BEYOND PATENT; PROTECTING DESIGNS IN TECH INNOVATIONS (SERIES 2)

In the ever-evolving world of innovation, protecting your intellectual property (IP) isn't just a legal requirement, it's a strategic move that can define your success. If you've been following my newsletters, you'll recall that factors to this have been mentioned while I touched on the basics of patent and industrial design protection last time. Today, we're taking that conversation a step further.

:

:

:

Hello Business Innovators and Tech Solution Creators,

The decisions you make now can have lasting impacts on your invention's future if you don't understand the full scope of your IP rights. In this edition, we'll explore some other critical aspects not mentioned in the first series, such as compulsory licensing, the importance of early filing, the duration of protection, and more. If you missed the previous newsletter, I recommend giving it a read here to ensure you’re fully up to speed. Click: https://www.dhirubhai.net/pulse/beyond-patent-protecting-designs-tech-innovations-abidemi-peace-zxrnf?utm_source=share&utm_medium=member_android&utm_campaign=share_via

Now, let’s dive in to today’s focus.

1. At What Point does Compulsory Licensing Occur, and How Does It Work?

Know that while you enjoy exclusive rights over your patent, which may come along with your industrial designs, there are instances where these rights might be set aside through what is known as compulsory licensing. This is subject to Part 1 of the Patent and Design Act, First Schedule, and can occur under specific circumstances, such as:

? Abuse of Licensing: If the statutory holder abuses the licensing rights by refusing to grant a license without valid reasons, the government or a competent authority may issue a compulsory license, allowing another party to use the design without the holder’s consent.

? Public Interest: In situations where the design is needed for public interest, such as in healthcare or other critical sectors, the government may issue a compulsory license. For example, if a design is integral to producing medical equipment during a public health crisis, the government can override the exclusive rights to ensure the equipment is produced and distributed.

? Non-Utilization: If the patent has not been put to use within four years after filing or three years after the grant, a compulsory license could be issued to prevent the design from going unused, thus avoiding monopolization of designs that could benefit the public.

? Economic and Social Need: Compulsory licensing may also be issued when there is a broader economic or social need for the industrial design, ensuring it is available for use even if the statutory holder is unwilling to license it and many more but compulsory licensing may be disregarded if the statutory holder known as the patentee satisfies the court that his/her actions in relation to the patented invention are justifiable in the circumstances stating them out.

:

:

2. What is the Period of Benefit for Industrial Design Usage Upon Registration?

Upon registration, a five [5] years of exclusive ownership is granted, compared to patents that offer twenty [20] years, both subject to renewal. This shows that the industrial design will expire before the patent duration elapses, so it is advisable to renew it to secure the protection of the whole invention. Industrial design renewal is granted in two consecutive periods of five years each, making it 15 years in total. It's important to pay attention to this or have an intellectual Property legal expert to keep you informed when renewal is due - especially one who keeps you in progress of your startup's invention legal securities.

:

:

3. Why Is Early Filing Crucial, Even as a Major Factor To Consider?

Filing your design early is crucial to protecting your rights and preventing your design from being vulnerable to imitation or unauthorized use. Here’s why early filing is essential:

? To Prevent Imitation: Filing early secures your design before it is publicly disclosed, preventing others from copying it.

? For Confidentiality: Before filing, maintain confidentiality around your design, ensuring that sensitive information remains protected.

? For Protection of Trade Secrets: If your design is still in development, consider trade secret protection until you’re ready to file.

:

:

4. Who Owes An Industrial Design Ownership in Employment?

When creating an invention with its designs under an employment contract, it’s essential to understand who owns the IP rights based on what I tag: employer's ownership and personal creation ownership.

A] Employer Ownership: Typically, if you create a design as part of your job, the rights to that design, including any commercial benefits, belong to your employer as I have once said. This is meant to be outlined in the major documents that binds you together.

B] Personal Creations: If the design is created outside the scope of your employment contract, you may retain the rights to it except there are some exceptions. You can also choose to license or assign these rights or be entitled to fair remuneration, as provided under the Act. If the employer fails to offer fair compensation, get to know your right to secure what belongs to you. It's crucial to review all the documents binding you both to ensure that important clauses are introduced.

