THE PATENTS AND DESIGNS ACT, 1911, PART 3

PART III

GENERAL

Registration of Designs

Department of Patents, Designs and Trade Marks and Proceedings thereat

Appointments of state Registrar, etc.21[55. (1) The Government may, by notification in the Official Gazette, appoint a person, for the purposes of this Act and Trade Marks Act, 1940 (Act No. V of 1940), to be known as Registrar of Patents, Designs and Trade Marks.

(2) For the purposes of this Act and Trade Marks Act, 1940 (V of 1940), there shall be established a department called the Department of Patents, Designs and Trade Marks.

(3) The Department of Patents, Designs and Trade Marks shall consist of two wings, namely:-

(a) The Patents and Designs Wing to deal with matters related to the Patents and Designs Act; and

(b) The Trade Marks Registry Wing to deal with matters related to the Trade Marks Act.

(4) The Head Office of the Department of Patents, Designs and Trade Marks shall be in Dhaka; and there may be established branch office or offices at such other place or places as the Government may determine.

(5) There shall be a common seal of the Department of Patents, Designs and Trade Marks as well as separate seals to indicate the separate entities of the Patents and Designs Wing and the Trade Marks Registry Wing.

(6) The Government may, in addition to the Registrar, appoint such other officers and employees in the Department of Patents, Designs and Trade Marks, as it may think necessary.

(7) The Registrar may, subject to the approval of the Government, delegate such office functions of him to any other officer or officers of the Department of Patents, Designs and Trade Marks, as may be deemed necessary.]

[Omitted]56. [Omitted by section 5 of the Patents and Designs (Amendment) Act, 2003 (Act No. XV of 2003).]

Fees

Fees57. (1) There shall be paid in respect of the grant of patents and the registration of designs, and applications thereof, and in respect of other matters with relation to the patents and designs under this Act, such fees as may be prescribed by the Government, so however that the fees prescribed in respect of the instruments and matters mentioned in the schedule shall not exceed those there specified.

(2) A proceeding in respect of which a fee is payable under this Act or the rules made thereunder shall be of no effect unless the fee has been paid.

Provisions as to Registers and other Documents in the Department of Patents, Designs and Trade Marks

Notice of trust not to be entered in registers58. There shall not be entered in any register kept under this Act, or be receivable by the Registrar, any notice of any trust, expressed, implied or constructive.

Inspection of and extracts from registers59. Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act; and certified copies, sealed with the seal of the Department of Patents, Designs and Trade Marks, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.

Information relating to patents22[59A. A person making a request to the Registrar in the prescribed manner as respects any patent specified in the request or as respects any application for a patent so specified, for information to be furnished to him by the Registrar of any such matters as may be prescribed affecting that patent or application, shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.]

Privilege of reports of Registrar60. Reports of or to the Registrar made under this Act shall not in any case be published or be open to public inspection.

Prohibition of publication of specification, drawings, etc., where application abandoned, etc.61. (1) Where an application for a patent has been abandoned or deemed to have been refused, the specifications and drawings (if any), accompanying or left in connection with such application, shall not, save as otherwise expressly provided by this Act, at any time be open to public inspection or be published by the Registrar.

(2) Where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations or specimens left in connection with the application shall not at any time be open to public inspection or be published by the Registrar.

Power for Registrar to correct clerical errors62. The Registrar may, on request in writing accompanied by the prescribed fee,-

(a) correct any clerical error in or in connection with an application for a patent or in any patent or any specification;

(b) [Repealed by the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930).]

(c) correct any clerical error in the representation of a design or in the name or address of the proprietor of any patent or design, or in any other matter which is entered upon the register of patents or the register of designs.

Entry of assignments and transmissions in registers63. (1) Where a person becomes entitled by assignment, transmission or other operation of law to a patent or to the copyright in a registered design, he may make application to the Registrar to register his title, and the Registrar shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such patent or design, and shall cause an entry to be made in the prescribed manner in the register of the assignment, transmission or other instrument affecting the title.

(2) Where any person becomes entitled as mortgagee, licensee or otherwise to any interest in a patent or registered design, he may make application to the Registrar to register his title, and the Registrar shall, on receipt of such application and on proof of title to his satisfaction, cause notice of the interest to be entered in the prescribed manner in the register of patents or designs, as the case may be, with particulars of the instrument, if any, creating such interest.

(3) The person registered as the proprietor of a patent or design shall, subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licenses as to, or otherwise dealt with, the patent or design and to give effectual receipts for any consideration for any such assignment, license or dealing:

Provided that any equities in respect of the patent or design may be enforced in like manner as in respect of any other moveable property.

