IP ADMINISTRATION AND ENFORCEMENT SYSTEM TOWARDS MODERNIZATION OF IP PROTECTION IN BANGLADESH-AND A COMPERATIVE ANALYSIS OF IP ADMINISTRATION BETWEEN JAPAN AND BANGLADESH
Md. Farhad Hossain Khan
Government of the People’s Republic of Bangladesh
WIPO FUND-IN-TRUST/ JAPAN RESEARCH FELLOWSHIP PROGRAM
April 01 to September 30, 2004.
Supervised by: Mr. Yoshitoshi Tanaka, Associate Professor, Tokyo Institute of Technology (TIT), Japan.
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Table of Contents
Sl.no. Contents Page *** Acknowledgement……………………………………………………….. 3 1 Introduction……………………………………………………………. 4 2 IP Situation in Bangladesh and IP Law System…………………….…. 5 2.1. Provisions of some Sections in the draft Act, 2003…………………… 7 2.2. Public Awareness………………………………………………..………. 8 2.3. International agreement and some recent initiatives taken by the government…………………………………………………………….. 9 2.4. Enforcement……………………………………………………………. 10 3. Japanese Patent Law system…………………………………………….. 11 3.1. Situation in Japan……………………………….……………………….. 13 3.2. Recent strategy taken by the Japanese government…..…………………. 14 3.3 Awareness buildup………………………………………………………. 15 3.4. The current significance of IP Culture………………………………… 17 3.5. The necessity of IP Culture, and Related key issues…………………….. 17 3.5.1. IP Culture as a corporate strategy …………………………………….. 17 3.5.2. IP Culture as a strategy for Economic Development………………….. 18 3.5.3. Youth and IP Culture…………………………………………………… 18 3.5.4. IP Culture Supported by Society as a whole…………………………… 18 3.6. IP Initiatives……………………………………………………………. 18 3.6.1. Fostering Human Resources…………………………………………… 18 3.6.2. Preparing a Social Foundation……………………………………….… 19 3.6.3. Coordination and Cooperation among Related Organizations and Associations………………………………………………..……. 19 3.5.4. Expansions for the World Intellectual Property Organization and other Institutional Organizations…………………………………………….. 19 4. Definition of Invention………………………………………………… 19 4.1. Patentability of Invention………………………………………………. 20 4.2. Non-Patentable Inventions…………………………………………….. 21 4.3. Industrial Applicability/Utility…………………………………………. 23 4.4. Novelty and Priority…………………………………………………… 24 4.5. Inventive Step / Non-Obviousness……………………………………… 29 4.6. Prior Art Effect…………………………………………………………. 31 5. Documents required for filing patent applications……..…..…………... 32 5.1. Patent Prosecution (JPO)………………………………………………… 35 5.2. Patent Granting Procedure in DPDT:…………. …………………………..… 43 6. Publication / Laying-open of an Application…………………………….. 49 6.1. Publication & Opposition (DPDT)…………………………………………. 50 7. The patent right and time limit for grant and sealing of a patent……… 53 8. Term of patent right……..……………………………………………… 55 9. Patent of Addition………………………………………………………… 56 10. Trial………………………………………………………………………. 58 Conclusion………………………………………………………………. 60 *** Reference 62
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Acknowledgement
I gratefully acknowledge the financial support during my study, from the World Intellectual Property Organization (WIPO) Authority and to the Government of Japan, especially to the Japan Patent Office (JPO), and the Asia-Pacific Industrial Property Center (APIC) of Japan Institute of Invention and Innovation (JIII) for organizing this course respectively;
My special thanks to all the officers of JPO especially Mr. Hiroshi Ogawa, Commissioner of JPO, Mr. Yasuo Imai, Ex Commissioner of JPO, Mr. Shinjiro Ono, Deputy Commissioner of JPO. First, and foremost, I would like to thank Mr. Yoshitoshi Tanaka, Associate Professor of Tokyo Institute of Technology (TIT), despite the many demands on his time, Mr. Tanaka spent countless hours with me sketching out ideas on the whiteboard, discussing ways to deal with and also offered more insight time, and support than I ever had a right to expect. I respect Mr. Tanaka and I am deeply grateful for the advice and friendship that he has shared with me throughout the endeavor. I have learned a lot from working under his direct supervision and sincerely appreciate his kindness, willingness to devote significant time and insights to this study, Mr. Kiyoshi Yonetsu, Director of International Affairs Division, Mr. Takashi Sakurai, Ex Director of International Affaires Division, Mr. Hiroo Takaki, Deputy Director of International Affairs Division and Ms. Kanako Yanagawa, I appreciate the advice and kindness they shared with me during my studies. I extended special thanks to Ms. Yuka Tsukamoto, Ms. Sayaka ONO of JPO for worm welcome and continuous assistance patience, time and friendship;
My special thanks to Mr. Fumitake Yoshida, President of JIII, all staff members of APIC-JIII, especially Mr. Shingo Tsuji, Director General of APIC, Mr. Tetsuo Niwa, Mr. Toshiyasu Matsutani, Ms.Aiko Imayama, Ms. Kazuko Kinoshita and many others for their warm welcome and providing me good conditions and assistance for carrying out the research work.
My sincere thanks to my colleagues in the Department of Patents, Designs and Trademarks, for their support and patience; Finally, and most importantly, I would like to thank my mother and wife for their support, patience, and understanding.
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Introduction: During the period of my research work on IP administration in Japan, I was interested to know about the IP situation and the various policy and IP strategy undertaken by the Japanese government. Since Japan has taken strategy to make “an intellectual property based-nation” I was interested to highlight the IP situation in Bangladesh and the recent initiative taken by the government of Bangladesh although the practical situation in Bangladesh is quite different. Mainly depending on agro based economy with area of 143, 998-km2, Bangladesh got, about, 140,000,000 number of such a big population. But in fact, depending only on the agricultural products, economical development of the country is quite impossible. From the agricultural product, the people only can have simple food. On the other hand, the situation of industries in Bangladesh can easily be well understood, from the number of patent applications filed. Only around 300 patent applications are being filed, each year, where, about 85% of these applications are being filed from foreign countries and the rest 15% are originated from national filings. Comparing this (300) figure with the 413,092 number of patent applications, filed during 2003 in the Japanese patent Office (according to JPO Status Report, April, 2004), it is easy, to realize the present situation of industrial sector, as well as the situation of intellectual property in Bangladesh. Considering the present day needs industrial development is very important and there is no alternate for economic growth. (JPO Annual Report, 2003)
In the recent years, the technological reforms are progressing rapidly due to saturated information relating to intellectual property rights such as patents, designs, trademarks, confidential business information, copyrights and related rights and almost all inventive and innovative processes depend in some way on the internet and e-commerce which is fueled by IP system.
The World Intellectual Property Organization (WIPO) and some other organizations have made it possible to strengthen the protection of intellectual property rights and also created an integrated system designed to protect intellectual property rights in each country as well as increased competitions among countries and industries in each country through treaties, various international meetings, and similar activities. As a part of WIPO’s mandate to assist its member states, it continues to be active in seeking further harmonization of international patent laws, reform of the Patent Cooperation Treaty and deeper examination of global IP issues such as traditional knowledge, genetic resources and folklore.
Strong intellectual property protection with adequate and modernized legislation and its effective enforcement is essential for ensuring economic growth. Since the technologies of various fields 5 are transferred from one country to another through patent system and the patent documents / specifications contains such technologies, and if these technologies which are being filed in Bangladesh for patent rights, from industrially developed countries, can be utilized by the R&D institutions (after getting patent rights), for R&D activities and may also be utilized in private companies for industrial development, then country like Bangladesh, in future can become an industrially developed as well as economically developed country by utilizing such technologies.
Although, Intellectual Property (IP), play a vital / key role for the technological as well as economical development of a country, but it is hard fact that in Bangladesh the Patents and Designs Act, 1911, that was originated from British Law, is still enforced. It is true that though it is late but not last, during the first quarter of this year, 2004, a new draft of Patents and Designs Act, 2003 is finalized by the Law Commission of Bangladesh in cooperation with World Intellectual Property Organization (WIPO), which is under process to place before the Parliament.
Nowadays, there is a growing awareness that intellectual property rights protection is a crucial part for technological development as well as for the new global trading system. Industrial development is one of the principal forces contributing to a rich daily life. All the rich and industrially developed countries in the world have their, national strong Intellectual Property (IP) laws, like U.S.A., Japan UK. etc., and which plays a key role for their technological, industrial and economic development. The social, economic and technological changes of the late twentieth century have highlighted the importance of intellectual property law and policy, and to understand the intellectual property laws without considering its international dimension, international developments, often drive the content and direction of domestic intellectual property law.
Keeping these in mind I was interested to know about the Japanese Intellectual Property (IP) system, its activities, various functions and impacts on various industries as well as the impacts on Japanese economy and industrial growth, that’s why I am intending to compare the present situation of IP activities, and the initiatives, taken by Bangladesh government.
2. IP situation in Bangladesh and IP law system: Present civilization is built on the exploitation of the intellectual property which plays a key role in the transfer of technology, and covers patents, industrial designs, copyrights, trademarks, know-how, confidential information etc., each of which has monopoly rights conferred by statue for limited periods and subject to certain conditions, while third parties are given opportunities 6 for utilizing this technology under given restrictions. In essence, IP statues confer the right to prevent competitions from commercially exploiting the respective rights to the detriment of the property owner.
The social, economic and technological changes of the late twentieth century have highlighted the importance of international intellectual property law and policy. This development is the result of research and investment and of the efforts of many talented inventors, authors of utility models, creators of new designs, new tools, new technologies, etc. The purpose of a system of intellectual property rights is to encourage and to motivate inventors of inventions and creators of designs, to protect their rights, and to instill confidence in the maintenance of business activities related to trademarks. The system thus must be designed to form a solid base for industrial development.
