The Patent, Design & Trademark Act, 1965 (PDTA) of Nepal governs intellectual property rights related to patents, designs, and trademarks. Here is an overview of the key highlights of the Act:
1. Objectives and Scope
Long title: The principal purpose of PDTA, 1965, is to provide patented inventions, industrial designs, and trademarks with legal protection. This protection stimulates innovation and creativity, as through providing creators and inventors with exclusive rights to their works, it drives economic growth by making sure that their intellectual property is safeguarded against unauthorized use.
2. Definitions
- Patent: According to the Act, a patent is a right granted for an invention that is novel, involves an inventive step, and is capable of industrial application. The patent holder has the exclusive right to make, use, sell, or license the invention.
- Design: The Act defines an industrial design as the aesthetic aspect of an article, including its shape, configuration, pattern, or ornamentation. Protection is granted for designs that are new and original.
- Trademark: A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of others. It includes any word, name, symbol, or device used in trade.
3. Patent
- Patentability: For an invention to be patented, it must be novel, involve an inventive step, and be capable of industrial application. The Act provides detailed criteria for what constitutes novelty and inventive step.
- Patent Application: The Act outlines the procedure for filing a patent application, including requirements for documentation, application forms, and fees. Applicants must disclose the invention in a manner sufficiently clear and complete to allow others skilled in the art to replicate it.
- Examination and Grant: Once an application is filed, it is examined for compliance with legal requirements. If the examination is satisfactory, a patent is granted, providing the inventor with exclusive rights for a specified period, typically 20 years from the filing date.
- Rights and Obligations: The patent holder has the exclusive right to prevent others from making, using, selling, or importing the patented invention without authorization. The patent holder is also obligated to disclose the invention to the public, ensuring that the knowledge is available for further innovation.
- Revocation and Infringement: The Act provides grounds for revoking a patent, such as failure to meet the requirements of patentability or non-payment of maintenance fees. It also outlines remedies and procedures for addressing patent infringement.
4. Design
- Design Registration: To protect an industrial design, an application must be filed with the relevant authority. The design must be new and original to qualify for registration.
- Scope of Protection: The Act provides protection for the visual appearance of a product, including its shape, configuration, pattern, and ornamentation. The protection does not extend to functional aspects of the design.
- Duration and Renewal: The protection for a registered design typically lasts for 10 years from the date of registration, with the possibility of renewal for additional periods.
- Rights and Enforcement: The holder of a design registration has the exclusive right to use the design and prevent others from copying or imitating it. The Act outlines procedures for enforcing these rights and addressing infringement.
5. Trademark
- Trademark Registration: The Act sets out the process for registering trademarks, including the requirements for application, examination, and publication. Trademarks must be distinctive and capable of distinguishing the goods or services of one enterprise from those of others.
- Rights Conferred: Registration of a trademark grants the owner exclusive rights to use the mark in relation to the goods or services for which it is registered. The owner can prevent others from using a similar mark that might cause confusion.
- Duration and Renewal: Trademark registration is valid for 10 years from the date of registration, with the option to renew indefinitely for additional 10-year periods.
- Opposition and Cancellation: The Act provides mechanisms for opposing the registration of trademarks and for canceling registered marks under certain circumstances, such as non-use or misrepresentation.
6. Enforcement and Remedies
- Civil Remedies: The Act provides for civil remedies in cases of infringement, including injunctions, damages, and account of profits. Courts have the authority to grant these remedies to protect the rights of patent, design, and trademark holders.
- Criminal Offenses: The Act also outlines criminal offenses related to intellectual property, such as counterfeiting and unauthorized use. Penalties for these offenses include fines and imprisonment.
- Administrative Measures: Administrative measures include the power of authorities to inspect, seize, and detain goods that infringe on intellectual property rights. The Act grants the relevant authorities the power to take necessary actions to enforce rights.
7. International Considerations
- Treaties and Conventions: The Act aligns with international treaties and conventions related to intellectual property, including the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement. This alignment facilitates international protection and enforcement of intellectual property rights.
- Bilateral Agreements: Nepal may enter into bilateral agreements with other countries to enhance the protection and enforcement of intellectual property rights beyond the scope of national legislation.
8. Administration and Procedures
- Intellectual Property Office: The Act designates the Intellectual Property Office or equivalent authority as the body responsible for administering and enforcing intellectual property rights. This office handles applications, registrations, and disputes related to patents, designs, and trademarks.
- Fee Structure: The Act provides a fee structure for various services, including application filing, registration, and renewal. Fees are subject to change and are set by the relevant authorities.
- Review and Appeals: The Act includes provisions for reviewing decisions and appealing against adverse rulings related to intellectual property rights. A system of appeals ensures that stakeholders have the opportunity to challenge and seek redress for decisions made by the Intellectual Property Office.
9. Conclusion
The Patent, Design & Trademark Act, 1965, provides a comprehensive framework for protecting intellectual property rights in Nepal. By outlining clear procedures for patenting inventions, registering designs, and trademarking signs, the Act supports innovation and creativity. It establishes a legal basis for enforcing intellectual property rights, addressing infringements, and ensuring that creators and inventors are rewarded for their contributions. The Act’s alignment with international standards and its provisions for administrative and legal remedies contribute to a robust intellectual property regime that fosters economic growth and development.
