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The Patent, Design and Trademark Act, 1965

September 26, 2024 by Prime Law Associates Intellectual Property
Home | Intellectual Property | The Patent, Design and Trademark Act, 1965

The Patent, Design and Trademark Act, 1965 (PDTA) stands as the cornerstone legislation governing intellectual property rights related to patents, designs, and trademarks in Nepal. Enacted in 1965 (2022 B.S.), this Act provides the legal framework for registering, protecting, and enforcing these crucial forms of intellectual property within the Nepalese jurisdiction.

What is the Patent, Design and Trademark Act, 1965?

The Patent, Design and Trademark Act, 1965 is a pivotal piece of legislation that establishes the rules and procedures for recognizing and safeguarding intellectual property rights in Nepal. This Act covers three main categories of intellectual property: patents, designs, and trademarks. It outlines the processes for registration, the rights conferred upon registration, the duration of protection, and the penalties for infringement.

Definitions of Patent, Design and Trademark

The PDTA provides specific legal definitions for the three types of intellectual property it covers:

Patent: Section 2(a) of the Act defines a patent as “any useful invention relating to a new method or process of manufacture, operation, or transmission of any material or combination of materials, or that made on the basis of a new theory or formula.”

Design: According to Section 2(b), a design refers to “the form or shape of any material manufactured in any manner.”

Trademark: Section 2(c) defines a trademark as “a word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.”

Chapter 2 on Patents

Acquisition of Patent Rights

The PDTA establishes a “first-to-file” system for patent rights in Nepal. Section 3 of the Act stipulates that to obtain rights over a patent, the inventor or assignee must register the patent with the Department of Industry (DOI). This registration process is crucial, as it confers exclusive rights to the patent holder. The Act explicitly prohibits anyone from using a registered patent without the owner’s permission or a formal transfer of ownership.

Application for Acquiring Right Over Patent

The patent application process is detailed in Section 4 of the PDTA. Applicants must submit a comprehensive application to the DOI, which must include:

  1. The full name, address, and occupation of the person who invented the patent
  2. If the applicant is not the original inventor, a detailed explanation of how and in what manner they acquired the rights to the invention from the original inventor
  3. A thorough description of the process for manufacturing, operating, or using the patent
  4. The underlying theory or formula upon which the patent is based, if applicable
  5. Detailed maps and drawings related to the patent, providing visual representation of the invention

In addition to this information, applicants must submit the application along with the prescribed fees to the DOI. This comprehensive application ensures that the DOI has all necessary information to evaluate the novelty and usefulness of the invention.

Investigation by Department

Upon receiving a patent application, the DOI conducts a thorough investigation as outlined in Section 5 of the Act. This investigation serves multiple purposes:

  1. To determine if the invention described in the application is truly new and original
  2. To assess whether the invention is useful to the general public
  3. To verify that the patent is not already registered to another party

During this examination process, the DOI may seek advice from experts in the relevant field to assist in evaluating the technical aspects of the invention.

Circumstances in Which Patents Cannot Be Registered

Section 6 of the PDTA outlines specific circumstances under which a patent cannot be registered. These restrictions serve to protect existing rights, public interests, and legal integrity. A patent application will be rejected if:

  1. The patent is already registered in the name of another person, protecting existing patent holders’ rights
  2. The applicant is neither the original inventor of the patent nor has legitimately acquired rights over it from the original inventor
  3. The patent sought for registration is likely to adversely affect public health, conduct, morality, or national interests
  4. Registering the patent would contradict existing Nepalese laws

Registration of Patent

If a patent application successfully passes the DOI’s examination and does not fall under any of the circumstances prohibiting registration, the DOI proceeds with registration. As per Section 7 of the Act, the DOI issues a registration certificate to the applicant in the format specified in Schedule 2(a) of the PDTA.

