( ACT NO. II Of 1911 )
[ 1st March, 1911 ]
1♣An Act to amend the law relating to the protection of Inventions and Designs
WHEREAS it is expedient to amend the law relating to the protection of inventions and designs; It is hereby enacted as follows:-
PRELIMINARY
Short title, extent and commencement1. (1) This Act may be called the Patents And Designs Act, 1911.
(2) It extends to the whole of Bangladesh.
(3) It shall come into force on the first day of January, 1912.
Definitions2. In this Act, unless there is anything repugnant in the subject or context,-
2[(1) “Attorney-General” means the Attorney General for Bangladesh]:
(2) “article” means (as respects designs) any article of manufacture and any substance, artificial or natural or partly artificial and partly natural:
3[* * *]
(4) “copyright” means the exclusive right to apply a design to any article in any class in which the design is registered:
(5) “design” means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in section 478, or property mark as defined in section 479 of the 4[Penal Code]:
(6) “District Court” has the meaning assigned to that expression by the Code of Civil Procedure, 1908:
(7) [Omitted by the Central Laws (Statute Reforms Ordinance, 1960) (Ordinance No. XXI of 1960).]
(8) “invention” means any manner of new manufacture and includes an improvement and an alleged invention:
(9) “legal representative” means a person who in law represents the estate of a deceased person:
(10) “manufacture” includes any art, process or manner or producing, preparing or making an article, and also any article prepared or produced by manufacture:
(11) “patent” means a patent granted under the provisions of this Act:
(12) “patentee” means the person for the time being entered on the register of patents kept under this Act as the grantee or proprietor of the patent:
(13) “prescribed” includes prescribed by rules under this Act:
(14) “proprietor of a new or original design,”-
(a) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed; and
(b) where any person acquires the design or the right to apply the design to any article, either selersively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so required; and
(c) in any other case, means the author of the design; and
5[(15) “Registrar” means the Registrar of Patents, Designs and Trade Marks appointed under section 55 (1) of this Act:]
and where the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.
PART I
PATENTS
Application for and Grant of Patent
Application3. (1) An application for a patent may be made by any person whether he is a citizen of Bangladesh or not, and whether alone or jointly with any other person.
(2) The application must be made in the prescribed form, and must be left at the Department of Patents, Designs and Trade Marks in the prescribed manner.
(3) The application must contain a declaration to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application one at least of the applicants, claims to be the true and first inventor or the legal representative or assign of such inventor and for which he desires to obtain a patent, and must be accompanied by either a provisional or complete specification and by the prescribed fee.
(4) Where the true and first inventor is not a party to the application, the application must contain a statement of his name, and such particulars for his identification as may be prescribed, and the applicant must show that he is the legal representative or assign of such inventor.
Specifications4. (1) A provisional specification must describe the nature of the invention.
(2) A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed.
(3) 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.
(4) Where the Registrar deems it desirable, he may require that suitable drawings shall be supplied at any time before the acceptance of the application, and such drawings shall be deemed to form part of the complete specification.
(5) If in any particular case the Registrar considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the acceptance of the application, but such model or sample shall not be deemed to form part of the specification.
(6) The Registrar may, where the application was accompanied by a specification purporting to be a complete specification, if the applicant so requests, treat the specification as a provisional specification and proceed with the application accordingly.
Time for leaving complete specification6[4A. (1) 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:
Provided that the said nine months shall be extended to such period, not exceeding ten months from the date of the application, as may be specified in a request made by the applicant to the Registrar, if the request is made and the prescribed fee is paid within the period so specified.
(2) If the complete specification is not left within the period allowable under sub-section (1), the application shall be deemed to be abandoned at the expiration of ten months from the date thereof.
Provisional protection4B. (1) An invention may, during the period between the date of an application for a patent therefor and the date of sealing a patent on that application, be used and published without prejudice to that patent, and such protection from the consequences of use and publication is in this Act referred to as provisional protection.
(2) In this section, the expression “date of an application for a patent” means, as respects an application which is post-dated or ante-dated under this Act, the date to which the application is so post-dated or ante-dated, and means, as respects any other application, the date on which it is actually made.]
