Law of Intellectual Property

Contents
3. Patent
b) Statutory Rights
i) Application, Examination and Opposition
ii) Rights recognized- Term, Ownership,
Assignment, License, Compulsory Licensing,
Revocation
iii) Foreign Patents and Patent Cooperation
Treaty

22.04.2021
 Statutory Rights
Rights provided by the statute/Legal right
granted by the patent (Sec.3, PDT Act)
Scope of protection is not uniform and varies in
national laws
Concept of international protection under
international legal instruments (such as the Paris
Conventions, Berne Convention, the Hague
System, WIPO, etc.)
The Patent Cooperation Treaty of 1970 (effective
from 1978) for international registration of
patents
 Statutory Rights..
The European Patent Convention (earlier 1973
version, presently “EPC 2000”): establishes a
system of law, common to Contracting States, for
the grant of patents for the invention.
Patent, Design and Trademarks Act, 1965 (Nepal)
Steps (generally applied):
 Application (i.e., request by/on behalf of the inventor)
 Publication (meaning information available to all)
 Preliminary and substantive examinations (search)
 Grant (by payment of fee) or refusal to grant (decision
and registration)
 Opposition/objection or appeal
 Application, Examination and Opposition
 Application forms: called documents to be prepared.
E.g., Schedule 1 (a) of PDT Act
 Individual or more than one person can submit
application for registration along with the required
documents
 Schedule 2 (d): Application for renewal of the patent
 Sec.4: Information required for the application
 Application should provide specifications and scope of
the invention: “Claims” and a “description.”
 Elements that distinguish the claim from what is
already known
 Description should demonstrate the “state of the art”
and the invention is really new.
 Application..
Application must contain:
 A request for grant of a patent
 A specification which includes description of the
invention , drawings and claims
 Specification must disclose the invention in a manner
which is clear enough and complete enough for the
invention (based on this a person skilled in the art
determines novelty and non-obviousness)
 An abstract of invention
Provision Governing Application provided (e.g.,
the Implementing Regulations, Rule 41 of the
EPC)
 Application…
 Application contains ‘claim (s)’ based on three
types of invention: product (substance), process
(methods) and product obtained by a particular
process
The claims should be clear and concise and
supported by the description.
Single or multiple claims (plurality of interrelated
products, different uses of a product, alternative
solutions a particular problem.
The claims should be numbered consecutively in
Arabic numerals (e.g., EPC, IR Rule 43)
 Application….
 Initial application and complete (final)
applications (Under EPC, PCT)
Application is checked for formal requirements
and published 18 months after filing (PCT)
Within 18 months, the applicant should
designate the state (s) he/she desires a patent
for the invention
Amendment can be made during this period.
International search is conducted and the
application is transmitted to the concerned
national IP office for determining grant on the
basis of national law.
 Examination
 Sec.5 of the Act (Nepal) : DOI will conduct investigation
on the application.
 Sec.6: Factors for rejecting grant of the patent:
If the patent is already registered
No right obtained from the original inventor if the
applicant him/herself is not original inventor
If the patent would adversely affect public health,
conduct or morality, or national interest, or
If contradiction with the any existing laws
WIPO and PCT term: Search Report is prepared by
the patent examiner in the Industrial Property
Office.
 Examination..
 Preliminary examination: to ensure that all the
requisite formalities have been complied with, to
check whether the specification is properly set
out, and a limited search of the written prior art is
included.
PCT allows preliminary examination.
Examination means an invention is subjected to
official scrutiny to determine whether the
invention qualifies for patent protection.
Examiner may seek response from the applicant
and advise to amend the application as well.
 Examination…
Substantive examination and search: for novelty,
patentability, inventive step and sufficiency of
disclosure of information
The patent office reports to the applicant the
result of its searches.
Substantive examination and searches may take
some years (e.g., four years) of the filing date (UK
Patent office).
Witness may be questioned under oath (through
direct and cross examinations)
The applicant may revise the claim in response.
 Opposition
Registered patent shall be published in the
Nepal Gazette (making the public to know)
Sec.7 (3) provides for objection if anyone wishes
to make within 35 days of seeing the copy of the
documents.
Based on the complaints, the DOI shall do
inquiries on the registered patent.
If the registered patent is cancelled the exclusive
right of exploitation ends.
Opposition procedure is at variance in countries.
https://www.doind.gov.np/index.php/section/in
 Opposition..
 Pre-grant opposition is allowed after publication
of application
Also opposition after grant of the patent for
revocation and cancellation
Re-examination is allowed about the validity of a
patent in the Patent Office after its grant at the
request by any party (UK Patents Act, 2004)
On the basis of allegation against invention’s
novelty and utility and whether it interferes with
any other pending application or in-force patent,
the USPTO conducts inquiry.
