Database on Flexibilities in the Intellectual Property System

Provisions of Law

1. Subject to this Part, at any time after the expiration of a period of four years after the filing of a patent application or three years after the grant of a patent, whichever period last expires, a person may apply to the court for the grant of a compulsory licence on one or more of the following grounds -

(a) that the patented invention, being capable of being worked in Nigeria, has not been so worked;

(b) that the existing degree of working of the patented invention in Nigeria does not meet on reasonable terms the demand for the product;

(c) that the working of the patented invention in Nigeria is being hindered or prevented by the importation of the patented article; and

(d) that, by reason of the refusal of the patentee to grant licences on reasonable terms, the establishment or development of industrial or commercial activities in Nigeria is unfairly and substantially prejudiced.

2. If an invention protected by a patent in Nigeria cannot be worked without infringing rights derived from a patent granted on an earlier application or benefiting from an earlier foreign priority, a compulsory licence may be granted to the patentee of the later patent to the extent necessary for the working of his invention if the invention-

(a) serves industrial purposes different from those served by the invention which is the subject of the earlier patent; or

(b) constitutes substantial technical progress in relation to that last mentioned invention.

3. If the two inventions mentioned in paragraph 2 of this Schedule serve the same industrial purposes, a compulsory licence may be granted under that paragraph only on condition that a compulsory licence shall also be granted in respect of the later patent to the patentee of the earlier patent, if he so requests.

4. A compulsory licence shall not be granted in respect of a patent if the patentee satisfies the court that his actions in relation to the patented invention are justifiable in the circumstances, but he shall not be held to have so satisfied the court if he merely shows that the patented article is freely available for importation.

5. A compulsory licence shall not be granted unless the applicant-

(a) satisfies the court that he has asked the patentee for a contractual licence but has been unable to obtain such a licence on reasonable terms and within a reasonable time; and

(b) offers guarantees satisfactory to the court to work the relevant invention sufficiently to remedy the deficiencies (or to satisfy the requirements) which gave rise to his application.

6. A compulsory licence-

(a) entitles the licensee to do any act mentioned in section 6 of this Act except importation;

(b) does not entitle the licensee to grant further licences;

(d) may contain additional obligations and restrictions as regards both the licensee and the patentee.

7. A compulsory licence may be transferred only with the industrial undertaking in which the relevant invention is used, and no such transfer shall be valid until the consent of the court has been obtained.

8. On hearing an application for a compulsory licence, the court shall first decide whether a compulsory licence may be granted and shall then, if it decides in favour of the grant and the parties cannot agree on the terms, proceed to fix the terms (including adequate royalties having regard to the extent to which the relevant invention is to be worked) which shall be deemed to constitute a valid contract between the parties.

9. On the application of the patentee, the court may cancel a compulsory licence if-

(a) the licensee fails to comply with the terms of the licence; or

(b) the conditions which justified the grant of the licence have ceased to exist,

so however that in the latter case a reasonable time shall be given to the licensee to cease working the relevant invention if an immediate cessation would cause him to suffer substantial damage.

10. On the application of the patentee or licensee, the court may vary the terms of a compulsory licence if new facts justify the variation, and in particular (without prejudice to the generality of the foregoing) if the patentee has granted contractual licences on more favourable terms.

11. Where the court grants, cancels or varies the terms of a compulsory licence-

(a) the proper officer of the court shall inform the Registrar, who shall register the grant, cancellation or variation without fee; and

(b) the grant, cancellation or variation shall have no effect as against third parties until it has been registered.

12. A representative of the Minister shall have the right to appear and be heard at the hearing of an application for a compulsory licence.

13. The Minister by order in the Federal Gazette may provide that, for certain patented products and processes (or for certain categories thereof) declared by the order to be of vital importance for the defence or the economy of Nigeria or for public health, compulsory licences may be granted before the expiration of the period mentioned in paragraph 1 above and may permit importation.

14. For the purposes of this Part, references to the working of a patented invention are to be construed as references to-

(a) the manufacture of a patented article; or

(b) the application of a patented process; or

by an effective and serious establishment existing in Nigeria on a scale which is adequate and reasonable in the circumstances.

15. Notwithstanding anything in this Act, where a Minister is satisfied that it is in the public interest to do so, he may authorise any person to purchase, make, exercise or vend any patented article or invention for the service of a government agency in the Federal Republic.

16. The authority of a Minister under paragraph 15 of this Schedule may be given-

(a) before or after the relevant patent has been granted;

(b) before or after the doing of the acts in respect of which the authority is given; and

(c) to any person whether or not he is authorised directly or indirectly by the patentee to make, use, exercise or vend the relevant article or invention.

17. Paragraphs 15 and 16 of this Schedule shall have effect so as to exempt-

(a) the Government;

(b) any person authorised under those paragraphs;

(d) any agent of any such supplier,

from liability for the infringement of any patent relating to the relevant article or invention and from liability to make any payment to the patentee by way of royalty or otherwise.

18. Where any act is done in respect of an article on the authority of a Minister under paragraph 15 of this Schedule, then, unless it appears to the Minister that it would be contrary to the public interest to do so, the Ministry concerned with the act shall furnish the patentee with such information as to the extent of the act as the patentee may from time to time require.

19. The provisions of any licence, assignment or agreement made before or after the commencement of this Act between a patentee and any person other than the Government or a Ministry shall be of no effect in so far as those provisions restrict or regulate the use of a patented article or invention or provide for the making of payments in respect of any such use, or are calculated by reference thereto.

20. During any period of emergency the powers exercisable in relation to a patented article or invention on the authority of a Minister under paragraph 15 of this Schedule shall include power to purchase, make, use, exercise and vend the article or invention for any purpose which appears to the Minister necessary or expedient-

(a) for the efficient prosecution of any war in which the Federal Republic may be engaged; or

(b) for the maintenance of supplies and services essential to the life of the community; or

(d) for promoting the productivity of industry, commerce and agriculture; or

(e) for fostering and directing exports and reducing imports (or any class or classes of imports) from all or any countries and for redressing the balance of trade; or

(f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community.

21. Where a patented article is purchased, made, used, exercised or vended by or on behalf of a government agency, the benefit of this Part shall extend to the agency and to persons acting in any capacity on its behalf.

22. This Part shall apply to a patented article forfeited under any law relating to customs and excise; and, on any such forfeiture, the Government may use or sell the article as if it had been imported for the use of a government agency in Nigeria.

Title:	Section 11 of the Industrial Property Act (Chapter 344) No. 60 of 1970 (amended law of 1990 not available)
Field of IP:	Patents
Type of flexibility:	Compulsory licenses and government use
Summary table:

Legislative Implementation of Flexibilities - Nigeria

Provisions of Law