WELCOME FOUNDATION LTD. (PLAINTIFF)

v.

(1) LODEKA PHARMACY LTD

(2) KAYODE FASHINA (DEFENDANTS)

(1971) All N.L.R. 536

Division: High Court of Lagos

Date of Judgment: 6th September, 1971

Case Number: SUIT NO. IK/134/67

Before: Dosunmu, J.

Civil Action.

HELD:

(1)     The Patents Rights (Limitation) Decree 1968 empowers the Commissioner to authorize any person to purchase, make use, exercise or vend any such patented articles for the services of a Government Agency and the authority may be given before or after the acts in respect of which the authority is given or done.

(2)     On the evidence in this case there was no authority from the Commissioner to the defendants to vend to the former Northern Regional Government some quantity of Alcopar Tablets within section (1) of the Patent Rights (Limitation) Decree 1968. What the defendants had put forward was at best a letter of exemption.

(3)     Where a Statute requires an act to be done at or within a particular time, or in a particular manner, the question arises whether the validity of the Act is affected by a failure to comply with what is prescribed. If it appears that Parliament intended disobedience to render the act invalid, the provision in question is described as "mandatory", "absolute", "imperative" or "obligatory"; if, on the other hand, compliance was not intended to govern the validity of what is done the provision is said to be "directory".

(4)     Although no universal rule can be laid down, provision relating to steps to be taken by the parties to legal proceedings in the widest sense have been construed with some regularity as mandatory; and it has been observed that the practice has been to construe provisions as no more than directory if they relate to the performance of a public duty and the case is such that to hold null and void acts done in neglect of them would work serious general inconvenience, or injustice, to persons who have no control over these entrusted with the duty, without at the same time promoting the main object of the legislature.

(5)     Reading the decree as a whole, the intention of the legislature is clear that it is desired to give protection to a person who vends a patented article to the Government or its agency in the manner which the defendants have done. Such protection from liability for an infringement action will be given on the authority of a Commissioner. Although in the instant case the Commissioner had strictly not followed the words of the statute, the court was of the view that it would work great injustice on the defendants to hold as null and void the act of the Commissioner in issuing them with a letter of exemption rather than an authority.

Plaintiff's claim dismissed.

Cases referred to:

Poulenc & anor. v. Lodeka Pharmacy Ltd., (1965) L.L.R. 9.

Ciba Ltd. v. Lodeka Pharmacy Ltd., LD/463/63 of 11/7/66.

Acts referred to:

United Kingdom Patent Act, 1949 s. 46(i).

Decree referred to:

Patent Rights (Limitation) Decree, 1968.

CIVIL ACTION.

SUIT NO. IK/134/67.

Kushimo for the Plaintiffs.

Otuyelo for the Respondents.

Dosunmu, J.:-The plaintiffs are the owners of a patent registered in the United Kingdom under No. 819681, and dated the 22nd January, 1958 for improvements in and relating to quaternary ammonium compounds and the preparation thereof. The Letters Patent cover the production of a drug known under the Approved Name of Bephenium Hydroxynaphthoate and marketed under the trade name of Alcopar, which is used in curing worm infection, in man and domestic animals. The drug was first manufactured and sold in the United Kingdom in 1958 but some years later it was manufactured and sold in Nigeria. It was extensively advertised locally.

The said Letters Patent were registered in Nigeria by the plaintiffs by virtue of a Certificate of Registration No. R.P.N. 484 of 1961 issued by the Register of Patents and dated 7th April, 1961.

Section 6 of the Registration of United Kingdom Patents Act (No. 6 of 1925) Cap. 182 Laws of the Federation provides:-

"6.     Such certificate of registration shall confer on the applicant privileges and right subject to all conditions established by the law of Nigeria as though the patent had been issued in the United Kingdom with an extension to Nigeria."

At all times material to these proceedings both the United Kingdom Letters Patent and Nigerian Certificate of Registration were, and are valid and subsisting. Under an agreement dated 1st July, 1966 the defendants agreed to supply to the then Government of Northern Nigeria drugs, dressings and other medical equipment. Included in these was an estimated quantity of 100,000 Alcopar tablets at 1/6d. totalling £7,500. The said agreement recites that the supply of the drugs was after a successful tender by the defendants in response to a previous Government advertisement.

Although on the pleadings it would seem that the fact of infringement of the plaintiffs' patent was disputed; at the trial, however, this was conceded whether the products supplied by the defendants were known as alcopar or alpar, it being conceded further that the essential components are the same, that is Bephenium Hydroxynaphthoate.

I believe it was also conceded by the defendants that they have no licence or authority of the plaintiffs for the infringement. The plaintiffs instituted these proceedings on 24th October, 1967 against the defendants for the infringement of their patent rights. In the amended Statement of Claim particulars of breaches are stated thus: (1) the marketing of the patented goods under the name of "Alpar", (2) offer for sale and/or the sale and supply of them to the Government of Northern Nigeria. (3) Offer for sale and/or the sale or supply to the Public and (4) importation of them into Nigeria.

The defence to the action is a straightforward one. It admits practically all averments of the plaintiffs except where they allege the sale and/or supply to the Public for they say in paragraphs 4, 5 and 7 thus:-

"4.     The 1st defendant admit that they imported into Nigeria under the trade name 'Alpar' the drug Bephenium Hydroxynaphthoate over which the plaintiffs claim patent rights and sold same to the Ministry of Health of the former Northern Government of Nigeria.

