Patent, Design, and
Trade-Mark Act, 1965
Published date:
2022/5/14
Amendments:
1.
Patent Design &
Trademark (First Amendment) Act, 2044 BS- Dated
2044/7/1
2. Judicial Administration
Act, 2048 BS- Dated 2048/2/16
3. Act For the Amendments of
Some Nepalese Acts related to Export
Import and Intellectual Property - dated 2063/8/8
Preamble:
Whereas it is
necessary to make timely legal arrangements in respect to patents,
designs and trade-marks for the convenience and economic benefit of the
general Public,
Now therefore,
His Majesty King Mahendra Bir
Bikram Shah Dev has enacted this law on the
advice and with the approval of the National Panchayat.
Chapter 1
Preliminary
1.
Short Title Extent and Commencement
(1) This Act called the patent, Design and Trade Mark Act,
1965,
(2) It shall be applicable throughout the
(3) It shall come into force at once.
2.
Definitions
In this law, unless otherwise meant with reference to
the subject or context:
(a) patent
means any useful invention relating to a new method or process of manufacture,
operation or publicity of any material or a
combination of materials, or that made on the basis
of a new theory or formula.
(b) Design
means the form or shape of any material manufactured in any
manner.
(c)Trade-mark
means words, symbols, or pictures or a combination thereof
to be used by any firm, company or
individual in its products or services to distinguish them the
produces or services or others.
(d)
Department means the department prescribed by His Majesty's
Government by notification in the Nepal Gazette, and the Department of
Industry unless so prescribed.
(e)
Schedules mean the schedule to this Act.
(f)
Prescribed or as prescribed means prescribed or in the manner prescribed in the rules framed or
orders issued under this Act.
Chapter 2
Patents
3
ACQUISITIONS OF PATENT RIGHTS
(1) Any
person desirous of obtaining right over any patent shall have such
patents registered in his name under this Act.
(2) The patent registered in the name of any person under
this Act shall not be copied by any other person or
operated or used in his name without
assigned in his name as per Section 21(d)
or without the written permission of the patentee.
(3) Repealed
4
APPLICATIONS FOR ACQUIRING RIGHT OVER PATENT
(1) A
person desirous of having any patent registered in his
name shall submit to the Department an application according to the
specimen form specified in Schedules 1(a), containing the particulars
mentioned below, along with all available evidence in his possession:-
(a) Name, address
and occupation of the person inventing the patent.
(b) If the
applicant himself is not the inventors, how and in what manner he acquired
title thereto from the inventor.
(c)
Process of manufacturing, operating or using the patent.
(d) The
theory or formula if any on which the patent is based.
(2) Along
with the application mentioned in Sub-Section (1),
e applicant shall also submit mans and drawings along
with particulars, of the patent, as well as the fee specified in
Schedule 3.
5. EXMINATION BY DEPARTMENT
(1) On
receipt of application submitted under Section 4,the
Department shall, on the advice also of experts if so considered
necessary, conduct examination or studies to ascertain
whether the patent investigations in the application is a new
invention or not, and whether it is useful to the
general public or not, and thereafter decide whether or
not to register such patent.
(2) In
case the Department feels that any patent should not be registered in the
circumstances mentioned in Section 6, it shall give a notice to
the applicant to the effect that the patent cannot be
registered according to his application.
(3) (Repealed on October 18, 1987).
6
CIRCUMSTANCES IN WHICH PATENTS CANNOT BE REGISTERED
(1) 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 himself is not the inventor of
the patent sought to be registered by him, nor has he 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 (the registration of the
patent) will constitute a contravention of existing
Provided that
noting contained in Clause (a) shall be deemed to have prejudiced the
transfer of the registration of any patent under the provisions of Section 9.
(2) In the circumstances mentioned in Sub-Section (1), the
department may cancel the registration of any patent which had
been registered.
Provided that:-
The
department shall, before canceling the registration of
any patent, provided opportunity the patentee to show
cause, if any, why the registration of this patent should not be cancelled.