Registered Patents to be Published

To ensure transparency and allow for public scrutiny, Section 7A of the PDTA mandates that all registered patents, except those deemed confidential for national security reasons, must be published in the Nepal Gazette. This publication serves to inform the public about new patents and allows interested parties to review patent details. The Act also provides a mechanism for the public to access more detailed information about registered patents:

  1. Any person can view or obtain copies of the published patent details by paying the fees prescribed by the DOI
  2. If anyone objects to a published patent, they have the right to file a complaint with the DOI within 35 days of viewing or copying the patent information
  3. The DOI is required to investigate any complaints received and take appropriate action

Term of Patent

The PDTA sets a specific term for patent protection in Section 8. A registered patent is initially valid for 7 years from the date of registration. However, the Act allows for patent renewal:

  1. The patent can be renewed twice, each time for an additional 7-year period
  2. This renewal provision allows for a maximum protection period of 21 years

Penalty for Violation of Patent Rights

To deter infringement and protect patent holders’ rights, Section 11 of the PDTA outlines penalties for patent violations:

  1. Unauthorized use of a registered patent can result in fines up to 500,000 Nepali Rupees
  2. Attempts or abetment of patent infringement, even if unsuccessful, can lead to fines up to 250,000 Nepali Rupees
  3. The DOI has the authority to confiscate articles and goods connected with the offense

Chapter 3 on Designs

Acquisition of Title to Design

Similar to patents, design rights in Nepal are acquired through registration with the DOI. Section 12 of the PDTA establishes that a person may acquire title to the design of any article manufactured or caused to be manufactured upon registration under Section 14 of the Act. The Act strictly prohibits unauthorized copying or use of registered designs, protecting the rights of design creators.

Application for Registration of Design

The process for registering a design is detailed in Section 13 of the PDTA. Applicants seeking design registration must submit:

  1. A completed application form as specified in Schedule 1(b) of the Act
  2. Four copies of the design
  3. Maps and drawings containing full particulars of the design
  4. The prescribed application fee

Registration of Design

The design registration process is outlined in Section 14 of the PDTA. Upon receiving an application, the DOI reviews it to ensure the design meets all requirements. The DOI will register the design and issue a certificate as specified in Schedule 2(b) of the Act, provided the design does not:

  1. Hurt the prestige of any individual or institution
  2. Adversely affect public conduct or morality
  3. Undermine national interests
  4. Infringe on a design already registered to another person

Term of Design

Section 14A of the PDTA establishes the term of protection for registered designs:

  1. A registered design is initially protected for 5 years from the date of registration
  2. The registration can be renewed twice, each time for an additional 5-year period
  3. This allows for a maximum protection period of 15 years.

Punishment for Violation of Design Rights

To protect registered designs from infringement, Section 15 of the PDTA outlines penalties for violations:

  1. Unauthorized use of a registered design can result in fines up to 50,000 Nepali Rupees
  2. The DOI has the authority to order confiscation of articles and goods connected with the offense
  3. The severity of the punishment is determined based on the gravity of the offense

Chapter 4 on Trademark

Acquisition of Title to Trade Marks

The PDTA establishes that trademark rights in Nepal are obtained through registration with the DOI. Section 16 of the Act states that a person may acquire title to the trademark of their business upon registration under Section 18. As with patents and designs, the Act prohibits unauthorized use of registered trademarks, protecting brand owners’ rights.

Application for Registration of Trade Mark

Section 17 of the PDTA outlines the trademark application process. Applicants seeking to register a trademark must submit:

  1. A completed application form as specified in Schedule 1(c) of the Act
  2. Four specimens of the trademark
  3. The prescribed application fee

Registration of Trade Mark

The trademark registration process is detailed in Section 18 of the PDTA. Upon receiving an application, the DOI examines it to ensure the trademark meets all requirements. The DOI will register the trademark and issue a certificate as specified in Schedule 2(c) of the Act, provided the trademark is not:

  1. Likely to harm the prestige of any individual or institution
  2. Detrimental to public conduct or morality
  3. Against national interests
  4. Already registered to another person

Classification of Goods and Services for Trade-Mark Registration

Section 18A of the PDTA empowers the Government of Nepal to classify goods and services for trademark registration purposes. This classification system, which aligns with international standards, serves several purposes:

  1. It organizes trademark applications and registrations into distinct categories
  2. It requires separate applications for trademarks in different categories of goods or services
  3. It allows for more precise searching and reduces the likelihood of confusion between similar marks in different industries

Prohibition to Use other Trademarks

Section 18B of the PDTA explicitly prohibits the use of trademarks that have not been registered with the DOI. This provision reinforces the importance of trademark registration and helps prevent unauthorized use of unregistered marks.