Since Intellectual Property (IP) includes certain creations of the human intellect that have value and that are given legal protection as a property right, like any other kind of property, in the case of intellectual property of a work, invention, trademarks etc, is a subjective right relating to an object. In this context, under the patent system, whereby a person who has provided a novel and useful technology called an invention, which has never existed in the world to date, gets a patent right for an invention; which is the exclusive right under patent law, given by the government to an inventor for a limited period of time, in exchange for dedication of that invention to the public, for a new and industrially applicable invention, that has never been existed before, as it harms society, to grant an exclusive right of patent for an invention, which has already been known, to the public. But invention which contravenes public order and morals or which is likely to harm public health will not be patented in light of public interest even if it is industrially applicable, new or not easily conceived. A patent also grants the right to exclude others from making, using, or selling, and not the right to make, uses, or sells the claimed invention.
Like all intellectual property rights, however, patent rights are territorial in nature. Countries have a responsibility to implement their international obligations in national intellectual property laws. Thus, whether countries are complying with their international obligations in the field of intellectual property law is largely determined by analysis of their national laws. And although countries construct and administer systems of intellectual property, through administrative agencies and court systems, intellectual property laws are to a great extent used and enforced by private sectors. The acquisition, transfer and exploitation of rights are also largely a matter of private arrangement. (Graeme B. Dinwoodie & others, 2001)
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2.1. Provisions of some Sections in the draft Act, 2003: In this context according to the provisions of Section 49 of the Draft, Patents & Designs (P&D) Act, 2003, a patentee has the exclusive right to make use, exercise, sell or distribute the invention or patented article or substance in Bangladesh, or to use or exercise the method or process if the patent is for a process. The patentee or his agents or licensees can exercise this right only during the term of the patent. If the patentee co-owns the patent, as provided in Section 51 of the Act, 2003, he/she can assign his/her share of the patent or grant licenses to others to use the patent only with the consent of the co-proprietors or under the Registrar’s direction subject to the provisions contained in Section 51 and Section 52 of the Act. The patentee’s power to transfer patent rights is also subject to any rights vested in any other person of which notice is entered on the register.
A patentee may, at any time by giving notice to the Registrar in the prescribed manner, offer to surrender his patent as provided by Section 63 of the P&D Act, 2003, after he has given notice of surrender, the Registrar shall advertise the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent. This is necessary to protect the interests of licensees, equitable assignees and others with whom the patentee might have contractual obligations that are dependant on the continuance of the patent.
It is noted that as provided by Section 48 of the P&D Act, 2003, any person, for the sole purpose merely of experiment or research, or for the purpose of imparting of instructions to pupils, and to make or use a patented article or may use a patented process without the consent or authorization of the patentee and without the payment of royalties. Similarly, a patent has the same effect against the Government as it has against any person, but the Government may import, make or use patented articles for its own use without payment of a royalty.
Further the Government may import the medicines or drugs for the sole purpose merely of its own use or for distribution in any dispensary, hospitals or medical institutions maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette, without the consent of the patentee or payment of royalties. The Government however, cannot manufacture medicine or drugs in Bangladesh or sell any patented article, additionally; the Government can make use of the patented inventions and sell articles made in accordance with it 8 upon the payment of royalties. Moreover, the Government may acquire an invention for a public purpose either before or after the grant.
If the patentee does not work the patent to the reasonable requirements of the public at a reasonable price, the Registrar may grant compulsory license to any applicant to work the patent under the provisions of Section 83 of the P&D Act, 2003. Every patentee and the licensee should furnish the Registrar with periodical statement as to the extent he/she has worked the patented invention on a commercial basis in Bangladesh. Failure to supply such information is a punishable offence.
The patentee can enforce his/her rights through a suit for infringement of the patent as provided under Section 109 of the P&D Act, 2003, an action for recovery of royalties, or an action for specific performance of contractual rights. The reliefs available to a patentee for infringement of a patent are an injunction and either damages or an account of profits. Accordingly, a third party commercially using the patented invention without authorization is deemed as infringing on the patent right, in which case the right holder can seek protection under civil law including ‘right to require an injunction,’ ‘recovery of damages,’ and ‘measures to recover reputation.’ There is also protection available under civil law.
2.2. Public awareness: Among the IP rights, patents, particularly due to their high technical content and the complexity of the patent laws, pose the greatest challenge. Therefore it is imperative that every research scientist and corporate, and business professional, should have a sound knowledge of the patenting system in his own country and the countries where there is a likelihood of his doing business, which would assist in acquiring a hassle-free approach for obtaining patent protection for their invention.
It is hard fact that most of the scientists, technologists, R&D institutions, industrial entrepreneurs and business communities of Bangladesh are not well aware of the importance of the protection of IP rights, i.e., poor public awareness on intellectual property rights and the largely outdated administrative system of IP can be recognized as the major problem in the field of IP in Bangladesh. In order to increase national wealth through industrialization as well as the effective use of intellectual property, it is necessary to promote the creation of high quality intellectual property in the R&D sector and the contents businesses and promptly protect it legally, thereby maximizing the added value in the industry. As this flow is established more firmly, it will 9 become strong and solid, enhancing reproduction of intellectual property. Thus a virtuous cycle, an intellectual creation cycle, will be established.
In order to generate the creation of innovations and original content in the new ‘knowledge-based economy’ and to utilize such resources for economic growth, it is primarily necessary to stimulate and revitalize intellectual creation at universities and other R&D institutions. However, this in itself is not sufficient. Economic revitalization will not be achieved unless the results of such creation are properly protected and effectively utilized as intellectual property. As implied in the term ‘knowledge-based economy,’ the value added by knowledge is becoming much more important than ever before in current economic activities.
In order to achieve sustainable economic growth, these should quickly carryout drastic reforms to establish a mechanism by which innovations are continuously being produced. In order to promote economic growth and development, the Government of the People’s Republic of Bangladesh is focusing its concern on the setting up of numerous liberalized policies to promote investment and provide better incentives for such domestic and foreign investors. At this point of time, needless to say, IP rights are becoming increasingly important, in Bangladesh.
2.3. International agreements and some recent initiatives taken by the government: As a pat of the international agreement, Bangladesh is a signatory to World Intellectual Property Organization (WIPO) since May 11, 1985, joined Paris Convention in March 3, 1991, and is one of the founder members of World Trade Organization (WTO) January, 1, 1995 and also join the Berne Convention in May 4, 1999; but the Patents and Designs Act, 1911 that inherited from British law, is still in force in Bangladesh.
To move the existing IP Laws of Bangladesh, towards international standards, by January 2006, Bangladesh trying to modify its legal and administrative set up. In order to comply with the requirements of the TRIPS Agreement, Bangladesh Copyright Act, 2000 has already been updated and accordingly approved by the Parliament. The Government has also finalized the Trademarks Act, 2002, to comply the requirements of the TRIPS Agreement. The Law Commission of Bangladesh in co-operation with World Intellectual Property Organization (WIPO), to incorporate many features of the international patent practice, has newly drafted, the Bangladesh Patent and Design Act, 2003. Although, the new Act is not yet in force (under process to place before the Parliament), but these changes are part of the plan to ensure Bangladesh complies with the TRIPS Agreement by the beginning of 2006 as scheduled. 10
In this connection government of Bangladesh has amalgamated the Patent Office and the Trademarks Registry Office and established a new organization, namely ‘Department of Patents Designs and Trademarks” headed by the ‘Registrar’ of the department, in order to make the IP office updated and modernize, so that the activities related to IPR can be taken in cooperative basis. To administer the function of the Department smoothly, the existing relevant sections of the existing Acts have already been amended by the parliament. Accordingly an organogram comprising 112 officials headed by a ‘Registrar’ already been approved by the government to facilitate conducting the day-to-day functions of the Department. All these steps have already been taken recently, to gear up the effective protection of IPR.
2.4. Enforcement: On the other hand, the enforcement of intellectual property rights is one of several significant elements in intellectual property law system, recently, the enforcement issue has frequently highlighted in both domestic and international forum. The local industry and the right owners have requested for better protection of their inventions and creations. The protection of intellectual property rights can be conducted through several means, namely administrative measures, civil remedies and criminal sanctions. The administrative measures handled by administrative agencies of the government like customs controls, consumer protection measures and advertising standards. The civil remedies involving infringement disputes, compensation grant and preventive injunction, are taken care by the right owners and the private litigants. For certain infringement cases, in particular, piracy and counterfeiting, the administrative measures and civil remedies may be not sufficient to stop and deter the infringement. Thus, the criminal sanctions have to be applied for the enforcement.
Due to the nature of intellectual property, which basically relates to the private property rights, the enforcement by criminal sanctions has to be extensively studied and properly exercised to the intellectual property rights disputes.
On the other hand due to free market economy as well as globalization of economy and trade, more and more foreign brands are entering in Bangladesh market. Yet the irony is that before many foreign brands even enter the country, counterfeit versions are already entrenched in the market. The situation is becoming critical for brand owners. A large number of counterfeit goods mainly entering from China and India are being sold in Bangladesh are presently becoming a serious problem. The porous borders of Bangladesh remain a source of threat to the country’s economy. However the government is trying to tackle the situation by reforming the IP and other 11 related laws. As in any other developing countries, working with law enforcement authorities and courts is quite challenging in Bangladesh. However so long as IP holders have designed their objectives and strategy that suits their requirements, then achieving good results is not a difficult task. On the other hand if we look towards the IP situation in Japan and the strategy adopted by Japan in the field of IP policy it may be a good lesson for Bangladesh and other developing countries:
Since the exercising of IP rights, or IP system all over the World, is more or less the same. In this regard, I want to highlight some points on the revision of the Japanese patent law:
3. Japanese Patent Law System: The objective of the Japanese Intellectual property system has been to enhance the knowledge pool and add value to it through the generation and skillful use of national innovation and creativity. Japan enacted the country’s first patent law only two years after the WIPO Paris Convention was set up in 1883.From there, a national IP system in harmony with international norms was built up providing a firm domestic base for innovative activity and contributing greatly to providing a stable and reliable environment that encouraged the transfer of technology to Japan.
