Patent, Design and Trademark Act of Nepal, 1965 : Highlights

The Patent, Design, and Trademark Act, of 1965 (“PDTA”) is one of the principal law governing the Intellectual Property in Nepal. PDTA has incorporated the provision related to Patent, Design and Trademark however, provisions regarding Integrated Circuits, Geographical Indications, and Trade Secret etc. are not covered under the PDTA.

The Department of Industry (“DOI”) is the governing authority where Patents, Designs and Trademarks are registered in Nepal. DOI plays a significant role in protecting and preserving the rights regarding the Intellectual Property.

Section 2(a) of PDTA defines Patent as a useful invention related to a new method, process, material, or combination of materials.

3.1 Registration Process of Patent

If someone wants a patent to be registered in their name, they must submit an application to the Department, which must include:

a)    The name, residence, and employment of the person who created the patent;

b)    How and by what means does the applicant obtain rights therein from the;

c)    Inventor if they are not the inventors themselves;

d)    The method of using, producing, or operating the patent;

The Department shall conduct all investigations or studies to ascertain whether the patent mentioned in the application is a new invention or not, and whether it is useful to the general public or not.

Note: The applicant is required to submit the application including a map, and drawings that detail the patent.

3.2 Timeline ror Registration

It usually takes 1 to 2 years to issue the registration certificate after submitting the application and associated fees to the Department of Industry.

3.3  Term of Protection Period

The Patent right, once registered, lasts for 7 years and can be renewed twice every seven years allowing a maximum duration of protection for 21 years.

3.4 Non-Patentable Cicurmstances

Under following circumstances, a patent cannot be registered-

A design under Section 2(b) of PDTA is defined as the form or shape of any manufactured material.

4.1 Registration Process of Design

A person who wants to register the design of any article manufactured or caused to be manufactured shall submit an application to the DOI, together with four copies of such design and maps, and drawings and particulars thereof should be submitted.

In case a design hurts the prestige of any individual or institution or adversely affects the public conduct or morality, or undermines national interest, or in case such design has already been registered in the name of any other person, it shall not be registered.

4.2 Timeline for Registration

It usually takes 8 to 10 months to issue the registration certificate after submitting the application and associated fees to the DOI.

4.3 Term of Protection Period

Protection time period shall be 5 years and can be renewed for a maximum of two times every five years allowing a maximum duration of 15 years.

Section 2(c) of the PTDA Act defines trademark as, ‘word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.’

5.1 Registration Process

The registration process of trademark in Nepal is given below:

5.2. Timeline for Registration

Trademark registration usually takes 8 to 10 months if no opposition petition is filed.

5.3. Term of Protection Period

A trademark once registered is valid for 7 years, from the date of registration. Trademarks can be renewed for any number of times for 7 years at a time. Trademarks should be renewed within 35 days from the date of expiry of the validity of the trademark. The PDTA also provides the right to the trademark holder to renew the trademark by making payment of a penalty of NPR 1,000 within 6 months from the expiry of the validity period.

6.1. National Reistration

The title to any patent, design or trade-mark registered in a foreign country shall not be valid in Nepal unless it is registered in Nepal by the concerned person or entity.  

The DOI 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 its registration in a foreign country.

6.2. Priority Claim persuant to the Paris Convention

The Department shall provide the facility of Registration as per the Priority Claim pursuant to the Paris Convention.

Note: When an applicant files an application for intellectual property protection in one member country of the Paris Convention, they can subsequently file an application for the same intellectual property in another member country within a specified time frame (12 months for patents and utility models; 6 months for industrial designs and trademarks) and claim the priority of the earlier filing. This means that the subsequent application will be treated as if it had been filed on the same date as the earlier application for the purposes of determining priority and assessing novelty.

Any person not satisfied with the order issued by the DOI under PDTA may file an appeal with the Appellate Court within 35 days.