Certain category of inventions enjoy patent rights in Nigeria provided it satisfy the criteria set out in Patent and Industrial Design Act, Cap P2, LFN, 2004, (hereinafter referred as the ‘Act’). Upon application and registration of the invention, the inventor(s) is/are entitle to patent rights over the invention to the exclusion of any other person. See Section 1 of the Act.

Patent rights are the proprietary rights conferred on the patentee; an inventor of product or process to the preclusion of any other person for the act of making, importing, selling or using of the product or stocking it for the purpose of sale or use and where the patent is granted in respect of a process, the act of applying the process or doing, in respect of a product obtained directly by means of the process. It confers exclusive right to the patentee for the commercial usage of the invention.

In this respect, there are questions that agitate the mind, among which is ‘Who is entitled to patent rights over an invention made by any employee?’ This has become imperative given the advance in information and technology that we address the above poser among others for the benefit of legal and business communities.

Subject to any contrary claim, under the Nigeria law, patent rights in respect of an invention is vested on whoever is the first to file application, otherwise known as “Statutory Inventor”, whether or not he is the true inventor or validly claim a foreign priority over the invention. However, the true inventor is entitled to be mentioned as such in the patent, whether or not he is the statutory inventor and such entitlement is not erodible by contract howsoever.

The patent rights to an invention made by an employee in the course of his employment or in the performance of contract for specified work, belong to his employer. Albeit, the employee may be entitled to fair remuneration regard being had to his salary. The Act provides in section 2 (4) that;

“Where an invention is made in the course of employment or in execution of a contract for the performance of specified work, the right to a patent in the invention is vested in the employer or as the case may be, in the person who commissioned the work;

If;
His contract of employment does not require him to exercise any inventive activity but he has in making the invention used data or means that his employer has put at his disposal
Or

The invention is of exceptional importance.
He is entitled to fair remuneration taking into account his salary and the importance of the invention and the entitlement in question is not modifiable by contract and maybe enforced by civil proceedings”.

A cursory look at the above excerpt indicate that any employee who made an invention outside his normal duties or invention arising outside the nature of his responsibilities but used the technical know-how of his employer, will still surrender the right to patent to his employer. Argument would ensue on how to determine that the employee used the employer’s data or means to make the invention, especially where the employee claims that he made the invention at home or during his leisure period.

An employee whose contract of employment does not require him to exercise any inventive activity but as a result of his ingenuity made an invention outside the contemplation of his employment ought to be entitled to right of patent over his invention, especially where the invention was made during vacation or break period. It will be an incentive to further the undertakings of the employer and encourage creativity. However, the employer may be granted special consideration on the usage and application of the invention.

In interpreting the phrase “in the course of employment” in the case of Patchet v. Sterling (1955) AC 534, the court held it to mean “the use of employer’s time and materials”. It follows that patent rights to an invention made at the spare time of the employee with his own materials would belong to the employee.

In United Kingdom (UK), right to patent of an invention made by an employee is not exclusive reserve of the employer. Employer’s rights to patents arises if;

It was made in the course of normal duties of the employee or in the course of duties falling outside his normal duties but specifically assigned to him and the circumstances in either case were such that an invention might reasonably be expected from the carrying out of his duties.
or

The invention was made in the course of duties of the employee and at the time of making the invention because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interest of the employer’s undertakings. See Section 39(1)(a)&(b) of UK Patents Act 1977.
In each of the above instances, the invention must arise in the performance of the normal duties of the employee or specifically assigned or there is special obligation on the employee to further the undertaking of his employer. Any invention made by an employee not coming within the forgoing provisions belongs, as between the employee and his employer, to the employee.

Giving the state of Nigeria law, it is suggested that an employee who is desirous of securing himself the right to a patent in respect of his invention, should ensure that a provision to that effect is inserted in his contract of employment. In the case of Bergh & Ors v. Agricultural Research Council (2020) ZASCA 30. The respondent engaged the 2nd Appellant, an independent contractor to develop a software ‘Beefpro Program’ subject to specification and directives of the respondent. However, the 2nd Appellant used his skills and expertise to develop the software. The agreement of the parties were reduced into writing but was not signed by the parties. The issue that turned on the appeal was ‘who is entitled to the intellectual property of the invention. The Court held that it belong to the Appellants, particularly the 2nd Appellant who exercised his skills and expertise to make the invention without the supervision of the respondent.

Alternatively, the Act can be amended to grant joint ownership of invention arising from contract of employment to both the employer and employee, or the parties can agree on joint exercise of patent rights over such invention.

JOSEPH N. ONAH, ESQ.