NEPAL’S IP LAW: AN ENCAPSULATION

21st February, 2017 - 5:46 am Categories: Design NEPAL Patents Trademark 0 Comments

Intellectual property law in Nepal is comparatively new and it enjoys the extension provided to the least developed countries to be compliant under the TRIPS agreement. Patents, Designs and Trademarks are protected under one head, and the governing act/ legislation is known as “The Patent, Design and Trade Mark Act, 2022 (1965)” (hereinafter referred to as “Act”).

Trademarks

Section 2: Definitions: Unless the subject or the context otherwise requires in this Act:

“Trade-mark” means 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.

FILING PROCEDURE:

Step 1: Filing

• Who may apply: Section 17:
  1. Any person desirous to register the trademark of his business shall submit an application to the Department in the format specified in Schedule 1(c).
  2. Documents required-
     • Copy of registration or license of the business for product or service in which trademark is used or intend to use.
     • Four copies of model of trademark.
     • Authorizations letter if somebody has been authorized to act on behalf of the owner to register the trademark.
     • If the applicant is a foreigner, certified copy of any foreign registration certificate and address for service in Nepal must be submitted with application.
     • Receipt of payment of prescribed application fee.

• Fees: NPR 1,000.

1. Trademark Application in Nepal can be filed in a single class only. Multi-class Application cannot be filed.

2. Separate application shall be submitted for the registration of trademark in different categories of goods or services.

Step 2: Investigation

1. When an application is received by the department, it conducts necessary investigation/examination and provides an opportunity of being heard to the applicant in case of any concerns/objections.
2. Examination is done with regard to the following considerations:
   • If such trademark is deemed to adversely affect the dignity of any individual or institution;
   • If such trademark has a negative effect on the morale of people in general or on the national interest;
   • If such trademark affects the goodwill of trademark of any other person; or
   • If such trademark has been already been registered in the name of another person.
   • If such trademark is contrary to the principles, norms and international conventions of industrial property.

Step 3: Grant/ Refusal

1. After examination if the department is satisfied, it shall register the trademark in the name of the applicant and issue him a certificate.
2. Registration fees: NPR 5000.

Step 4: Publication

1. After examination and upon registration, the trademark is published in the Industrial Property Bulletin so as to invite the public for filing opposition against the Trademark.
2. Opposition and complain – Any person may file a complaint against the statement published concerning the design and trademark to the department within prescribed period.

Step 5: Renewal and Cancellation

1. Renewal :
   • A trademark holder needs to renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
   • The prescribed form is Schedule 2(f) and the fee is NPR 500 per year.
   • When the time limit of renewal expires, renewal may be done within 6 months from the date of expiry of
   • for a period of 7 years each time after payment of renewal fee. the time limit for the same along with a fee of NPR 1000.
   • A trademark can be renewed indefinitely
2. Cancellation :
   • Section 18C:If the registered trademark is not used within 1 year from the date of registration, the department may cancel the registration after conducting necessary inquiries.
   • Section 18(3): The Department may also cancel the registration of any trade-mark, after providing trademark holder a reasonable opportunity to show cause, if it is satisfied that any of the circumstances prescribed in Section 18(1) exists.

Patents

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

FILING PROCEDURE:

Step 1: Filing

• Who may apply: Section 3 and 4:
  1. Any person desirous of having any patent registered in his name shall submit an application to the Department in the format prescribed in Schedule 1(A) containing the following particulars, along with all evidences related to the same in his possession:
     • Name, address and occupation of the inventor (person inventing the patentable subject matter)
     • If the applicant is not the inventor, how and in what manner applicant acquired title from the inventor.
     • Processof manufacturing, operation or usingsuch invention.
     • Theory or formula, if such patent is based on the same.
     • Maps, drawings and sketch of the invention (if necessary).
     • Prescribed application fee as mentioned in the schedule3(1)(a).

• Application Fees: NPR 2,000.

Step 2: Investigation

1. On receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:
   • Whether the patent claimed in the application is a new invention or not
   • Whether it is useful to the general public or not.
   • Basically, Department follow the principle of Novelty, Industrial applicability, and Inventive step to examine.
2. If it deems necessary, the Department may take the advice of experts of related field
3. The Department shall not register any patent under this Act in the following circumstances:
   • In case the patent is already registered in the name of any other person, or
   • In case the applicant him/herself is not the inventor of the patent sought to be so registered nor has acquired rights over it from the original inventor, or
   • In case the patent sought to be registered is likely to adversely affect the public health, conduct or morality or the national interest, or
   • In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.

