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You will hear about

1. Protecting your business ideas.2. Managing your business information &

data.3. What to do when IP rights are

infringed. 4. Licensing & Incorporation conditions. 5. Protecting your stake in a Partnership.

Remodeling your BusinessIntellectual Property 101 for your business

BY

CHINASA UWANNA

SENIOR ASSOCIATE, INTELLECTUAL PROPERTY, TECHNOLOGY, MEDIA & ENTERTAINMENT

BANWO & IGHODALO

Overview

▪ What is Intellectual Property (“IP”)?

▪ Types of IP rights

▪ Regulation of IP rights in Nigeria

▪ Mode of Protection/ Procedure for Registration

▪ Recap

▪ Summary of IP Lawyer’s work

▪ Questions/ Comments

What is Intellectual Property?

o Legal rights which result from intellectual activity in the

industrial, scientific, literary and artistic fields.

o Intangible creations or assets of a business such as the

business name, logo, content, creative ideas or original

creations produced by an individual or group.

o IP law aims at safeguarding creators and other producers of

intellectual goods and services by granting them certain time-

limited rights to control the use made of those productions.

Those rights do not apply to the physical object in which the

creation may be embodied but instead to the intellectual

creation as such.

Types of IP rights

• Trademark – protects the name,

logo, slogan etc.

• Patent – protects inventions and

processes

• Design – protects shapes of

products, models, patterns

• Copyright – protects jingles,

artworks, software/apps etc.

• Trade Secrets – protect sensitive

information which give a business

competitive edge in the market

place

Trademarks

❖ A trademark is a word, phrase, or design that distinguishes the

source of the goods of one business from its competitors.

Businesses use symbols, designs, logos, and catchphrases as

part of their marketing strategy and identity.

❖ Trademarks are registered for an initial term of 7 years, with

subsequent renewal terms of 14 years. Unlike copyrights,

trademarks do not carry an expiration date, they must however

be continuously renewed to ensure they exist in perpetuity.

Patents

❖ A patent is a right to exclude others from making, using, offering for sale, selling or importing an

invention.

❖ To ensure that your invention is patentable, it must meet three requirements stated in section 1(1)

of the Nigeria’s Patents and Designs Act;

(i) new;

(ii) results from an inventive activity; and

(iii) capable of industrial application;

Copyright

❖ Copyright protects original works of

authorship including literary,

dramatic, musical, and artistic works,

such as poetry, novels/brochures,

movies/adverts, songs, computer

software, and architecture.

❖ Copyrights expire 70 years after the

death of the creator, for literary

works.

Trade Secret

❖ According to the World Intellectual Property

Organization (“WIPO”), for information to qualify

as trade secrets, it must be:

❖ commercially valuable because it is secret,

❖ be known only to a limited group of persons,

and

❖ be subject to reasonable steps taken by the

rightful holder of the information to keep it

secret, including the use of confidentiality

agreements for business partners and

employees.

Regulation of IP Rights in Nigeria

o Trade Marks:

❖ Trade Marks Act, Cap T13, LFN 2004;

❖ The Paris Convention

o Patents and Industrial Designs:

❖Patents and Designs Act, Cap P2, LFN 2004;

❖The Patent Cooperation Treaty (PCT)

o Copyright

❖The Copyright Acts, Cap C28, LFN 2004;

❖ International agreements on Copyright:

• The Berne Convention 1886;

• Rome Convention;

• Trade Related Aspects Of Intellectual Property Rights [TRIPS].

Mode of Protection/ Procedure for Registration

TRADEMARKS: Trademarks/ Service marks include logos, devices, symbols,

slogans etc. or any combination of the foregoing, used to identify the source of goods

or services and to distinguish one commercial enterprise or business from another.

Conditions for registrability:

❖ inherently adapted to distinguish, and capable of distinguishing;

❖ must contain or consist of at least one of the following essential particulars:

• name of a company, individual, or firm, represented in a special or particularmanner;

• the signature of the applicant or a predecessor-in-title;

o Duration

❖ Initial period of seven (7) years renewable for consecutive period of fourteen (14) years

each.

o Required Documents

❖ Trade Marks Application Form 2

❖ Power of Attorney;

❖ Particulars of the applicant

❖ Clear representation of the mark from which bromide prints will be made (an electronic format is

acceptable).

❖ Class and description of goods for which the trademark is to be registered.

