1

Assignment
On
Basic of patent law in Bangladesh

Course Title: Intellectual Property Law of Bangladesh

Course Code: 3202

Submitted to
Ms. Roksana Akter
Assistant Professor, Department of Law
Dhaka International University.

Prepared by
S. M. JOHIR UDDIN
Batch: 30th, Roll: 26
Program: LL.M (2 years)
Department of Law, DIU

Date of submission: 26 / 11 / 2020

 2

Contents:

No Subject Page

01 Introduction 3
02 Definition of patent law 3
03 Specifications and filing requirement 4
04 Patent examination in Bangladesh 5
05 Formality examination 5
06 Substantive examination 5
07 Types of patent law in Bangladesh 5
08 Development of patent law in Bangladesh 6
09 Present situation of patent law in Bangladesh 7
10 Bangladesh Patent law with TRIPS 8
11 Remedies for infringement 10
12 Conclusion 10
13 References 10
 3

Basic of patent law in Bangladesh

Introduction:
Patent is a right of an inventor upon his new invented thing. It is a document
issued by the Registrar of the Department of Patents, Designs and
Trademarks to the inventor as regards his invented thing by which he can
exclude others from unauthorized use. In order to make, use or sell
anything, the owner of a patented invention must seek permission from
the Department. The Patentee may use his rights himself or assign them or
grant licenses. An invention must meet several criteria if it is to be eligible
for patent protection. These, most significantly, that the invention must
consist of patentable subject matter, the invention must be industrially
applicable (useful), it must be new (novel), it must exhibit a sufficient
'inventive step' (be non-obvious), and the disclosure of the invention in the
patent application must meet certain standards. Any person, whether he or
she is a citizen of Bangladesh or not, and either alone or jointly with any
other person, may apply for a patent. The protection conferred by the
patent is limited in time (generally 20 years); but in Bangladesh it is 16
years. The Patents and Designs Act, 1911, is the law in force in Bangladesh
on patents and designs. Any person who is interested to get a patent letter
or patent protection must make an application to the Patent Office by
fulfilling the conditions of the Act, that is, an invention must have
industrial applicability, novelty and non-obviousness (inventive step); it
should not be contrary to law or morality. In this assignment i would show
that definition, specification and filing requirements, patent examination,
types of patent development, present situation of patent law in Bangladesh,
Bangladesh patent law with TRIPS.

Definition of patent law:

A patent is a form of rights to an inventor granted by the government to gain
material benefits from an invention for a limited period of time” It provide
protection to owner of invention not to exploit by other to copied, sale, use,
offer for sale, or import without authorization of the owner of the patent for
 4

20 years of time Although patent rights was evident in Sybaris, an ancient

city of Greece but the first came in statutory as Venetian Patent Statute in
Venice in 1450 to protect industrial innovation First, an inventor need to
apply provisional or short term patent giving the outline of the tentative
invention at the concept stage to restrict other to use the innovation. Then
they need to apply again to complete the application within one year period
from the date of the provisional application after completion of the work to
claim the rights to the innovation. Work is scrutinized and approved upon
final application. Patent are three type e.g. utility patents, design patents and
plant patents. Utility patent or rights: It is granted the rights of material
benefits to the inventor for novel procedure or functionality of a product.
Utility patent protects working of a machine even in improvement than
previously designed product. Design patent or rights: It is the rights of
inventors of material benefits who discover a new industrial design or
product (e.g. shape, configuration or color, or two- or three-dimensional
pattern, composition of pattern). Plant Patent: It is the rights of material
benefits of inventors to discover some new variety of plant

Specifications and filing requirement:

An application must contain a complete specification or provisional
specification. A provisional specification must describe the nature of the
invention. A complete specification must particularly describe and ascertain
the nature of the invention and the manner in which the same is to be
performed. A specification, whether provisional or complete, must
commence with the title, and in the case of a complete specification must
end with a distinct statement, of the invention claimed. If the applicant does
not leave a complete specification with his application, He may leave it at
any subsequent time within nine months from the date of the application The
Registrar may require that suitable drawings/model or sample of anything
illustrating the invention shall be supplied and such drawings/model or
sample shall be part of the complete specification. To file a Patent
Application following information are required:
(a) Name of the inventor (applicant),
(b) Address(s) and nationality of the inventors,
(c) Two sets of specification and one set of drawing on tracing paper
(transparent),
 5

(d) One set Legalized Deed of Assignment (if any),

(e) Power of Attorney [Form – 31],
(f) Certified copy of the foreign patent (in case of claiming priority)

Patent examination in Bangladesh:

As per section 5 of the Patents & Designs Act 1911, the Registrar shall refer
to an examiner every application in respect of which a complete specification
has been filed for making him a report in regard to the patentability of the
invention and whether other requirements of the Act and rules has been
complied with. The first examination report is generally issued within 18
months of the filing date of application in Bangladesh.

