Patent, Design, and Trademark are separate branches of Intellectual Property Law in Nepal that provide significant commercial advantages to their owners. Nepal, as a member of the World Intellectual Property Organization (WIPO) and a signatory to the Paris Convention for Industrial Property, has enacted specific laws to regulate these matters. This article serves as a legal guide addressing the IP perspective in Nepal and the rights/protection ensured by the Patent, Design, and Trademark Act, 2022 (Act).

1. Legal Definition

Patent:
Refers to a useful invention relating to a new method of process or manufacture, operation or transmission of any material or a combination of materials, or that made based on a new theory or formula. It includes new inventions, principles, and formulas.

Design:
Refers to any form or shape of any material manufactured in any manner. The design shall also include any physical shape and appearance.

Trademark:
Refers to a word, symbol, picture, or a combination of these, which shall be used by any firm, company, or individual in its products or services to distinguish them from the products or services of others.

2. Unit Responsible for Protection of IP

The Act authorizes the Department of Industry (DOI) to protect intellectual property law in Nepal, including patents, designs, and trademarks. The DOI acts as a semi-judicial unit for protecting industrial property, settling disputes, and managing administrative procedures while ensuring compliance with international standards.

3. Stages of Registration

• Submission of Application for Registration
• Preliminary Examination of the Application by DOI
• Publication of Design for Notification to the General Public
• Certification

4. Registration

• Patent Registration: Grants inventors exclusive ownership and usage rights, safeguarding their innovative ideas from unauthorized use.
• Design Registration: Establishes legal ownership over the form or shape of a creation, ensuring protection and renewability.
• Foreign Design Registration: DOI may register designs from foreign countries under the Paris Convention with proper documentation.
• Trademark Registration: Creates legal ownership over goods/services, distinguishing them from competitors and preventing unauthorized usage.

5. Trademark Registration Process

• Submit the application to DOI with the required documents.
• Preliminary examination by DOI.
• Publication in the Intellectual Property Bulletin (IP Bulletin).
• Decision on issuing a certificate of registration.
• 90-day objection period after public notice.
• Investigations into objections and final registration decision.
• Six-month trial period before final certification issuance.

6. Required Documents

For Patent Registration:

• Application in the format specified under Schedule 1(a) of the Act.
• Name, address, and occupation of the inventor(s).
• If the applicant is not the inventor, proof of title acquisition.
• Manufacturing, operation, or usage process details.
• The theory or formula underlying the patent.
• DOI investigation on patent usefulness before registration.

For Design Registration:

• Application under Schedule 1(b) of the Act.
• Four copies of the design model, with measurements and designer details.
• Application fee receipt.
• Power of Attorney, if applicable.
• For foreign applicants: Certified copy of foreign registration certificate and notarized documentation.

For Trademark Registration:

• Prescribed application form.
• Certified notarized copy of the trademark registered in the home country.
• Four specimens of the trademark (8×8 cm in size), including business name and intended use.
• Application fee receipt.
• Power of Attorney (if applicable).
• Correspondence address in Nepal for foreign trademarks.
• Tax registration certificate copy.

7. Usage Requirements

A registered trademark must be used within one year, or DOI may cancel the registration upon inquiry.

8. Grounds for Patent and Trademark Registration Refusal

Patent Refusal Grounds:

• Public health concerns.
• Adverse effects on morality or national interest.
• Applicants have the right to contest DOI’s refusal.

Trademark Refusal Grounds:

• Conflicts with existing registrations.
• Damages goodwill or reputation.
• Contradicts public conduct, morality, or national interest.

9. Renewal Process

• Patent: Renewable within 35 days of expiry (with fines for late renewal).
• Design: Renewable twice for specified periods (with fines for late renewal).
• Trademark: Renewable annually within 35 days of expiry.

10. Validity Terms

• Patent: 7 years validity.
• Design: 5 years validity.
• Trademark: 7 years validity.

11. Penalty and Compensation

Infringement penalties range from fines to confiscation of goods.

Compensation may be required for losses incurred due to IP infringement.

12. Fee Schedule

Patent Fees:

• Application: NPR 2,000
• Registration: NPR 10,000
• Renewal (First Time): NPR 5,000

Design Fees:

• Application: NPR 1,000
• Registration: NPR 7,000
• Renewal (First Time): NPR 1,000

Trademark Fees:

• Application: NPR 2,000
• Registration: NPR 5,000
• Renewal per year: NPR 500

13. Public Information Disclosure

DOI is responsible for publishing information about registered trademarks, patents, and designs, including renewals and cancellations.

14. Filing Complaints

Complaints related to registered IP must be filed with DOI within 35 days of publication.

15. Appeals

Appeals against DOI decisions may be filed at the Appellate Court of Nepal within 35 days.

Disclaimer

S & S Jurists, one of Nepal’s leading law firms in the corporate sector, publishes articles on its website for informational purposes. This information should not be taken as legal advice, advertisement, personal communication, solicitation, or inducement. The firm and its team members shall not be liable for any consequences arising from the information provided here. If you need further legal advice on the subject matter, please Contact Us for expert legal guidance on Intellectual Property Law in Nepal.