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EMERGING OPPORTUNITIES IN INTELLECTUAL PROPERTY
Uwa Ohiku; Partner-‐ Jackson, E7 and Edu
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INTRODUCTION • The Nigerian legal landscape is responding to global trends in contemporary pracBces resulBng in dynamic specialisaBons
• LiBgaBon is no longer the core of legal pracBce. • Intellectual Property (IP) is one of these specialised areas of law that have emerged over the years and are gaining increasing importance and visibility.
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INTRODUCTION TO IP
• Intellectual Property has been historically categorized into two: Copyright and Industrial Property. Copyright covers the protecBon of literary and arBsBc works whilst Industrial Property covers industrial-‐applicable IP rights such as trademarks, Patents and Designs.
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COPYRIGHT • The area of intellectual property that regulates the
creaBon and use of a range of cultural goods such as books, songs, films and computer programs.
• Subject-‐maSer includes producBon in the literary,
scienBfic, arBsBc domain or any other form of expression. E.g.: Musical works, Literal works, ArBsBc works, Photographic works, MoBon pictures, Phonographs & Sound recordings and Computer Programs
• Rights enjoyed by a copyright holder are right to
reproducCon, right to performance, adaptaCon and translaCon rights, broadcasCng rights and moral rights.
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COPYRIGHT Vested upon creaBon; no formal registraBon process .
However, the Nigerian Copyright Commission encourages copyright owners to deposit copies of their works with the NCC under its ‘Copyright NoCficaCon/Depository Scheme’. This scheme is not mandatory and does not confer any legal right on the owner of the work. It may however serve as evidenBal value of the authorship/ownership of a work in the event of a dispute.
• Term of ProtecCon 70 years from the end of the year of the death of the creator or author of the work
• Laws Copyright Act of 1970
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COPYRIGHT
AdministraCve Bodies & Other support organisaCons: • Nigerian Copyright Commission (NCC) • Economic and Financial Crimes Commission (EFCC) • Nigerian Custom Service (NCS)
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PATENTS • A document issued by the registry which describes an invenBon and creates a legal situaBon in which the patent invenBon can normally only be exploited with the authorisaBon of the owner of the patent.
• The effect of the grant of a patent right is that the patented invenBon may not be exploited by persons other than the owner of the patent unless the owner agrees to such exploitaBon.
• For an invenBon to be registrable, it must consist of patentable subject maSer, be industrially applicable, novel and exhibit a sufficient invenCve step
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PATENTS ApplicaBons for patent are filed and processed at the Trademark and Patent registry.
• Term of ProtecCon 20 years, with renewals paid yearly. • Laws Patent and Designs Act of 1970 • AdministraCve Bodies
Patents Registry NaBonal office for Technology AcquisiBon and ProtecBon (NOTAP)-‐ Registers all agreement (Patent Licence and Assignment) relaBng to transfer of technology in Nigeria.
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TRADEMARKS • A trademark may be defined as any sign that individualises
the goods of a given enterprise and disBnguishes them from the goods of others.
• Trademarks encourage their owners to maintain and improve the quality of the products sold under the trademark in order to meet consumer expectaBons.
• For signs to serve as a trademark they must meet with these requirements:
-‐ FuncCon: the sign in quesBon must possess the ability to disBnguish the products of one enterprise from others
-‐ Non-‐misleading trademarks: if a trademark has a misleading character or if it violates public order or morality or is a trademark that is likely to deceive the public as to its nature, quality or any other characterisBc of the goods, in the interest of the public does not qualify for registraBon.
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Trademark applicaBons are filed and processed at the Trademark Registry.
• Laws Trademarks Act of 1967; Trademark RegulaBons 1970 • AdministraCve Bodies & Other support organisaCons:
-‐ Trademarks and Patent Registry -‐ NaBonal Agency for Food and Drug AdministraBon and Control (NAFDAC)
-‐ Nigerian Customs Service (NCS) -‐ Standard OrganisaBon of Nigeria (SON) -‐ Consumer ProtecBon Commission (CPC)
-‐ Enforcement -‐ Court AcBon:
-‐ InjuncBons and Anton Pillar Orders -‐ Passing off and Infringement
-‐ Seizure of counterfeit products & raids
TRADEMARKS
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INDUSTRIAL DESIGN • Industrial design protects the original ornamental and non-‐
funcBonal features of an industrial arBcle or product that result from design acBvity
• The protecBon of industrial designs covers the design applied to the manufacture of a product and not the product itself.
