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.
A patent sought to be registered may not be patentable in the following circumstances:
- If it has already been registered in the name of other.
- If the patent asked to be registered is not invented by the applicant himself and he has not acquired the right from the inventor.
- If the patent asked to be registered is found to cause adverse effect in health , conduct or morale or people in general or in the national interest.
- If it violates any prevailing laws of Nepal.
Patent applications in Nepal can be filed as:
a) Ordinary Application
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
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 may do so within 12 months from the date of earliest priority.
In accordance with sections 3 and 4 of the Patent, Design & Trademark Act, an application can be made by any of the following person:
- Name, address and profession of inventor;
- In case the invention is not invented by the applicant himself, the conditions for acquiring; such right from inventor the 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.
According to Section 5 of the Act, on receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:
(a) Whether the patent claimed in the application is a new invention or not
(b) Whether it is useful to the general public or not.
According to Section 6 of the Act, the Department shall not register any patent under this Act in the following circumstances:
(a) In case the patent is already registered in the name of any other person, or
(b) 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
(c) In case the patent sought to be registered is likely to adversely effect the public health, conduct or morality or the national interest, or
(d) In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.
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
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
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 possesses inventive step. The invention possesses an inventive step if there is a clearly identifiable difference between state of the art and the claimed invention.
- 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.
In case the Department concludes that the claimed invention should not be registered in the circumstances that 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.
Section 7A of the Act states that 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.
Anybody willing to see or take a copy of the statement, drawing or sketch of a patent published in journal may see or take a copy of such patent document on payment of a fee as prescribed.
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. The fee for complaints and objections is NPR 1000.
In case anyone wants to see or copy the particulars, maps or drawings of a patent, he can do so by paying the prescribed fee of NPR 750.
Section 23 of the Act deals with renewal. Accordingly, 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. The prescribed form is Schedule 2(D) and the fee for first time is NPR 5000 & second time is 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.
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 opposition is valid or not.
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.