5.      The 1st defendant entered into a contract with the Ministry of Health of the former Northern Government of Nigeria after they had successfully tendered to the former Northern Government of Nigeria Tender Board acting on behalf of the Ministry of Health of the former Northern Nigerian Government.

7.      The 1st and 2nd defendants aver that they have never sold the drug Bephenium Hydroxynaphthoate under the trade name 'Alpar' to any person or persons other than the Ministry of Health of the former Northern Government and neither do they intend to sell the said drugs to any person or persons other than the Federal Ministry of Health or any State Government in the Federal Republic of Nigeria."

I agree with the defendants that no sale of either alpar or alcopar was made by them to the public. I reject completely the evidence of Fasasi Disu, the only witness of the plaintiffs on this aspect of the case. He did not impress me at all.

The burden of the defence is in paragraph 6 which states:-

"6.     The Federal Ministry of Health has exempted the 1st defendants from liability for infringement of patent rights in respect of the drugs supplied to the Ministry of Health of the former Northern Nigeria Government in accordance with the provision of the Patent Rights (Limitation) Decree 1968."

It is here pertinent to recall that this decree was enacted after an interlocutory decision of Ikpeazu J. in Phone Pouleng & another v. Lodeke Pharmacy Ltd. (1965) L.L.R. in which he held that Section 46(1) of the United Kingdom Patent Act of 1949 in these terms:-

"Notwithstanding anything in the Act, any Government Department and any person authorised in writing by a Government Department, may make, use, and exercise any patented invention for the services of the Crown in accordance with the following provisions of this section."

does not apply in Nigeria in the absence of an express legislative provisions that it should so apply. (See also the judgment of Taylor C.J. in Suit No. LD/463/63 Ciba Ltd. v. Lodeka Pharmacy Ltd. dated 11th July, 1966.

The interlocutory decision was mentioned with approval in certain judgments of the Supreme Court of Hong Kong Text of which the plaintiffs' Counsel kindly made available to this Court during the proceedings.

The relevant portion of Decree no. 8/1968 entitled Patent Rights (Limitation) Decree 1968 which was relied on by the defence reads as follows:-

"(1)    Where a commissioner is satisfied that it is in the public interest so to do, he may in respect of an article to which the Decree applies and intended for use in Nigeria, authorise any person including a Government department to purchase, make use, exercise or vend, as the case may be, any such articles for the service of a Government agency in the Federal Republic, anything to the contrary in any enactment or rule of law notwithstanding.

(2)     The authority of a Commissioner in respect of an article may be given under this section either before or after a patent is granted and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not he is authorised directly or indirectly by the patentee to make, use, exercise or vend the article.

(3)     The foregoing provisions of this section shall have effect so as to exempt the Government or any person authorised under this section from liability for the infringement of a patent granted in respect of the article, or liability to make any payment whether by the way of royalty or otherwise to a patentee or any person who derives title from him or from whom he derives title, and in addition such provisions shall extend and apply to grant the same exemption to any supplier or his agent."

There is no where in the Decree giving the Federal Ministry of Health power to exempt any person from liability for infringement of patent rights as pleaded in paragraph 6 of the Statement of Defence. The words of the decree are clear: It gives power to a Commissioner to authorize any person including any Government Department to purchase, make use, exercise or vend as the case may be, any such article for the service of a Government agency in the Federal Republic. Happily the purported exemption preferred by the defendants emanates from a Commissioner and it is in these words "I, Dr J.G. Adetoro, Federal Commissioner for Health, hereby exempt Messrs Lodeka Pharmacy Limited for infringement of patent rights in respect of drugs supplied in 1964 to the Federal Ministry of Health and the Ministry of Health of the former Northern Region in 1966 in accordance with the provisions of Patent Rights (Limitation) Decree 1968.

Dr J.G. Adetoro Federal Commissioner of Health

31st October, 1968.

Again there is no such provision in the decree that empowers the Commissioner to exempt any person from infringements of patent rights. It seems clear that what the decree does is to empower the Commissioner to authorize any person to purchase, make use, exercise or vend any such patented articles for the services of a Government Agency and the authority may be given before or after the acts in respect of which the authority is given are done. Section 1(3) of the decree then makes it abundantly clear that the effect of the authority so given by a Commissioner is to exempt a person so authorised from liability for the infringement of a patented article. So that what one has to look for is an authority from the Commissioner to the defendants to vend to the former Northern Regional Government some quantity of Alcopar Tablets. In my view what the defendant has put forward is not such an authority, but at best a letter of exemption. I do not think this is a mere dispute as to words for in the Decree the "Commissioner means in respect of any article, a Federal or State Commissioner authorising a particular action. Under Section 1(3) of the Decree where the word "exempt" appears there is no reference to the Commissioner in any manner.

I have come to the conclusion therefore that there is no authority from a Commissioner authorising the vending of Alcopar Tablets by the defendants to the former Northern Regional Government within Section (1) Patent Rights (Limitation) Decree 1968.

What then is the effect of non compliance with this statutory requirement, it being clear that the intention of the Legislature is to afford protection to the defendants in respect of sale of these drugs to the Government of Northern Nigeria. Halsbury's Law of England 3rd Edition Volume 36 page 343 paragraph 656 states the position thus:-

"Where a statute requires an act to be done at or within a particular time or in a particular manner, the question arises whether the validity of the Act is affected by a failure to comply with what is prescribed. If it appears that Parliament intended disobedience to render the act invalid, the provision in question is described as "mandatory", "absolute" "imperative" or "obligatory;" if, on the other hand, compliance was not intended to govern the validity of what is done the provisions is said to be "directory".