GlobalIPCo Nigerian patent manual

Nigerian patents are easily filed online through the GlobalIPCo online filing system.

Rights

A Nigerian patent prevents others from:

• making, importing, selling or using a product that falls within the scope of one of the patent claims (including stocking such product for the purpose of sale or use); or
• applying a process that falls within the scope of the patent claim; or making, importing, selling or using a product obtained from such process (including stocking such product for the purpose of sale or use),

within Nigeria.

Validity requirements

The Nigerian patent must include claims that are:

• novel (i.e. new / not publicly available worldwide); and
• result from an inventive activity (i.e. not obvious),

and have application in industry.

Exclusions:

• plant or animal varieties; and
• essentially biological processes for the production of plants or animals (other than microbiological processes and their products).

Note: Although “methods of treatment” and “pharmaceuticals” are not excluded by the Nigerian Patents Act, in some instances, the Nigerian Patent Office refuses to accept such patents. The basis of such refusal is unclear.

Claim flexibility

Nigerian patent law permits:

• multi-dependent claims;
• multiple independent claims (albeit that Nigerian patent law does require unity of invention); and
• reference numerals in claims.

Priority

A Nigerian patent may claim priority from a patent application filed during the previous 12 months. No extension is provided for in the Nigerian Patents Act.

However, according to WIPO, Nigeria has indicated that priority rights may be restored. How this is done is unclear:

Documents to be lodged:

• a copy of the priority document (in electronic format) (including the front / certificate page); and
• if the priority document is not in English: (i) an English translation of the priority document (including a translation of the front / certificate page); and (ii) a notice from the translator confirming that the English translation is “true and correct”,

should be lodged with the Nigerian Patent Office.

Such copies must be lodged, irrespective whether the priority document has been lodged with WIPO during the PCT phase.

Template translator’s notice:

I, [translator’s name], confirm that the English translation of [patent no.] is true and correct.

_____________________

Signature

Filing a Nigerian patent application

PCT national phase deadline:

According to WIPO, a Nigerian national phase patent must be filed within 30 months from the earliest priority date (or the PCT filing date, if no priority is claimed).

Amendments to national phase patents:

Voluntary amendments may be effected to the Nigerian national phase patent on filing. Changes to the applicant and inventors may also be made on filing.

Where voluntary amendments are to be made on filing, an email should be sent to GlobalIPCo prior to filing to ensure that the amendments are properly processed.

Differences between the Nigerian convention patent and the priority document:

• The Nigerian convention patent specification need not mirror the priority document. However, in order to retain the priority date, the features in claim 1 of the Nigerian convention patent specification must be described in the priority document.
• The list of inventors in the Nigerian convention patent application may be different from the list of inventors in the priority document, provided that at least one inventor is common.
• The applicant in the Nigerian convention patent application may be different from the applicant in the priority document, provided that a cession of right to claim priority is lodged with the Nigerian Patent Office. This cession should be uploaded to the GlobalIPCo system together with the signed Deed of Assignment.

These changes can be made on filing the Nigerian convention patent.

Filing before the PCT patent is published:

It is preferable to file a Nigerian national phase patent after publication of the PCT patent. However, if the Nigerian national phase patent is filed earlier, the GlobalIPCo system requires the PCT Form 105 and the PCT specification to be uploaded.

Requirements – national phase patent application:

• PCT number;
• WO number (if the PCT patent has been published);
• Title of the invention;
• PCT / international filing date;
• Abstract;
• Abstract image (if any);
• Applicant’s name, physical address and nationality;
• Each inventor’s name, country of residence and nationality;
• Priority number, date, country and applicant name (if any);
• Signed Power of Attorney* (electronic copies. No commissioning required);
• PCT specification (with article 19 and article 34 amendments, if any);
• (Optional, if provided to WIPO): copy of priority document (electronic copy) (if any) (including the front / certificate page); and
• (Optional, if provided to WIPO): if the priority document is not in English: (i) an English translation of the priority document (including a translation of the front / certificate page); and (ii) a notice from the translator confirming that the English translation is “true and correct”.

* Pre-populated forms are downloaded from the GlobalIPCo system.