Proceedings upon application5. (1) The Registrar shall refer to an examiner every application in respect of which a complete specification has been filed and if satisfied on the report of the examiner that-
(a) the nature of the invention or the manner in which it is to be performed is not particularly described and ascertained in the complete specification, or
(b) the application, specification and drawings have not been prepared in the prescribed manner, or
(c) the title of the specification does not sufficiently indicate the subject-matter of the invention, or
(d) the statement of claim does not sufficiently define the invention, or
7[(dd) where a complete specification has been left after a provisional specification, the invention particularly described in the complete specification is not substantially the same as that which is described in the provisional specification, or
(e) the invention as described and claimed is prima facie not a manner of new manufacture or improvement, or
(f) the specification relates to more than one invention, or
(g) in the case of an application claiming priority under section 78A, the specification describes and claims an invention substantially larger than or substantially different from the invention disclosed in the specification field with the application made outside Bangladesh by virtue of which priority is claimed, or
(h) in the case of an application for a patent of addition under section 15A, the invention describe and claimed in the specification is not an improvement or modification of that described and claimed in the original specification,
he may refuse to accept the application or require that the application, specification or drawings be amended before he proceeds with the application; and in the later case the application shall, if the Registrar so directs, bear date as from the time when the requirement is complied with:
Provided that, when a specification comprises more than one invention, the application shall, if the Registrar or the applicant so requires, be restricted to one invention and the other inventions may he made the subject-matter of fresh applications; and any such fresh application shall be proceeded with as a substantive application, but the Registrar may, in his discretion, direct that any such fresh application made before the acceptance of the original application shall bear the date of the original application or such later date as he may fix, and the fresh application shall be deemed, for the purposes of this Act, to have been made on the date which it bears in accordance with such direction:
Provided further that where a complete specification is left after a provisional specification, the Registrar may, if the applicant so requests, cancel the provisional specification and direct that the application shall be deemed to have been made on the date on which the complete specification was left, and proceed with the application accordingly.
(1A) If the Registrar considers, at any time before the acceptance of an application, that the invention claimed therein has been wholly or in part claimed in a specification published on or after the date which the patent applied for would bear if granted, appertaining to an application for a patent which if granted will be of prior date to the patent applied for, he may require that the applicant’s specification be amended by the insertion of a reference to such other specification, by way of notice to the public.
(2) Where the Registrar refuses to accept an application or requires an amendment or the insertion of a reference, the applicant may appeal from his decision to the Government.
(3) The investigations required by this section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Government or any officer by reason of, or in connection with, any such investigation, or any proceeding consequent thereon.
(4) Unless an application is accepted within eighteen months from the date of the application, the application shall (except where an appeal has been lodged) be deemed to have been refused:
Provided that where, before, or within three months after, the expiration of the said period of eighteen months, a request is made to the Registrar for an extension of time, the application shall, on payment of the prescribed fee, be continued for any period so requested not exceeding in all three months from the expiration of the said period of eighteen months.
Advertisement on acceptance of application6. On the acceptance of an application the Registrar shall give notice thereof to the applicant and shall advertise the acceptance; and the application and specifications with the drawings (if any) shall be open to public inspection.
Effect of acceptance of application7. After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application:
Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
[Repealed]8. [Repealed by section 4 of the Indian Patents and Designs (Amendment) Act, 1930 (Act No. VII of 1930).]
Opposition to grant of patent9. (1) Any person may, on payment of the prescribed fee, at any time within four months from the date of the advertisement of the acceptance of an application, give notice at the Department of Patents, Designs and Trade Marks of opposition to the grant of the patent on any of the following grounds, namely:-
(a) that the applicant obtained the invention from him, or from a person of whom he is the legal representative or assign; or
(b) that the invention has been claimed in any specification filed in Bangladesh which is or will be of prior date to the patent, the grant of which is opposed; or
(c) that the nature of the invention or the manner in which it is to be performed is not sufficiently or fairly described and ascertained in the specifications; or
(d) that the invention has been publicly used in any part of Bangladesh or has been made publicly known in any part of Bangladesh; or
(e) that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention either froms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document published in Bangladesh in that interval;
but on no other ground.
(2) Where such notice is given, the Registrar shall give notice of the opposition to the applicant, and shall, on the expiration of those four months, after hearing the applicant and the opponent, if desirous of being heard, decide on the case.
(3) The decision of the Registrar shall be subject to appeal to the Government.
Grant and sealing of patent10. (1) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted, subject to such conditions (if any) as the Government thinks expedient, to the applicant, or in the case of a joint application to the applicants jointly, and the Registrar shall cause the patent to be sealed with the seal of the Department of Patents, Designs and Trade Marks.
(1A) Notwithstanding anything contained in sub-section (1), where-
(a) an applicant has agreed in writing that on the grant to him of a patent he will assign it to another party or to a joint applicant and refuses to proceed with the application, or
(b) disputes arise between joint applicants as to proceeding with an application,
the Registrar, if he is satisfied of the existence of such agreement or, in any other case, that any joint applicant or applicants ought to be allowed to proceed alone, may direct that such other party or joint applicant or applicants may proceed with the application accordingly and may grant a patent to him or them, as the case may be:
Provided that-
(i) the Controller shall not give any such direction until every party interested has had an opportunity of being heard by him, and
(ii) an appeal from any such direction shall lie to the Government.
