectual property rights exists. In Pfizer Limited v. Tyonex Nigeria Limited and Ebamic Pharmacy Limited, the plaintiff obtained both an injunction and damages for the infringement.
(b). Damages: Damages may be general, special exemplary, punitive or nominal.
(c). Account of profits.
(d). Delivery up for destruction.
6. What documents are required for filing a patent infringement case in Nigeria?
By virtue of Order 53, Rule 10 of the Federal High Court (Civil Procedure) Rules, an action for the infringement of a patent shall be commenced by filing a writ of summons together with a statement of claim, list of witnesses to be called at trial and their written depositions, and copies of documents to be relied on at trial.
Relevant Provision: Order 53, Rule 10 of the Federal High Court (Civil Procedure) Rules
7. How much of the costs of the proceedings is recoverable from the losing party?
Under the Federal High Court (Civil Procedure) Rules, a successful party may recover expenses from the losing party in a suit, but determining the costs of the award is at the discretion of the court.
Relevant Provision and Case: Order 25, Rule 2 of the Federal High Court (Civil Procedure) Rules, Beecham Group Ltd v. Esdee Food Products Nigeria Ltd.