Requirements – direct / convention patent application:

• Title of the invention;
• Abstract;
• Abstract image (if any);
• Applicant’s name, physical address and nationality;
• Each inventor’s name, country of residence and nationality;
• Priority number, date, country and applicant name (if any);
• Signed Power of Attorney* (electronic copies. No commissioning required);
• Patent specification;
• Copy of priority document (electronic copy) (if any) (including the front / certificate page); and
• If the priority document is not in English: (i) an English translation of the priority document (including a translation of the front / certificate page); and (ii) a notice from the translator confirming that the English translation is “true and correct”.

* Pre-populated forms are downloaded from the GlobalIPCo system.

Late lodging:

Although, outstanding document may be lodged after filing, the GlobalIPCo system does not provide for late-lodging of documents for Nigerian patents. Where this is required, an additional charge will be levied.

GlobalIPCo pricing:

* Discounted pricing is available to patent law firms.

If 4 patents are included in a single parcel, the total cost is $652.50 per patent.

Pricing is fixed, irrespective of the number of priority claims, claims, pages, etc.

Note: Courier of the patent certificate is optional. Upon receipt of the certificate, a colour scanned copy will be emailed to you without charge.

Process

The Nigerian Patent Office conducts formal examination of patents, but not substantive examination.

Timelines:

Acceptance: within 2-8 weeks of filing

Issuance of certificate: within 2-4 months of filing

Publication: following issuance of the certificate, when sufficient registrations exist to warrant publication of the journal

Delay of acceptance

To effect claim amendments, applicants may wish to delay acceptance (which normally occurs 2-8 weeks of filing). Such delay should be requested via the GlobalIPCo system on filing.

Acceptance may be delayed by up to 3 years at a cost of $160 (where requested on filing the Nigerian patent application).

Corrections / Amendments

Claim amendments and correction of:

• applicant’s or inventors’ names or addresses;
• forms, and
• clerical errors in the patent specification,

may be made after filing and after grant.

Amendment requirements:

• a version of the patent specification showing corrections made in tracked format;
• a certificate confirming that the document showing corrections in tracked format is based on the original patent specification; and
• a clean version of the specification (i.e. with tracked changes accepted), stamped in the footer “Amended sheet dated …”

It is suggested that amendment of Nigerian patents to align the claims with those of corresponding examined patents be delayed until prior to institution of infringement proceedings in Nigeria.

Sequence listing

Nigeria does not dictate a specific format for submission of sequence listings. We suggest uploading a PDF version of the sequence listing to the GlobalIPCo system on filing.

Even if the sequence listing was lodged with WIPO, it is preferable to lodge a copy of the sequence listing with the Nigerian Patent Office.

Renewal

A Nigerian patent must be renewed on each anniversary of the:

• PCT / international filings date (in respect of Nigerian national phase patents); or
• Nigerian filing date (in respect of convention or direct complete patents).

A total of 19 renewals are payable to maintain Nigerian patents in force for the 20 year term.

Note: The Nigerian Patent Office recommends paying 20 renewals, calculated from the priority date of convention patent applications. However, the basis for this recommendation is unclear.

Delay until grant:

Since the first renewal of the Nigerian national phase patent falls due on the first anniversary of the PCT filing date, (at least) the first renewal is typically due on the Nigerian national phase patent filing date. Although renewals may be delayed until grant, doing so is not recommended. We suggest paying historical renewals on filing the Nigerian patent application.

Renewal cost:

* Additional $25 is charged if the renewal is not processed online

When filing a Nigerian patent through the GlobalIPCo system, the first renewal (and, in some instances, the second renewal) may be paid for only $80 per renewal.

Pre-payment:

All 19 renewals may be paid upfront (on filing) via the GlobalIPCo system for $730*.

* Discounted pricing is available to patent law firms.

Late-payment:

Renewals may be paid during the 6 month grace period on payment of a penalty. The PayAnnuity renewal system charges: (i) the manual renewal fee; and (ii) $75 for paying the late payment penalty.

How to file: Nigerian national phase patent

1. Register on GlobalIPCo.com (there is no subscription / license fee. You are only charged for actions instructed)
2. Receive a discount code that reduces pricing for law firms and add this to your profile; and
3. Complete the Nigerian national phase patent application form:

How to arrange courier

1. Select a record and click REQUEST COURIER

2. Click GROUP OTHERS WITH THIS CERTIFICATE

3. Select other case to be grouped in the courier parcel

4. Add other cases until the parcel includes 4 patents (i.e. the original case plus the 3 added cases)

5. Click SAVE to courier all 4 certificates in a single courier parcel