(2) A patent shall be sealed as soon as may be, and not after the expiration of twenty-four months from the date of application:
Provided that,-
(a) where the Registrar has allowed an extension of the time within which an application may be accepted a further extension of four months after the said, twenty-four months shall be allowed for the sealing of the patent;
(b) where the sealing is delayed by an appeal to the Government, or by opposition to the grant of the patent, or by any proceedings taken for obtaining a direction of the Registrar under the provisions of sub-section (1A), or by reason of the Registrar, in exercise of the powers given to him by 8[any other law for the time being in force], having omitted to do or delayed the doing of anything relating to the application the patent may be sealed at such time as the Registrar may direct;
(c) where the patent is granted to the legal representative of an applicant who has died before the expiration of the time which would otherwise be allowed for sealing the patent, the patent may be sealed at any time within twelve months after the date of his death or at such later time as the Registrar may think fit;
(d) where for any reason a patent cannot be sealed within the period allowed by any of the foregoing provisions of this section that period may on payment of the prescribed fee and on compliance with the prescribed conditions be extended to the extent applied for but not exceeding three months.
Date of patent11. Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of the application:
Provided that no proceedings shall be taken in respect of an infringement committed before the advertisement of the acceptance of the application.
Effect, extent and form of patent12. (1) A patent sealed with the seal of the Department of Patents, Designs and Trade Marks shall, subject to the other provisions of this Act, confer on the patentee the exclusive privilege of making, selling and using the invention throughout Bangladesh and of authorizing others so to do.
(2) Every patent may be in the prescribed form and shall be granted for one invention only, but the specification may contain more than one claim; and it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.
Fraudulent applications for patents13. (1) A patent granted to the true and first inventor or his legal representative or assign shall not be invalidated by an application in fraud of him, or by protection obtained thereon or by any use or publication of the invention subsequent to that fraudulent application during the period of protection.
(2) Where a patent has been revoked by the High Court Division on the ground that it has been obtained in fraud of the true and first inventor, or where the grant of a patent has been refused by the Registrar under section 9 on the ground stated in clause (a) of sub-section (1) of that section, the Registrar may, on the application of the true inventor or his legal representative or assign made in accordance with the provisions of this Act, grant to him a patent for the whole or any part of the invention, and the patent so granted shall bear the same date as the patent so revoked or, in the case of a patent the grant of which has been refused, the same date as would have been borne by the patent if it had been granted:
Provided that no suit shall be brought for any infringement of the patent so granted committed before the actual date when such patent was granted.
Single patent for cognate inventions9[13A. (1) Where the same applicant has put in two or more provisional specifications for inventions which are cognate or modifications one of the other, and has obtained thereby concurrent provisional protection for the same, and the Registrar is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification in respect of the whole of such applications and grant a single patent thereon.
(2) Such patent shall bear the date of the earliest of such applications, but in considering the validity of the same, and in determining other questions under this Act, the Court or the Registrar, as the case may be, shall have regard to the respective dates of the provisional specifications relating to the several matters claimed in the complete specification.]
Term of Patent
Term of patent14. (1) The term limited in every patent for the duration thereof shall, save as otherwise expressly provided by this Act, be sixteen years from its date.
(1A) and (1B) [Omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).]
(2) A patent shall, notwithstanding anything therein or in this Act, cease if the patentee fails to pay the prescribed fees within the prescribed times:
Provided that where the patentee, before, or within three months after, the expiration of the time for payment, applies to the Registrar for an extension of time, the patent shall, on payment of such additional fee as may be prescribed, be continued or revived, as the case may be, for any period so applied for not exceeding in all three months from the expiration of the time for payment.
(3) If any proceeding is taken in respect of an infringement of the patent committed after a failure to pay any fee within the prescribed time, and before any enlargement thereof, the Court before which the proceeding is taken may, if it thinks fit, refuse to award any damages in respect of such infringement.
Extension of term of patent15. (1) A patentee may, present a petition to the Government praying that his patent may be extended for a further term; but such petition must be left at the Department of Patents, Designs and Trade Marks at least six months before the time limited for the expiration of the patent and must be accompanied by the prescribed fee and must be advertised by the patentee within the prescribed time and in the prescribed manner.
(2) Any person may within such time as may be prescribed and on payment of the prescribed fee give notice to the Registrar of objection to the extension.
(3) Where a petition is presented under sub-section (1), the Government may, as it thinks fit, dispose of the petition itself or refer it to the High Court Division for decision.
(4) If the petition be referred to the High Court Division, then on the hearing of such petition under this section, the patentee, and any person who has given notice under sub-section (2) of objection, shall be made parties to the proceeding, and the Registrar shall be entitled to appear and be heard.
(5) The Government or the High Court Division to which a petition is referred shall in considering the petition have regard to the nature and merits of the invention in relation to the public, to the profits made on the Patent and to all the circumstances of the case.
(6) If it appears to the Government or to the High Court Division when the petition is referred to it that the patent has not been sufficiently remunerative, the Government or the High Court Division as the case may be, may by order extend the term of the patent for a further term not exceeding five or in exceptional cases ten years or may order the grant of a new patent for such term not exceeding ten years as may be specified in the order and subject to any restriction, conditions and provisions which the Government or the High Court Division, as the case may be, may think fit.
