Nepal

INTELLECTUAL PROPERTY PRACTICE IN NEPAL

 

PATENTS IN NEPAL

  • What is a patent?

According to Nepal Patent Act, 1965, a patent means ‘any useful invention invented through a new method or process of the construction operation or publicity of any material or collection of materials or through any principle or formula.’

Patent Rights in Nepal

  • What are the Patent Rights granted to a Patentee in Nepal?

A person desirous of obtaining right over any patent shall register such patent in his/her name under this Act.

A patent bestows the patentee with an exclusive right to exclude any third party from copying the invention unless a written permission is sought from the patentee.

If any third party attempts to or actually copies the invention, the Department shall levy a fine on the accused and confiscate all the materials related to such offence.

Relevant Office Department of Industries
Law in Force Patent, Design and Trade Marks Act, 1965
PCT Contracting State NO
Paris Convention YES
Prosecution Process Filing

Publication

Opposition

Examination

Registration

Renewal

Registration Term 7 years from the date of registration
Renewal Term 7 years from the date of previous registration

 

 

Inventions not Patentable in Nepal

  • Which inventions cannot be protected as patents in Nepal?

A patent sought to be registered may not be patentable in the following circumstances:

If it has already been registered in the name of any other person

In case the applicant him/herself is not the inventor nor has acquired rights over it from the original inventor, or

If the patent sought to be registered is found to cause adverse effect in health, conduct or morale or people in general or in the national interest.

Patent Application

How to file a patent in Nepal?

Patent applications in Nepal can be filed as:

a) Ordinary application:

  • How to file an Ordinary Patent Applications in Nepal?

The very first patent application filed in a Patent Office without claiming priority from any patent application or without any reference to any other application under process in the office is called an Ordinary application.

b) Convention Application:

  • How to file a Convention Patent Applications in Nepal?

Nepal became a party to Paris Convention with effect from June 22, 2001. Therefore, an applicant desirous of filing patent application in Nepal claiming priority from one or more than one convention countries based on same or substantially the same invention, he may do so within 12 months from the date of earliest priority.

 Note: Nepal is not a member of Patent Cooperation Treaty (PCT).

Patent Filing

  • What are the details required for filing a patent application in Nepal?

Name, address and profession of inventor;

In case the invention is not invented by the applicant himself, the conditions acquiring; such right from inventor by the applicant;

Method of operation or utilization of the invention;

Principle or formula, if the patent is based on any principle or formula;

Drawings and sketch of invention (if necessary);

Prescribed application fee as mentioned in schedule.

  • What are the Documents required for filing a Patent Application in Nepal?

A Power of Attorney signed by the applicant sealed and attested by two witnesses.

An application form.

Notarized copy of specification and claims including the nature of invention.

Home Country Filing Receipt/Priority Claims Details in English Notarized by Notary Public in the case of priority claim.

The certified copy of home country registration certificate patent along authenticated translation in the English language by a Notary public thereof.

Patent Prosecution

What is the procedure for grant of patent in Nepal?

  • Patent Application Examination in Nepal

On receipt of application submitted by the applicant, the Department shall, on the advice of experts if so considered necessary, conduct all investigation to determine whether the patent application meets the statutory requirements or not. The Examination is conducted in two ways:

a) Formality Examination is made to determine whether the application fulfills the necessary procedural and formal requirements. The Department shall invite the applicant to correct where necessary documents are missing.

b) Substantive Examination is carried out by the examiners to assess the patentability of the invention to ascertain whether:

The claimed invention is patentable subject matter or not.

The claimed invention is novel, an invention is new if it is not anticipated by the prior art.

It can be applied for practical purposes for its utility or possesses industrial applicability.

The application must disclose the invention in a manner sufficiently clear for the invention to be carried out by a person skilled in the art.

It possesses inventive step if there is a clearly identifiable difference between state of the art and the claimed invention.

In case the Department concludes that the claimed invention should not be registered in the circumstances it does not satisfy the statutory requirements, it shall give a notice to the applicant to the effect that the patent application cannot be registered.