• Exclusive rights enjoyed from industrial designs: -‐ To make arBcles to which the design is applied or in which
the design is embodied. -‐ Import arBcles to which the design is applied. -‐ To sell, hire or offer for sale such arBcles. -‐ PrevenBng another from stocking any arBcles to which the
design has been applied or in which it is embodied
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ApplicaBons for design are filed and processed at the Trademark and Patent registry.
• Term of ProtecCon 15 years in total with 2 renewal periods of 5 years each.
• Laws Patents and Designs Act of 1970
• AdministraCve Bodies Patent & Designs Registry
INDUSTRIAL DESIGNS
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• With the awareness of Intellectual Property in Nigeria in Nigeria relaBvely low, there are a number of misconcepBons even among legal pracBBoners
MYTHS & MISCONCEPTIONS ABOUT IP
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MYTH That business registraCon guarantees protecCon of a mark
REALITY • RegistraBon of a business does not provide protecBon for the name itself.
• A registered trademark provides statutory rights that can be used against an infringing compeBtor using the same or similar mark
MYTH 1: BUSINESS REGISTRATION =PROTECTION OF A MARK
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MYTH That IPR registraCon in one region secures recogniCon and
protecCon worldwide REALITY • IPRs are NOT recognized worldwide but purely territorial
in nature • RegistraBon/use in one country of a parBcular mark does
not automaBcally mean recogniBon globally. • Formal procedures for registraBon need to be conducted
accordingly in every jurisdicBon. • InternaBonal registraBon and recogniBon of a right can
however, assist in proving true proprietorship
MYTH 2-‐ IP RIGHTS IN ONE REGION = WORLDWIDE RECOGNITION
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REALITY • A trademark is designed to disBnguish the source of a product or service.
• It does not maSer whether it is a mulBbillion dollar company who is infringing on the other party’s trademark or a nine year old child.
• The trademark holder must enforce his right or risk losing the mark
MYTH 3: “BIG COMPANIES SHOULD NOT BE BOTHERED IF SMALLER COMPANIES TRY TO
INFRINGE”
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• An enBty can reserve trademark rights for itself even before beginning to make any use of it
• A registraBon can only be contested if the trademark has not been used for five consecuBve years following the registraBon date
• It is not advisable to rely solely on products and services already in the market; but run searches/conduct availability exercises to determine what is available for use/registraBon
MYTH 4: “I KNOW ALL MY COMPETITORS’ TRADEMARKS, WHAT I INTEND TO USE IS
STILL AVAILABLE”
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• Note that where an invenBon is made in the course of employment, the right to a patent in the invenBon is vested in the employer-‐ unless a contrary arrangement exists to that effect.
• The employee is however enBtled to fair remuneraBon where the contract of employment does not require the exercise of an invenBve acBvity or the invenBon is of excepBonal importance
MYTH 5: “ANYTHING I ‘INVENT’ AT WORK IS MINE!”
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• “Expensive” is relaBve, and may depend on what value you place on your IP and what you hope to make out of it. Note that it is always more expensive to contest IP infringements and violaBons. They can run into several millions.
• You are more likely to make more than what you spent on registraBon
MYTH 6: “IT IS TOO EXPENSIVE TO REGISTER INTELLECTUAL PROPERTY”
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REALITY • IP requires care and skill in order to provide the required services to clients
• The skill in IP can only be groomed from years of experience (on the job training and specialist training programs, seminars) networking opportuniBes etc.
• IP (especially in Nigeria) is a grey area that requires a lot of devoBon and open-‐mindedness to understand
MYTH 7: THAT INTELLECTUAL PROPERTY LAW PRACTICE IS NOT REAL LAW!