To promote the industrial development in Japan and giving importance on patent system, the ‘Exclusive Right Law’ on the examination and first-to-file principles was adopted in 1871. But in fact in April 18,1885, a patent ordinance was promulgated which is regarded as the first patent law in Japan and set forth the principle of one invention in one application, including some other provisions, and the patent ordinance was revised in 1888 to incorporate the first-to-invent principle.
To join, the Paris Convention, the patent law was revised in 1899, incorporating a priority claim provision and other relevant provisions. In 1909 the law was again revised for first-to-file patent application, judgment of novelty criteria, a provision for an employee’s invention, along with some other provisions. Revision in 1921 was also adopted the first-to-file principle including compulsory license and some other provisions.
In 1959, the Patent Law was again revised in addition to other Industrial Property Laws, where a patentable invention was changed from an ‘industrial invention’ to an ‘industrially applicable invention,’ and also incorporated a provision concerning an inventive step, and a provision for 12 filing a patent application covering more than a single invention. Divided application provision was introduced in 1970 with adoption of examination demand system, pre-trial system and reinforcement of rights under provisional protection.
A major point of revision was adopted in 1975 for a substance patent system and a multi claim application system. In this revision ‘an invention relating to a foodstuff or table luxuries,’ ‘an invention for manufacturing a drug with the use of a single medicine or a combination of more than a single medicine’ and ‘an invention for manufacturing a substance through chemical processing’ was deleted from unpatentable items. Thus, inventions falling into these categories were made patentable.
In 1978, the patent law was revised to incorporate the provisions with the Patent Cooperation Treaty (PCT), to link an international application to domestic procedures under the patent law, where an applicant is required to submit a translation of his international application, in principle, within 2 months after filing the application.
In 1985 the law was again revised to comply with the provision of PCT and necessity for establishing an internal priority system. In 1987, the law was further revised for improvement of multi-claim system etc. The introduction of procedures through electronic information processing organization and some other provisions including publication of official gazette in the form of a magnetic disk was introduced in 1990.
The 1994 revision was concerned with the TRIPS Agreement and to simplify trial-related procedures and introduction of foreign-language filing application system etc. The patent law and other intellectual property laws were revised in 1998 to strengthen the protection for Intellectual Property Rights, to accelerate to grant patent rights, and to reduce the patent fees where a system of awarding damages for patent infringement was reformed.
In accordance with the 2003 revision of the Patent Law to facilitate timely and high quality resolution of disputes, abolition of the opposition to the grant of a patent, its integration to the trial for invalidation system, and rationalization of relationship between trial for invalidation of a patent/trial for correction, and lawsuit against decisions (narrowing of time period for trial for correction after instituting a lawsuit) have been in force from January 1, 2004.
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In order to contribute to resolution of disputes related to the industrial property rights at an early stage, JPO has conducted preferential processing of trial for invalidation, introduction of programmed trial examination (enforcement since January 2003), cooperation with courts, active utilization of oral proceedings and visiting appeals and trials and assignment of appeal secretaries (since January, 2000).
The major changes for the amendment in 2003 are: (i) the Japanese Patent Office (JPO) fee schedule is changed, effective from April 1, 2004, (ii) the post grant opposition system is abolished, and the invalidation trial system is changed, effective from January 1, 2004; and (iii) the practices in Unity of invention before the JPO is changed in compliance with PCT type Unity of invention, effective from January 1, 2004.
· In the new Invalidation Trial System, the post–grant opposition system is abolished, while the invalidation trial is revised to allow any entry to demand an invalidation trial without interest. Under the new invalidation trial: (i) the trial may be demanded at anytime; (ii) both parties are involved in adversary system during the trial procedure; and (iii) the demanding party may appeal against the trial decision affirming the patent at issue to the Tokyo High Court.
3.1. Situation in Japan: By introducing advanced technology from Europe and the United States in the 1960s-1970s and gradually modifying and improving such technology, as well as by effectively utilizing the teamwork of a diligent workforce, Japan successfully established the world’s best manufacturing system for the ‘creation of tangible products.’ As a result, in the 1980s, Japan attracted attention not only from developing countries but also from Europe and United States. As it is expected that the workforce will decrease as the birthrate declines and that there will be a limit to the vigorous investment activity that has been seen so far, the key to Japan’s future economic growth will be an increase in productivity fueled by innovation. In this context, to achieve sustainable economic growth, Japan is giving more importance to establish a mechanism by which innovations are continuously being produced and Japanese industries and universities retain stocks of such knowledge that have supported past economic developments, it is not at all impossible for Japan to generate creative and innovative resources capable of producing the new ‘knowledge-based 14 economy.’ Japan is rich in industries, technologies and skilled human resources, and will continue to exist and create them.
3.2. Recent strategy adopted by the Japanese government: In order to generate the creation of innovations and original content in the new ‘knowledge-based economy’ and to utilize such resources for economic growth, it is primarily necessary to stimulate and revitalize intellectual creation at universities and other institutions. Based on such awareness, to establish Japan as an intellectual property–based nation where the achievements of intellectual creation activities are the source of national wealth, thus ensuring economic growth, the Strategic Council on Intellectual Property, established in February 2002, and the Intellectual Property Policy Outline was adopted in July 2002, with the objective to further promote the Government’s basic concept of achieving an intellectual property-based nation, the so called pro- patent policy, and the Basic Law on Intellectual Property, based on these policy was enacted in November 2002, setting the goal of making Japan ‘an intellectual property-based nation,’ to emphasis on inventions and creation for the purpose of achieving a dynamic economy and vigorous society through the strategic creation, protection and exploitation of intellectual property.
Under this law, the Intellectual Property Policy Headquarters i.e. ‘Policy Headquarter’ was established within the Cabinet Secretariat in March 2003. In July 2003, the Strategic Program for the Creation, Protection and Exploitation of Intellectual Property (IP Strategic Program) was adopted. Thus arrangements were made to design an Intellectual Property Strategic Program or ‘Strategic Program’ and Japan took the first step toward becoming ‘an intellectual property-based nation’ and it is scheduled that all Governmental ministries and agencies will join forces to concentrate on the intellectual property policy as directed by the Strategic Program. The IP Strategic Program provides specific issues, to be tackled by the Government in the future, in the following areas associated with creation, protection and exploitation of intellectual property, media content business and human resource development.
In order to make Japan a true ‘intellectual property-based nation’ it is necessary to take measure to the maximum extent for the creation, protection and exploitation of intellectual property as well as for the development of human resources that support such activities, from the perspective of ensuring the participation of the entire public in the society. Japan, recently revised their IP laws, and also, a proactive and comprehensive review of the IP system is under way, following strong and insightful initiatives launched by His Excellency Prime Minister Koizumi, aiming to create ‘a nation built on intellectual property’ and emphasizing he and his government place on 15 tapping the intellectual property resources of their country which is their national strategy for such a IP empowered nation. (JPO Status Report, 2004)
3.3. Awareness buildup: For the Intellectual Property Dissemination and awareness-raising of the public, the JPO has developed supplementary readers on patents and other industrial property rights for each educational level from elementary school to high school and university in order to provide industrial property education throughout school education. This activity is aimed at having the public gain the correct knowledge on the system of industrial property indispensable for the development of science and technology and to raise their intellectual property awareness to protect and respect intellectual property. According to the JPO Status Report, April 2004, in FY 2003, 500 thousand copies were distributed to elementary and secondary educational institutions and 490 thousand copies to higher educational institutions. Also for adults in general, the JPO holds various seminars nationwide for various target participants including industrial property beginners and those already engaged in industrial property-related works. 124 seminars were held and more than 30,000 participants attended these seminars in FY 2003. For promoting technology transfer from universities and other institutions and to upgrade industrial technology and create new businesses through promoting the transfer of research findings from universities and other institutions to the industrial sector, the ‘Law for Promoting University-Industry Technology Transfer’s was enacted (enforced in August 1998). (JPO Status Report, 2004)
For the utilization of Industrial Property Information, the JPO has been providing the Industrial Property Digital Library (IPDL) service on the JPO Website (http://www.ipdl.go.jp/homepage_e.ipdl) since March 1999 to allow people to have better access to patent information because, the industrial property information is simultaneously innovative technical information, information on rights indicating the range of monopolistic rights, and effective information usable for grasping development of innovative technology and other company’s trends in R&D efforts. On the other hand for the development of industrial property system in Japan, patent attorneys are playing a very important role in the intermediary care of industrial property matters involving legal and technical problems between the applicant for patent and the Patent Office. Inventors are generally skilled only in the field of art with which they are familiar, but the patent attorneys having their wide knowledge of industrial property laws and practice, are consulting as well as advising on all areas of the industrial property laws and practice and the rights that can be accrued there from, for inventors and applicants.
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By making Japan ‘an intellectual property-based nation’ it will also be possible to restore and strengthen the technological capability and competitiveness of the Japanese manufacturing industry while revitalizing the Japanese economy through creation of new job opportunities.
Recently, in May 25 Japan Institute of Invention and Innovation (JIII) celebrates its centennial anniversary and holding an International Symposium on ‘Striving for the Establishment and Dissemination of IP Culture’ for global efforts to raise awareness of intellectual property rights and fight piracy to bolster economic growth; aiming for promoting a common understanding of the comprehensive ideas of Intellectual Property Culture (IP culture) and its dissemination globally and on a grass-roots level through various activities under its direction and establish the common understanding of and derive respect for them and to promote creativity in youth as well as to contribute to nurturing talented people full of originality. Since it established in 1904, it continuously served as the center for the promotion of invention and dissemination of the intellectual property system, thus leading to the encouragement of science and technology and the development of industry.
The objective of the symposium comes as concerns over a perceived lack of respect for intellectual property rights grow, while many industrialized nations eye patents and innovative technology as key to sustainable economic growth. The main objective of the symposium was to reach a consensus on effective ways to nurture IP culture through cooperation among related institutions around the world and spread recognition of the importance of protecting intellectual property so as to contribute to sustainable growth of the world economy and to social stability in the 21st century.