Step 3:Grant/ Refusal

1. Section 7: Issue of registration certificate:
   • If the Department is satisfied with the findings from the investigation conducted under Section 5, it shall issue a registration certificate, as prescribed in Schedule 2(A),in the name of the applicant, after the payment of requisite registration fees (NPR 10,000) by the applicant.
2. Section 8: The term of the patent granted shall be 7 years from the date of registration.
3. Grounds of refusal/ cancellation of registration: Section 6:
   • The patent is already registered in the name of another person
   • The applicant is not the inventor of the subject matter of the patent and has not acquired rights over it from the original inventor
   • The patent sought adversely affects public health, conduct or morality, or national interest
   • The patent sought is contradictory to existing Nepalese laws.

The applicant will be provided a reasonable opportunity of being heard before the department cancels the registration of the patent.

Step 4: Publication:

1. Section 7A: All patents registered under the Act, except those that are kept secret in the national interest, shall be published in the Nepalese Gazette by the department.
2. In case of objections, the complaint may be filed within 35 days from the date of seeing or copying the Patent, and thereafter, the Department shall conduct necessary inquiries and take further action.
3. The fee for complaints and objections is NPR 1000.
4. In case anyone wants information of the registration details of the patent, he can do so by paying the prescribed fee of NPR 750.

Step 5: Term and Renewal

1. Section 23B: Renewal:
   • A patent holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same, by submitting an application as prescribed in Schedule 2(D).
   • The prescribed the fees for renewal is as follows:
     a) First time: NPR 5000
     b) Second time: NPR 7500.
   • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
   • A patent can only be renewed twice for a period of 7 years at a time.

FILING CONVENTION PATENT APPLICATIONS IN NEPAL:

Nepal being party to Paris Convention since June 2001, an applicant desirous of filing patent application in Nepal claiming priority from one or more convention countries based on same invention may file such application within 12 months from the date of filing of the first application. Pertinently, Nepal is not a member of PCT (Patent Cooperation Treaty).

Designs

Section 2:

“Design” means the form or shape of any material manufactured in any manner.

FILING PROCEDURE:

• Who may apply: Section 13:
  1. A person desirous to register the design of any article manufactured or caused to be manufactured shall submit an application in the format specified in Schedule 1 (b) to the Department.
     The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
  2. The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
• Fees: NPR 1000.

Step 2: Examination

The design shall not be registered;

• If it is deemed to adversely affect the dignity of any individual or institution or,
• If it adversely affects the public conduct and morale of the people in general or undermines the national interest, or
• If such design has already been registered in the name of any other person
• Department also looks whether the design to be registered is new and original

Step 3: Grant/ Refusal

• Section 14: On receipt of the application filed by any person under Section 13, the Department shall register the design in the applicant’s name and issue a certificate of registration in the format specified in Schedule 2(A).
• Registration fees: NPR 7000.
• The term of a registered design is five years from the date of registration.

Step 4: Publication

• Section 21A: The department shall publish the designs registered under section 14, along with their particulars of renewal or cancellation.
• Anyone who has any objection to the same need to file a complaint to the department within 35 days from the date of such publication.
• Post receiving the complaint, Department takes necessary actions after conducting inquiries.

Step 5: Renewal/ Cancellation

• Section 14:Grounds of refusal/ cancellation: Design is liable to be refused or cancelled, if the design or design registration, as the case may be:
  • hurts the prestige of any individual orinstitution; or
  • Adversely affect public conduct or morality; or
  • Undermine the national interest; or
  • Found to have already been registered in the name of another person.
• The design holder will also get an opportunity to show cause as to why his registration must not be cancelled.
• Section 23B

Renewal : A design holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same

• The prescribed form of application for renewal is Schedule 2(E) and the prescribed fees for the same is:

a. First time: NPR 1000

b. Second time: NPR 2000.

• When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with an additional fee of NPR 1000.
• A design can only be renewed twice for a period of 5 years at a time.