PATENTABILITY IN A NUTSHELL
A colleague recently posed a hypothetical scenario to me;
If A discovers after extensive research, experiments and trials discovers that a drug which was produced by B for the cure of malaria and also be used to cure Covid-19 , can A be granted a patent for this discovery?
My automatic answer was an emphatic NO. I however had to consult the Patents and Designs Act of 1970 to be sure i was giving an answer backed by law.
WHAT DOES THE LAW SAY ABOUT PATENTABILITY?
According to the act, there are two criteria an invention must satisfy for it to be patentable. They are;
1. It has to be new; where an invention has elements making it different from any other one out there, it is new. It should result from inventive activity; Where the invention was a result of a new process or method or a combination of methods or processes to arrive at the invention, it can be said to result from inventive activity. It should also be capable of industrial application. Industrial application simply means that the invention is capable of being manufactured and reproduced for use in any industry.
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These three conditions are cumulative and need to be satisfied for an invention to be patentable.
2. It constitutes an improvement on an existing invention and is new, results from inventive activity and is capable of industrial application.
This was the basis of my answer to the scenario. It is not enough to discover a new use for an already existing invention. If that discovery is not an improvement to the invention, new, resulting from inventive activity and capable of industrial application, it cannot be patented.
The new use as purported in the scenario is at best a discovery. The act is clear on this, discoveries of a scientific nature are not inventions and cannot be patented.
IS THE DISCOVERY OF NEW USES PROTECTED IN OTHER JURISDICTIONS?
In advanced jurisdictions such as the USA and UK, the discovery of a new purpose for an existing invention is patentable. This is called New-use patents in the US. The Patent laws of the US goes as far as allowing patents for new uses of old inventions that were not patentable.
Although the patentability of this new use would be subject to conditions, it is interesting to see the departure and distinction from the current framework in Nigeria.
It goes without saying that a whole lot needs to be done to the Nigerian Legal framework to enable us match the pace of these jurisdictions and be able to protect the rights of persons in all the advancements still to come.
