A patent is a document, issued by a government authority to the applicant, which describes an invention and creates a legal situation in which the patented invention can normally only be exploited with the authorization of its owner.

Interest parties or persons may apply for trademark registrations in Nepal. According to the Patent Design and Trademark Act, A patent is granted for an invention only when novelty, inventive step, and industrial applicability are maintained.

In exchange for a patent, applicants must make their inventions public so that others can improve and build on them. A patent grants the exclusive right to make, sell, offer for sale, use, or import the patented invention.

1.Governing Authority

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.

 2.Protection of Patent  

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

I. 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.

II. Timeline for 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.

III. 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.

IV. Non-Patentable Circumstances

Under following circumstances, a patent cannot be registered-

1. If the patent has already been registered to another person.
2. If the applicant is not the original inventor of the patent or has not acquired the rights from them;
3. If the patent registration is likely to adversely affect public health, morality, behavior, or the national interest; or
4. If the patent conflicts with existing laws, its registration would breach Nepalese laws.

3.Protection of Design

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

I. 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.

II. 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.

III. 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.

4.Protection of Trademark

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.

I. Registration Process

Step 1–  Submission of registration application to the DOI. 

Step 2– Preliminary Examination (Where the DOI will examine if the trademark is similar to an existing trademark.)    

Step 3– Publication of Trademark at Intellectual Bulleting at DOI for opposition(within 90 days of publications of the trademark, interested parties can file a pre-opposition petition if the believe that the trademark would infringe upon their grounds and if they have  valid grounds for opposition.) 

Step 4– Registration of Trademark  (in case no opposition is received.)

II. Timeline for Registration

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

III. 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.

5.Registration of Foreign Patent, Design and Trademark

I. National Registration

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.

II. Priority Claim pursuant 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.

6.Punishment in the case of infringement of Patent, Design and Trademark

7.Appeal

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

Please note that this guide is published for information only and should not be considered as legal advice. You are requested to seek legal advice for specific factual situations. If you need further information on this matter, please Contact us at Legal Access Nepal Pvt. Ltd.

 Advocate: Yogesh Bhandari

Contact no. 9851249077