Patent Law in Bangladesh
Patent & Designs Act, 1911
Patent & Designs Rules, 1933
Application: An application for a patent may be made by any person alone or jointly with any other person. The application must be made in the prescribed form, and must be filed at the Patent Office in the prescribed manner. The application must contain a declaration to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application one at least of the applicants, claims to be the true and first inventor or the legal representative or assign of such inventor and for which he desires to obtain a patent, and must be accompanied by complete specification.
Specifications: A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. The specification must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed. The drawings can be supplied at any time before the acceptance of the application, but we suggest filing drawings at the time of application printed on tracing papers.
Examination: The submitted application is considered for substantive examination according to the provisions of the Act.
Advertisement on acceptance of application: On the acceptance of an application the Registrar shall give notice thereof to the applicant and shall advertise the acceptance and with the drawings (if any) shall be open to public inspection.
Opposition: Any person at any time within four months from the date of the advertisement of the acceptance of an application gives notice at the Patent Office of opposition to the grant of the patent. The opponent must state the grounds of his opposition.
Grant and sealing of Patent: If there is no opposition a patent shall be granted, subject to such conditions as the authority thinks expedient, to the applicant, or in the case of a joint application to the applicants jointly, and the Controller shall cause the Patent to be sealed with the seal of the Patent Office.
The timeframe for granting the Patent: If there is no objection by the Patent Office, it may take about 12-18 months to granting the patent. However, if any Office action is required, the patent must be granted by 21 months with 3 months grace period after submitting reply to the Office action.
In case of claiming priority the applicant must supply the certified copy of the foreign patent upon which the inventor is claiming priority. Three months late filing is possible on payment of late fees.
Filing Requirements to file a Patent Application in Bangladesh:
1. Particulars of the applicant and the inventors,
2. Certified priority documents or description of priority documents, if any
3. Specification in English, in MS Word,
4. Drawings in .pdf format,
5. A Simply signed Power of Attorney by the applicant.
6. Legalized Deed of Assignment duly endorsed by the Bangladesh Embassy. Can be filed within three (3) months or later with an application seeking extension of time.
* Requirements (5) and the certified copy of priority documents can be submitted later but no later than 60 days from filing date of the application.
The life of Patents in Bangladesh is 16 years from the date of filing or from the convention date subject to payment of renewal fees annually after the fourth year.
Convention: Bangladesh is a member of the Paris Convention and priority can be claimed within one year from first of the applications filed in any Member country. * Priority cannot be claimed from PCT application even if it designates one of these countries.
Patent & Designs Act, 1911
Patent & Designs Rules, 1933
Applicant: Any person claiming to be the proprietor of a new and original design may apply for the registration in the prescribed form.
Requirements for Filing:
* Four (4) copies of the representation of clearly showing the features of the design by different views and name of the views. The representation may contain drawings, photographs, tracing or specimens of the design the design;
* Power of Attorney (POA).
* Statement of Novelty.
Convention Application: Application based on a foreign design application is possible within six (6) months from the date the foreign application. A certified copy of the application of the member of the Paris Union country must be filed along with the application.
Duration of Registration: The Registration of an industrial design is valid five (5) years from the date of the application and renewable for two (2) further consecutive periods of five (5) years on payment of the prescribed fee.
Trademark Law in Bangladesh
Legal basis is the Trademark Act of 2009 and Trademark Rules 2015.
Trademark protection is obtained by registration.
Nice classification, 11th edition. A separate application has to be filed for each class.
Basic requirements for filing a Trade Mark Application in Bangladesh
1. Trade Mark/ Logo you wish to register.
2. Date of first use of the Trade Mark or proposed to be used.
3. Class of Goods/Services
4. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company).
5. List of Goods/Services for which registration is required.
6. Address for correspondence with name, phone number and email id.
7. Power of Attorney (POA) signed by the applicant.
The procedure of the Trade Mark registration in Bangladesh
1. Conduct Availability Search (optional).
2. Filing the Application:An application is made in the prescribed manner to the Registrar of Trade Marks in Bangladesh.
3. Acknowledgement of Application:The Registrar, on receipt of the application, issues Official Filing Receipt. The document contains all relevant filing details on the trademark (e.g. Application Number, date of application, the trademark etc.) It will take 2 to 5 days from the Trade Marks Authority.
4. Examination of the Application:The Registrar examines the trademark for distinctiveness, identical or similarity with existing registered trademarks and general compliance with the requirements of the Law. If the Registrar is satisfied, he issues a Letter of Acceptance for the mark to be advertised in the Trade Marks Journal for opposition purposes. Otherwise, the Registry raised objection seeking written reply regarding objections. If the Examiner is satisfied as show cause reply to the Registrar accepts the mark for advertisement in the Trade Marks Journal.
5. Refusal of Application:Where an application is refused, the Applicant through its local agent must submit reply to the show cause notice and may seek a hearing in the matter within three (3) months otherwise, the application will be abandoned.
6. Journal Publication:The Registrar will publish the trademark in the Trademark Journal with pertinent information on payment of the publication fees in response to the acceptance letter. If publication fee is not paid within 1 (one) month from issuance of acceptance letter, the application will deem to have been abandoned by giving a final notice of 21 days before abandon.
7. Opposition Proceedings:When a trademark is advertised, any person may within 60 days from the date of the publication give notice of Opposition to the Registrar.
* The Registrar shall send a copy of the Notice of Opposition to the Applicant and the Applicant shall within Two month of receipt of the Notice of Opposition, file a Counter-Statement of the grounds for which it relies for its application to be registered. Failure to file the Counter-Statement within the prescribed period will result in the application being deemed abandoned. The applicant may seek extension of time for filing Counter-Statement along with Govt. fees.
* Where a Counter-Statement is filed, the Registrar shall furnish a copy thereof to the Opponent. The parties are required to file evidence by way of Affidavit and the Registrar shall, after hearing the parties, decide on whether the application should be registered or not. The Registrar’s decision shall be subject to appeal to the High Court.
8. Registration:Where no opposition is received at the expiration of the opposition period or the opposition is determined and resolved in favour of the Applicant, the Registrar is obliged to issue a Certificate of Registration for the trademark on payment of the registration fees. The registration date of the trademark will be the date of filing.
National Opposition Period
The opposition period is 2 months from the date of the advertisement of an application for registration.
Trademark Registration process takes around 15-24 months to obtain registration without any objections from the Trade Mark Registry or oppositions from any other party.
A registered trademark is valid for an initial period of seven (7) years from the date of filing and renewable thereafter for successive periods of Ten (10) years.
Remarks about the Trademark Registration Procedure in Bangladesh
The application is filed at the Trademarks Office.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Before registration every trademark application accepted by the Registrar will be published in the “Trademarks Journal”.
Application for renewal of a trademark may be made to the Registrar in the prescribed manner, not more than two (2) months before the expiration of the last renewal. Renewal is for Ten (10) years. A Certificate of Renewal is issued by the Registrar as evidence of payment of the renewal fee due at that period.
Foreign Priority/Convention Applications
The Law makes provision for an Applicant to claim priority of a foreign trademark within 6 (six) months from the date of application to the member country of Paris Convention or WTO in Bangladesh.
Service Marks can be registered in Bangladesh. Applicants can now apply for registration of service marks in Bangladesh in International Classes 35 to 45. The International Nice Classification of Services is applicable for this purpose.