By Dhruv Mathur and Shivam Malvi
The recently enacted Patent Act 2023 of Bangladesh encompasses a wide range of patent law matters, including administrative procedures and legal structures. The legislation appears to have struck a well-balanced approach in safeguarding intellectual property rights while also considering public interest concerns. The true measure of the impact of these revisions will ultimately depend on their execution, interpretation, and practical application.
Parliament of Bangladesh has recently implemented the Patent Act 2023, replacing the previous Patent Act 2022, with the aim of enhancing the clarity and definition of patent holders’ rights and responsibilities.
The Patent Act 2022 is repealed by the new legislation. The administrative authority is transferred from the Office of the Registrar to the Director General of the Department of Patents, Industrial Designs, and Trademarks. Additionally, a well-defined court system is established, where district courts are responsible for patent cases and appeals can be made to the High Court Division. This ensures a structured framework for resolving patent disputes.
Several notable changes have been introduced:
These changes in the Patent Act 2023 reflect a proactive approach by Parliament to strengthen the patent system and provide a more effective framework for patent holders to exercise their rights and fulfill their responsibilities:
| PATENT ACT 2023 | PATENT ACT 2022 | |
| 1 | Administrative power shift: One significant change is the transfer of administrative power from the Office of the Registrar to the Director General of the Department of Patents, Industrial Designs, and Trademarks. This centralization of authority has the potential to streamline decision-making processes and improve efficiency.
According to (Section 14 of patent act 2023) Powers of the Director General: The legislation bestows specific powers upon the Director General, akin to those of civil courts, thereby improving the effectiveness of the patent system. |
Section 30 of the patent act 2022 describe the power of registrar, while Section 14 specifies that the registrar acknowledges patent applications and carries out the required actions in accordance with the applicable legislation. The registrar holds the sole authority to grant, reject, or modify patent applications. |
| 2 | Court structure: The new act determines a well-defined court structure for handling patent cases. District courts will now be responsible for addressing patent-related legal matters, while the provision for appeals to the High Court Division ensures a systematic approach to resolving disputes. | The establishment of special courts pertaining to patents can be done by the government through an official notification in the official gazette. Until these courts are constituted, the court with jurisdiction shall be considered competent to handle suits or legal proceedings related to patent rights infringement under the Patent and Design Act of 1911. This addresses the previous lack of a suitable court structure in the previous act. |
| 3 | Validity period and renewal: The act has eliminated the requirement to request renewal five years prior to the expiration date, providing patent holders with increased flexibility. This practical adjustment allows renewal applications to be submitted at any time before the validity period ends. | Annual fee shall be applicable from the beginning of the sixth year from the date of patent application, as the case may be, from the date of patent application for preservation of the patent and application for renewal shall be made with payment of the prescribed fee before five years of the grant of the patent. |
| 4 | Annual fee payment: The act has fixed a three-month period for the payment of annual fees, without the provision for extension. This creates a necessity for patent holders to clear the formality of payment within the specified deadline. | If the payment of the annual fee is not made on time, the payment period will be prolonged from 3 months to 6 months. |
| 5 | Compulsory license: The legislation provides the government with the power to issue a compulsory license during times of emergency or for its own specific needs. This demonstrates a careful consideration of both safeguarding intellectual property and addressing urgent situations. | In previous act government may, without any agreement or with agreement grant a compulsory license to any government agency or person designated by the government to use the said invention, without the concern of the proprietor. if government think it is necessary for the advancement of public interest , particularly national security, public health or any important sector of the national economy. |
| 6 | Reliefs for patent holders: The legislation encompasses a comprehensive range of remedies and reliefs that the district court may award to patent holders in cases of any infringement of patent rights, guaranteeing that patent holders have sufficient legal options to safeguard their rights. | |
| 7 | Another change is with respect to the extension in the Examination time, wherein the extension has been set to 36 months from the filing date to an additional 3 months for special cases. | The examination can be conducted within a span of 36 days from the date of filing the patent application, as per the applicant’s request. The duration of the examination may be prolonged for a maximum of 3 years. |
| 8 | A fine has been imposed for False Registration under the Patent Act, wherein any false registration will be fined under the act, amounting to Tk 20,000. | No such provision present in the patent act 2022 with respect to the false registration. |
| 9 | The new Patent Act further safeguards the rights of the inventor-successor. | The previous act is more tilt to the government and not fully safeguard the rights of the proprietor. |
| 10 | Revocation provisions have been revised in the new Act, included for the public interest, to create a balance between the protection of public welfare and the integrity of patent rights. (section 33) |
Revocation of patent is done only if: The invention is not novel (sec3), it resemble with the prior art (sec 4), the invention is ouit of the patent protection (sec 5), and the application is not in the prescribe manner (sec 6). |
- Administrative power shift: One significant change is the transfer of administrative power from the Office of the Registrar to the Director General of the Department of Patents, Industrial Designs, and Trademarks. This centralization of authority has the potential to streamline decision-making processes and improve efficiency.
