This is the concluding part of our discourse on patentable inventions under intellectual property law in Nigeria. We have established that an invention is patentable if it is new, results from inventive activity and is capable of industrial application; or if it constitutes an improvement upon a patented invention and also is new, results from inventive activity and is capable of industrial application.[1]
Having re-emphasised the statutory requirements for patentable inventions, we can now conveniently proceed to the conditions that are considered for the purpose of determining non-patentable inventions and construing the meaning of novelty. As briefly mentioned in the previous post, these conditions are oral publication, documentary publication, prior use and specifically mentioned non-patentable inventions[2]as expressly stated in the Patents and Designs Act.
Firstly, let us look at oral publications. For an invention to be eligible for grant of patent, it must not have been orally communicated to other persons by the inventor before applying for patent. That such disclosure was made intentionally or unintentionally is of no moment under the patent law.
Secondly, apart from oral publication, an invention is not patentable if there is publication by document. What this means is that where an application for grant of patent has been documented or published, such publication renders the invention non-patentable. Since a patentable invention or process must meet the requirement of novelty, documentary publication whether in a journal, newspaper or otherwise renders such invention non-patentable.

Another condition that can render an invention non-patentable is prior use. Since any prior use of the invention in the public would have afforded members of the public to have the opportunity of learning about the invention, any application for grant of patent after such use will fail. One interesting case in point is Farmento Industries SA v. Mentmore Manufacturing Co. Ltd.[3] in this case, the inventor had prior to his application for grant of patent for his ball-point pen invention had given out the invention to three different persons as gifts. The court held that such gift amounted to prior use by members of the public, however limited.
In Merrell Dow Pharmaceuticals Inc. vs. Norton & Co. Ltd[4]., although it was one of the holding of the court that prior use of a product was to be considered in the same way as a prior published document, there is an exception. This exception is that where the information available will not enable a person skilled in that field of knowledge produce the invention, prior use will not invalidate its eligibility for protection under patent law.
Lastly, apart from the conditions discussed above, the statute itself specifically states what constitutes non-patentable inventions.[5] In the words of the Act, patents cannot be validly obtained in respect of –
(a)  plant or animal varieties, or essentially biological processes for the production of plants or animals (other than microbiological processes and their products); or
(b)  inventions the publication or exploitation of which would be contrary to public order or morality (it being understood for the purposes of this paragraph that the exploitation of an invention is not contrary to public order or morality merely because its exploitation is prohibited by law).
So next time you come up with a new invention, maybe a new social media application, mobile software or web design application, be sure to remember how best you can protect your invention. Prior use, oral and documentary publication before making an application for grant of patent to the Registrar renders your invention non-patentable. See you next week!

[1] Section 1(1) of the Patents and Designs Act
[2] Section 1(4) of the Act    
[3] (1956) RPC 87
[4] (1994) RPC 1
[5] See section 1(4) of the Act.

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Nigerian Law Today

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