Nepal Patent Law
The Patent, Design and Trade Mark Act, 2022 (1965).
First to file system (not first to invent) of patent has been adopted in Nepal, we humbly request to our associates and clients not to make the invention public before filing a patent application.
* Nepal became a party to Paris Convention with effect from June 22, 2001. Therefore, an applicant desirous of filing patent application in Nepal claiming priority from one or more than one convention countries based on same or substantially the same invention, may do so within 12 months from the date of earliest priority.
* It may be noted that Nepal is not a member of Patent Cooperation Treaty (PCT).
a. Application for registration of patent (we will draft);
b. Deed of assignment from the inventor to the applicant, Notarized, if applicable (we will draft);
c. An authentic copy of the certificate of registration from the patent office of any foreign country where the patent has been registered (a notarized English translation thereof if not in English language);
d. Notarized copy of specification and claims including the nature of invention.
e. Power of Attorney (POA) Notarized, duly signed, sealed and countersigned by two witnesses of the applicant company.
Patent Registration Procedure in Nepal:
The application is filed at the Department of Industry (DOI).
Upon receipt of application, Patent Office shall conduct formality examination. A formality examination will be made to determine whether the application fulfills the necessary procedural and formal requirements.
An invitation to correct will be made where necessary documents are missing.
Upon completion of formality examination, Patent Office shall conduct substantive examination. Substantive examination will be carried out by the examiners, who will decide whether or not the claimed invention should be patented. It will be thoroughly checked whether:
* The claimed invention is patentable subject matter or not.
* The claimed invention is novel, an invention is new if it is not anticipated by the prior art.
* It can be applied for practical purposes for its utility or the industrial applicability.
* The existence of inventive step or not, there must be a clearly identifiable difference between the state of the art and claimed invention.
* The invention is sufficiently disclosed in the application or not. The application must disclose the invention in a manner sufficiently clear for the invention to be carried out by a person skilled in the art.
On receipt of applications filed for registration of a patent, the Department shall, after completing necessary investigations, issue a registration certificate to the applicant on payment of registration fee.
Publication of Granted Patent
The patent applications filed are published by the Department except those which are to be kept undisclosed for national interest. Any person desirous of obtaining a copy of the statement or drawing of a published application in patent journal may seek the same after payment of fee as prescribed.
Our experience indicates that it usually takes 2 to 5 years to complete patent registration process in Nepal.
It is possible to claiming priority under Paris Convention
The term of patent in Nepal is for seven (7) years from the date of registration.
* The patent can be renew for 7 years and can be renew in two times only. Registrant of patent shall enjoy his/her exclusive right over patent is 21 years, then after such patent falls under public domain. There is 35 days from the date of expiry as grace period for renewal
Grace period for Renewal
Within Six months after the expiry of the time-limit for renewal.
Patent Opposition in Nepal
* A pre-grant opposition may be filed by any person with the Department within 45 days from the date on which the published application is seen or a copy of such patent document is taken.
* Upon receipt of the complaint the Department takes necessary steps through investigation ascertaining whether the opposition is valid or not.
Patent Revocation in Nepal
The Department may cancel the registration of any patent which had been registered if the patent falls under the categories of un-patentable inventions. The Department shall, before cancelling the registration of any patent, provide reasonable opportunity to the patentee to show the cause, if any, why the registration of this patent should not be cancelled.
Inventions Not Patentable In Nepal
A patent sought to be registered may not be patentable in the following circumstances:
* If it has already been registered in the name of any other person or
* In case the applicant him/herself is not the inventor nor has acquired rights over it from the original inventor, or
* If the patent sought to be registered is found to cause adverse effect in health, conduct or morale of people in general or is not in the national interest.
Trademark Law in Nepal
The law relating to trademarks of Nepal is governed by the Patent, Design and Trademark Act 1965.
Trademark protection is obtained by registration. Nepal follows the first-to-file principle and non-registered Trademarks are not protected by law. Even famous/well-known Trademark need to be registered for protection.
Nice classification, 11th edition. A separate application has to be filed for each class. However, for foreign trademarks, a certified copy of the foreign registration certificate is required for registration in Nepal. Hence, foreign marks are registered in Nepal as per foreign registration certificate provided by the mark owner.
Power of Attorney duly signed and sealed and signed by two witness.
Trademark Registration Procedure in Nepal
* The application is filed at the Department of Industry.
* The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
* The first office action is taken after approx. 1 month.
* After examination, the trademark application is published in the official Industrial Property Bulletin for opposition claims.
* The Registry publishes marks every 2 or 3 months.
National Opposition Period
The opposition period is 90 days from the date of publication in the official bulletin.
The processing time from first filing to registration is approx. from 9 to 16 months in a smooth process.
A trademark registration is valid for 7 years from the date of registration. The registration is renewable for periods of 7 years each.
Cancellation of Trademark in Nepal
A mark is vulnerable to a cancellation action by the Department of Industries suo moto or by a third party if it is not used within a period of one year from the date of registration.
Remarks about opposition
* A trademark application can be opposed in Nepal under Section 18 of the Act.
* Once an opposition is filed against a trademark in Nepal, a copy of notice of opposition so filed is served to the applicant by the Trademark Registry and the applicant is then required to file a counterstatement within 21 days of receipt of the notice forwarded by the Registry, failing which the application shall be treated as abandoned.
* Thereafter the Registrar will request evidence in writing from both parties. If the dispute is not settled by the parties, then hearing is fixed in the matter.