As globalization progresses and products and services become borderless, there is an increasing need to harmonize intellectual property system and standards internationally. The symposium organizers issued a declaration calling for more programs to educate the general public, youth- and businesses, with a focus on small enterprises. In the Tokyo Declaration, they called for ‘building a culture where intellectual property is more respected and protected as social infrastructure,’ provided that it promotes economic stability and thus ‘profitability to the people and the society.’ It emphasized the importance of ‘cultivating human resource’ to fostering such ideas through education programs and exchanges with experts. The declaration also called for closer international cooperation to enhance global understanding of intellectual property.
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About 500 government, business and academic experts participated in the Symposium and with the participation of representation of 4 inter-governmental Organization, Organization from 39 countries and regions, and various industries as well as numerous professionals in the intellectual property field, participants of the symposium recognized the following points:
3.4. The Current Significance of IP Culture: The intellectual property rights system, in essence, functions in encouraging the development of industries through invention and innovation and possesses the ability to bring about economic benefit; it has contributed greatly to Japan, the United States, many countries in Europe and other parts of the world achieving their current economic status. In light of the rapid globalization of worlds politics and economies, a variety of problems, have arisen that require global cooperation in order to be effectively addressed. These problems include the uneven economic development between developed and developing countries, and issues regarding food, natural resources, the environmental and population. In order to effectively respond to the challenge posed by these problems, a new culture is necessary where society as a whole should understand and respect the significance of all the processes relating to intellectual property including the nurturing of creativity and the creation, protection, and utilization of intellectual property, and take action accordingly.
This is IP Culture as a social foundation. The future advancement of humankind will be difficult without the establishment of IP Culture. (JIII homepage, 2004).
3.5 The Necessity of IP Culture, and Related key issues: IP Culture is multifaceted in nature and, therefore, it may be used as a powerful tool for handling a variety of problems in contemporary society only where it has been recognized comprehensively with its respective facets appropriately set in balance and nurtured, as opposed to placing emphasis only on particular ones. Accordingly, the following facets must particularly be considered with care:
(1) IP Culture as a corporate strategy: It is expected that the fostering of IP Culture as a corporate strategy in order to maintain and strengthen the competitiveness of each nation’s companies and institutions will contribute to society, while simultaneously promoting competition among them and encouraging innovation in society as a whole.
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(2). IP Culture as a strategy for Economic Development: World economic development is brought about indeed when the benefit of intellectual property is enjoyed in every country and region. In order for each country and region to plan economic development through the expansion of investment, encouragement of the introduction of new technology, and the development of autonomous technology, IP Culture is indispensable as a social foundation that promotes these activities and hinders counterfeiting and piracy, thus bringing about sound economic development.
(3). Youth and IP Culture: The dreams of youth in science, technology and arts, as well as their efforts to make those dreams come true, are the wellspring of invention and innovation. Society as a whole has the pressing task of positively nurturing IP Culture, the starting point for fostering creativity, in order to enable all the youth to become well acquainted with it. To do so, promotional activities, such as invention clubs for schoolchildren and exhibitions of invention and innovation, have proven to be extremely effective.
(4). IP Culture Supported by Society as a whole: A society that strives to realize people’s dreams through the understanding and respect for IP Culture will naturally head in the direction of stability, and enables not only sustainable economic development to be realized but also invention and innovation to contribute to solving the problems which threaten, the whole of society in current and future generations, resulting in the prosperity of humankind. It is therefore necessary that IP Culture be nurtured by society as a whole.
3.6. IP Initiatives: IP culture will be maintained and developed only when supported by the continuous efforts of society as a whole. In order for IP Culture to become an established element within society, it must be carried through the work of global dissemination and not just limited to any particular country or region, so that it will be understood and respected by all people, from policy makers and managers of companies and universities to the general public if, accordingly the following efforts can be made:
(1). Fostering Human Resources:An initiative for securing human resources that will lead the development of IP Culture, and implementing capacity building training program should be 19 carried out while at the same time positively utilizing and applying the abilities of experts and instructors.
(2). Preparing a Social Foundation: In light of the globalization of economic activities as well as the advancement and diversification of technology, it is imperative that international harmonization of the intellectual property rights systems and their operations, including those from a new perspective, be implemented.
(3). Coordination and cooperation among Related Organizations and Associations: In order to nurture grass-root and global IP culture, coordination and cooperation among related organizations and associations across national boundaries should be begun at a regional level and expanded to a global level.
(4). Expansions for the world Intellectual Property Organization and Other Institutional Organizations: It is hoped that the world Intellectual Property Organization and other International Organizations will be involved in formulating and implementing a program that assures that the above aims reach fruition.
At this stage I would like to make a short comparison with some common sections of the newly drafted Patents and Designs Act, 2003 of Bangladesh and that of which, with Japanese Patent Law: 4. Definition of invention: According to Section 2 – (1) of the Japanese Patent Law, ‘invention’ means the highly advanced creation of technical ideas by which a law of nature is utilized.
As provided in Section 2- (10) of the draft Patents and Designs Act, 2003 of Bangladesh, ‘Invention’ means a new product or process involving an inventive step and capable of industrial application, where,
(a) ‘Inventive step’ means features that make the invention not obvious to a person skilled in the art. * In the new draft Act, the definition of an invention has been made more generic 20 to unambiguously accommodated ever-emerging new technologies in place of an orthodox one. In the draft Act, the definition of an ‘invention’ has been made more clear, and definitive by introducing the term ‘inventive step’ to define the word ‘invention’.
In the Japanese Patent Law, the term ‘Inventive Step’ has been defined in Section 29 of the Law to define the patentability of an inventions, as well as the word ‘highly advanced’ as used, in the definition of invention of the Japanese Patent Law is to distinguish an invention, a subject matter of Patent Law, from a device, a subject matter of Utility Model Law, and the words ‘creation of technical ideas’ are introduced in the definition to exclude the scientific discoveries from invention because the scientific discoveries do not satisfy the requirement of ‘creation of technical ideas’, where the word ‘technical’ involves the re-productivity.
4.1. Patentability of Invention: Not every bright and wonderful idea is patentable. A patentable invention has to be fulfilling some specific patentable criteria i.e., an invention, which has no prior application and does not contravene public order and morals, may be considered for a patentable invention. According to the provisions of Section 29 of the Japanese Patent Law, when the specification fully describe the following three fundamental requirements of the invention and fulfilling other official terms and conditions, only then the invention may considered to be a patentable one: (i) Industrially applicable invention {as provided under Section 29 (1)}, (ii) Novelty {as provided under Section 29 (1) (i) ~ (iii)}, (iii) Inventive step {as provided under Section 29 (2)}.
According to the provisions of Section 3 of the draft P &D Act, 2003, (1) A patent may be granted only for an invention of either product or process in any field of technology of human endeavor provided that- (a) the invention is new,
(b) it involves an inventive step,
(c) it is capable of industrial application,
(d) pharmaceutical and agricultural chemical products shall be patented, provided that such product(s) claimed, shall define the invention having inventive step. 21
* The patentable criteria in patenting system are more or less the same in each country, all over the world. The patentable criteria as defined in Subsections (a) to (c) of Section 3 of the draft Act are similar to that of the gist of the provisions of Subsections (i) to (iii) of Section 29 (1) and Section 29 (2) respectively of the Japanese Patent Law. The provisions as provided in the Subsection (d) of Section 3 of the draft Act, actually covered by the Subsection (b) of this Section 3, and it appears that this Subsection (d) is a mere repetition of the Subsection (b) of the Section 3 of the draft Act and may be redundant.
4.2. Non-patentable inventions: According to Section-32 of the Japanese Patent Law, ‘the inventions liable to contravene public order, morality or public health shall not be patented, notwithstanding Section-29.’
· Method for treatment of the human body by surgery or therapy and diagnostic methods practiced on the human body are not industrially inapplicable inventions, and therefore these inventions are not patentable subject matters. As provided in Section 4,of the draft Act, 2003, the following are not inventions for the purpose of this Act, that is to say, anything which is : (a) an invention which is frivolous on the ground that it claims as an invention anything obviously contrary to well-established natural laws;
(b) an invention the use of which would be contrary to law and morality;
(c) an invention the use of which would be injurious to public health or environment;
(d) a discovery, scientific theory of mathematical method;
(e) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(f) a scheme, role or method for doing business, playing games, performing purely a mental act or program for a computer;
(g) an invention the publication or exploitation of which would be generally 22
expected to encourage offensive, immoral or anti-social behavior;
(h) any variety of animal or plant of any essential biological process for the production of animals or plants, not being a micro-biological process or the product of such a process;
(i) any method for the medical, surgical, curative or prophylactic or other treatment of human beings or any method of a similar treatment of animals or plants, and diagnostic methods practiced on the human body, animal body or plant;
Provided that this Sub-Section shall not apply to any products used in any such methods;
(j) the mere discovery of any new property or new use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
(k) a substance obtained by a mere admixture resulting only in the aggregation of the known properties of the components thereof or a process for producing such substance;
(l) an invention relating to atomic energy falling under article 16 of the Bangladesh Atomic Energy Commission Order, 1973 (President’s Order No. 15 of 1973);
(m) inventions- (i) claiming substances intended for use, or capable of being used, as food or as medicine or as drug;
Provided that claims for the invention of methods or processes of manufacturing of such substances shall be patentable;
(n) process for cloning human and animal beings;
(o) the human and animal body and its genetic identity;
(p) the use of human and animal embryos for industrial or commercial purposes; (q) process for the modification of the genetic identity of human and animals that 23 cause to suffer without any substantial medical benefits to human or animal beings obtained thereby. *According to the provisions of the draft Act, 2003, there is also a list of subject matters, excluded from patentability, as being essentially intellectual. The principle of protection of the public order or morality is the same, but the different nature and culture of two countries may finally affect the result of judging. In fact the matters excluded from patentability are the same in both the countries, although, in the draft Act, such criteria are explained in details.