Formality examination:
The submitted applications are considered Formality Examination according
to the provisions of the Act [Sec-3] for Complete and Provisional Application
[Sec-4-4A]

Substantive examination:
The submitted applications are considered for substantive examination
according to the provisions of the Act [Sec-5]. In Bangladesh, an
examination of a patent application is carried out automatically without a
formal request being made. As per section 5 of the Patents & Designs Act
1911, the Registrar shall refer to an examiner every application in respect of
which a complete specification has been filed for making him a report in
regard to the patentability of the invention and whether other requirements of
the Act and rules have been complied with.

Types of patent law in Bangladesh:

Many toes of patent law in Bangladesh were as follow-ordinary, provisional,
and conventional.
An ordinary patent application is an application that is filed with the
Bangladesh Patent Office without claiming priority from any other application
under process with any other Patent Office.
A provisional specification is often the first application to be filed in respect
of an invention. It usually contains only a brief description of the invention
and need not contain claims. However, a complete specification must be
 6

filed within 9 months from the date of filing of the provisional specification.
The complete specification must particularly describe and ascertain the
nature of the invention and the manner in which the same is to be
performed.
Convention application is an application that is made in Bangladesh within
twelve months after the date of an application made in a convention country,
whether claiming single or multiple priorities from such application. Priority
Details (including Patent Application number, date and country of origin)
where priority is claimed. Certified Copy of priority document must be filed
within 3 months [Rules-11(4)] of filing of Patent Application in Bangladesh.
Verified/notarised English translation of the priority document if priority
document is in any language other than English.

Development of patent law in Bangladesh:

The Patents and Designs Act, 1911, is the law in force in Bangladesh on
patents and designs which was enacted in 1911, during the British colonial
age, along with other provinces of Indian sub‐continent, mainly on the basis
of the principles laid down in the British Statute of Monopolies, Patents,
Design and Trade Marks Act, 1883 and Patents and Designs Act, 1907. The
laws relating to patents and designs have, therefore, been consolidated in a
single enactment in Bangladesh, namely, the Patents and Designs Act,
1911. The Act is divided into three parts. In part I laws relating to patents, in
part II laws relating to designs and in part III general provisions have been
included. In some countries, two separate acts prevail for patents and
designs respectively. In India, a separate Patents Act was enacted in 1970
and the provisions relating to designs continue to be governed by the
provisions of the Patents and Designs Act, 1911, and for the purpose
suitable amendments by way of omission, addition, substitution etc. were
made in the Patents and Designs Act, 1911, by the Patents Act, 1970 (Act
39 of 1970). The law commission report in 2003 opined that it would be
convenient to keep the provisions relating to both patents and designs in
one enactment as in the present Act. If the provisions relating to patents and
the provisions relating to designs were made in a single enactment, the
administering authority who would enforce the provisions relating to both
patents and designs, would feel convenient if the authority found the
provisions relating to both the matters in a single Act rather than in separate
 7

a claw. Since enactment of the Patents and Designs Act, 1911, the concepts
of patents and designs have undergone enormous development through
decisions of courts around the world. In addition, a large number of
international conventions have been adopted recommending enactment of
uniform laws on intellectual property including patents and designs. The
attempt for up gradation of law started in 2003 but it is yet to be finalized.
Bangladesh continues with (essentially) the inherited British law. A few
minor amendments have been enacted such as the establishment of the
Department of Patent Design and Trademarks (Azam and Richardson
2010).

Present situation of patent law in Bangladesh:

According to the current patent law, a patent application is required to be
accompanied with either a complete or provisional specification. If an
applicant applies with a provisional specification, a complete specification is
required to be submitted within nine months. If not, after a period of ten
months the application is deemed to have been abandoned. A complete
specification is required to include following particulars, such as: The name
and address of the inventor, the title of the invention, an abstract or
summary of the invention, a description of the invention, the process of
invention with drawings and a claim or claims defining the scope of the
invention for which protection is sought. The application is then sent to an
examiner for examination. The examination will trigger one of three
outcomes: (1) the specification is correct and the invention is patent‐worthy,
or (2) the specification is not reflected in any new invention and is rejected,
or (3) the specification is accepted with modification or amendment. If the
examiner raises no objections, the specification is published in the Gazette.
Interested parties may raise objections within four months.
Importantly, in 2008 the Department of Patents, Designs and Trademarks
suspended the patenting of pharmaceuticals in Bangladesh until 1 January
2016 in accordance with the Doha Declaration. The Department’s
notification provides that applications relating to patents for medicines and
agricultural chemicals will be preserved in a ‘mailbox’ and will be considered
after January 2016 (Azam and Richardson 2010). But this notification is yet
to be incorporated in the text of law.
 8

Bangladesh Patent law with TRIPS:

