Intellectual Property Protection for Software Rights in Nigeria

Intellectual Property Protection for Software Rights in Nigeria

  1. Introduction

Nigeria has a growing market for software products, and businesses have developed an increased need for this technology tool, to adapt to market changes, augment business processes, increase productivity and boost efficiency and speed in customer service delivery. Software products are valuable intellectual property assets and due to the competitive nature of the software industry,[1] it requires adequate protection to enable software developers maximize the benefits of their work and prevent unauthorized exploitation by third parties. Software rights are protectable under intellectual property law in Nigeria through copyright, patents, trademarks and trade secrets law.

  1. Copyright Protection

The Nigerian Copyright Act (NCA)[2] classifies computer programmes (also referred to as software) as literary works which are eligible for copyright protection.[3] Copyright protects the unique expression of a software programme[4] as described in the source and object codes. A software developer is guaranteed automatic copyright protection in his source and object codes if it is his original work and has been fixed in definite medium of expression now known or later to be developed from which it can be perceived or reproduced either directly or via a device.[5] To enjoy protection, the author or inventor must be a citizen and or domiciled in Nigeria[6] or his work must have been initially published in Nigeria.[7] This also includes works made in the course of employment, commissioned works,[8] assigned and licensed works,[9] and works made by persons who are citizens or domiciled in countries that are parties to treaties to which Nigeria is a signatory.[10] Although there is no statutory requirement for registration of copyright, the Nigerian Copyright Commission (NCC) established a voluntary copyright notification scheme for owners of copyrights to notify the Commission of its creation and existence in order to maintain an effective databank of their copyrighted works.[11]

An inventor enjoys both economic and moral rights in his source or object codes. Economic rights include exclusive rights to use, reproduce, and distribute the codes to the public and also to make derivative works thereof.[12] Moral rights include the rights of divulgation, attribution and retraction of the codes.[13] Economic rights are generally exclusive to the author except in circumstances where it is used under the direction and control of the government for public interest and non-commercial purposes, for private studies, in libraries and academic institutions. Unlike economic rights which are limited by duration and are assignable, moral rights are exclusive to the inventor and inalienable.[14] These rights are not only enforceable in Nigeria but also in Berne member countries[15] on the principle of national treatment,[16] as Nigeria is a signatory to the Berne Convention for the Protection of Literary and Artistic Works.[17] This protection subsists during the author’s lifetime and 70 years after his death.[18]

 

 

  1. Patent Protection

Software can also be protected under patent law in Nigeria, if it satisfies the basic requirements of patentability. Unlike copyright which protects software codes, patent protects the invention including the method and processes used in developing the software, once they have been fixed in a tangible format. Not all software is eligible for patent protection. Software is eligible for patent protection, if it is new, involves an inventive step that is not obvious to people knowledgeable in the field and is capable of industrial application.[19] It is also eligible for protection if it consists of an improvement on previously patented software and it is also new, involves an inventive step and capable of industrial application.[20]

To be eligible for patent protection, a software programme must satisfy the three major patentability requirements. It is new if it has not been made available to the public prior to the date of filing of the patent application.[21] It would not be deemed to have been made available to the public if the developer had exhibited it in an official or officially recognized international exhibition, six months preceding the filing of the patent application. However, where it exceeds six months, it would be deemed to have been made available to the public. It must involve an inventive step which must not be obvious to a person in the same field either as to the method, the application, the combination of methods, or the product which it concerns, or as to the industrial result it produces;[22] and it must be capable of being used in any kind of industry including agriculture.