PATENTS: A Patent is a right granted by the Government to an inventor of a process or method that is new, useful, and not obvious, or for a new use of a known process, machine, or composition of matter or material. The right to a Patent entitles the inventor to prevent all others, not just imitators but even independent devisers of the same idea form using the invention for the duration of the patent.

o Conditions for registrability:-

❖ if it is new, results from inventive activity and is capable of industrial application;

or

❖ if it constitutes an improvement upon a patented invention and also is new,

results from inventive activity and is capable of industrial application.

o Exclusions from Patentability

❖ plant or animal varieties, or essentially biological processes for the production of

plants or animals (other than microbiological processes and their products);

❖ inventions the publication or exploitation of which would be contrary to public

order or morality

❖ Principles and discoveries of a scientific nature

o Outline of the registration process

❖ Application – on the relevant form, payment of filing fees

❖ Acknowledgement: Notice of Acknowledgement indicates filing date and temporary number

❖ Examination: to confirm that it satisfies documentary requirements

❖ Registration: valid for an initial period of 20 years from the date of application; renewable

annually within that period.

o Duration

❖ Expire at the end of the 20th year from the date of filing

❖ Renewal fees are paid annually or else the patent shall lapse

Required Documents

❖ Patent Application Form 1A (Non - convention) and Form 1B (Convention),

❖ Power of Attorney;

❖ Details of Applicant,

❖ Specification and claims, in duplicate;

❖ Documents evidencing assignment (where the applicant for registration is not the true inventor of the

patent),;

❖ Where applicable, a declaration signed by the true inventor requesting that he be mentioned as such in

the patent and giving his name and address;

❖ Certified true copy (C.T.C) of the priority documents (applicable only where priority of a foreign patent

application/registration is being claimed

DESIGNS: A design is any three dimensional form capable ofreproduction by industrial means.

o Conditions for registrability:-

❖ it is new;

❖ it is not contrary to public order or morality

o Duration

❖ 5 years renewable only for two (2) consecutive periods of five (5) years each

o Outline of the registration process

❖ The procedure for the registration of designs is similar to that of

trademarks.

o Required Documents

❖ Design Application Form 1A (Non - convention) and Form 2 (Convention), Form 3

❖ Power of Attorney;

❖ Details of Applicant,

❖ 3 samples of identical representations or specimens of the design or a photographic representation of

the design;

❖ Statement of Novelty;

❖ Drawings (if any);

❖ Certified true copies of priority documents (required only where the applicant is claiming priority of a

foreign registration application)

COPYRIGHT: Copyright is simply the right of the creator of a literary, musical or artistic

work (including dramatic works, broadcasts and sound recordings) to prevent others

from copying or reproducing that person’s creative work. Copyright automatically vest

in the creator of a qualifying work upon the creation of the qualifying work, without

the need for registration or other such formality, provided the work is original (that is,

created without copying) and fixed in a tangible medium from which it can be

perceived or otherwise communicated.

Duration

❖ Literary, musical and artistic work (except photographs): 70 years after

death of author, or after the date the work was published (in the case of body

corporate).

❖ Cinematograph films and photographs: 50 years after the year in which the

work was first published.

❖ Sound recording: 50 years after the year in which the recording was first made.

❖ Broadcasts: 50 years after the year in which the broadcasting took place.

Mode of Protection/ Procedure for Registration

Mode of Protection/ Procedure for Registration

o Outline of the NCC Notification Process

❖ Compile all required documents/ information

• Authorization of Agent,

• Particulars of the applicant,

• Abstract of the work for which copyright is claimed,

• 3 detailed copies of the work (that is, the full text)

❖ Pay the requisite fees

❖ Submit all documents to the NCC

❖ Where all the required documents are submitted timeously and requisite fees are paid, the certificate

of notification of copyright should issue within 1 – 2 months.

o Outline of the registration process

❖ Search - Optional

❖ Application – Filing of Trademarks Form 2 and other statutory documents and payment of fees

❖ Acknowledgement – Notice of Acknowledgement issued upon receipt of application. Notice

indicates Temporary Filing Number & Date of filing

❖ Examination – To determine distinctiveness, deceptiveness, scandalous nature, prohibited by law.

Notice of Acceptance or Refusal issued

❖ Publication – Trade Marks Journal. Objection to the application must be filed within 2 months of

publication.

❖ Registration – where no Notice of Opposition is filed or opposition determined in favour of applicant

Mode of Protection/ Procedure for Registration

o Conditions for registrability (contd.)

❖ an invented word or invented words;

❖ a word or words having no direct reference to the character or quality of the goods, and not beingaccording to its ordinary signification a geographical name or a surname;

❖ any other distinctive mark.

o Classification of Goods & Services

❖ Nice International Classification of goods and services containing 34 classes of goods and 11

classes of services has been adopted by Nigeria

Recap

Summary of IP Lawyer’s work

• IP Registration and Maintenance (Brand Management)

• Watch Services

• Review of IP Agreements (Licensing and technology transfer;

Franchise; Distribution agreements; Merchandising and Sale

• NOTAP registration

• Product Registration – SON and NAFDAC

• Anti-Counterfeiting/ Anti-Piracy

• Legal Advisory

THANK YOU!

ipgroup@banwo-ighodalo.com

www.banwo-ighodalo.com

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