4.3. Industrial Applicability/Utility: Its objective is to exclude from patentability inventions, which have no utility in any field of industry i.e., which do not achieve the objective and purpose of the patent law to promote the development of the industry, claimed by the invention or which may only be used for academic or experimental and/or private purposes. Where the word ‘industry’ has to be understood in a broad sense, such as not only manufacturing, mining and farm industries but also, including non- manufacturing industries such as transport and services, including the insurance and financial businesses, agriculture and fisheries, and also include any physical activity i.e., an activity that belongs to the useful or practical arts as distinct from the aesthetic arts.
But the term “Utility,” on the other hand, is a some what more complex notion, according to which it may be examined, in particular, whether an invention is able to do something, whether it works to solve the problem it is supposed to solve, and whether it has some social benefit.
As in Section 29 (1) of the Japanese Patent Law provided that ‘any person who has made an invention which is industrially applicable may obtain a patent therefor.’
According to the JPO Guidelines, the following are not considered to be industrially applicable invention such as, (a) Methods for treatment of human body by surgery or therapy and diagnostic methods practiced on the human body, (b) Commercially inapplicable inventions e.g. (i) an invention, applied only for personal use, such as a method for smoking and, (ii) an invention applied only for academic or experimental purpose. However, an invention, which relates to marketable or tradable subject matter, is only considered to be commercially applicable invention and hence industrially applicable invention. (c) Practically inapplicable inventions i.e., an invention for which it is 24 practically impossible to work is not considered an industrially applicable invention even it works theoretically. According to the provisions of Section 7 of the draft Act, 2003, (1) Subject to Sub-Section (2) of this Section, an invention shall be taken to be of industrial application if it can be made or used in any kind of industry, including agriculture fishery and services.
(2) An invention of a method of treatment of the human or animal body by surgery or therapy or diagnosis practiced on the human or animal body shall not be taken to be capable of industrial application.
(3) Sub-Section (2) of this Section shall not prevent a product consisting of a substance or composition being treated as capable of industrial application merely because it is invented for use in any such method.
· Although in Subsections (2) and (3) of the new draft Act, defined in details, about the capability of industrial applicability, but the subject matter for industrial applicability in both the laws are more or less the same. According to JPO Guidelines, only the method of treatment of human body is not patentable, but nothing mentioned there, regarding the method of treatment of animal body. However, according to Section 4 of the draft Act, 2003, there is also a list of subject matter, to be treated as non-patentable inventions, including the method of treatment of human as well as animal body.
4.4 Novelties and Priority: The requirement of novelty is one of the essential and universally recognized conditions of patentability. According to this principle, an invention shall be considered to be new if it is not comprised in the prior art and that has never existed before, since it harms society to grant an exclusive right of patent for an invention which has already been known to the public. Novelty therefore results from the comparison between the existing prior art or technological information previously “known” at the date of filing (or the date of priority) and the claimed invention. According to popular usage, the body of such previously “known” and “disclosed” information is termed as “prior art.” The underlying reason for the requirement of novelty is that nothing should be withdrawn from public use that already belongs to the public domain.
Anything, which forms part of the prior art, would, in principle, destroy the novelty of the invention. It is evident that the requirement of novelty also defined and applied in different ways 25 throughout the world. The real meaning of “prior art” in legal theory- it is knowledge that is available, including what would be obvious from it, at a given time, to a person of ordinary skill in the art. i.e., Novelty exists if there is any difference between the invention and the known art. In determining novelty, a prior art document should be read as a person skilled in the art would have read it on the effective date of publication of the document. An invention that is identically and publicly disclosed in the prior art is unpatentable for lack of novelty (“anticipation”). The characteristic of the novelty is that an invention is not one of publicly known prior to the filing of the patent application, publicly worked inventions, inventions disclosed in distributed publications/literature or inventions made available to the public through electric telecommunication lines or internet, prior to filing of the patent application.
Some countries that prohibit any disclosure of an invention prior to the filing of a patent application are called “absolute novelty” countries they have adopted a very broad standard of what constitutes “state of the art” and which therefore cannot be a subject matter of a patent. Some other countries offer inventors, a grace period in which to file an application after a public disclosure for a period of months under certain circumstances.
On the other hand “priority of Invention” in patent system is a legal fiction where, the first person to file a patent application is entitled to the right of priority of invention unless they derived the invention from another; i.e., priority of invention means, merely priority of application and is determined by “first-to-file” system.
As provided in Section 29 (1) of the Japanese Patent Law, the following inventions are not subject to patent protection because of the lack of novelty: (i) inventions which were publicly known in Japan or elsewhere prior to the filing of the patent application; (ii) inventions which were publicly worked in Japan or elsewhere prior to the filing of the patent application;
(iii) inventions which were described in a distributed publication or made available to the public through electric telecommunication lines in Japan or elsewhere prior to the filing of the patent application.
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Further the Section 39(1) of the Law provides that where two or more patent applications relating to the same invention are filed on different dates, only the first applicant may obtain a patent for the invention (first–to-file rule applied).
(2) Where two or more patent applications relating to the same invention are filed on the same date , only one such applicant, agreed upon after mutual consultation among all the applicants, may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention.
(3) Where an invention claimed in a patent application is the same as a devise claimed in a utility model application and the applications are filed on different dates, the patent applicant may obtain a patent only if his application was filed before the utility model application.
(4) Where an invention claimed in a patent application is the same as a device claimed in a utility model application and the applications are filed on the same date, only one applicant, agreed upon after mutual consultation between the applicants, may obtain the patent or the utility model registration. If no agreement is reached or no consultation is possible, the patent applicant shall not obtain a patent for the invention.
(5) Where a patent application or a utility model application is abandoned, withdrawn or dismissed, or where an examiner’s decision or trial decision that a patent application is to be refused has become final conclusive , such application shall, for the purpose of Subsections (1) to (4), be deemed never to have been made. However, this provision shall not apply where an examiner’s decision or a trial decision that the patent application is to be refused under the last sentence of Subsection (2) or (4) becomes final and conclusive.
(6) A patent application or a utility model application filed by a person who is neither the inventor nor the creator nor the successor in title to the right to obtain a patent or utility model registration shall, for the purpose of Subsection (1) to (4), be deemed not to be a patent application or a utility model application.
(7) The Commissioner of the Patent Office shall, in the case of Subsection (2) or (4) order the applicants to hold consultation for an agreement under Subsection (2) or (4) and to report the result thereof, within an adequate time limit.
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(8) Where the report under the preceding subsection is not made within the time limit designated in accordance with that subsection, the Commissioner of the Patent Office may deem that no agreement under the Subsection (2) or (4) has been reached. As provided in Section 5 of the draft Act, 2003, (1) An invention shall be taken to be new if it does not form part of prior art. (2) Prior art in the case of an invention shall be taken to comprise-
(a) all matter, whether a product, a process, information about either, or anything else, made available to the public anywhere in the world, by written or oral description, by use or in any other way, at any time prior to the filing or, as the case may be the priority date, of the application for patent claiming the invention;
(b) the contents of a domestic application for patent having an earlier filing or, as the case may be , priority date than the application for patent referred to in Clause (a) of this Sub- Section, to the extend that such contents are included in the patent granted on the basis of the said domestic application for patent. (3) For the purpose of Clause (a) of Sub-Section (2) of this Section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring within twelve months preceding the date of filing the application for the patent and either- (a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person-
(i) from the inventor or from any person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or
(ii) from any other person to whom the matter was made available in confidence by any person mentioned in Sub-Clause (i) of this Clause or in this Sub-Clause or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;
(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or
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(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.
(4) In this Section, references to the inventor include references to any proprietor of the invention for the time being.
(5) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body, the fact that the substance or composition forms part of the prior art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the prior art. Further, according to Section 46 of the Act and subject to the other provisions contained in this Act, (1) Every patent shall be dated with the date of filing of the complete specification: Provided that no suit or other proceeding shall be taken or prosecuted, in respect of an infringement, committed before the date of advertisement, of the acceptance of the complete specification.
(2) The date of every patent shall be entered in the Register of patent.
· The criteria of novelty for both in the Japanese Patent Law and the draft Act, 2003 are similar. Subsections (a), (b) & (c) of Section 29 of the Japanese Patent Law provides that inventions which were publicly known, publicly worked and the which were described in a distributed publication or made available to the public through telecommunication lines in Japan or elsewhere prior to the filing date or priority date constitute prior art, i.e., any person who has made an invention which is industrially applicable may obtain a patent for the invention, with the exception, inter alias, of inventions which have been described in a publication distributed in Japan or elsewhere or inventions which became available to the general public through telecommunication lines in such places prior to the filing of patent applications.
On the other hand the provisions of Subsection (1) of Section 5 of the draft Act, 2003, provided that ‘an invention shall be taken to be new if it does not form part of prior art’ and accordingly the Subsection 2(a), provided that, prior art comprises, ‘all matters, whether a product, a process, 29 information about either, or anything else, made available to the public anywhere in the world, by written or oral description, by use or in any other way, at any time prior to the filing or, as the case maybe the priority date, of the application for patent claiming the invention,’ which emphasize the width of this definition, without imposing any restrictions whatever as to the geographical location where, or the language or manner in which the relevant information was made available to the public; also no age limit is stipulated for the documents or other sources of the information as well as the application of prior arts is not limited in the technical field to which the invention pertains .
4.4. Inventive Step/Non-Obviousness: The term inventive step (or inventive activity), called non-obviousness in some countries, is, like novelty, it is one of the fundamental requirements of patentability. It is, in principle, widely recognized throughout different patent systems. An invention is considered to involved an inventive step or to be non-obviousness if, compared to the prior art, it is not obvious to a person skilled in the art. Thus, while the criteria of novelty is fulfilled as soon as there is any kind of difference between the claimed invention and the prior art, inventive step is only found if there is a certain qualitative difference between the prior art and the invention. This may not be the case if the claimed invention would, at the date of filing or of priority, have been obvious for a person skilled in the art.