An application for grant of patent is filed at the Patents and Designs Registry. The Patents and Designs Act stipulates that the application shall contain the applicant’s full name and address, a description of the relevant invention with any appropriate plans and drawings including a claim or claims of the software.[23] The application shall be accompanied by the prescribed fees and where appropriate, a declaration signed by the true inventor requesting that he be mentioned as such in the patent; and a signed power of attorney if the application is made by an agent.[24] The application is examined by the registrar merely to ascertain formal compliance and once the application satisfies the statutory requirements the registrar is likely to grant the patent without enquiries as to its novelty, inventiveness and industrial applicability or whether the specification sufficiently discloses the invention.[25] This is because Nigeria does not have a functioning examination system. A patent is granted for 20 years[26] and at the risk of the patentee without guarantee as to their validity.[27] During the period of 20years, the inventor maintains exclusive right to use, assign or license the software, and can prevent the recreation and imitation of the software application. Issued patents are subject to an annual renewal obligation in the form of annuity payments to ensure their continued validity over the lifespan of the patent.

Patentability of software is highly debated in Nigeria and copyright is presumed to be the most suitable form of protection due to the broad protection which it affords. In the United States, software is patentable if it is any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement. In the United Kingdom, patent protection may be granted for software that is new, inventive and can be used in industry.[28] Although the UK Patents Act 1977 excludes computer programmes from patent protection, patent may be granted to computer programmes or software if after assessment of the novel aspect, it is found to make a technical contribution to what is already known.[29] In China, software programmes are patentable if they solve a technical problem, adopts a technical measure and achieves a technical effect.[30]

In addition to copyright protection, patent protection is recommended for software as copyright only protects the literal expression of software and does not protect the ideas underlying the software which often have considerable commercial value.[31] Software is one of the most common form of technology tool widely used to augment business processes today. They require a more dependable form of protection to enable developers enjoy the benefits of their inventiveness and to promote creativity in the industry.

  1. Trademark Protection

Although a trademark cannot protect software, it may be used to protect and secure exclusive right to the software’s brand name, logo and slogan, i.e., software titles. Exclusive right to a trademark can be acquired either by use in Nigeria and/or registration of the mark at the Nigerian Trade Marks Registry. Upon registration, the proprietor’s right in a trademark subsists for 7 years[32] and is subject to renewals at 14 year intervals. A trademark gives the proprietor exclusive right to use the mark in connection with the software and enables users to distinguish the inventor’s software from other software available in the market. It also promotes the brand and may prevent third parties from marketing their software under a confusingly similar name.[33] Software titles are registrable as trademarks in Nigeria under class 9 and/or class 42 of the international classification of goods and services.[34] It may be registered under both or any of the classes based on whether the company or business utilizes the brand in the sale of products and/or provision of services. Class 9 is adequate for brands engaged in sale of computer programs and software regardless of recording media or means of dissemination and class 42 is adequate for brands involved in the provision of designs and development of computer hardware and software services including services provided by computer programmers.[35]

  1. Trade Secrets Protection

Software programmes may also be protected as trade secret by preserving confidential information, processes or codes of a software which have commercial value and which accords the owner a competitive advantage over competitors in the market. In addition to copyright and trademark protection, this mode of protection is recommended for software that is not eligible for patent protection in Nigeria, or as a commercial strategy to withhold related proprietary data for the application of the software.

Trade secret protection is not a statutorily recognized right in Nigeria; however, it is recognized and enforceable under the common law. Owners of trade secrets in software have to take reasonable measures to maintain their secrecy. These measures include signing non-disclosure agreements, restraining employees’ access to it and taking steps toward preventing access to the public.[36] Trade secret in software can be maintained indefinitely as long as their secrecy is preserved and prevented from becoming public knowledge.[37]

  1. Conclusion

Copyright, patents, trademarks and trade secrets law protect different aspects of software rights. Copyright protects software codes, patent protects the software invention including methods and processes, and trademark protects the brand name and logo under which these products are sold, while trade secrets protect related know-how, including other confidential information that gives that owner a competitive advantage in the market. These modes of protection would give an inventor exclusive rights to use its codes and software including its marketing brand, and prevent unlawful exploitation by third parties. The various modes of protections may be used concurrently or selected based on the uniqueness of the software and intended business objectives. For maximum legal protection and benefit, it is recommended that an inventor utilizes more than one form of protection. Inventors require adequate legal support to determine the best mode of protection suitable for their software and prior discussions with an IP lawyer is highly recommended.