7
REGISTRATION OF PATENT
(1) On receipt of applications filed under Section 4
for registration of any patents, the department
shall, after completing necessary
investigations under Section 5 issue a registration certificate
according to the Scotchman form indicated in Schedule 2 (a) to the
applicant, except in the circumstances mentioned in
Section 6.
(2) For obtaining the certificate mentioned in Sub-Section (1),
the applicant shall pay the registration fees
specified in schedule 3 (1) (b) to the department.
7A. Registered
patents to be published.
(1) Patents registered under this act, other than
those which must be kept secret in the national
interest, shall be published by the department
in the Nepal Gazette for the information of the public.
(2) In case anybody desires to see or copy the particulars, maps,
or drawings of a patent published under Sub-Section
(1), he may be allowed to do so after paying the fees prescribed
by the department.
(3) In case anyone has any objection to such a patent, he may
file a complaint with the department within
a period of 35 days from the date of seeing or copying the
patent under Sub-Section 92).
(4) In case any complaint is
received under Sub-Section (3), the department shall take
necessary action after conducting inquiries.
8 TERM OF
PATENT
(1)
The title of the patentee to the patent shall be valid
for a period of
seven years from the date of prostration thereof under
Section 7, except when it is renewed under Section 23 B.
(2)
Notwithstanding, anything contained in Sub-Section 91),in the
case of patents registered
before the commencement of this Section, the term fixed
according to the provision in force at the time of registration
thereof shall be valid, and after the expiry of that term,
the patent must be renewed under Section 23B.
9. REPEALED
10 SUBMISSION
OF DESIGN OR MODEL OF PATENT TO GOVERNMENT ARCHIVES
The
patentee shall submit to the National Archive also a copy
of the design or model of the article manufactured
according to the patent registered under this Act.
11
PUNISHMENTS FOR VIOLATION OF SECTION 3 (latest Amendment)
In case any
person does the following offences should punished as follows as per the
amount of offences and confiscation of all articles and goods connected with
such offences on the order of Department:
a)
If
Commits Offences contravention to Subsection (2) of Section 3 should fine up to
Five Lakhs Nepalese Rupees.
b)
If
attempts to commits or abets the commitment of any act contravention to
Subsection (2) of Section 3 should fine half of (a).
Chapter 3
Designs
12
ACQUISITION OF TITLE TO DESIGN
(1)
Any person may acquire under this act title to
the design of any article manufactured or caused
to be manufactured by him after getting it registered under
Section 14.
(2) The
design registered in the name of any person under this Act
shall not be copied by any other person or operated
or used in his name without assigned in his
name as per Section 21(d) or without the
written permission of the registrant.
13
APPLICATIONS FOR REGISTRATION OF DESIGN
(1)
Any person desirous of having the design of any article manufactured
or caused to be manufactured by him
registered under Section 14 shall
submit to the Department an application according
to the specimen form indicated in Schedule 1 (b),
together with four copies of such design and
maps, and drawings and particulars thereof.
(2)
The person submitting an application under
Sub-Section (1) shall pay, along
with the application, the application fee specified in Schedule
3 (2) (a), to the department.
14
REGISTRATION OF DESIGN
(1)
On receipt of the application filed by any person under Section 13, the
department shall register the design in the name of the applicant
and then issue to him a certificate as mentioned in
Schedule 2(b).
Provided that in
case such design hurts the prestige of any individual or institution or
adversely affects the public conduct or morality, or undermines the
national interest, or in case such design has
already been registered in the name of any other
person, it shall not be registered under this-Section.
(2)
For obtaining the certificate mentioned in Sub-Section (1),
the applicant shall pay a design registration fee as prescribed in
Schedule 3 (2) (b), to the department.
(3)
In case the department is satisfied that there exists any
circumstance as mentioned in the restrictive clause of
Sub-Section (1), it may cancel the registration of any design.