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IP PRACTITIONER Job DescripBon: • Client Pormolio Management-‐ processing applicaBons at the
respecBve Registries • Providing legal advice on IP-‐related maSers • Enforcement and prosecuBon of IP rights • Engaging in brand protecBon and anB-‐counterfeiBng acBviBes • Draning franchising, licensing and assignment agreements. • Advising on IP policies & strategies for clients • ConducBng due diligence exercises in respect of IP for Mergers,
AcquisiBons, etc.
OPPORTUNITIES IN IP
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• In-‐house Counsel: -‐ for BroadcasBng agencies, theatre and film houses -‐ Technology and Research CorporaBons -‐ Brand-‐owning corporaBons ( UAC, AIRTEL, CHI LIMITED, MTN, APPLE, GLO,
DANGOTE) etc • Counsel at Intellectual Property Regulatory Bodies
– CUSTOMS – NOTAP – NAFDAC – Trademark Registry
• Entertainment Law • Consultants: WIPO, ARIPO, OAPI, • Adviser to federal Government on IPR issues; helping to formulate the country’s IP
policy etc.
OPPORTUNITIES IN IP (2)
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COUNSEL AT INTELLECTUAL PROPERTY REGULATORY BODIES & SUPPORT
AGENCIES Such as: -‐ Trademark, Patent and Designs Registry -‐ NIRA -‐ NOTAP -‐ NCC (Nigeria CommunicaBons Commission) Job DescripBon Processing IP-‐related applicaBons -‐ ConducBng examinaBon of applicaBons and ensuring compliance with the related Laws
-‐ Providing legal advice on IP related issues
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IN-‐HOUSE LEGAL COUNSEL: BROADCASTING, PUBLISHING, THEATRE AND FILM HOUSES
Job DescripBon: • Processing Copyright AcquisiBon • Managing legal relaBons between parBes and ensuring that the terms and condiBons of contracts are met
• Preparing and enforcing (where applicable) non-‐disclosure and secrecy agreements
• Working with publishing houses on acquisiBon and management of publishing rights
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IN-‐HOUSE COUNSEL: TECHNOLOGY AND RESEARCH CORPORATIONS
Job DescripBon • Preparing Knowledge Transfer Agreements • Preparing non-‐disclosure Agreements • Handling Franchising, licensing and Distributorship Agreements, etc
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IN-‐HOUSE COUNSEL: BRAND-‐OWNING CORPORATIONS
• Brand Management • Legal advisory roles with respect to Trademark prosecuBon, maintenance and enforcement
• Legal advice on adverBsement strategies and compliance with laws
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ENTERTAINMENT & COPYRIGHT LAWYER
Job DescripBon: • managing clients’ copyright pormolio and contracts
• Preparing copyright (and other related) agreements
• ExecuBon and enforcement of client’s copyright and related maSers
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IP CONSULTANT
• Intellectual property experts can play advisory roles in internaBonal governmental organizaBons such as WIPO, ARIPO, OAPI and parastatal on related maSers
• They can also act as external consultants to private companies; helping top structure and direct the IP policies of the companies.
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SKILLS REQUIRED • Interest and passion for art, invenBon, business and other creaBve acBviBes
• MeBculous • Sharp • ASenBon-‐to-‐detail • Open-‐minded; ability to think Outside The Box; Think beSer.
• Vast knowledge base and exposure (comes with experience)
• Willingness to learn; conBnually Improving
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POSITIONING YOURSELF a) Gain an understanding of the Economic Importance of Intellectual Property (read up on IP and how it impacts the economy; e.g. Apple is the most profitable company in the world. Why?
b) Apply for IP-‐related jobs to gain specialized on-‐the-‐job training in IP
c) Take IP courses for more technical depth. d) Determine which field of IP your interest lies and pursue it. e.g. in-‐house Counsel; Academia; Consultancy; Research Work/R&D; Private PracBBoner; Government; InternaBonal organisaBons etc.
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SOME SUGGESTIONS ON THE FUTURE FOR IP
• Deeper Government ParBcipaBon and awareness of its importance in the economy.
• Provision of incenBves for innovaBve acBviBes • Compulsory inclusion into Academic curricular for law.
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