(4) Except in the case of an application made under section 64, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of sub-sections (1) and (2) shall not be admitted in evidence in any Court in proof of the title to a patent or to copyright in a design or to any interest therein, unless the Court, for reasons to be recorded in writing, otherwise directs.

Rectification of register64. (1) The Registrar may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the register of patents or designs of any entry, or by any entry made in either such register without sufficient cause, or by any entry wrongly remaining on either such register, or by an error or defect in any entry in either such register, make such order for making, expunging or varying such entry as he thinks fit and rectify the register accordingly.

(2) The Registrar may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of a register.

(3) An appeal shall lie to the High Court Division from any order of the Registrar under this section; and the Registrar may refer any application under this section to the High Court Division for decision, and the High Court Division shall dispose of any application so referred.

(4) Any order of the Court rectifying a register shall direct that notice of the rectification be served on the Registrar in the prescribed manner, who shall upon the receipt of such notice rectify the register accordingly.

(5) Nothing in this section shall be deemed to empower the Registrar-

(a) to rectify the register of patents, or to decide any question relating to a patent, otherwise than for the purpose of correcting a mistake of fact apparent from a reference either to the patent itself or to some order of a competent authority made under any other provision of this Act, or

(b) to make any such order cancelling the registration of a design as is provided for in section 51A.

Powers and Duties of Registrar

Power of Registrar in proceedings under Act65. Subject to any rules in this behalf, the Registrar in any proceedings before him under this Act shall have the powers of a Civil Court for the purpose of receiving evidence administering oaths enforcing the attendance of witnesses compelling the discovery and production of documents, issuing commissions, for the examining of witnesses and awarding costs and such award shall be executable in any Court having jurisdiction as if it were a decree of that Court.

Publication of patented inventions66. The Registrar shall issue periodically a publication of patented inventions containing such information as the Government may direct.

Exercise of discretionary power by Registrar67. Where any discretionary power is by or under this Act given to the Registrar, he shall not exercise the power adversely to the applicant for a patent, or for amendment of an application or of a specification, or for registration of a design, without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard.

Power of Registrar to take directions of the Government68. The Registrar may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the Government for directions in the matter.

Refusal to grant patent, etc., in certain cases69. (1) The Registrar may refuse to grant a patent for an invention or to register a design of which the use would, in his opinion, be contrary to law or morality.

(2) An appeal shall lie to the Government from an order of the Registrar under this section.

Appeals to the Government70. (1) Where an appeal is declared by this Act to lie from the Registrar to the Government, the appeal shall be made within three months of the date of the order passed by the Registrar, and shall be in writing, and accompanied by the prescribed fee.

(2) In calculating the said period of three months the time (if any) occupied in granting a copy of the order appealed against shall be excluded.

(3) The Government may, if it thinks fit, obtain the assistance of an expert in deciding such appeals, and the decision of the Government shall be final.

Evidence, etc,

Evidence before the Registrar23[70A. Subject to any rules made under section 77, in any proceeding under this Act before the Registrar, the evidence shall be given by affidavit, in the absence of directions by the Registrar to the contrary; but in any case in which the Registrar thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by affidavit or may allow any party to be cross-examined on the contents of his affidavit.]

Certificate of Registrar to be evidence71. A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing which he is authorised by this Act, or any rules made thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone.

Evidence of documents in Department of Patents, Designs and Trade Marks24[71A. Printed or written copies or extracts, purporting to be certified by the Registrar and sealed with the seal of the Department of Patents, Designs and Trade Marks of or from patents, specifications and other documents in the Department of Patents, Designs and Trade Marks, and of or from registers and other books kept there, shall be admitted in evidence in all Courts in Bangladesh, and in all proceedings, without further proof or production of the originals:

Provided that a Court may, if it has reason to doubt the accuracy or authenticity of the copies tendered in evidence, require the production of the originals or such further proof as it considers necessary.]

Transmission of copies of specifications, etc., and inspection thereof72. Copies of all such specifications, drawings and amendments left at the Department of Patents, Designs and Trade Marks, as become open to public inspection under the provisions of this Act, shall be transmitted, as soon as may be, after the printed copies thereof are available, to such authorities as the Government may appoint in this behalf, and shall be open to the inspection of any person at all reasonable times at places to be appointed by those authorities and approved by the Government.

Applications and notices by post73. Any application, notice or othe document authorized or required to be left, made or give at the Department of Patents, Designs and Trade Marks or to the Registrar, or to any other person under this Act, may be sent by post.