As a signatory to the TRIPS, Bangladesh is now in transition period for
meeting the compliance deadline. However, it is pre‐loaded with certain
IPRs laws. Almost all of them are taken to serve the trade liberalising
agenda and for protecting IPRs owners’ interests, since they provide for
similar treatment to IPRs owners irrespective of their country of origin. The
IPRs laws in Bangladesh also contain broad terms for the extension of IPRs
protection to any improvement or modification (Islam 2013). Bangladesh is
undergoing a process of amending of old IPRs laws as well as enactment of
new IPRs laws. However, in this process of changing and enactment of such
laws, the classical argument of principle of public interest, the application of
the principle of balance of rights and obligations was adopted with the lock
of the consistency test. As worded in TRIPS Article 8.2, any measure taken
under the umbrella of this article must be “consistent with” the provisions of
the TRIPS Agreement (Azam 2014). Some of the important legislative
options for patent law of Bangladesh, such as, disclosure requirement,
duration of patent protection,provision for compulsory licensing, pre‐grant
and post‐ grant oppositions, are examined in the following discussion:
TRIPS Article 29 specifies the requirements that may be imposed on patent
applicants. These include the requirement to `disclose the best mode’ for
carrying out the invention as well as providing information concerning
corresponding applications and grants. The patent law of Bangladesh, does
not uses the term ‘disclosure requirement’ but strong procedural steps are
described to provide the `specification of the invention’. To be TRIPS
compliant the disclosure requirement has to be on best mode, but a
relaxation is observed in American Invent Act, 2011 which is a recent
adaptation of major initiator of TRIPS agreement. So, requirement of level of
disclosure can be rethought up to a certain completeness of understanding
of the specification as ensuring best mode is not always practically
applicable.
the patentability of business methods is a debatable issue among the
dominant jurisdictions of the present time (eBay Inc. v. MercExchange
L.L.C. 2006 Ct. 1837, 2006) and (Kennedy, J., and Alice Corp. v. CLS
Bank International 2014) The debate of patentability of business methods
also include the question of patentability of software but there is no mention
of patentability of the software in the existing patent law of Bangladesh
 9

whereas it is a very important issue for the sharply growing Information and
communication sector of the country.
In the existing patent law of Bangladesh, one provision (section 22.1)
provides for the grant of compulsory licensing, but the option is never used,
as it is extremely cumbersome (Chowdhury 2011). Article 31 TRIPS
addresses compulsory licenses and sets forth the conditions for their
issuance. Its wording does not include the term ‘compulsory license’, but it
generally refers to “Other Use without Authorization of the Right Holder''.
This is probably due to political reasons and in particular to the fact that the
Uruguay Round negotiators wanted to avoid using a strong word: indeed the
term 'compulsory license' might have been perceived, especially in
industrialized and R&D intensive countries, as synonym of expropriation of
property rights (Bonadio 2012). However, Article 31 of TRIPS provides a
series of detailed measures that must be followed when issuing a
compulsory license. So, Bangladesh should go for a strong and explicitly
defined compulsory licensing provision which has to be compliant with the
series of detailed measures described in the TRIPS provision.
The existing patent law of Bangladesh, allows patent protection for 16
(sixteen) years from date of filing, whereas, TRIPS Article 33 specifies the
requirement of the term of protection as not less than twenty year counted
from the date of filing. So, to be TRIPS compliant, Bangladesh should
extend its legal provision of minimum term of protection to 20 years from 16
years. It is mentionable that, in Bangladesh, though the term of protection is
limited to 16 years, there is still a provision for application of the extension of
the term of protection at least six months before the time limited for the
expiration of the patent. The petition for extension of term of protection can
be disposed of by the patent authority or even can be sent to the High Court
Division decision.
In Bangladesh patent law, the pre‐grant objection is limited by two
conditions. The first is that the objection must be made within four months of
the advertisement of the acceptance of application and the second is that
the objection can only be based on the statutory grounds provided by
section 9(1) of the Act. The TRIPS Agreement does not prescribe any
specific type of opposition system, The existing Bangladeshi pre‐grant
opposition regime is not sufficient and should be amended to include more
 10

extensive pre‐grant heads of objection and include a process for post‐grant

opposition as well.

Remedies for infringement:

If any person makes sells or uses an invention without the license of
patentee, or counterfeits it, or imitates it is an infringement of a patent. If
there is an infringement of a patent by any person, the patentee may
institute a suit against the person in a District Court having jurisdiction to try
the suit. The legislation provides remedies for any infringement of a patent.
The remedy is civil in nature, and includes both interim and final remedies.
The interim or preliminary remedies include an order for an injunction,
inspection or account while final remedies include financial compensation.

Conclusion:
A patent is an exclusive privilege given to the author by the State to prohibit
anyone from utilizing, creating, and selling an invention for a specified
duration of time. It applies to a monopoly right on an invention. However, not
all inventions are patentable and nor is it essential that inventions be
protected solely by patent. Other forms of intellectual property rights can
protect the final product which results from an invention. The primary
objective for enacting patent law is to encourage inventors to make a greater
contribution to their field by granting them exclusive rights to their inventions.
As it is a new idea it must be needed publicity, to know about the patent for
the general people of Bangladesh. The Patents and Designs Act, 1911, is
the law in force in Bangladesh on patents and designs.

References:
1. The patent and design Act, 1911
2. www.academi. Com
3. www.researchget.net
4. Bdlaws.minilaws.gov
5. www.wipo.int
6. Bangladesh law digest.
7. The daily star 19 may 2020.
8. World Intellectual Property Organization (WIPO)
9. WIPO. 2008. WIPO Intellectual Property Handbook: Policy, Law and Use. Chapter 2 - Fields of
Intellectual Property Protection.