Publication of patents and designs: latest Trademark Journal departs from the norm

The latest Trademarks Journal, dated December 31 2013, featured registered patents and designs for - seemingly - the first time.

The publication of registered patents and designs is in line with the provisions of Sections 5(3) and 17(3) of the Patent and Designs Act, which requires that the registrar publish such registrations.

This represents a welcome development and a step in the right direction. It portrays the Nigerian Intellectual Property Office in a positive and forward-thinking light, as the move brings it more into line with international practice.

The non-publication of registered patents and designs appears to have been a simple oversight or inadvertence on the part of previous registrars.

While some IP rights owners favoured the previous practice (as it gave them some form of confidentiality as to their inventions/designs and the status of their applications), the advantages of the new system include the following:

• It is in line with international best practices: the publication of registered patents and designs is already in place in a number of developed countries.
• It puts the public on notice: competitors are now aware that certain inventions or designs are no longer available for registration.
• Prior art - published patents or designs can be used to reject third-party patent or design applications for related technologies or designs.
• It gives notice to the proprietors of inventions or designs as to potentially infringing patents or designs - the new practice provides the opportunity for the true proprietors of patents or designs to assess the published patents or designs in order to protect their own inventions or designs from infringement. Inventors may challenge registrations (by way of invalidation actions) which infringe their registered patents or designs in a court of law. Previously, rights owners were not aware of new patents and designs and, therefore, could not take advantage of the records of the registry to protect their rights.
• Recognition and commercialisation of patents and designs: some inventors simply desire recognition for their work, providing opportunities for possible commercial relationships with the government or private organisations. In turn, this will provide inventors and small and medium-sized businesses with the necessary funding to enable them to benefit from their inventions or designs.

Arguably, the publication of patents and designs is a good initiative which should be supported by all interested parties.

Uwa Ohiku and Odunayo Ayorinde, Jackson Etti & Edu, Lagos