In a similar way as it is the case with regard to novelty; inventive step or non-obviousness is examined in comparison to the existing prior art at the date of filing or of priority of the application in question. Therefore, any difference between patent systems with regard to the definition of prior art will influence the result of any examination of inventive step or non- obviousness.
Not only the definition of the term inventive step as such, but also its practical application varies considerably. For instance, certain systems apply the so-called “problem and solution” approach, comprising (i) the determination of the closest prior art, (ii) the establishment of a technical problem to be solved, and (iii) establishing whether, considering the technical problem and the closest prior art, the invention would be obvious to the person skilled in the art. Other systems have developed different methods for the examinations of inventive activity. In certain systems, for determination of inventive step, different items of prior art may be combined together, if such combination would have been obvious to the person skilled in the art.
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An invention does not involve an inventive step if reasoning that a person skilled in the art could have easily arrived at, or namely, an invention easily conceivable by people with ordinary skills in the art before the filing, is not worthy of a patent, because such an invention does not contribute to the development of technology.
Novelty and inventive step are different criteria. Novelty exists if there is any difference between the invention and the known art. If an invention is on the level that, a person with ordinary skill in the art can easily invent it from inventions, known before the filing date of the application, for that invention will reason, for lacking of an inventive step. Such an invention does not contribute to technical progress so much, and therefore it is of no value to make known it to the public even by granting a patent to such an invention will hinder other companies’ business activities, on the contrary. That means, in essence, the purpose of the provisions for inventive step is “to exclude from granting exclusive rights (patent rights) inventions that could be made easily by a person skilled in the art, recognizing that to do so would hinder development of technology.
On the other hand, in case of both the independent and dependent claims, the inventive step is determined for each claim and the claims requires to state only the indispensable constituent features of the invention described in the detailed explanation of the invention, and this means that the applicant should define in the scope of claims, the invention for which protection by patent is sought and which is disclosed in the detailed explanation of the invention. Basic approach applied in assessing inventive step, e.g., test for non-obviousness, avoidance of ex post facto reasoning, and considering what the skilled man would have done starting from a given problem i.e., comparing the invention with prior art and recognizing the difference between them this assessment of inventive step is made.
According to the provisions of Section 29 (2), of the Japanese Patent Law, ‘Where an invention could easily have been made, prior to the filing of the patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of an invention or inventions referred to any of the paragraphs of Sub-section (1), a patent shall not be granted for such an invention notwithstanding Subsection (1)’.
According to the provisions of Section 6 of the draft Act, 2003, an invention shall be taken to involve an inventive step if having regard to the prior art relevant to the application for patent claiming the invention; it is not obvious to a person skilled in the art. * The basic approach applied assessing inventive step, e.g., test for non- 31 obviousness, avoidance of ex post facto reasoning, and considering what the skilled man would have done starting from a given problem i.e., comparing the invention with prior art and recognizing the difference between them this assessment of inventive step is made. The approaches applied in the two Laws coincide in that comparing the invention with prior art and recognizing the difference between them make the assessment of inventive step. The Purpose of the provision relating to inventive step is identical in both the laws, although each differs in expression. In essence, the purpose of the provisions for inventive step is to ‘exclude from granting exclusive rights or patent rights, inventions that could be made easily by a person skilled in the art, recognizing that to do so would hinder development of technology.
4.6. Prior Art Effect: According to the Section 29bis (2) of the Japanese Patent Law, which provides that where an invention claimed in a patent application is identical with an invention or device (excluding an invention or device made by the same person as the inventor of the invention claimed in the patent application) disclosed in the description, claim(s) for patent or utility model registration or drawing(s) originally attached to the request of another application for a patent or of an application for a utility model registration which was filed prior to the filing date of the patent application and for which the Patent Gazette which states the matter referred to in each paragraph of Section 66(3) of the said Law was published under the said subsection or the laying open for public inspection was effected or the Utility Model Gazette which states the matter referred to in each paragraph of Section 14(3) of Utility Model Law was published under the said subsection after the filing of the patent application, a patent shall not be granted for the invention notwithstanding Section 29(1). However this provision shall not apply where, at the time of filing of the patent application, the applicant of the patent application and the applicant of the other application for a patent or the application for utility model registration is the same person. (Here, avoidance of the self-collision is provided, these documents are not to be considered in deciding whether a claimed invention has an inventive step or not). As provided in Section 15 of the draft Act, 2003, (1) The examiner to whom an application for a patent is referred under Section 14 of this Act shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification- (a) has been anticipated by publication before the date of filing of the applicant’s compete specification in any specification filed in pursuance of an application for a patent made in Bangladesh and dated on or after the 1st day of January, 1912; (b) is claimed in any claim of any other complete specification published on 32 or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in Bangladesh and dated before or claiming the priority date earlier than that date.
(2) The Examiner shall, in addition, make such investigation as the Registrar may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in Bangladesh or elsewhere outside Bangladesh in any document other than those mentioned in Sub-Section (1) of this Section before the date of filing of the applicant’s complete specification.
(3) Where a complete specification is amended under the provisions of this Act before it has been accepted, the amended specification shall be examined and investigated in like manner as the original specification.
(4) The examination and investigation required under Section 14 of the Act and this Section shall not be deemed in any way to warrant the validity of any patent, and the Government or any officer of the Government by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent shall incur no liability thereon.
5. Documents required for filing a patent application: According to the provisions of Section 36 of the Japanese Patent law, any person desiring a patent shall submit a request to the Commissioner of the Patent Office, accompanied by: · Request; · Specification ; - (a) the title of the Invention as provided under Section 36 (3); -(b) claim(s), as provided under Section 36 (2), (5) and (6); -(c) a detailed description of the invention, as provided under Section 36 (2), and (4) to (7); -(d) a brief explanation of the drawing(when there are accompanying drawings), as provided under Section 36 (3) and (7); -(e). a translation into Japanese language of the foreign language file and foreign language abstract shall furnish to the Commissioner of the Patent Office within two months from the filing date of the application for patent, as provided under Section -36bis(36-2)(2). · drawings (where required), as provided under Section 36 (2) and (7); · abstract, as provided under Section 36 (2) and (7), shall state the summary of the invention disclosed in the description. 33
According to the provisions of Section 8 of the draft Act, 2003, (1) Subject to Section 137 of this Act, an application for a patent for an invention may be made by any of the following persons; that is to say: -
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such application ;
(c) by the legal representative of any deceased person who, immediately before his death, was entitled to make such an application.
(2) an application under Sub-Section (1) of this Section may be made by any of the persons referred to therein whether he is a citizen of Bangladesh or not, either alone or jointly with any other person.
According to the provisions of Section 9 of this Act, (1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the Patents and Designs Wing of the Department of Patents, Designs and Trade Marks in the prescribed manner.
(2) If the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application or within such period as may be prescribed after filing of the application a declaration, signed by the person claiming to be true and first inventor or his legal representative, stating that he assents to the making of the application.
(3) Every application under this Section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every application should contain a proof of payment of the prescribed fee.
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* Further where an application for a patent (not being a convention application) is accompanied by a provisional specification, a complete specification shall be filed within 9 months from the date of filing of the application or at any time after 9 months but within 10 months from the date of filing the application, otherwise the authorities will abandoned the application under Section 10 of the P&D Act, 2003. Where the applicant files a provisional specification before filing the complete specification the applicant may conduct further research on the subject-matter of the invention and perfect the method of carrying out the invention or introduce further developments or additions to the invention which he may incorporate in the complete specification and the claim.
Where the claims in the complete specification are fairly based on the matter disclosed in the provisional specification, the applicant may publish or use the invention after the filing date of the application without endangering the validity of the patent when granted.
A provisional specification should describe the nature of the invention whereas a complete specification should describe and ascertain the nature of the invention and the manner in which it is to be performed. The complete specification should contain a description of the field of invention, the closest prior art, a detailed description of the invention with reference to the drawings (if any), the claim(s) of the invention but no abstract. According to the Section 11 of P&D Act, 2003, a claim or the claims of the complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification. The documents needs to be submitted with the application are: · an application for grant of patent in prescribed form, · a provisional or complete specification, · a statement or undertaking with regard to foreign filing, in prescribed form, · a declaration as to the inventorship of the invention in prescribed form, · a power of attorney / authority in prescribed form.
On the other hand, Convention applications (application for a patent by virtue of Sections 136, 138 of the Act) for patents can be filed in Bangladesh within a period of 12 months from the priority date. For such convention applications, the following documents are required to be filed before DPDT. · an application for the grant of a patent in prescribed form, · a complete specification with claim(s) and drawings (if any), 35
· a certified copy of the priority document along with a duly verified English translation, if the priority document was not filed in English, · statement and undertaking regarding foreign filing in prescribed form ,and · Power of attorney / authority. Where both of the provisional or complete specification shall contain (as in Sections, 8-11); - (a) title of the Invention; -(b) claim(s); -(c) detailed description of the invention; -(d) brief explanation of the drawing; (When there are accompanying drawings, so supplied, shall be deemed to form part of the specification)
A claim or claims of a complete specification must be relate to a single invention as provided under Section 9 of the Act, and must be clear and succinct, and must be fairly based on the matter disclosed in the specification and must, in the case of an invention such as is referred to in the proviso to Subsection (m) of Section 4 of the Act, relate to a single method or process of manufacture.
* There are no such provisions for the abstract are introduced in the Draft Act, 2003, like Japanese Patent Law, hence the provisions for abstract may be introduced in the new draft Act, within 300 words containing a summary incorporating therein the technical field of invention, technical problems and solutions relating to the invention, principal uses if any, and the chemical formula which the invention uses, must be characterized.