Patents of addition10[15A. (1) Where a patent for an invention has been applied for or granted, and the applicant or the patentee, as the case may be, applies for a further patent in respect of any improvement in or modification of the invention, he may in his application for the further patent request that the term limited in that patent for the duration thereof be the same as that of the original patent or so much of that term as is unexpired, and, if he does so, a patent (hereinafter referred to as a patent of addition) may be granted for such term as aforesaid.
(2) Save as otherwise expressly provided by this Act, a patent of addition shall remain in force as long as the patent for the original invention remains in force, but no longer, and in respect of a patent of addition no fees shall be payable for renewal:
Provided that if the patent for the original invention is revoked, then the patent of addition shall, if the authority by which it is revoked so orders, become an independent patent, and the fees payable, and the dates when they become payable, shall be determined by its date, but its duration shall not exceed the unexpired term of the patent for the original invention.
(3) The grant of a patent of addition shall be conclusive evidence that the invention is a proper subject for a patent of addition, and the validity of the patent shall not be questioned on the ground that the invention ought to have been the subject of and independent patent.]
Restoration of lapsed patent16. (1) Where any patent has ceased owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the Registrar in the prescribed manner for an order for the restoration of the patent.
(2) Every such application shall contain a statement of the circumstances which have led to the omission of the payment of the prescribed fee.
(3) If it appears from such statement that the omission was unintentional or unavoidable and that no undue delay has occurred in the making of the application, the Registrar shall advertise the application in the prescribed manner, and within such time as may be prescribed any person may give notice of opposition at the Department of Patents, Designs and Trade Marks.
(4) Where such notice is given the Registrar shall notify the applicant thereof.
(5) After the expiration of the prescribed period the Registrar shall hear the case and, subject to an appeal to the Government issue an order either restoring the patent subject to any conditions and restrictions deemed to be advisable or dismissing the application:
Provided that in every order under this section restoring a patent such provisions as may be prescribed shall be inserted for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had ceased.
Amendment of Application or Specification
Amendment of application or specification by Registrar17. (1) An applicant or a patentee may at any time, by request in writing left at the Department of Patents, Designs and Trade Marks and accompanied by the prescribed fee, seek leave to amend his application or specification, including drawings forming part thereof, by way of disclaimer, correction or explanation, stating the nature of, and the reasons for, the proposed amendment.
(2) If the application for a patent has not been accepted, the Registrar shall determine whether and subject to what conditions (if any) the amendment shall be allowed.
(3) In any other case the request and the nature of the proposed amendment shall be advertised in the prescribed manner, and at any time within three months from its first advertisement any person may give notice at the Department of Patents, Designs and Trade Marks of opposition to the amendment.
(4) Where such a notice is given the Registrar shall give notice of the opposition to the person making the request, and shall hear and decide the case.
(5) Where no notice of opposition is given, or the person so giving notice of opposition does not appear, the Registrar shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.
(6) The decision of the Registrar in either case shall be subject to an appeal to the Government
(7) No amendment shall be allowed that would make the application or specification, as amended, claim an invention substantially larger than, or substantially different from, the invention claimed by the application or specification as it stood before amendment.
(8) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall be advertised in the prescribed manner, and shall in all Courts and for all purposes be deemed to form part of the application or specification.
(9) This section shall not apply when and so long as any suit for infringement or proceeding before a Court for the revocation of the patent is pending.
Amendment of specification by the Court18. In any suit for infringement of a patent or proceeding before a Court for the revocation of a patent the Court may by order allow the patentee to amend his specification by way of disclaimer correction or explanation in such manner, and subject to such terms as to costs, advertisement or otherwise, as the Court may think fit:
Provided that no amendment shall be so allowed that would make the specification, as amended, claim an invention substantially larger than, or substantially different from, the invention claimed by the specification as it stood before the amendment, and where an application for such an order is made to the Court notice of the application shall be given to the Registrar, and the Registrar shall have the right to appear and be heard.
Restriction on recovery of damages19. Where an amendment of a specification by way of disclaimer, correction or explanation has been allowed under this Act, no damages shall be given in any suit in respect of the use of the invention before the date of the decision allowing the amendment unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge.
Register of Patents
Register of Patents20. (1) There shall be kept at the Department of Patents, Designs and Trade Marks a book called the Register of Patents, wherein shall be entered the names and addresses of grantees of Patents, notifications of assignments and of transmissions of patents, of licenses under patents, and of amendments, extensions, and revocations of patents, and such other matters affecting the validity or proprietorship of patents as may be prescribed.
(2) The register of inventions and address book existing at the commencement of this Act shall be incorporated with, and form part of, the register of patents under this Act.
(3) The register of patents shall be prima facie evidence of any matters by this Act directed or authorised to be inserted therein.