  • Grant of Patent in Nepal

On receipt of applications filed for registration of a patent, the Department shall, after completing necessary investigations, issue a registration certificate to the applicant on payment of registration fee.

Publication of Granted/ Registered Patent in Nepal 

The patent applications filed are published by the Department except those which are to be kept undisclosed for national interest.

Any person desirous of obtaining a copy of the statement or drawing of a published application in patent journal may seek the same after payment of fee as prescribed.

Patent Term and Renewal in Nepal

When the application for Patent is found in order of grant, the patent is granted by the Patent Office in Nepal. The term of patent in Nepal is for seven years from the date of registration. The patentee shall renew the patent within 35 days from date of expiry by paying a fine of One thousand rupees within six months after the expiry of the time-limit.

Patent Opposition

  • How to file patent opposition in Nepal?

A pre-grant opposition may be filed by any person with the Department within 45 days from the date on which the published application is seen or a copy of such patent document is taken.

Upon receipt of the complaint the Department takes necessary steps through investigation ascertaining whether the oppositions is valid or not.

Revocation of Patent

  • How can a patent be revoked or cancelled in Nepal?

The Department may cancel the registration of any patent which had been registered if the patent falls under the categories of un-patentable inventions. The Department shall, before cancelling the registration of any patent, provide reasonable opportunity to the patentee to show the cause, if any, why the registration of this patent should not be cancelled.


TRADEMARKS IN NEPAL

A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

Trademarks in Nepal may be designated by the following symbols:

™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)

℠ (for an unregistered service mark, that is, a mark used to promote or brand services)

® (for a registered trademark)

A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required.

The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.

Relevant Office Department of Industries
Law in Force Patent, Design and Trade Marks Act, 1965
Nice Classification Yes (Ninth Edition)
Paris Convention Yes
Madrid System No
Multi- Class System No
Documents required for filing a trade mark application
  • Simply executed trade mark application
  • Simply executed Power of Attorney
  • Certified Copy of Home Country Registration Certificate or certificate issued in any other country with duly authenticated English translation thereof

(The aforementioned documents can be filed at a later stage also)

Prosecution Process
  • Filing
  • Publication of mark in IP Bulletin Opposition period (three months from the publication date)
  • Registration
  • Renewal
Registration Term 7 years from the date of registration
Renewal Term 7 years from the date of previous registration
Appeal Within 35 days of the decision of hearing committee
Documents required for renewal Original registration certificate
Cancellation Proceedings A mark is vulnerable to a cancellation action by the Department of Industries suo moto or by a third party if it is not used within a period of one year from the date of registration.

Trademark Searches

A trademark search in Nepal can be for both word and device marks. It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark. Although, search is not mandatory for filing the application, it is advisable to conduct a preliminary search for the proposed trade mark before filing the application in order to avoid any objection and opposition with respect to mark later on.

Trademark searches in Nepal can be conducted for word mark, numerals, labels and device mark. Device mark searches can be conducted through Vienna code.

Trademark searches can be classified into following categories:

a) Word Search

b) Device Search

Word Search in Nepal:

Trademark word search edition of Nepal follows the nice classification and trade mark can be filed for goods in class 1-34 and services in class 35-45. Trademark searches in Nepal can be conducted for the desired class and associated classes.

It is advisable to conduct comprehensive trademark clearance search in Nepal to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.

Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Nepal.

Device Mark Search in Nepal:

It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Nepal can be conducted amongst the marks filed and registered as per the Vienna code classification.

Trademark Application

Filing a Trademark Application in Nepal:

In Nepal Trademark applications can be filed in two categories:

Ordinary Applications

Convention Application (claiming priority from a convention country)

Ordinary Trademark Applications in Nepal:

Ordinary trademark applications filed in Nepal are applications without claiming any priority. Ordinarily a trademark in Nepal can be filed (single class application) only. It is pertinent to mention that multi class trade mark applications cannot be filed in Nepal. However, the Patent, Design and Trademarks Act, 1965 also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.

Priority Trademark Applications in Nepal / Convention Trademark Applications Nepal:

A priority trademark application should be filed in Nepal within six months after the date on which the trademark application was made in the convention country. For claiming priority in Nepal from a convention application, a certified copy of the priority documents needs to be filed with the Nepalese IP Office.