Provided that:-
The
department shall, before canceling the registration of such
design, provide reasonable opportunity to the design- holded to show cancel if any, why the
registration of his design should not be cancelled.
14A. Term of
Design
The title
of the person in whose name a design has been
registered under Section 14 shall remain valid for a period of five
years from the date of registration thereof, except when it is renewed under
Section 23B.
15 PUNISHMENTS
FOR CONTRAVENTION OF SECTION 12
In case any
person contravenes the provisions or Sub-Section (2) of Section 12,
or operates a design the registration of which has been
canceled by the department, he may be
punished with a fine not exceeding Rs 50000,
as well as confiscation of all articles and goods
connected with such offense, on the order of the Department.
Chapter 4
Trade-Marks
16.
ACQUSITTING OF TITLE TO TRADE MARKS
(1)
Any person acquire, under this act, title to the trade-mark
of his business, after having it registered in the department under
Section 18.
(2) The
trademark registered in the name of any person under this Act
shall not be copied by any other person or operated
or used in his name without assigned in his
name as per Section 21(d) or without the
written permission of the registrant.
17
APPLICATIONS FOR REGISTRATION OF TRADEMARK
(1)
Any person wishing to have the
trademark of his business registered under
Section 18 shall submit to the department an application according
to the specimen form indicated in Schedule 1(c), along with
four of such trade-mark.
(2)
The person submitting applications under Sub-Section (1),
shall pay an application as specified in Schedule 3(3) (a) to the
department.
18
REGISTRATION OF TRADEMARK
(1)
In case any person files an application under Section 17 for registration
of trademark, the department shall register such trademark in the
name of the applicant the specimen form indicated in Schedule 2 (c),
Provided
that in case it is Test that such trade-mark may hurt the
prestige of any individual or institution or adversely affect the
public conduct or morality or undermine the national interest or
the reputation of the trade-mark of any other person,
or in case such trade-mark found to have already been registered in the
name of another person, it shall not be registered
(2) For obtain a certificate as mentioned in
Sub-Section (1), the applicant shall pay registration
fees as specified in Schedule 3 (3) (b) to the department
(3) The department may cancel the
registration of any trade-mark, if it
is satisfied that any of the circumstance
indicated in the restrictive clause of
Sub-Section (1) exist.
Provided that
the department shall, before canceling the registration
of any trademark in this name, provide a reasonable opportunity to
the holder of the trademark to show cause if any, why his trademark
should not be cancelled.
18A. Classification
of Goods and Services for the Person of
Trade-Mark Registration
(1)
For the purpose of registering trade-marks related to any goods or
services, Government may classify such goods or services by
notification in the Nepal Rajapatra.
(2)
Separate applications must be submitted to register trade-marks
of goods or services placed in different categories.
(3)
The trade-mark registered for goods or services in one category/under
Sub-Section (1) may be registered for goods or services under
another category.
18B.
Prohibition to Use Trade-marks
No trade-mark may
be used be used as a registered trade-mark without
registering it at the department.
18C. Time
Limit for Use of Trade-marks
In case a
trade-mark registered at the Department is not brought into
use within one year from the date of
registration thereof, the Department shall conduct necessary inquiries and may cancel
such registration.
18D. Term of
Trade-Marks
The title
of the person in whose name a trade-mark has been registered under
Section 18 shall remain valid for a period of seven years from the
date of registration thereof, except when it is renewed under Section 238.
19
PUNISHMENTS FOR ILLEGAL USE OF TRADE-MARKS
In case any one
violates Sub-Section (2) of Section 16,or brings into use a
trade-mark which his been cancelled under Sub-Section (3)
of Section 18, or violates Section 18B, no may be
punished with a fine not exceeding is 1,00,000,as well as
confection of all articles and goods connected with such offense,
on the orders of the Department.
Chapter 5
Miscellaneous
20
RIGHT TO APPOINT AGENT
Any
person may appoint an agent or legal practitioner for the purpose of taking any
Action
which he is required to take under this Act, and all actions taken by such
Agent
or legal practitioner shall be deemed to have been taken by him personally.
