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Procedure in patent enforcement and invalidity actions

The Court is conferred with exclusive jurisdiction to hear and determine disputes arising under the PDA. The Court is established by the Constitution with powers to hear and determine disputes on several matters, including disputes arising from any federal enactment relating to patents. The Court is properly constituted when it is composed of a single judge. There is no jury system in Nigeria. Although the Court is not a specialised court, a fair amount of expertise can be expected from the Court because it is the only court of first instance with jurisdiction to adjudicate patent disputes. In determining patent disputes, the Court is empowered to sit with and be advised by experts having knowledge of the issues involved. The Rules (defined below) empower the Court to appoint an expert with or without the application of the parties before it. The Rules provide for the procedure that will be adopted by the expert in producing his or her report in relation to such matter.

The Patent Registry does not have any dispute resolution mechanism for resolving oppositions to the grant of a patent. Oppositions or protests to the grant of a patent are resolved by the Court.

Border control agencies also play a role in enforcing patent rights. The Nigerian Customs Service (NCS) is empowered to search for, seize, detain and destroy counterfeit goods brought into Nigeria. A patent owner may take advantage of this provision by writing a petition to the Comptroller General of the NCS. In practice, patent owners collaborate with the NCS to enforce their rights against infringers. The role of the NCS in such collaborations includes following up on any information from the owner of a patent on the possible entry of counterfeit goods into Nigeria, seizing such counterfeit goods and alerting rights owners of any suspected counterfeit brands that might be of interest to such right owners, discovered in the course of a routine check on goods entering or leaving Nigeria.

The patentee has the legal right to bring a patent infringement suit. A registered licensee may also institute an action for patent infringement if:

  1. the licensee notifies the patentee of the infringement;
  2. the patentee unreasonably refuses or neglects to institute an action; and
  3. the licensee files a copy of his or her notice to the patentee with the Registrar of Patents.

However, the patentee has a right to intervene in proceedings brought by a licensee.

Patent infringement and patent nullification proceedings are governed by the Rules. The plaintiff commences a patent infringement proceeding by filing at the registry of the Court a writ of summons, together with:

  1. a statement of claim setting out the particulars of the infringement;
  2. a list of witnesses the plaintiff intends to call at trial (including expert witnesses) and their written testimonies; and
  3. copies of all the documents the plaintiff intends to rely on at the trial.

The defendant is required to respond within 30 days of receipt of the plaintiff's papers by filing a statement of defence together with a list of its witnesses and their written testimonies, and the documents it intends to rely on at the trial. The defendant may also file a counterclaim. Upon receipt of the defendant's filings, the plaintiff may file a reply within 14 days.

The plaintiff commences a patent nullification proceeding by a petition, which is accompanied by particulars of the objections to the validity of the patent. The particulars must include every ground on which the validity is questioned and define every issue the petition will raise. After these filings, the plaintiff or petitioner is required to take out a summons for directions as to the place and mode of trial. The summons is returnable in no less than 21 days. Where the plaintiff or petitioner fails to do so, the defendant or respondent is required to take out the summons. An action will only be set down for hearing where a summons is taken out and directions given thereunder by the Court have been carried out or the period fixed for carrying out such directions has expired. A patent cannot be amended in the course of infringement proceedings.

The trial comprises of the examination, cross-examination and re-examination (if need be) of witnesses by the plaintiff and the defendant. The plaintiff's witnesses start, followed by the defendant's witnesses. Documentary, oral or electronic evidence may be produced during trial. Evidence can only be given on facts that are set out in the pleadings. At the conclusion of trial, the parties are required to file final written addresses in support of the claim or defence (as the case may be). Judgment is delivered within 90 days of the adoption of final written addresses.

As in other civil cases, the legal burden of proof is always on the plaintiff. During trial, however, the evidential burden of proof may shift between the parties. A defendant may also be required to prove its defence. Thus, in the absence of any presumptions of law, the plaintiff in a patent infringement proceeding will need to establish that it is the grantee of the patent and the defendant has infringed the grantee's rights without consent or licence.

The plaintiff is required to positively prove its claims, and not simply rely on the weaknesses of the defendant's case. If, for instance, the defendant's defence is that the patent is invalid, the defendant must prove that: (1) the subject of the patent is not patentable; (2) the patent fails to conform to the requirement for clarity and completeness; or (3) there was an existing prior application or grant of a patent in respect of that same invention.