Declaration by infant, lunatic, etc.74. (1) If any person is, by reason of infancy, lunacy or other disability, incapable of making any statement or doing anything required or permitted by or under this Act, the lawful guardian, committee or manager (if any) of the person subject to the disability, or if there be none, any person appointed by any Court possessing jurisdiction in respect of his property, may make such statement or a statement as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

(2) An appointment may be made by the Court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any other person interested in the making of the statement or the doing of the thing.

Security for costs25[74A. Where a person giving notice of any opposition under this Act or giving notice to the Court of appeal from any decision of the Registrar under this Act, neither resides nor carries on business in Bangladesh, the Registrar or the Court, as the case may be, may require such person to give security for the payment of all costs incurred and likely to be incurred in the proceedings or appeal, as the case may be, and, in default of such security being given, may disallow the opposition or dismiss the appeal.]

Agency

Subscription and verification of certain documents75. The following documents, namely,-

(1) applications for a patent,

(2) notices of opposition,

(3) applications for extension of term of a patent,

(4) applications for the restoration of lapsed patents,

(5) applications for leave to amend,

(6) applications for compulsory license or revocation, and

(7) notices of surrenders of patent,

shall be signed and verified, in the manner prescribed, by the person making such applications or giving such notices:

Provided that, if such person is absent from Bangladesh they may be signed and verified on his behalf by an agent resident in Bangladesh authorized by him in writing in that behalf.

Agency76. (1) All other applications and communications to the Registrar under this Act may be signed by, and all attendances upon the Registrar may be made by or through a legal practitioner or by or through an agent authorised to the satisfaction of the Registrar.

(2) The Registrar may, if he sees fit, require-

(a) any such agent to be resident in Bangladesh:

(b) any person not residing in Bangladesh to employ an agent residing in Bangladesh;

(c) the personal signature or presence of any applicant, opponent or other person.

Powers, etc. of Government

Power for Government to make rules77. (1) The Government may make such rules as it thinks expedient subject to the provisions of this Act-

(a) for regulating the practice of registration under this Act;

(b) for classifying goods for the purposes of designs;

 

(c) for making or requiring duplicates of specifications, drawings and other documents;

(d) for securing and regulating the publishing and selling of copies, at such prices and in such manner as the Government thinks fit, of specifications, drawings and other documents;

(e) for securing and regulating the making, printing, publishing, and selling of indexes to, and abridgements of, specifications and other documents in the Department of Patents, Designs and Trade Marks; and providing for the inspection of indexes and abridgements and other documents;

26[(ee) for the manner in which fees leviable under this Act may be paid;

(eee) for ensuring secrecy with respect to patents to which section 21A applies;]

(f) generally for regulating the business of the Department of Patents, Designs and Trade Marks, the conduct of proceedings before the Registrar, and all things by this Act placed under the direction or control of the Registra] or of the Government; and

(g) generally for the purpose of carrying into effect the provisions of this Act.

(2) The power to make rules under this section shall be subject to the condition of the rules being made after previous publication.

27[(2A) Nothing in sub-section (2) shall apply in the case of rules made for the purpose specified in clause (eee) of sub-section (1); and any such rules may modify any of the provisions of this Act so far as may be necessary for that purpose.]

(3) All rules made under this section shall be published in the official Gazette, and on such publication shall have effect as if enacted in this Act.

Offences

Wrongful use of words Department of Patents, Designs and Trade Marks78. If any person uses on this place of business, or on any document issued by him, or otherwise, the words Department of Patents, Designs and Trade Marks or any other words suggesting that his place of business is officially connected with, or is, the Department of Patents, Designs and Trade Marks, he shall be punishable with fine which may extend to two hundred taka, and, in the case of a continuing offence, with further fine of twenty taka for each day on which the offence is continued after conviction therefore.

[Reciprocal arrangements with the United Kingdom and other parts of His Majesty’s dominions.

Reciprocal arrangements with the United Kingdom and other parts of His Majesty’s dominions78A. (1) Whereas His Majesty has by Order made on the 28th day of July, 1938, declared British India to be a convention country within the meaning of section 91A of the Patents and Designs Acts, 1907 to 1938, any person who has applied for protection for any invention or design in the United Kingdom, or his legal representative or assignee shall, either alone or jointly with any other person be entitled to claim that the patent that may be granted to him under this Act, for the said invention or the registration of the said design under this Act, shall be in priority to other applicants and shall have the same date as the date of the application in the United Kingdom:

Provided that-

(a) the application is made in the case of a patent within twelve months, and, in the case of design, within six months from the application for protection in the United Kingdom: and

(b) nothing in this section shall entitle the patentee or the proprietor of the design to recover damages for

infringements happening prior to the actual date on which, in the case of a patent, his application is accepted, or, in the case of a design, the design is registered, in Bangladesh.