21
(Repealed on
21A.
Publication of Registered Designs and Trade-Marks
(1)
The Department shall publish the designs registered under Section 14 and
the
trade-marks registered under Section 18, as well as particulars of their
renewal
or
cancellation, for information of the public.
2)
Any one who has any objection to the particulars published under Sub-
Section
(1) may file a complaint to the department within a period of 35 days from
the
date of publication of such particulars. The department shall take necessary
actions
after holding inquiries into such complaints.
21B.
Title not to be valid unless registered in
The
title to any patent, design or trade-mark registered in a foreign country
shall
not be valid in
21C.
Registration of Foreign patents, Designs and Trade-Marks
The
Department may register patents, designs and trade- marks registered in foreign
Countries
without conducting any enquiries if an application is filed for their
Registration
along with certificates of their registration in foreign countries and the
Department provide the privilege of priority date of
21D.
Provisions Related to Transfer of Rights or License to Use of Patent, design
& Trademarks:
1) Any patent, design & trademark registered in own name can be
transfer to any others name or make a license of use in a written form.
2)
As per the sub section (1) if some one interested transfer or make a license of
use of trademark, patent and design to other party and other party also
interested to do so then both parties must submit a joint application to the Department
clearly mentioned the matter, along with the prescribed fees.
(3)
In case an application is received under Sub-Section (2), the Department may
grant approval to transfer or make a license of use of such patent design &
trademark.
4)
As per the subsection (3), if the Department grants the approval to transfer it
is required to assign such patent, design and trademarks in the name of
transferee.
5)
As per the subsection (3), if the Department grants the approval to make a
license of use, it is required to endorse the details in the register book and
in the certificate and the receipt of the same give to the licensee.
22
DEPARTMENT MAINTAIN REGISTER
The
department shall maintain separate registers of patents, designs and
trade-marks,
indicating therein registration or cancellation thereof effected
under
this Act.
23
-Amended
23A.
Amended
23B.
Procedure Relating to Renewal of Patents, Designs and Trade-
Marks
(1)
A patent, design or trade-mark holder must renew his patent, design or
trademark
Within
a period of 35 days from the date of expiry of the turn for which he is
Entitled
to use the patent, design or trade-mark under Section 8, Section 14A or
Section
18D by submitting an application in the form mentioned in Schedule 2 (d),
2(e)
and 2(f) respectively and paying the fee motioned in Schedule 3.
(2)
A patent, design or trade-mark may be renewed by paying a fine of Rs
1000
within six months after the expiry of the time-limit for renewal according to
Sub-
Section (1).
(3)
Notwithstanding anything contained in Sub-Section (1) and (2), a patent may be
renewed not more than two terms for a period of seven years at a time, a design
not more than two terms for a period of five years at a time, and a trademark any
number of terms for a period of seven years at a time.
24
COPY OF CERTIFICATE
In
case the certificate of registration of any patent, design or trade-mark is
lost, a copy thereof may be obtained from the department on payment of a
prescribed fee.
25
COMPENSATION
In
case any person, whose patent, design or trademark is registered under this
act, actually suffers any losses as a result of any other person contravening
the provisions of this act in respect to such patent, design or trade-mark, the
department may have the appropriate amount of such losses recovered from such
offender in the form of compensation.
26
REGISTRATIONS UNDER THIS ACT
The
patents, designs and trade-marks registered prior to the commencement of this Act
under the patent, design and trademarks law enacted in 1936 shall be deemed to
have been registered under this Act, with effect from the date of its commencement.
26A.
Power to have Alterations in Rates of Fees
Nepal
Government may make alterations in the amount of fees prescribed in Schedule 3
by notification in the Nepal Gazette.
27
APPEALS
Any
person who is not satisfied with the order issued by the Department under this
Act
may file an appeal with the Appellate Court within 35 days.
28
REPEAL
The
patent, design and trademark law of 1936 has been repealed.