It was reported in Vanguard of 26th November, that a Lagos-based firm, Technocrat Consult and IT Systems Limited (Technocrat IT), dragged the Independent National Electoral Commission (INEC) before a Federal High Court sitting in Lagos, challenging the legality of the award of contract for supply of the Direct Data Capture machines to three firms without its consent.
Technocrat IT is demanding N8billion as damages, claiming that it invented the technique, a portable telecommunication device used in biometric identification covered by patent right No RP: NG/P/2010/283. According to Technocrat IT, this invention is comprised of a portable and lightweight fingerprint apparatus (biometric capture agent application), which can scan and record fingerprint images in the field and wirelessly transmit the said images to a central unit (biometric database) for the purpose of providing immediate identity and background checks on the individuals being fingerprinted.
This piece analyzes the strength of Technocrat IT’s case before the court. A convenient place to start in this analysis would be the caveat contained in section 4(4) of the Patent Act which says that “Patents are granted at the risk of the patentee and without guarantee of their validity.” In essence, this means that the fact that you own a patent right does not guarantee the validity of that patent.
Some of the requirements for patenting an invention under the Patent Act are set out as: if the invention is new, results from an inventive activity and is capable of industrial application or it constitutes an improvement to an earlier invention.
Having construed Technocrat IT’s patent claim as explained and displayed on their website at www.technogratgroup.co.uk , it seems that their patent though capable of an inventive activity, has not met the standard of patentability of been new/novel, neither has it resulted from an inventive activity.
It is important to mention here that on the 25th of December, 1998, an International Application (with number PCT/US98/20089) was presented for filing under the Patent Cooperation Treaty (PCT) with the International Bureau (IB) of the World Intellectual Property Organization (WIPO), a similar application covering the same invention has also been filed before the United States Patent and Trademark Office. This application relates to a MOBILE BIOMETRIC IDENTIFICATION SYSTEM and the summary of the Invention states that:
“The present invention may be embodied in a distributed biometric identification system having highly mobile user workstations. More particularly, the invention may be embodied in a distributed, mobile biometric identification system and architecture for rapidly identifying individuals using fingerprint and photographic data. The disclosed architecture includes a centralized server, and a plurality of distributed, mobile client workstations that are remotely located from the centralized server. The mobile workstation includes a substantially portable two-way communications link (e. g., a land-based or satellite-based mobile radiotelephone) that may be used to place the mobile workstation in communication with the centralized server”
This earlier invention primarily practices the invention now claimed by Technocrat IT, I must also say that Technocrat IT’s invention/patent is not an improvement to this earlier invention), it is important to note that in determining the novelty of an invention or as to whether it results from an inventive activity, the Patent Act states that the invention itself must not form a part of or obviously follow (either as to the methods, or the product which it concerns, or as to the industrial results it produces) from the state of the art which the Patent Act defines under Section 1 (3) as:
concerning that art or field of knowledge which has been made available [not necessarily patented] to the public anywhere [in the world] and at anytime whatever…before the date of filing of the patent application…
The court in interpreting the above provision will exercise flexibility and will not be restricted to only evidence of the state of the art available in Nigeria neither would it be limited to evidence of a prior Patent grant obtained in Nigeria as the standard of been made available does not necessarily entail the prior grant of a Patent but rather that information concerning the patent or claimed invention has been previously disclosed to the public by way of a written or oral description, by use or in any other way.
In the English case of Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, the plaintiff were the manufacturers of the first commercial windsurfer/sailboard and patented their design for sailboard with a Bermuda rig and a wishbone spar in the UK and elsewhere. The plaintiffs subsequently sued another company for patent infringement as a result of making and selling a similar sailboard in the UK. The validity of the patent was challenged by an the defendant on the fact that in 1958, at least 10 years before the grant of the patent a 12 year old boy called Peter Chilver had built an early version of a sailboard which was evidenced by film footage taken off the coast of Hayling Island. They alleged that this proved that the subject of the plaintiffs' patent had been anticipated
The Court upheld the defendant's claim that the boy's invention predated the plaintiff's application for a UK patent and the patent was rendered invalid notwithstanding that Chiver’s sailboard was of a slightly different design.
Conclusively, this evidence of an earlier invention which predates Technocrats IT’s Patent grant will not only destroy their case but nullify the earlier grant of the Patent under Section 9 (1) a of the Patent Act since it does not meet the standards of Patentability (Novelty/New and resulting from an Inventive Activity) as set out under Section 1 of the Act.
PS: On a lighter note, reading over the weekend about the injunction obtained against INEC on a similar ground of Copyright/Patent Infringement, I am beginning to be concerned as to when exactly I would be able to make my vote count.
