In Nepal, the protection and enforcement of Patents are primarily governed by the Patent, Design, and Trademark Act, 2022 (1965). The IP Law in Nepal is comparatively new. Nepal is a signatory to the Paris Convention for the Protection of Industrial Property, 1883, and The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995. Being a member of the Paris Convention, an applicant in Nepal can file an application claiming convention priority in Nepal. The Convention Application accordingly must be filed within 12 months from the date of earliest priority. It may be noted that Nepal is not a member of the Patent Cooperation Treaty (PCT).
According to Section 2 of the Patent, Design and Trademark Act of Nepal, a “patent” means any useful invention relating to a new method of process or manufacture, operation or transmission of any or a combination of, or that made on the basis of a new theory or formula.
A person desirous of obtaining the 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 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 offense.
A patent sought to be registered may not be patentable in the following circumstances:
Patent applications in Nepal can be filed as:
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.
Nepal became a party to Paris Convention with effect from June 22, 2001. Therefore, an applicant desirous of filing a patent application in Nepal claiming priority from one or more than one convention country based on the 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 people:
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:
According to Section 6 of the Act, the Department shall not register any patent under this Act in the following circumstances:
On receipt of the application submitted by the applicant, the Department shall, on the advice of experts if so considered necessary, conduct all investigations to determine whether the patent application meets the statutory requirements or not. The Examination is conducted in two ways:
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.
Substantive Examination is carried out by the examiners to assess the patentability of the invention to ascertain whether:
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 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 a 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 the first time is NPR 5000 & the 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 canceling the registration of any patent, provide a reasonable opportunity to the patentee to show the cause, if any, why the registration of this patent should not be canceled.