Time Limit for Use of Trade-Marks

To prevent trademark squatting and ensure that registered marks are actually used in commerce, Section 18C of the PDTA imposes a use requirement:

  1. A registered trademark must be brought into use within one year from the date of registration
  2. If the mark is not used within this timeframe, the DOI may conduct inquiries and potentially cancel the registration

Term of Trade-Marks

Section 18D of the PDTA establishes the term of protection for registered trademarks:

  1. A registered trademark is initially protected for 7 years from the date of registration
  2. Unlike patents and designs, trademarks can be renewed indefinitely for subsequent 7-year periods
  3. This potentially perpetual protection reflects the ongoing nature of trademark use in commerce

Punishment for Illegal Use of Trade-Marks

To deter trademark infringement and protect brand owners’ rights, Section 19 of the PDTA outlines penalties for violations:

  1. Unauthorized use of a registered trademark can result in fines up to 100,000 Nepali Rupees
  2. The DOI has the authority to order confiscation of articles and goods connected with the offense
  3. The severity of the punishment is determined based on the gravity of the offense

Read More:

Also Read: Copyright Act, 2002 Patent, Design and Trademark Act, 1965

Chapter 5 on Additional Provisions

Right to Appoint Attorney

Section 20 of the PDTA recognizes the right of applicants and rights holders to appoint an attorney or legal practitioner to handle their patent, design, or trademark matters. This provision allows individuals and businesses to seek professional legal assistance in navigating the complexities of intellectual property law and procedures in Nepal.

Publication of Registered Designs and Trade-Marks

To ensure transparency and public awareness, Section 21A of the PDTA mandates that the DOI must publish information about registered designs and trademarks. This includes:

  1. Details of newly registered designs and trademarks
  2. Information about renewals of existing registrations
  3. Notices of cancellation of registrations

The Act also provides a 35-day window for the public to file objections to published registrations, allowing for an additional layer of scrutiny in the registration process.

Title Not to be Valid Unless Registered in Nepal

Section 21B of the PDTA establishes the territorial nature of intellectual property rights in Nepal. It stipulates that patents, designs, and trademarks registered in foreign countries are not automatically protected in Nepal. To enjoy protection, these rights must be separately registered with the DOI in Nepal.

Registration of Foreign Patents, Designs and Trade-Marks

To facilitate the registration of intellectual property rights already protected in other countries, Section 21C of the PDTA allows for a streamlined registration process:

  1. The DOI may register patents, designs, and trademarks already registered in foreign countries without conducting additional investigations
  2. Applicants must provide certificates of foreign registration along with their application
  3. The DOI provides registration facilities in accordance with the Paris Convention for the Protection of Industrial Property 1883, to which Nepal is a signatory

Transfer of Ownership or Approval for Use of Patent, Design, or Trade-Mark

Section 21D of the PDTA outlines the process for transferring ownership or granting permission to use registered intellectual property rights:

  1. Owners may transfer ownership or provide written approval for others to use their patents, designs, or trademarks
  2. Both parties must file a joint application with the DOI, stating the details of the transfer or permission
  3. The DOI may approve the transfer or permission after reviewing the application
  4. For ownership transfers, the DOI updates the register with the new owner’s name
  5. For use permissions, the DOI makes a note in the register and issues a certificate to the recipient

Procedure Relating to Renewal of Patents, Designs, and Trade-Marks

Section 23B of the PDTA establishes the renewal procedures for patents, designs, and trademarks:

  1. Rights holders must renew their registrations within 35 days of expiration
  2. Late renewal is possible within 6 months of expiration by paying additional fees
  3. If not renewed within this extended period, the registration is automatically cancelled
  4. Patents can be renewed twice, designs twice, and trademarks indefinitely, each time for their respective terms

Compensation for Violation

Section 25 of the PDTA empowers the DOI to order compensation in cases of intellectual property infringement:

  1. If a registered patent, design, or trademark holder suffers losses due to unauthorized use of their intellectual property
  2. The DOI can order the infringer to pay compensation to the rights holder
  3. The compensation amount is based on the actual losses incurred by the rights holder

Conclusion

The Patent, Design and Trademark Act, 1965 establishes a comprehensive framework for protecting intellectual property rights in Nepal. It provides clear procedures for registration, defines the scope and duration of protection, and outlines mechanisms for enforcement and dispute resolution. While the Act has been amended over the years to keep pace with developments in intellectual property law and practice, it continues to serve as the foundation for IP protection in Nepal.

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Disclaimer: This material is presented solely for informational purposes, without constituting legal advice, counsel, or solicitation, and no liability shall arise from any actions, omissions, or reliance on its contents, directly or indirectly, in any manner whatsoever, irrespective of the jurisdiction or specific circumstances.