(4) Copies of deeds, licenses and any other documents affecting the proprietorship in any patent or in any license thereunder, must be supplied to the Registrar in the prescribed manner for filing in the Department of Patents, Designs and Trade Marks.
Government
Patent to bind Government11[21. (1) Subject to the other provisions of this section, a patent shall have to all intents the like effect as against the Government as it has against any person.
(2) The officers or authorities administering any department of Government may, by themselves or by such of their agents, contractors or others as may be authorised in writing by them, at any time after the application , and after giving notice to the applicant or patentee, make, use or exercise the invention for the service of the Government on such terms as may, either before or after the use thereof, be agreed on, with the approval of the Government between such officers or authorities and the applicant or patentee, or, in default of agreement, as may be settled in the manner hereinafter provided. And the terms of any agreement or license concluded between the applicant or patentee and any person other than such officers or authorities, shall be inoperative so far as concerns the making, use or exercise of the invention for the service of the Government.
(3) Where an invention which is the subject of any patent has, before the date of the patent, been duly recorded in a document by, or tried by or on behalf of, the officers or authorities administering any department of Government (such invention not having been communicated directly or indirectly by the applicant or patentee), such officers or authorities, or such of their agents, contractors, or others, as may be authorised in writing by them, may, after giving notice to the applicant or patentee, make, use or exercise the invention so recorded or tried for the service of the Government, free of any royalty or other payment to the applicant or patentee, notwithstanding the existence of the patent. If, in the opinion of such officers or authorities, the disclosure to the applicant or patentee, as the case may be, of the document recording the invention, or the evidence of the trial thereof, if required, would be detrimental to the public interest, it may be made confidentially to counsel on behalf of the applicant or patentee, or to any independent expert mutually agreed upon.
(4) In the event of any dispute as to the making, use or exercise of an invention under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the High Court Division for decision, who shall have power to refer the whole matter or any question or issue of fact arising thereon to be tried before a special or official referee or an arbitrator upon such terms as it may direct. The Court, referee or arbitrator, as the case may be, may, with the consent of the parties, take into consideration the validity of the patent for the purposes only of the reference and for the determination of the issues between the applicant or patentee and such officers or authorities. The Court, referee, or arbitrator, further, in settling the terms as aforesaid, shall be entitled to take into consideration any benefit or compensation which the applicant or patentee, or any other person interested in the patent, may have received directly or indirectly from the Government or from such officers or authorities in respect of such patent:
Provided that, if the inventor or patentee is a Government servant and the subject-matter of the invention is certified by the Government to be connected with work done in the course of such service, any such dispute shall be settled by the Government after hearing the applicant or patentee and any other person having an interest in the invention or patent.
(5) The right to use an invention for the services of the Government under the provisions of this section, or any provisions for which this section is substituted, shall include, and shall be deemed always to have included, the power to sell any articles made in pursuance of such right which are no longer required for the services of the Government.
(6) Nothing in this section shall affect the right of the Government or of any person deriving title directly or indirectly from the Government to sell or use any articles forfeited under any law for the time being in force relating to customs or excise.
Assignment of patent to the Government21A. (1) The inventor of any improvement in instruments or munitions of war may (either for or without valuable consideration) assign to the Government all the benefit of the invention and of any patent obtained or to be obtained for the invention; and the Government may be a party to the assignment.
(2) The assignment shall effectually vest the benefit of the invention and patent in the Government, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valuable consideration), and may be enforced accordingly by or on behalf of the Government.
(3) Where any such assignment has been made, the Government may, at any time before the publication of the specification, certify to the Registrar that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed should be kept secret.
(4) If the Government so certify, the application and specifications, with the drawings (if any) and any amendment of the specification and any copies of such documents and drawings, shall instead of being left in the ordinary manner at the Department of Patents, Designs and Trade Marks, be delivered to the Registrar in a packet sealed by authority of the Government.
(5) The packet shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the Registrar, and shall not be opened save under the authority of an order of the Government.
(6) The sealed packet shall be delivered at any time during the continuance of the patent to any person authorised by the Government to receive it, and shall, if returned to the Registrar, be again kept sealed by him.
(7) On the expiration of the term of the patent the sealed packet shall be delivered to the Government.
(8) Where the Government certifies as aforesaid after an application for a patent has been left at the Department of Patents, Designs and Trade Marks but before the publication of the specification, the application and specifications, with the drawings (if any) shall be forthwith placed in a packet sealed by authority of the Registrar, and the packet shall be subject to the foregoing provisions respecting a packet sealed by authority of the Government.
(9) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which a certificate has been given by the Government as aforesaid.
(10) No copy of any specification or other document or drawing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection of the public, but, save as otherwise provided in this section, the provisions of this Act shall apply in respect of any such invention and patent as aforesaid.
(11) The Government may at any time waive the benefit of this section with respect to any particular invention, and the specifications, documents and drawings shall be thenceforth kept and dealt with in the ordinary way.