(2) The patent granted for an invention or the registration of a design shall not be invalidated-

(a) in the case of a patent, by reason only of the publication of a description of, or use of, the invention, or

(b) in the case of a design, by reason only of the exhibition or use of, or the publication of a description or representation of, the design,

in Bangladesh during the period specified in this section as that within which the application may be made.

(3) The application for the grant of a patent or the registration of a design under this section must be made in the same manner as an ordinary application under this Act:

Provided that, in the case of a patent,-

(a) the application shall be accompanied by a complete specification; and

(b) if the application is not accepted within eighteen months from the date of the application for protection in the United Kingdom, the specification shall with the drawings (if any) supplied therewith, be open to public inspection at the expiration of that period.

(4) Where it is made to appear to the Government that the legislature of any other part of His Majesty’s dominions 28[* * *] has made satisfactory provision for the protection of inventions or designs, patented or registered in Bangladesh the Government may, by notification in the official Gazette, direct that the provisions of this section with such variations or additions, if any, as may be set out in such notification, shall apply for the protection of inventions or designs patented or registered in that part of His Majesty’s dominions 29[* * *].]

Savings and Repeal

Savings for prerogative79. Nothing in this Act shall take away, abridge or prejudicially affect the prerogative of the Government in relation to the granting of any letters patent or to the withholding of a grant thereof.

[Repealed]80. [Repealed by section 2 and Schedule of the Repealing Act, 1927 (Act No. XII of 1927).]

[Repealed]81. [Repealed by section 3 and Schedule II of the Repealing and Amending Act, 1920 (Act No. XXXI of 1920).]

1 Throughout this Act, except otherwise provided, the words “Bangladesh”, “Government”, “the High Court Division” and “Taka” were substituted, for the words “Pakistan”, “Central Government” or “Central Government or Provincial Government”, “a High Court” or “the High Court” and “rupees” or “Rs.” respectively by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

2 Clause (1) was substituted, for former clause (1) by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

3 Clause (3) was omitted by section 3 of the Patents and Designs (Amendment) Act, 2003 (Act No. XV of 2003).

4 The words “Penal Code” were substituted, for the words “Pakistan Penal Code” by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).

5 Clause (15) was added by section 3 of the Patents and Designs (Amendment) Act, 2003 (Act No. XV of 2003)

6 Sections 4A and 4B were inserted by section 4 of the Indian Patents and Designs (Amendment) Act, 1945 (Act No. IX of 1945)

7 Clause (dd) was inserted by section 5 of the Indian Patents and Designs (Amendment) Act, 1945 (Act No. IX of 1945).

8 The words “any other law for the time being in force” were substituted, for the words and figure “rule 53 of the Defence of Pakistan Rules” by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

9 Section 13A was inserted by section 10 of the Indian Patents and Designs (Amendment) Act, 1945 (Act No. IX of 1945)

10 Section 15A was inserted by section 11 of the Indian Patents and Design (Amendment) Act, 1930 (Act No. VII of 1930)

11 Sections 21 and 21A were substituted, for the original section 21 by section 15 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930)

12 The words “or British Possession” were omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

13 Section 23A was inserted by section 18 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930)

14 The words “Attorney General” were substituted, for the words “Advocate General” by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

15 The words “Attorney-General” were substituted, for the words “Advocate General” by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973)

16 The words “or any other High Court” were omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).

17 Sub-section (2) was omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).

18 Section 35A was inserted by section 21 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930)

19 Section 38A was inserted by section 12 of the Indian Patents and Designs (Amendment) Act, 1945 (Act No. IX of 1945)

20 Sections 51A and 51B were inserted by section 24 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930)

21 Section 55 was substituted, for section 55 by section 4 of the Patents and Designs (Amendment) Act, 2003 (Act No. XV of 2003)

22 Section 59A was inserted by section 14 of the Indian Patents and Designs (Amendment) Act, 1939 (Act No. XII of 1939)

23 Section 70A was inserted by section 16 of the Indian Patents and Designs (Amendment) Act, 1939 (Act No. XII of 1939)

24 Section 71A was inserted by section 16 of the Indian Patents and Designs (Amendment) Act, 1939 (Act No. XII of 1939)

25 Section 74A was inserted by section 30 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930)

26 Clauses (ee) and (eee) were inserted by section 31 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930).

27 Sub-section (2A) was inserted by section 31 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930).

28 The words “or of any Acceding State or non-Acceding State” were omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).

29 The words and comma “or in that State, as the case may be” were omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).