5.1. Patent Prosecution (JPO): (Examination, Argument and Acceptance):
A patent application must specifically and satisfactorily disclose the invention so that a person skilled in the art can make the invention based on the description and should simply and clearly claim the technical scope for which the applicant intends to obtain a patent. In order to obtain a patent right, one must apply to the Japanese Patent Office and go through an examination to determine whether the application fulfills all the necessary requirements. A prosecution to an office action, after filing the application in Japanese patent office (JPO) includes: 36
· formality checks, · request for examination, · voluntary amendment, · submission of an explanation of circumstances concerning preferential examination, · information submission, · responses to reasons for refusal, including examination through interview, · conversion and division of an application after filing · Trial etc.,
The procedures must be completed in Japanese language, Patent Enforcement Regulation and in writing, however along with the digitalization of the application procedures at the JPO, most of the procedures are conducted through the online networks (argument and/or amendment), utilizing the PC application software. The JPO, which examines all applications from around the nation, takes precautionary measures before ultimately granting any patent right. These involve a back-and-forth- with the applicant to determine which claims, if any, are entitled to be patented. The whole procedure in brief, from filing to registration in JPO is shown below:
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Patent Application Examination and Appeal / Trial Examination Flowchart:
Filing Application
W i Request for publication After 18 months t of unexamined from filing date h applications i Formality Examination n
3
y Publication of Unexamined Application e a r s No Request for Examination Request for Examination
Withdrawn Substantive Examination
Notification of Reason Decision to Grant a Patent for Refusal
Registration of establishment Amendment / Argument
Publication of gazette Decision of Refusal
20 years Request for trial for invalidation term Appeal period Appeal against examiner’s decision within 30 days Correction of refusal
Appeal / Trial examination Amendmen t
Notice of reasons Reconsideration by for invalidation examiner before appeal
Correction Appeal / Trial examination
Notification of reasons for refusal
Amendment
Appeal decision Appeal decision Appeal decision for Appeal decision to maintain to revoke registration of refusal
Tokyo High Court
The Supreme Court
(1) Filing: Any person desiring a patent right for an invention must file an application to the JPO in prescribed forms, prescribed in the relevant ordinances. Japan has adopted the first-to-file system, 38 i.e. the principle that where two parties apply for a patent for the same invention, the first to file will be considered for granting the patent.
(2) Formality Examination: Application documents submitted to the JPO will be checked to see whether they are in the prescribed format.
(3) Publication of Unexamined Application (Kokai): The JPO will publish the content of an application in the Patent Office Gazette after 18 months have elapsed from the date of filing the application.
(4) Request for Examination: Patent applications are not necessarily examined. An examination will be carried out only for those applications for which the applicant or a third party has filed a request for examination and paid the examination fees.
(5) Withdrawal: Any application for which a request for examination has not been filed within a period of 3 years from filing will automatically be regarded as abandoned and cannot be patented thereafter.
(6) Substantive Examination: A patent application for an invention is considered for substantive examination for granting to a patent right, only when it passed the formality checking. An examiner will firstly check whether the application fulfills the requirements prescribed by Law, i.e., whether or not there are any reasons for refusal. These requirements include the following: (a) Whether the claimed invention is based on a technical idea which utilizes a law of nature, (b) Whether it has any industrial applicability, (c) Whether the technical idea existed before the filing of the current application, (d) Whether the claimed invention could have been easily arrived at by a person skilled in the art, (e) Whether the applicant is the first to file, (f) Whether the claimed invention is liable to contravene public order and 39 morality, and (g) Whether the descriptions in the specification conform exactly to the requirements for patentability. i.e., after filing a ‘request for examination’ within 3 years from the filing date, a patent application becomes a subject matter of substantive examination only when passed the formality check. If the formality requirements are not fulfilled accordingly in time, the Commissioner of the Patent Office may dismiss a procedure as provided under Section 18 of the Law, when a person whom he has invited to make amendment in accordance with Section 17(3). If the request for examination is not filed within those 3 years, the application shall be deemed withdrawn as provided to Section 48ter(48-3) of the Law.
(7) Preferential examination: For the purpose of supporting creative technological development of the applicant, accelerated utilization of R&D results and participation in the world market, the patent system is required to appropriately meet the applicant’s needs for accelerated acquisition of patent rights. In response to the submission of ‘explanation of circumstances concerning accelerated examination or trial examination,’ JPO has carried out accelerated examinations and trial examinations prior to other patent applications for the applications that have already put into practice, have been filed not only to JPO but also to other patent offices, or have applied by SMEs, venture businesses, universities, public research organizations, TLO, etc. i.e., a preferential examination may be requested by submitting an ‘explanation for requesting preferential examination’ when a third party commercializes the invention after publication of its unexamined application. In this case the request will allow the application to be promptly examined with priority over other ordinary application.
(8) Notification of Reasons for Refusal: During the substantive examination, it is examined that whether the application meets the requirements of patentable criteria or whether there are any reasons for refusal. If any reason for refusal, evidencing that the application is not patentable, then before the final ‘decision of refusal’ a “notice of reasons for refusal,” indicating reasons grounds for refusal and status is first issued to the applicant, to invite the opinion of the applicant according to Section 50 of the Law.
(9) Written Argument or Amendment: The applicant who has received a Notification of refusal shall be given the opportunity to submit either a written argument claiming that the invention differs from the prior art to which the 40
Notification of Reasons for Refusal refers, or an amendment of the claims in the cases that this would nullify the reasons for rejection. The applicant must file a written argument and amendment within a prescribed period in response to the “notice of reasons for refusal”.
(10) Decision to Grant a Patent / Decision of Refusal: As a result of the examination, if found no reasons for refusal or the reasons for refusal have been overcome, by the applicant, then the examiner will make ‘a decision to grant,’ a patent as the final assessment of the examination stage.
On the contrary, if it is found that the reasons for refusal have not been overcome, a decision of refusal (the final assessment of the examination stage) will be made, i.e., a “decision of refusal” on the ground of lacking novelty is issued when the reasons for refusal have not been eliminated by the applicant’s written explanation or amendment as provided under Section 49 and other relevant Sections of the Law.
(11) Registration: Provided that the applicant pays the patent fee, once the decision to grant a patent has been made the patent right will come into existence as it is entered in the Patent Register. It is not until this time that the invention acquires a patent number. After the registration of a patent right has been made, a certificate of patent will be sent to the applicant, i.e., a “decision to grant” is issued under Section 51 of the Law, and the patent is registered and published in the patent gazette if and only when the applicant pays the patent fee within 30 days from receiving a certified copy of the decision to grant. If the patent fee is not paid, the decision will be invalidated and the application will be deemed as never having existed.
(12) Appeal / Conversion of application: Within 30 days of prescribed period of time, the applicant can file an appeal against the decision of refusal in order to request a “trial against decision of refusal”. If such an appeal is not filed, the decision of refusal becomes final.
On the other hand within this period of 30 days of delivery of the decision of refusal, the rejected application may be subject to a divisional application under Section 44 of the Law, or converted to a utility model or design application, instead of an appeal, as provided in Section 46 :( 1) An applicant for utility model registration may convert his application into a patent application. 41
However, this provision shall not apply after three years from the filing date of the application for utility model registration.
(2) An applicant for design registration may convert his application into a patent application. However, this provision shall not apply after 30 days from the transmittal of the examiner’s first decision that the design application is to be refused or after lapse of three years from the filing date of the design application (excluding the 30-day period counted from the transmittal of the examiner’s first decision that the application is to be refused).
(3) The 30-day period prescribed in the proviso to Subsection (2) shall, when the time limit prescribed in Section 46(1) of Design Law has been extended in accordance with Section 4 of this Law as applied under Section 68(1) of the Design Law, be deemed to have been extended only for that period as extended.
(4) Where the conversion of an application under Subsection (1) or (2) has been made, the original application deem to have been withdrawn. (5) Section 44(2) to (4) shall apply mutates mutandis to the conversion of an application under Subsection (1) or (2).
(13) Division of Patent Applications): The provisions for division of application as provided under Section 44 of the Law enable an applicant whose application comprises two or more inventions to divide it into one or more new applications. When the new application satisfies the requirements, it shall be deemed to have been filed at the time of filing of the original application. When a patent application includes two or more inventions, which do not satisfy the requirement of unity of invention, or when a patent application includes an invention which is not defined in the original claim(s), but is described in the detailed description of the invention or drawings, such inventions are disclosed to the public by filling of the application, this provision gives such an opportunity for protection to such inventions.
In case of a division of applications, as provided by Section 44-(1) An applicant for patent may divide a patent application comprising two or more inventions into one or more new patent applications only within the time limit by which the description, patent claim(s) or drawing(s) attached to the request may be amended.
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(2) In such a case, the new patent application shall be deemed to have been filed at the time of filing of the original application. However, this provision shall not apply where the new patent application is either another application for patent as referred to in Section 29bis(29-2) of this Law or an application for patent as referred to in Section 3bis(3-2) of the Utility Model Law for the purposes of those sections and of Sections 30(4), 36bis(36-2)(2), 41(4) and 43(1) (including its application under Section 43bis(43-2)((3).
(3) For the purpose of Section 43(2) (including its application in Section 43bis(43-2) (3)) where a new application is filed under Subsection (1), “within one year and four months from the earliest of the filing dates” in Section 43(2) shall read “within one year and four months from the earliest of the filing dates or within three months from the filing date of the new patent application, whichever is later.”
(4) Where the new patent application under Subsection (1) is filed, any Statements or documents which have been submitted with respect to the original patent application and which shall be submitted with respect to the new patent application in accordance with Section 30(4), 41(4) or 43(1) and (2)(including its application under 43bis(43-2)((3), shall be deemed to have been submitted to the Commissioner of the Patent Office simultaneously with the said new patent application.
The new divisional application is also deemed as having been filed on the filing date of the original application and leaving the original subject matter unchanged and must fulfill the patentable criteria. Similarly, in case of a conversion application, the new application is also deemed as having been filed on the original filing date as long as requirements for conversion are met without changing the original subject matter. But the old application should be deemed to have been withdrawn when an application is converted. In this case, the documents including a request, a specification, drawings, an abstract, etc., should be filed again.