(12) The communication of any invention for any improvement in instruments or munitions of war to the Government or to any person or persons authorised by the Government to investigate the same or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same.]
Compulsory Licenses and Revocation
Compulsory licenses and revocation22. (1) Any person interested may present a petition to the Government which shall be left at the Department of Patents, Designs and Trade Marks, together with the prescribed fee, alleging that the demand for a patented article in Bangladesh is not being met to an adequate extent and on reasonable terms and praying for the grant of a compulsory license, or, in the alternative, for the revocation of the patent.
(2) The Government shall consider the petition, and if the parties do not come to an arrangement between themselves the Government may, as it thinks fit either dispose of the petition itself or refer it to the High Court Division for decision.
(3) The provisions of sub-section (4) of section 15, prescribing the procedure to be followed in the case of references to the Court under that section, shall apply in the case of references made to the Court under this section.
(4) If the Government is of opinion, or, where a reference has been made under sub-section (2) to the High Court Division, that Court finds that the demand for the patented article in Bangladesh is not being met to an adequate extent and on reasonable terms, the patentee may be ordered to grant licenses on such terms as the Government or the High Court Division, as the case may be, may think just, or, if the Government or the High Court Division is of opinion that the demand will not be adequately met by the grant of licenses, the patent may be revoked by order of the Government or the High Court Division:
Provided that an order of revocation shall not be made before the expiration of four years from the date of the patent, or if the patentee gives satisfactory reasons for his default.
(5) For the purposes of this section the demand for a patented article shall not be deemed to have been met to an adequate extent and on reasonable terms-
(a) if by reason of the default of the patentee to manufacture to an adequate extent and supply on reasonable terms the patented article, or any parts thereof which are necessary for its efficient working, or to carry on the patented process to an adequate extent or to grant licenses on reasonable terms, any existing trade or industry or the establishment of any new trade or industry in Bangladesh is unfairly prejudiced,; or
(b) if any trade or industry in Bangladesh is unfairly prejudiced by the conditions attached by the patentee to the purchase, hire or use of the patented article or to the using or working of the patented process.
Revocation of patents worked outside Bangladesh23. (1) At any time not less than four years after the date of a patent granted under this Act, any person may apply to the Government for relief under this section on the ground that the patented article or process is manufactured or carried on exclusively or mainly outside Bangladesh.
(2) The Government shall consider the application, and, if after inquiry it is satisfied-
(a) that the allegations contained therein are correct; and
(b) that the applicant is prepared, and is in a position, to manufacture or carry on the patented article or process in Bangladesh; and
(c) that the patentee refuses to grant a license on reasonable terms,
then, subject to the provisions of this section, and unless the patentee proves that the patented article or process is manufactured or carried on to an adequate extent in Bangladesh, or gives satisfactory reasons why the article or process is not so manufactured or carried on, the Government may make an order-
(a) revoking the patent either-
(i) forthwith; or
(ii) after such reasonable interval as may be specified in the order, unless in the meantime it is shown to its satisfaction that the patented article or process is manufactured or carried on within Bangladesh to an adequate extent; or
(b) ordering the patentee to grant a license to the applicant which may be a license exclusive to him or otherwise as the Government may direct.
(3) No order revoking a patent shall be made under the last sub-section which is at variance with any treaty, convention, arrangement or engagement with any foreign country 12[* * *].
(4) The Government may, on the application of the patentee, extend the time limited in any order made under sub-section (2), clause (ii), for such period not exceeding two years as it may specify in a subsequent order, or revoke any order made under sub-section (2), clause (ii), or any subsequent order if sufficient cause is in its opinion shown by the patentee.
Operation of order under section 22 or section 2313[23A. An order of the High Court Division under section 22 or of the Government under section 22 or section 23, directing the grant of any license shall, without prejudice to any other method of enforcement, operate as if it were embodied in a deed granting a license and executed by the patentee and all other necessary parties.]
Power of Registrar to revoke surrendered patent24. A patentee may at any time, by giving notice in the prescribed manner to the Registrar, offer to surrender his patent, and the Registrar may, if after giving notice of the offer and hearing all parties who desire to be heard he thinks fit, accept the offer, and thereupon make an order for the revocation of the patent.
Revocation of patent on public grounds25. A patent shall be deemed to be revoked if the Government declares, by notification in the official Gazette the patent or the mode in which it is exercised to be mischievous to the State or generally prejudicial to the public.