A party may be compelled to disclose relevant documents or materials to an adversary through procedures called 'interrogatories' (to provide information) and 'discoveries' (to provide documents). Interrogatories are to be delivered within seven days of close of pleadings. Where an interrogated party fails to answer or answers insufficiently, the judge can, on application, order the defaulting party to answer or to answer sufficiently (as the case may be). Discoveries are made in writing and require another party to make discovery on oath of the documents that are or have been in its possession, custody, power or control, relating to any issue in question in the action.

The Court may, upon the application of a party, issue a subpoena duces tecum or subpoena ad testificandum, compelling a third party to produce certain documents in its possession or give oral testimony or do both. Also useful in obtaining evidence against a defendant is the Anton Piller order that, when granted by the Court, entitles the plaintiff to enter the premises of the defendant and recover the infringing items. An application for an Anton Piller order can be made ex parte and is granted sparingly. The plaintiff must show that:

  1. it has a strong prima facie case;
  2. it will suffer serious damage if the order is not granted; and
  3. there is clear evidence that the defendant has in its possession incriminating documents or items, and that there is a real possibility that the defendant may destroy such materials before an application on notice can be made.

A defendant to a claim for patent infringement may challenge the validity of a patent as a defence to the suit. The defendant may also file a counterclaim in the same suit, requesting the Court to nullify such a patent. It is also a defence to a patent infringement suit that the acts said to constitute the infringement took place before the patent was granted or that the defendant was granted a licence (by the patentee, the Court or the Minister of Trade, Industry and Investments) to exploit the patent, or that the patent has expired or lapsed. When raising the invalidity of a patent as a defence, the defendant must ensure that the patentee (not a mere licensee) is a party to the action. Thus, where the defendant is sued by a licensee and the defendant intends to validly challenge the validity of the patent, the defendant must apply to the Court for leave to have the patentee joined as a party to the suit.

A defendant to a patent infringement action can rely on the existence of a concurrent action challenging the validity of the patent to apply for and obtain an order for stay of proceedings in a patent infringement action. Under Nigerian law, an order for stay of proceedings in respect of concurrent or cross-action will be granted where:

  1. the parties in the concurrent proceedings are the same;
  2. the subject matter in the action sought to be stayed is substantially similar to that of the action already pending between the parties; and
  3. there is no other consideration against granting the relief for stay of proceedings; for example, unreasonable delay, acquiescence or abuse of court process.

Further, a party prosecuting an interlocutory appeal, may apply for and obtain a stay of proceedings in the substantive suit pending the determination of the interlocutory appeal.

Where a defendant satisfies the foregoing requirements, the Court may grant an order for stay of proceedings pending when the question regarding the validity of the plaintiffs' patent is determined. The Court may also consolidate both actions, hear and determine them together.

Proceedings for patent infringements could take 12 to 18 months at the trial court, and a final appeal to the Supreme Court of Nigeria could take four to six years. The usual costs are: (1) court filing fees, which are assessed on the amount of claim; (2) fees of expert witnesses; and (3) attorneys' fees.

Costs are usually awarded in favour of a successful party. The quantum of costs recoverable is usually at the discretion of the Court. However, a specific amount may be recovered where specifically proven (e.g., filing fees).

A plaintiff in a patent infringement action may apply to the Court for an order of interim or interlocutory injunction, requiring the defendant to desist from further infringement of the patent. An application for interim injunction can be made ex parte. Interim injunctions are only granted in situations of extreme urgency. As such, the Court will grant an order of interim injunction only where the plaintiff shows that it will suffer irreparable damage if the order is refused. An interim order subsists for a short period, usually pending the hearing of an application for interlocutory injunction (with the defendant being put on notice).

An order of interlocutory injunction, on the other hand, subsists until the final determination of the action, unless vacated earlier by the Court. A plaintiff requesting an order of interlocutory injunction from the Court must establish that:

  1. it has a legal right that has been infringed and requires protection;
  2. there is a serious question to be tried in the action;
  3. damages will not be an adequate remedy for the injury it has suffered by reason of the infringement of the patent;
  4. the balance of convenience is on its side, and that more justice will result in the grant of the application than in refusing it; and
  5. it has not acted reprehensibly.

When applying for an interim or interlocutory order of injunction, the plaintiff must make an undertaking (and file a letter of undertaking) to the Court to pay damages to the defendant if it is discovered that the order ought not to have been made.

Patentees cannot face liability for threatening patent infringement proceedings. However, where a patentee institutes patent infringement proceeding, and it is found in the course of the proceedings that the plaintiff's claims lack merit, the action will be dismissed and costs may be awarded against the plaintiff.