 Rights recognized- Term, Ownership, Assignment,
License, Compulsory Licensing, Revocation
 The patent registered in a foreign country is to be
registered in Nepal to be valid.
 The patent registered in foreign countries can be filed in
Nepal with certificate of registration and facility will be
granted as per the Paris Convention.
Term: Sec.8 of the Act provides seven year term of the
patent.
 The term can be renewed for twice for seven years each
time.
 International practice of 15-20 years of the patent right.
 For European patent, the term is 20 years.
 Ownership
Ownership: provides for the exclusive rights to the
owner (for both inventions of product and processes):
To make the product (directly obtained through the
process)
To use the product (directly obtained through the
process)
To sell the product (directly obtained through the
process)
To import the product (directly obtained through the
process)
A certificate of patent is issued and published-
proof of ownership.
 Assignment
Assignment: The transfer of rights or property
from one person to another
Assignee must show ownership in the
property to be patented or registered.
Sec.21D of the Act provides for transfer of
ownership or approval for the use of the
patent on the submission of the joint
application.
Assignment: must be in writing and signed;
 is registrable;
 may be partial, limited to some products
 License, Compulsory Licensing
License: is an authority to do a particular act, or
series of acts. License is not assignable. Just
permission.
Licensing is an efficient way for companies to
share innovations.
It rewards for innovators for their work,
investment and creativity, funding further
innovation that benefits the economy as a whole.
Licensing also avoids high cost of litigation.
Companies apply licensing strategies and process.
“Voluntary license” and “Compulsory license”
 Voluntary and compulsory licensing
The beneficiary of a voluntary license is
authorized to perform acts covered under
authorization from the owner of the patent for
invention. It is a license contract.
Compulsory license gives the exclusive right
given by an authority to the beneficiary against
the will of the owner of the patent for
invention. They are granted against the will of
the owner of the patent for invention, if that
owner fails to fulfill its or his obligation to work
the patented invention.
 License..
The term compulsory license is construed as
including ex-officio licenses and the right to use
patented inventions in the public interest. (ref.
Implementing Regulations of the EPC, Rule 33
Paragraph (2))
Government allows someone else to produce a
patented product or process without consent of
the patent owner, or
It may plan to use the protected invention itself.
Compulsory licensing is allowed under Article 31
of TRIPS for “other use without authorization of
the right holder” by government or third parties.
 Revocation
 Grounds for revocation of the patent, among others,
e.g., Australia:
 The applicant was not a person entitled to apply for
the patent;
 The patent, as claimed, was obtained in
contravention of the rights of the petitioner
 The specification does not fully describe the
invention
 The claimed invention was obvious and did not
involve an inventive step
 The invention, as claimed, is not useful
 Foreign Patents and Patent Cooperation Treaty
 Patents registered in foreign countries
 The grant of a patent for invention in one country for a
given invention does not oblige any other member
country to grant a patent for invention for the same
invention (Art.4bis, the Paris Convention: Principle of
independence of patents for invention)
 Sec.21B of the PDT states that title of any patent,
design or trade-mark registered in a foreign country
shall not be valid unless it is registered in Nepal by the
concerned person.
 Sec.21C of PDT provides for the procedure regarding
registration of patent, design or trademark registered in
foreign countries.
 PCT..
 DOI may register patent, design or TM registered in
foreign countries without conducting any enquiries if an
application is filed together with the foreign certificate.
 The foreign patent holder shall enjoy the facility as per
the 1883 Paris Convention.
 PCT is a multilateral Patent Co-operation Treaty,
established at Washington, in 1970. Its implementation
is monitored by WIPO.
 PCT allows to file a single international application
which has the same effect as filing separate applications
with the Patent Office of each of the countries party to
the PCT that are designated in the application.
 PCT…
Before the application is considered by the
offices of the countries designated in the
application, it is subject to an “international
search” and its report is available to both the
applicant and to the designated office. An
“international preliminary examination” is also
provided to the national offices under PCT, but it
is not binding upon the national office.
PCT facilitates the acquisition of technical
information relating to patent application.
153 countries are parties to the PCT (last Samoa,
Oct 2019).
 PCT….
China and India are parties to the PCT but not
yet Nepal.
https://www.wipo.int/edocs/pubdocs/en/wip
o_pub_901_2020_exec_summary.pdf
https://www.wipo.int/pct/en/ (Video
presentation about PCT application process)
THANK YOU