Legal Proceedings
Petition for revocation of patent26. (1) Revocation of a patent in whole or in part may be obtained on petition to or on a counter claim in a suit for infringement before the High Court Division on all or any of the following grounds, namely:-
(a) that the invention has been the subject of a valid prior grant of a patent in Bangladesh;
(b) that the true and first inventor or his legal representative or assign was not the applicant or one of the applicants for the patent;
(c) that the patent was obtained in fraud of the rights of the person applying for the revocation or of any person under or through whom he claims;
(d) that the invention was not, at the date of the patent, a manner of new manufacture or improvement;
(e) that the invention does not involve any inventive step, having regard to what was known or used prior to the date of the patent;
(f) that the invention is of no utility;
(g) that the complete specification does not sufficiently and fairly describe and ascertain the nature of the invention and the manner in which the invention is to be performed;
(h) that the complete specification does not sufficiently and clearly ascertain the scope of the invention claimed;
(i) that the patent was obtained on a false suggestion or representation;
(j) that the primary or intended use or exercise of the invention is contrary to law;
(k) that the patentee has contravened, or has not complied with, the conditions contained in the patent;
(l) that the complete specification does not disclose the best method of performance of the invention known to the applicant for the patent at the time when the specification was left at the Department of Patents, Designs and Trade Marks.
(m) that prior to the date of the patent, the patentee or other persons (not being authorities administering any department of Government, or the agents or contractors of, or any other persons authorised in that behalf by the Government secretly worked the invention on a commercial scale (and not merely by way of reasonable trial or experiment) in Bangladesh, and thereby made direct or indirect profits in excess of such amount as the Court may in consideration of all the circumstances of the case deem reasonable;
(n) that the invention claimed in the complete specification is not the same as that contained in the provisional specification, and that the invention claimed, so far as it is not contained in the provisional specification, was not new at the date when the complete specification was filed:
Provided that this sub-section shall have effect in relation to the ground of revocation specified-
(i) in clause (b), subject to the provisions of section 78A, or
(ii) in clause (d), subject to the provisions of sub-section (1) of section 13, sub-section (12) of section 21A, section 38 and section 40.
(2) A petition for revocation of a patent may be presented−
(a) by the 14[Attorney General] or any person authorized by him; or
(b) by any person alleging-
(i) that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims; or
(ii) that he, or any person under or through whom he claims, was the true and first inventor of any invention included in the claim of the patentee; or
(iii) that he, or any person under or through whom he claims an interest in any trade, business or manufacture, had publicly manufactured, used or sold, within Bangladesh, before the date of the patent, anything claimed by the patentee as his invention.
(3) The High Court Division may, irrespective of any provisions of the Code of Civil Procedure, 1908, in this behalf, require any person, other than the 15[Attorney General] or any person authorised by him, applying for the revocation of a patent to give security for the payment of all costs incurred or likely to be incurred by any person appearing to oppose the petition.
Notice of proceedings to persons interested27. (1) Notice of any petition for revocation of a patent under section 26 shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein, and it shall not be necessary to serve the notice on any other person.
(2) The notice shall be deemed to be sufficiently served if a copy thereof is sent by post in a registered letter directed to the person and place for the time being stated in the register.
Framing issue for trial before other Courts28. (1) The High Court Division may, if it thinks fit, direct an issue for the trial, before itself, 16[* * *] or any District Court, of any question arising upon a petition to itself under section 26, and the issue shall be tried accordingly.
17[* * *].
(3) If the issue is directed to a District Court, the finding of that Court shall not be subject to appeal, but the evidence taken upon the trial shall be recorded and a copy thereof, certified by the Judge of the Court, shall be transmitted, together with any remarks which he may think fit to make thereon, to the High Court Division directing the issue, and the High Court Division may thereupon act upon the finding of the District Court, or dispose of the petition upon the evidence recorded, or direct a new trial, as the justice of the case may require.
Suits for infringement of patents29. (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Act in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it:
Provided that where a counter claim for revocation of the patent is made by the defendant, the suit, along with the counter claim, shall be transferred to the High Court Division for decision.
(2) Every ground on which a patent may be revoked under section 26 shall be available by way of defence to a suit for infringement.
Exemption of innocent infringer from liability for damages30. A patentee shall not be entitled to recover any damages in respect of any infringement of a patent granted after the commencement of this Act from any defendant who proves that at the date of the infringement he was not aware, nor had reasonable means of making himself aware, of the existence of the patent, and the marking of an article with the word “patent,” “patented,” or any word or words expressing or implying that a patent has been obtained for the article, stamped, engraved, impressed on, or otherwise applied to the article, shall not be deemed to constitute notice of the existence of the patent unless the word or words are accompanied by the year and number of the patent:
Provided that nothing in this section shall affect any proceedings for an injunction.
Order for inspection, etc., in suit31. In a suit for infringement of a patent, the Court may, on the application of either party, make such order for an injunction, inspection or account, and impose such terms and give such directions respecting the same and the proceedings thereon, as the Court may see fit.
Certificate of validity questioned and costs thereon32. In a suit for infringement of a patent the Court may certify that the validity of the patent came in question, and if the Court so certifies, then in any subsequent suit in that Court for infringement of the same patent the plaintiff, on obtaining a final order or judgment in his favour, shall, unless the Court trying the suit otherwise directs, have his full costs, charges and expenses of and incidental to the said suit properly incurred.