 

 

 

 

For further information on this article and area of law, please contact

Bisola Scott at S. P. A. Ajibade & Co., Lagos by

Telephone (+234.1.270.3009; +234.1.460.5091) Fax (+234 1 4605092)

Mobile (+234.811.389.8102, +234.817.939.0319)

Email: bscott@spaajibade.com

www.spaajibade.com

[1].    Aaron Jagoda, “Cover Your App: Protecting Mobile Applications through Intellectual Property Law,” available at: http://dunnerlaw.com/cover-your-app-protecting -mobile-applications-through-intellectual-property-law/, accessed on 15th June 2019.

[2]     Nigerian Copyright Act C28 Laws of the Federation of Nigeria (NCA).

[3]     Section 1(1) NCA.

[4]     Scott Bell, Aly Dossa and Timothy M. Smith “To protect your source code, treat it like intellectual property”, available at: https://sdtimes.com/intellectual-property/to-protect-your-source-code-treat-it-like-intellectual-property/, accessed on 23rd May 2019.

[5]    Section 1(2) (a) and (b) NCA.

[6]    Section 2(1)(a) NCA.

[7]     Section 3(1)(a) NCA.

[8]     Section 9(2)(a)(b) NCA.

[9]     Section 10 NCA.

[10]    Nigeria is a signatory to Berne Convention for the Protection of Literary and Artistic Works1886, the Universal Copyright Convention 1952 and the TRIPS Agreement 1995 to name a few.

[11]    See the Nigerian Copyright Commission website, available at:  http://www.eregistration.copyright.gov.ng/ncc/about, accessed on 10th May 2019.

[12]    Section 5(1) NCA.

13   Section 11(1) NCA.

[14]    Section 11(2) NCA.

[15]    Berne member countries include: Afghanistan, Albania, Algeria, Bangladesh, Barbados, Belarus, Belgium, Belize etc.

[16]    Articles 5(1) and 5(2).

[17]    Nigeria acceded to this Convention on 10th June 1993.

[18]    First Schedule, Terms of Copyright, NCA.

[19]    Section 1(a) Patents and Designs Act, Cap. P2, Laws of the Federation of Nigeria 2004 (PDA).

[20]    Section 1(b) PDA.

[21]    Section 1 (3) PDA.

[22]    Section 1(3) PDA.

[23]    Section 3(1) (a) PDA.

[24]    Section 3(1) (b) PDA.

[25]    Section 4(2) PDA.

[26]    Section 7(1) PDA.

[27]    Section 4(4) PDA.

[28]    “Patent Protection for Software in the UK – A Practical Approach”, available at https://www.elkfife.com/news-and-views/2016/03/02/software-patents-in-the-uk, accessed on 14th July 2019.

[29]    Ibid.

[30]    Li Hui, “Patent eligibility for software in China”, available at: https://www.vantageasia.com/china-patent-eligibility-software/, accessed 14th July 2019.

[31]    “Patenting Software”, available at: https://www.wipo.int/sme/en/documents/software_patents_

fulltext.html accessed on 12th July 2019.

[32]    Section 23(1) Trade Marks Act Cap T 13, Laws of the Federation of Nigeria 2004 (TMA).

[33]   “Intellectual Property Protection for Software: What to Know”, available at:   https://www.upcounsel.com/intellectual-property-software, accessed on 1st June 2019.

[34]   Established by the Nice Agreement (1957).

[35]   Class Index – https://www.wipo.int/classifications/nice/nclpub/en/fr/?class_number=9&explanatory_

      notes=show&lang=en&menulang=en&notion=class_headings&version=20190101 accessed on      17th July 2019.

[36]    Intellectual Property Protection for Software: What to Know, available at: https://www.upcounsel.com/intellectual-property-software, accessed on 1st June 2019.

[37]    Ibid.