Intellectual property can be an income generating corporate asset. By protecting a company's intellectual property, the company is vested with rights to exploit or commercialize the intellectual property to generate revenue. Revenue may be generated by licensing the intellectual property for fees, building an industry around the protected intellectual property and enjoying the exclusivity of exploitation or industry control for the term of the rights afforded the intellectual property.
Lack of awareness of the legal rights and protection afforded registered intellectual property, particularly the exclusive exploitation rights over product and process inventions has contributed to minimal patronage of intellectual property registration by small and medium scale enterprises, as well as individuals in Ghana. In light of this, the Government of Ghana has developed the National Intellectual Property Policy and Strategy (NIPPS) to effectively harness and manage the intellectual property system in Ghana.
A patent is a legal document which grants its holder the exclusive right to control the use of an invention within a limited area for a specified period. An invention qualifies for a patent if it is new, involves an inventive step and is industrially applicable.
An invention is new when it has not been anticipated by a prior art anywhere in the world. Prior art consists of everything disclosed to the public anywhere in the world by publication in tangible form or by oral disclosure, or by use in any other way prior to filing of the patent application. A disclosure made to the public within twelve (12) months preceding the filing date of the application is not considered as prior art in Ghana. An invention is generally said to be new if it shows some characteristic which is unknown in its technical field. An invention involves an inventive step if it is not obvious to a person having ordinary skill in the art, taking into consideration the prior art relevant to the patent application. The ability to use an invention in any industry makes it industrially applicable.
The Patents Act, 2003 (Act 657) (Patents Act) and the Patents Regulations 1996 (L.I. 1616) (Patents Regulations) constitute the legislative framework for the grant and protection of patents in Ghana. The Patents Office of the Registrar General's Department is the issuing office of a patent in Ghana.
Patents are territorial therefore a grant of a patent in Ghana affords the inventor the rights and protection of the invention only within Ghana. A patent may also be granted in respect of Ghana by filing a regional patent application with the African Regional Industrial Property Organisation (ARIPO).
The World Intellectual Property Organisation (WIPO) administers the Patent Corporation Treaty (PCT). The PCT ensures a unified method for filing international applications in member countries. Under the PCT, an applicant is able to file applications, conduct searches and examine inventions to determine their patentability. An applicant is then able to file an application in the national phase at the Patents Office for the grant of a patent by Ghana.
The Patents Act excludes some inventions from the grant of patent. These include: (i) discoveries, scientific theories and mathematical methods; (ii) methods for conducting business or playing purely mental games; and (iii) inventions contrary to public policy and morality.
The legislative framework also makes provision for the grant of rights and protection over inventions which do not qualify for patent protection. In such an instance, a utility model certificate may be granted in respect of new and industrially applicable inventions under the Patents Act. A utility model certificate is valid for seven (7) years subject to the payment of annual fees.
PATENT APPLICATION PROCEDURE
An application for a patent in Ghana must be filed with the Registrar-General (Registrar). The application must contain the following formal requirements:
i. a request containing a petition for the grant of the patent, the title of the invention, and the particulars of the inventor or applicant;
ii. a clear description of the invention in a manner which will enable a person with ordinary skill in the art carry out the invention;
iii. one or more claims defining the matter for which patent protection is sought;
iv. drawings where necessary for the understanding of the invention in a sufficiently clear manner; and
v. an abstract providing detailed technical information on the invention.
A prior art search is a necessary preliminary step to filing a patent application. Although there is no legal requirement under Ghanaian law for a prior art search, similar patents are likely to invalidate a claim to an invention in respect of which a patent application is filed. Conducting a search allows an inventor to assess the patentability of the invention, gauge the success of the patent application, and determine the coverage of the patent claim.
An application must be made in triplicate and is subject to the payment of application fees.1 The application must relate to one invention only or to a group of inventions which form a single inventive concept. The Registrar will conduct a preliminary examination upon receipt of a patent application to ascertain if the application contains a petition for the grant of a patent, the title of the invention, and the particulars of the inventor or applicant, following which a filing date will be accorded. The filing date is the date of receipt of an application which is compliant with the above requirements. The Registrar will then examine the application documents to ensure compliance with the formal requirements. A substantive examination is conducted as a final step to assess the patentability of the invention. A decision to grant or refuse a patent is made following the substantive examination by or on behalf of the Registrar. A decision on a patent application is required under the law to be given not later than two (2) years after commencement of examination of the application. In practice, it takes longer than two (2) years. The applicant may withdraw or amend the application until the time when a decision is to be made in respect of the application.
The Registrar will publish a reference of a grant of a patent in the Commercial and Industrial Bulletin, and issue a certificate of the grant and a copy of the patent to the applicant. The grant of a patent is subject to the payment of annual renewal fees. Annual renewal fees are paid in advance beginning a year after the filing date of the patent application.
A patent application may be filed by an agent on behalf of the inventor. Where an applicant is not the inventor, the request must be submitted with a statement justifying the applicant's right to the patent. Where the inventor-applicant is not ordinarily resident in Ghana, or has its principal place of business outside Ghana, there is a requirement for representation by a legal practitioner resident and practicing in Ghana.
All documents filed with the Registrar which are in a language other than English are required to be accompanied by English translations verified to the satisfaction of the Registrar.
EFFECT OF A GRANT OF PATENT
The grant of a patent confers on the inventor, exclusive rights to the invention in Ghana for twenty (20) years commencing from the filing date of a patent application. The inventor is named as the patent owner and enjoys the exclusive use of the invention for the period of the grant. The prior consent of the inventor is required to exploit the patented invention. Exploitation of a patented invention involves the making, importing, offering for sale, selling and using the product or process, or stocking the product for the purposes of offering for sale, selling or using.
The owner of a patent has an additional right to institute legal proceedings against any person who infringes the patent by exploiting it without the consent of the owner, or performing other acts which may lead to infringement. The court may grant an injunction, award damages in respect of an infringement and / or grant any other appropriate legal relief to the patent owner. Where the patent right is in respect of a process for obtaining a product, the burden is on an alleged infringer to prove that the process used to obtain an identical product is different from the patented process. In the absence of proof to the contrary, any new and identical product produced without the consent of the owner of the patent will be deemed to have been obtained by the patented process.
Notwithstanding the foregoing, the invention may be exploited by the Government of Ghana without the prior consent of the owner for public interest considerations, and the prevention of anti-competitive practices. Such exploitation is however subject to the payment of adequate remuneration to the owner.
The law permits the assignment, transfer and devolution by succession of a patent. A change in ownership of a patent, or a licence granted in respect of a patent must be in writing and submitted to the Registrar to be recorded and published. A change in ownership of a patent will have no effect against third parties until it has been recorded.
WIPO highlights the benefits of patents or a patent portfolio to include: (i) a bargaining chip to obtain a competitive or strategic advantage when dealing with competitors; and (ii) enhancing a company's image or reputation as possessing some expertise or technical knowledge. Such benefits may be useful in raising the market value or goodwill of a company.
1 The application fee is currently set at GHS 100.
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