Transmission of decrees and orders to the Registrar33. A Court making a decree in a suit under section 29 or an order on a petition under section 26 shall send a copy of the decree or order, as the case may be, to the Registrar, who shall cause an entry thereof and reference thereto to be made in the register of patents.
[Omitted]34. [Omitted by section 3 and 2nd Schedule of the Bangladesh Laws (Revision And Declaration) Act, 1973 (Act No. VIII of 1973).]
Hearing with assessor35. (1) In a suit or proceeding for infringement or revocation of a patent, the Court may, if it thinks fit, and shall on the request of all the parties to the proceedings, call in the aid of an assessor specially qualified, and try the case wholly or partially with his assistance.
(2) A Court exercising appellate jurisdiction in respect of such suit or proceeding may, if it thinks fit, call in the aid of an assessor as aforesaid.
(3) The remuneration, if any, to be paid to an assessor under this section shall in every case be determined by the Court and be paid by it as part of the expenses of the execution of this Act.
Grant of relief in respect of particular claims18[35A. Notwithstanding anything contained in section 19, if the Court in any action for infringement of a patent finds that any one or more of the claims in the specification in respect of which the infringement is alleged are valid, it may, subject to its discretion as to costs and as to the date from which damages should be reckoned and to such terms as to amendment as it may deem desirable, grant relief in respect of any of such claims which are infringed without regard to the invalidity of any other claim in the specification. In exercising such discretion the Court may take into consideration the conduct of the parties in inserting such invalid claims in the specification or permitting them to remain there.]
Remedy in case of groundless threats of legal proceedings36. Where any person claiming to have an interest in a patent by circulars, advertisements or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged infringement of the patent, any person aggrieved thereby may bring a suit against him in a District Court having jurisdiction to try the suit, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as he has sustained thereby, if the alleged infringement to which the threats related was not in fact an infringement of the patent:
Provided that this section shall not apply if an action for infringement of the patient is commenced and prosecuted with due diligence.
Miscellaneous
Grant of patents to two or more persons37. Where, after the commencement of this Act, a patent is granted to two or more persons jointly, they shall, unless otherwise specified in the patent, be treated for the purpose of the devolution of the legal interest therein as joint tenants, but, subject to any contract to the contrary, each of such persons shall be entitled to use the invention for his own profit without accounting to the others, but shall not be entitled to grant a license without their consent, and, if any such person dies, his beneficial interest in the patent shall devolve on his legal representatives.
Public use or knowledge of invention38. The public use or knowledge of an invention in Bangladesh before the date of the application for a patent thereon shall not invalidate the patent granted thereon if the knowledge has been obtained surreptitiously or in fraud of the true and first inventor or his legal representative or assign or has been communicated to the public in fraud of such inventor or his legal representative or assign or in breach of confidence:
Provided that such inventor or his legal representative or assign has not acquiesced in the public use of his invention, and that he applies for a patent within six months after the commencement of such use.
Disconformity19[38A. A patent shall not be held to be invalid on the ground that the complete specification claims a further or different invention to that contained in the provisional, if the invention therein claimed, so far as it is not contained in the provisional, was novel at the date when the complete specification was put in, and the applicant for the patent was the true and first inventor thereof, or the legal representative or assignee of such inventor.]
Loss or destruction of patent39. If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Registrar, the Registrar may at any time, on payment of the prescribed fee, seal a duplicate thereof.
Provisions as to exhibitions and readings before learned societies40. The exhibition of an invention at an industrial or other exhibition to which the provisions of this section have been extended by the Government by notification in the official Gazette, or the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for the purpose of the exhibition in the place where the exhibition is held, or the use of the invention or the publication of any description thereof, during or after the period of the holding of the exhibition, by any person elsewhere without the privity or consent of the inventor or the reading of a paper by an inventor before a learned society, or the publication of that paper in the society’s transactions shall not prejudice the right of the inventor to apply for and obtain a patent in respect of the invention, or the validity of any patent granted on the application:
Provided that-
(a) the exhibitor exhibiting the invention or the inventor reading the paper or authorising the publication thereof, as the case may be, gives to the Registrar previous notice in the prescribed form; and
(b) the application for a patent is made before or within six months from the date of first exhibiting the invention or of the reading of the paper, as the case may be, or when it has not been so read, of the said publication.
Models to be furnished to the National Museum of Bangladesh41. The National Museum of Bangladesh may at any time require a patentee to furnish it with a model or sample of his invention on payment to the patentee of the cost of the manufacture of the model or sample, the amount to be settled, in case of dispute, by the Government.
Foreign vessels in Bangladesh waters42. (1) A patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the Jurisdiction of any Court in Bangladesh, or the use of an invention in a foreign vessel within that jurisdiction, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or exported from Bangladesh.
(2) This section shall not extend to vessels of any foreign State of which the laws do not confer corresponding rights with respect to the use of inventions in Bangladesh vessels while in the ports of that State, or in the waters within the jurisdiction of its Courts.