Patent Registration in Nepal
17 December 2021
1. LEGAL FRAMEWORK
The law governing Patent Registration in Nepal is the Patent, Design and Trademark Act 2022 (1965) (“PDTA”). The Department of Industry (“DOI”) under the Ministry of Industry, Commerce and Supplies registers and administers patent in Nepal.
Furthermore, Nepal has ratified the Paris Convention for the Protection of the Industrial Properties 1886 (“the Paris Convention”) which makes it possible to file a patent application claiming convention priority in Nepal with a certified copy of the convention application.
This article outlines the current patent law framework in Nepal.
2. REQUIREMENTS FOR FILING PATENT APPLICATION
Section 2(a) of the PDTA defines Patent as, “any useful invention relating to a new method of process or manufacture, operation or transmission of any material or combination of materials, or that made on the basis of a new theory or formula.” Any person willing to obtain right over patent has to submit an application at the DOI. Such person can be either an inventor or anyone who desires to use the patent rights in the name of inventors by transferring ownership.
Section 4 of the PDTA requires an applicant to submit following particulars along with the application:
a) Name, address and occupation of the person inventing the patent;
b) If the applicant is not the investors, how and in what manner he/she acquired title from the inventor;
c) Process of manufacturing, operating or using the patent;
d) Theory or formula on which the patent is based; and
e) Map and drawings along with particulars of the patent.
3. DOCUMENTS TO BE SUBMITTED FOR REGISTRATION
The following documents need to be submitted at the DOI for patent registration:
a) Application form;
b) Power of attorney;
c) Notarized copy of complete specification including claims;
d) Notarized/certified copy of filing receipt or application in English language in case of Priority Claim; and
e) Notarized/certified copy of home registration certificate of patent in English Language.
4. NON-PATENTABLE INVENTIONS
The DOI under Section 6 of the PDTA can reject the patent registration application on any of the following grounds:
a) If the patent is already registered in the name of any other person;
b) If the applicant is neither the inventor and nor has acquired rights over the patent from the original inventor;
c) If the patent is likely to cause adverse effect on the public health, conduct or morality or the national interest; and
d) If the registration of patent contradicts with the prevailing laws of Nepal.
However, DOI has to provide the patentee reasonable opportunity to showcase that the patent should be registered, before rejecting the registration application of any patent.
5. PATENT INVESTIGATION
Upon submission of the patent application, the DOI conducts investigation to ascertain:
- Whether the patent invention is new or not;
- Whether it is in the interest of general public; and
- Whether it follows the principle of novelty, industrial applicability and inventive step under Nepal’s patent law.
Based on the aforementioned requirements, the DOI decides whether or not to register such patent. Upon its decision to register the patent application, the DOI issues a registration certificate for which registration fees must first be obtained from the applicant.
6. PUBLICATION OF REGISTERED PATENT
The DOI publishes all the registered patents in Nepal Gazette, except for those which are mandated be kept secret for national interest. Upon publication, anyone can receive or see the copy of such publication after paying fees to the DOI.
Pursuant to Section 21(A) of the PDTA, in case of objection to the particulars published, one may file a complaint within 35 (thirty five) days from the date of receiving such copy of patent to which the DOI is required to take necessary actions after conducting reasonable inquiries.
7. VALIDITY OF PATENT
Pursuant to Section 8, a registered patent remains valid for a period of 7 (seven) years from the date of registration. Upon expiry, the expired patent can be renewed within 35 (thirty five) days of expiration. Patent cannot be renewed more than twice for seven years at a time.
8. GOVERNMENT FEE
Disclaimer: This article is for informational purposes only and shall not be construed as legal advice, advertisement, personal communication, solicitation or inducement of any sort from the firm or any of its members. The firm shall not be liable for consequences arising out of any action undertaken by any person relying on the information provided herein.
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