Paris Convention:

The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Nepal within six months of after the date on which the application was made in the Convention Countries. The trademark shall, if registered under the Ordinance, will be registered as of the date as which the application was made in the Convention Country and that date shall be deemed for the purpose of the Ordinance to be the date of registration.

Trademark Classes

In Nepal a trademark application can be filed in 45 classes. Classes 1 to 34 are for goods and classes 35 to 45 are for service marks.

Trademark Filing

An application for registration of the trademark is to be filed with the Trademarks Registry in the prescribed form with payment of requisite fees.

  • Requirements for Filing a Trademark Application in Nepal:

Who Can File a Trademark Application in Nepal?

Any person who claims to be the proprietor of the trademark can file an application for the registration of its mark in respect to goods/services. It should be filed at the Trademarks Registry, Kathmandu.

After filing the trademark application, the same is then examined by the Trademarks Registry, Kathmandu on the basis of its distinctiveness and similarity with prior marks.

If, following examination, the trademark application is considered allowable, acceptance order is issued, and thereafter the trademark is published in the trademarks Journal. If there are no oppositions filed within 90 days, from the date of advertisement in the Trademarks Journal, then the trademark registration certificate is issued.

Trademark registration is a long process and it takes around 12-18 months to obtain registration in case no opposition is filed by a third party.

  • Period of Trademark Registration in Nepal:

Once a trademark is registered in Nepal, it is valid for a period of seven years (7 years) from the date of registration. The trademark registration can then be renewed for a further period of seven years (7 years) from the date of expiration of registration or of the last renewal of the registration.

Trademark Prosecution

The procedure for filing a Trademark in Nepal is as follows:

  1. Filling a Trademark in Nepal – A trademark application in Nepal can be filed for a single class only. Multi class trade mark applications cannot be filed in Nepal. Application for a Trademark or a Priority Trademark Application claiming priority from a convention country can also be filed in Nepal within six months from the priority date.
  2. Notice of Refusal/ Acceptance – After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks.

The Registrar may accept or refuse the application subject to the provisions of the act. A trademark application in Nepal can be refused / objected by the Registrar.

  1. Publication / Advertisement of a Trademark in Nepal – After examination and upon acceptance of the response by the Registrar, the application is ordered for advertisement /publication in the Trademarks Journal. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark.
  2. Opposition of Published Trademark in Nepal – On publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.
  3. Registration & Renewal of a Trademark in Nepal – The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 7 years from the date of filing of the application and the registration certificate is issued. The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 7 years.

Trademark Opposition

Once a trademark is published in the TradeMarks Journal, any person can file an opposition against registration of the said trademark in Nepal by filing a notice of opposition within the prescribed period of 3 months from the date the Trademarks Journal is made available to the public.

A trademark application can be opposed in Nepal under Section 18 of the Act.

Once an opposition is filed against a trademark in Nepal, a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counterstatement within 21 days of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.

Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.

Trademark Registration

To register a trademark in Nepal, after filing the application in the prescribed form and payment of relevant fee, the mark will then be examined, published and eventually shall proceed to registration where there is no opposition against the said trademark or where the opposition against the said trademark was filed but was decided in favor of the applicant. The trademark will then be registered for a period of 7 years from the date of filing of the application in Nepal and the registration certificate is issued.

Once a trademark is registered in Nepal , then the insignia ® can be used with the mark.

The Patents, Designs and Trademarks Act, 1965 also provides that if a registered trademark is not used for a continuous period of 01 year from the date of registration, then the same becomes vulnerable to cancellation action on grounds of non-use.

Trademark Renewal

Trademark Renewal in Nepal:

The procedure for filing a renewal for a trademark in Nepal is as follows:

Request to renew a trademark in Nepal can be filed within six months BEFORE THE EXPIRY of the registration / renewal term if accompanied by the requisite renewal fees on the prescribed form.

A trademark can be renewed in Nepal from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 7 years.

Trademark Filing Fees

Details regarding the Trademark Filings fees can be accessed at the following link:

Nepal Trademark Filing Fees