The Nigerian Patents and Designs Act (PDA) outlines the rights granted to a person who has been granted a compulsory license to use a patented invention. These rights are subject to certain limitations and conditions, and they do not fully equate to the rights enjoyed by the original patentee.
Right to Exploit the Patented Invention:
A compulsory licensee is granted the right to exploit the patented invention for which the license has been issued. This right encompasses the ability to perform any act normally reserved for the patentee under Section 6 of the PDA.
- For product patents, this includes the right to make, use, sell, or stock the patented product within Nigeria.
- For process patents, it includes the right to apply the patented process and to perform similar actions on the product obtained directly from that process.
Non-Exclusivity of the License:
The compulsory license is non-exclusive. This means that the grant of the license does not prevent the original patentee from continuing to exploit the patent themselves. The patentee retains all their original rights and can continue to manufacture, use, sell, or license the invention to others, alongside the compulsory licensee.
No Right to Import:
While a compulsory license allows the licensee to manufacture, use, and sell the patented product within Nigeria, it specifically excludes the right to import the product. The licensee must manufacture the product locally to satisfy the conditions of the license.
Inability to Grant Further Licenses:
A compulsory licensee is not automatically entitled to grant further licenses to third parties based on their compulsory license. The license is personal to the grantee and cannot be freely assigned or sub-licensed without additional authorization or contractual arrangements.
Additional Obligations and Restrictions:
The court granting the compulsory license has the authority to impose additional obligations and restrictions on both the licensee and the patentee. These conditions are tailored to the specific circumstances of the case and aim to ensure a balance between the interests of both parties involved.
Potential for Royalty Payments:
Although the Patents and Designs Act, Nigeria (PDA) does not explicitly mention royalty payments for compulsory licenses, under the internationally recognized TRIPs Agreement, a compulsory licensee is obligated to provide fair remuneration to the patent holder. This discrepancy between the PDA and the TRIPs Agreement could create ambiguity and potential legal challenges in the application of compulsory licensing in Nigeria.
Key Limitations:
The rights of a compulsory licensee are significantly more limited than those of the original patent holder. These limitations are intended to:
- Safeguard the interests of the patent holder, ensuring they retain control over their invention and are not unfairly disadvantaged by the compulsory license.
- Promote local production and development by requiring the licensee to work the invention within Nigeria and contribute to the country\’s industrial or commercial activities.
- Maintain a balance between the public interest and the rights of intellectual property owners by providing a mechanism for addressing situations where the patentee\’s actions are deemed to be hindering national development or failing to meet public needs.
It\’s important to note that the information provided on the rights of a compulsory licensee under the PDA is based on the interpretation of legal provisions and the analysis of the Act. Consulting with legal professionals specializing in intellectual property law in Nigeria is crucial for obtaining personalized advice of your specific situation.