According to (Section 14 of patent act 2023) Powers of the Director General: The legislation bestows specific powers upon the Director General, akin to those of civil courts, thereby improving the effectiveness of the patent system.
Section 30 describe the power of registrar, and section 14 of patent act 2022, the registrar take cognizance to the patent application and take necessary action according to prescribed law.
- Court structure: The new act determines a well-defined court structure for handling patent cases. District courts will now be responsible for addressing patent-related legal matters, while the provision for appeals to the High Court Division ensures a systematic approach to resolving disputes.
The government may, by notification in the official gazette, constitute special courts relating to patents and until such courts are constituted , to dispose of the suits or legal proceedings instituted under the patent and design act 1911, for infringement of the patent rights, the court having jurisdiction shall deemed to be competent court.
- Validity period and renewal: The act has eliminated the requirement to request renewal five years prior to the expiration date, providing patent holders with increased flexibility. This practical adjustment allows renewal applications to be submitted at any time before the validity period ends.
Annual fee shall be applicable from the beginning of the sixth year from the date of patent application, as the case may be, from the date of patent application for preservation of the patent and application for renewal shall be made with payment of the prescribed fee before five years of the grant of the patent.
- Annual fee payment: The act has fixed a three-month period for the payment of annual fees, without the provision for extension. This creates a necessity for patent holders to clear the formality of payment within the specified deadline.
If the annual fee payment delayed, the payment period will be extended from 3 months to 6 months, provided that a late fee is paid.
- Compulsory license: The legislation provides the government with the power to issue a compulsory license during times of emergency or for its own specific needs. This demonstrates a careful consideration of both safeguarding intellectual property and addressing urgent situations.
In previous act government may, without any agreement or with agreement grant a compulsory license to any government agency or person designated by the government to use the said invention, if government think it is necessary for the advancement of public interest , particularly national security, public health or any important sector of the national ecomomy.
- Reliefs for patent holders: The legislation encompasses a comprehensive range of remedies and reliefs that the district court may award to patent holders in cases of any infringement of patent rights, guaranteeing that patent holders have sufficient legal options to safeguard their rights.
- Another change is with respect to the extension in the Examination time, wherein the extension has been set to 36 months from the filing date to an additional 3 months for special cases.
Within 36 days from the date of filing of the patent application, the applicant may request the registrar to examine his application, if necessary this time period may extend to 3 years.
- A fine has been imposed for False Registration under the Patent Act, wherein any false registration will be fined under the act, amounting to Tk 20,000. Further, a fine of Tk 50,000 will be imposed on falsely claiming patent holder(s) or who applies falsely for a patent.
No such provision present in the patent act 2022, the only provision of fine is present with respect to the infringer who not obeyed the courts order.
- The new Patent Act further safeguards the rights of the inventor-successor.
- Revocation provisions have been included in the new Act, included for the public interest, to create a balance between the protection of public welfare and the integrity of patent rights.
From administrative procedures to legal frameworks, the new patent law 2023 strikes a fine balance between intellectual property protection and public interest considerations. How effective these changes are will of course depend on implementation and interpretation and application.