I recommend seeking legal advice when engaging in this for your patent and its unique design. An intellectual property [IP] lawyer can help clarify your rights, negotiate terms that protect your interests, and ensure you retain the rights to your creations when appropriate. They can also assist in registering the intellectual properties in various other countries, which helps maintain market dominance and offers global protection beyond national borders.

Do note that you can reach out via the email at the end of this newsletter.

:

:

5. When an industrial design, patent, or other forms of IP are registered in one country, can they be used in another country such as Nigeria?

Generally, the answer is no. IP registration is territorial, meaning that to have rights in Nigeria too, you must go through a specific application process for registration there. However, there are exceptions. Some international treaties allow for a single registration to be effective across multiple countries, provided that Nigeria is a member state of such treaties.

In these cases, you would need to consult an IP expert, preferably an IP lawyer who can help determine if Nigeria is covered by the relevant international treaties and guide you through the process of securing your IP rights in Nigeria.

:

:

6. Can What Is Called A Foreign Priority Filing Protect My Industrial Design in Nigeria?

It's important to understand that IPs registration is primarily territorial, as mentioned in number 5. However, if the IP benefits a single registration across multiple countries (where the country is a member state under specific international treaties and conventions), the situation may differ. There's a provision known as "foreign priority" under the provision of the Patent and Design Act.

It outlines the procedure for an applicant in Nigeria who wishes to claim priority for an industrial design based on an earlier application filed in another country. In such cases, the applicant is allowed to use the filing date of the earlier application. This helps secure applicant's chance to that of their competitive attempts, while extending that priority to Nigeria.

To successfully navigate this process, it's still crucial to consult an IP expert/ lawyer —who can guide you through securing this foreign priority right. This involves submitting some necessary documentation, as outlined in the Act that you will be guided through, including a certified true copy of the earlier application. By doing so, you ensure that the priority date works for you. On this, send a message to the email provided at the end of this newsletter.

:

:

7. Are All Designs Protected Under Industrial Designs?

Not all designs are protected under the Patent and Design Act. For a design to be protected, the requirement is that it must be any combination of lines or colours or any three-dimensional form whether or not associated with colours.

It further mentions that such design highlighted above is intended by the creator to be used as a model or pattern that is to be multiplied by industrial process If it doesn’t, it should be under copyright protection instead.

:

:

8. When Can a Patent or Industrial Design Holder Claim Infringement?

A patentee to an inventive tool and the holder of an industrial design can claim infringement when a third party uses, exploits, or earns commercial benefit from the patent or design without the statutory holder's consent. Infringement can be addressed by:

1. Legal Action: Get an IP lawyer to file an immediate legal action for infringement at the Federal High Court and there is a specific number of years this must be filed for it to be heard in court.

2. Relief Sought: Through the IP Lawyer, you can seek various remedies including damages, an award of profits obtained by the infringer, an injunction to stop further infringement, and other reliefs depending on the severity of the infringement.

For both, it is important to act promptly to protect your rights and seek legal advice to navigate the process effectively.

:

:

9. Are There Other Benefits Beyond Legal Protection That Patent and Industrial Designs Offers?

Yes, it does. Beyond the legal protection benefits for instance to all the rights you benefit or will benefit upon registration, more benefits you get can be to enhance your brand's recognition, attract investors, offer more bargaining power when forming partnerships and many more. This is particularly valuable in industries where IP valuation is significant.

:

:

:

In conclusion, securing your rights to an industrial design or patent in Nigeria is crucial for both legal protection and maximizing the value of your innovations in the market. Keep in mind that these right are not also indefinite; they require renewal to maintain their status. Understanding both aspects from the outset can significantly impact how you manage and benefit from your intellectual properties.

If you have questions or need assistance with protecting your invention for patent, and industrial design as established in this newsletter, which may include trade secrets, trademark, and copyright related works email: [email protected]

ABIDEMI PEACE is a Business Lawyer, Intellectual Property (IP) Lawyer, and Business Advisor here in Nigeria.

Convener, The Secured Business Growth Community.

Business Lawyer, MP Legals.