Patent Law

According to the World Intellectual Property Organization (“WIPO”), a patent is an exclusive right granted to an invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem. In simpler words, patents provide protection and incentives to the marketable inventions.

Patent law is the collection of laws and rules that protect the patentable inventions, thus implying not every invention is patentable. For an invention to be granted patent rights, the invention must meet the following requirements:

  1. it should involve a process or the method;
  2. it must show an element of novelty;
  3. it must involve an inventive or non-obvious step;
  4. it must be capable of industrial application.

Patent law in Nepal

The Patent, Design and Trademark Act, 2022 B.S. (hereinafter referred as the “PDT Act”) is the governing law for the registration and protection of patents in Nepal. Since Nepal is also a signatory to the Paris Convention for the Protection of Industrial Property, 1883, patents registered in Nepal are provided with international protection.

The PDT Act requires that, to acquire patent protection, the invention must be registered at the Department of Industry (“DOI”)_. And for the registration, the person should apply to the DOI disclosing the process, formula and everything that was required in making the final product in itself. Upon receiving an application, the DOI conducts all the required investigation as to whether the invention is novel or not, and whether it is useful to the general public or not, and thereafter decides whether or not to register such patent.

Click here to find out the detailed procedures of registration, fees, international registration, importance of patent registration. The local and foreign patents registered in Nepal so far can be accessed at click here. Though the act, since its inception, envisions to provide a rule for the convenience and economic benefit to the general public, the provisions in the act seems to be inadequate to address the changing need of patent protection in this globalized era.

Assessment of the Legal Provisions

  1. First to file system

The PDT Act provides that the person desirous of obtaining patent rights shall file an application, and upon completing necessary investigation, the DOI shall issue a registration certificate. However, the PDT Act doesn’t deal with what if the same patents are applied for registration and protection at the same time though the general principle of intellectual property rests upon first to file facility. Since the international law i.e. Paris Convention for the Protection of Industrial Property, 1883 provides for the first to file system on the basis of priority date, the PDT Actmust domesticize provisions relating to the first to file system to avoid future disputes and provide precision in the law .

2. Protection to amendment and addition in patent

Both new creations and the further development of existing ones may be protected by patents. The PDTAct merely deals with registration, terms of protection, grounds for non-registration. It is not clear as to how a person is entitled to protection to the amendments/ changes or modifications he/she makes to the patent. So, the PDT Actmust be amended in such a way that it addresses the grant of protection to improvement or modification on the main invention subject to necessary investigations.

3. Revocation of Patent

The inventor is entitled to surrender his/her right over the invention if he/she wishes so. The existing act doesn’t acknowledge this right of the inventor. If this right isn’t provided in the law itself, the authority may have a disability to take any further actions for revocation processes. The grounds for revocation could be:

  1. It turns out to be against the public interest in course of time.
  2. The owner becomes unable to give continuity to the invention and doesn’t want to license or assign it to others.
  3. Revocation as per government direction.
  4. Revocation according to court orders.

    Compulsory licensing

Compulsory licensing is the process of transfer of ownership over the invention to the government or any prescribed authority wherein it allows someone else to produce a patented product or process without the consent of the patent owner or plans to use the patent-protected invention itself. This is especially applicable in life saving drugs or pharmaceuticals. Though compulsory licensing is an important concept in patent protection, the PDT Act doesn’t provide anything about it. The PDT Act should be amended including the rights and duties of the patent owner and the government over the invention and give validity to compulsory licensing.

Patent Protection in IP Policy, 2073

IP policy 2073 has addressed some of the major concerns relating to patent protection. Chapter 8 of the policy, in an attempt to encourage the protection, promotion and development of intellectual property rights, prescribes following policies concerning patent protection.

a. Legal provision shall be made to grant a limited period of monopoly in respect of the commercial use of an intangible asset contained in an innovative, inventive, behaviorally useful creation or object as a patent. Legal arrangements shall be made to provide registration and monopoly of useful specimens. But arrangements shall also be made for the state to take control of patent rights for the public interest during periods of national security or disease epidemic or similar national crisis.” {Policy, 8.2 (7)}. This provision seems to have acknowledged the concept of Compulsory Licensing.

b. Similarly, the policy provides that Scientists and inventors of the country, industrial establishments, bodies or institutions involved in research work, universities and private research institutes will be encouraged to register patents for inventions. {Policy, 8.2 (8)}

Ample of research and reports shows that there are a very limited number of patents registered in Nepal. According to WIPO, only 64 Patent applications were made during the time span of 2012-2018 B.S which implies that technological innovation and inventions are not moving in full throttle in Nepal. The reason behind it can be the resource and finance constraints and lack of investment on research and development on potential patent protection in Nepal.

So how can we motivate individuals for more inventions and patent protection?

  1. Incentives to the invention is a proven mechanism to promote inventions around the globe.
  2. A need for practical education and awareness at the individual and institutional level about benefits of patent protection is a ground reality in Nepal.
  3. Strengthening the existing Law with further rights and facility to the inventor can motivate the individual and companies to come up with numbers of inventions.
  4. The state shall increase its investment on Research and development (R&D) to bring out potential inventions in Nepal. Nepal, being rich in natural resources is an additional advantage to Nepal.
  5. Tax incentive and tax credit can be one of the mechanisms to promote inventions.
  6. Free registration of patents can be costly to the government but that is at the cost of more inventions that are going to benefit the government at the end.

New inventions are advantageous not just for the inventors but for other individuals and the government. One invention can catalyze other inventions. The government of Nepal can evade the cost of technology transfer and boom its own economy and that’s how a country progresses itself. The existing law requires amendments to address present and future issues associated with patent protections. Though IP Policy, 2073 has acknowledged few newer concepts governing patent Law, there seems to be inadequacy in Law. Government has finalized a new Industrial property Bill in adherence to International Law. It is believed to have a comparatively effective enforcement policy with strengthened rights and facilities to the inventor.

2 Responses

  1. Nepalese citizen desires to take a patent on ” Utility process of production and services” . Who can be the best lawyer to provide him best and complete services? could you pl be kind enough to send me the information of the practicing lawyer on IPR ? Thank you ?
    Regards:
    Prof. Dr. KC Nrishima

  2. Lex Advise has professional experts who is here to provide all legal and corporate services including IPR. Please find the following contact details and let us know how can we help you.
    kailash@lexadvise.com
    014169076 , 9851241139

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