A patent right become effective upon registration in the patent Register on payment of prescribed patent fee and expires within 20 years of the application. Anyone who is not satisfied with the decision of grant of the examiner can request for an invalidation trial after the patent rights become effective.
(14) Publication of Patent: The contents of the patent right as entered in the register will be published in the Patent Gazette. 43
(15) Invalidation Trial System: According to revised invalidation trial system: (a). the trial may be demanded at anytime, (b). both parties are involved in adversary system during the trial procedures, (c ). the suit against the trial decision may be made to the Tokyo High Court.
(16) Decision to Maintain the Patent / Decision to Revoke the Patent: According to the demand of an appeal trial against the grant of a patent right, the process for re-consideration is carried out by a collegial body of three or five appeal examiners. If the appeal examiners judge that there is no flaw in the decision to grant a patent, they will make a decision to maintain the patent. If however, they judge that the decision to grant was flawed; the JPO will notify the patentee for revocation and hear his or her opinion. If they still judge that the reasons for revocation have not been eliminated, they will make a decision to revoke the patent right.
If there is an objection to a decision to maintain, a decision to revoke or a decision of refusal, either the applicant or any interested person may lodge an appeal with the JPO or bring a suit before the Tokyo High Court.
5.2. Patent Granting Procedure in DPDT: A procedure to an office action, after filing the patent application in the Patent and Design Wing of the Department of Patents Designs and Trademarks (DPDT) includes: · Formality checking, · Substantive examination, · Actful ground of objection / notification of refusal, · Written argument or amendment, · Hearing before Registrar against the reasons for refusal notice by the examiner, · Filing divisional application, · Decision to grant a patent, · Publication, · Sealing a patent, · Opposition, · Appeal against the decision of Registrar.
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(1). Filing: Any person claiming to be the true and first inventor of an invention may file an application in the prescribed form, in the Patents & Designs Wing of the Department of Patents, Designs and Trademarks (DPDT) for a patent to protect his or her invention in Bangladesh. Bangladesh follows the first-to-file principle as provided under Section 8-9 of the P&D Act, 2003. An applicant for a patent may be the true and first inventor; an assignee or the legal representative of a person is entitled to make an application.
Procedure / Patent Application Examination Flowchart, (DPDT):
Filing Application
Just after filing Application
Publication of Bibliographic data
18 months (+3 months extension)
Formality Examination
Substantive Examination
Act full ground of objection /notification for refusal
20 years (Term of Patent) Amendment / Argument / Hearing before Registrar
Decision to Grant Decision of Refusal
Registration Appeal to the High Court
Publication
4 months time for filing opposition Opposition
Decision to maintain the Patent Decision to Revoke the Patent
(2). Formality Checking: The documents filed along with the patent application are checked by the Formality Examination Section, to see whether they are in the prescribe manner and prescribed formats.
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(3). Publication of the bibliographic data of Unexamined Applications: Just after filing the applications in the DPDT, immediately the bibliographic data of those applications are published in the Bangladesh Gazette (part-iv).
(4) Substantive Examination: Since there is no provisions for the Request for Examination like Japan, the submitted applications are immediately considered for substantive examination according to the provisions of Section 14 of the P&D Act, 2003, (1)When the complete specification has been filed in respect of an application for a patent, the application and the specification or specifications relating thereto shall be referred by the Registrar to an Examiner for making a report to him in respect of the following matters, namely:-
(a) whether the application and the specification or specifications relating thereto are in accordance with the requirements of this Act and of any rules made there under;
(b) whether there is any Act full ground of objection to the grant of the patent under this Act in pursuance of the application.
(c) the result of investigations made under Section 15 of this Act ; and
(d) Any other matter, which may be prescribed.
2. The Examiner to whom the application and the specification or specifications relating thereto are referred under Sub-Section (1) of this Section shall ordinarily make the report to the Registrar within a period of eighteen months from the date of filing of the application.
* To examine such a patent application, as referred by the Registrar, the examiner first ascertain that the application contains the required elements, then reads the application to determine whether it is clear enough to be examined and whether it contains more than one invention. To obtain a patent protection, an inventor must set forth a claim that reasonably apprises those of skill in the art of its scope. Whether a claim is invalid for its indefiniteness depends upon “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” * After determining that an application is sufficiently clear to be examined and 46 contains only one invention, the examiner conducts the search for prior art relevant to the claimed subject matter, noting in a place provided on the wrapper, the classes and ‘references.’ Most of the searching by the examiners is now conducted, electronically from July, this year, using search tools, developed, in Bangladesh by WIPO and DPDT, for this purpose.
(5). Actful ground of objection / notification for refusal: If the application is unclear, the first office action may request that the applicant should clarify the application by correcting the defects in its language. The first substantive office action can allow claim(s) rejects claim(s), object to claim(s), or object to the specification. It also may withdraw claims if the claims are drawn to an invention not elected in reply to a restriction or election requirement. The first substantive office action includes notices of informalities found by the formalities checking section, if any. These informalities must be corrected within the statutory time limit for reply to the substantive issues raised. Within the statutory time limit with three months extension upon payment of a fee, the applicant must reply to all of the examiner’s rejections and objections, otherwise, the application is abandoned.
(6). Written Argument or Amendment: (i) After examination of the application, the DPDT will communicate to the applicant / attorney the objections, if any, to the granting of a patent. Applicants may reply to claim rejections and objections by amendment of the claims by argument or by a combination of both. A reply usually includes both claim amendments and arguments designed to distinguish the invention as claimed from any prior art applied by the examiner. A reply also may include affidavits as to the non- obviousness of the invention, or affidavits establishing invention before the date of some reference cited by the examiner. If the examiner rejects or objects to a claim as not being supported by the specification, the applicant may reply by amending the specification to reflect the language of the claim.
(ii) The applicant has to explain and submit his observations on the examiner’s objections within a period of statutory time limit {21=(18+3) months} after issuing the first examination report as provided under Section 23 of the Act. If the examiner is not satisfied with the applicant’s reply, he may issue a second examination report. If the applicant comply the requirements of the objections and other office requirement issued by the examiner, then the application is accepted.
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(7). Hearing: If the applicant disagrees with the examiner’s objections as regards novelty or any other matter he can request a hearing by the Registrar of DPDT, as provided under Section 16 of the Act, and the Registrar is required to issue a written order stating the reasons for his decision after such hearing. The Registrar has discretion to require at any stage any amendment of the specification to prevent ambiguity and make the description of the invention fair and definite and the claims clear and succinct. The Registrar will not allow a claim that is wider in scope than that to which the patentee is, on the evidence, entitled. If it appears to the Registrar that the invention claimed in the specification is not an invention within the meaning of, or is not patentable under this Act, he shall refuse the application as provided under Section 17 of the Act.
· According to the Draft Patents and Designs Act, 2003, there are no such provisions for conversion of a patent application into design or utility model application or vice- versa, like the Japanese Industrial Property Law system.
(8). Filing a Divisional Application: (i) If the examiner determines that there is more than one invention claimed in the application, whether or not the examiner has searched any of those inventions or if the inventions are clearly different, raised an objection according to section 18 of the Act: (1) A person who has made that application for a patent under this Act, may, at any time before the acceptance of the complete specification, if he so desires, or with a view to remedy the objection raised by the Registrar on the ground that the claims of the complete specification relate to mare than one invention, file a further application (division of application) in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
(2) The further application under Sub-Section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
(3) The Registrar may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other..
48 i.e., an “election-of-species requirements,” if the inventions are related, and at least one claim is generic to all inventions. In reply to either requirement, the applicant must choose one invention for prosecution. If there is a restriction requirement, the applicant who wishes to patent the nonelected inventions must present them in one or more “divisional” applications. If there is an election-of-specific requirement, the nonelected claims usually are rejected to the application if a generic claim is allowed.
(9). Decision to Grant a Patent / Publication: If the objections, if any, are satisfactorily met, the examiner will make a report to the Registrar in order to accept the application. The Registrar will advertise the accepted application in the Official Gazette as provided under Section 25 of the Act. From the date of acceptance to the date of sealing the patent, the applicant will have all benefits of the grant, except that he will not be entitled to institute infringement proceedings until the patent is sealed. Under the present situation and according to the new draft Act, 2003, the acceptance period is 21 (18+3) months from the date of filing the application.
(10). Opposition: (i) Any interested person may give notice of opposition to the grant of a patent within four months from the date of its advertisement in the official gazette as provided under Section 27 of the Act. An interested person engaged in, or promoting, research in the same field as that to which the invention relates may oppose the patent application. The right to oppose is extended to all those who can show a legitimate and satisfactory reason for opposing the patent grant. The right to oppose is not assignable, although the right to apply for a patent is assignable. (ii). The Registrar will forward a copy of the notice of the opposition to the applicant, who may file a reply statement within one month from the date of receipt. Thereafter, the parties may file their evidence in support of their cases, and the DPDT will hear and decide the matter. If the applicant makes a request for sealing, the DPDT will grant a patent that has been accepted either with or without opposition.
(11). Appeal: A patent right may be invalidated or cancelled even after it is granted. According to the draft Act, the applicant can lodge an appeal directly to the High Court Division, if he is not satisfied with the decision of the Registrar of DPDT.
49 6. Publication / Laying-open of an Application (JPO): According to the provisions of section 64 of the Japanese Patent Law, - (1) After one year and six months from the filing date of an application, the Commissioner of the Patent Office shall lay the patent application open to public inspection, unless the Gazette containing the Patent has already been published. This provision shall also apply where the request for laying open of an application under Section 64bis(64-2)(1) is made. (1) The laying open for public inspection of a patent application shall be effected by publishing the following particulars in the Patent Gazette. However, this provision shall not apply to the particulars referred to in Paragraphs (iv) to (vi) where the Commissioner of the Patent Office recognized that the publications of those particulars in the Patent Gazette is liable to contravene public order or morality: (i) the name and the domicile or residence of the applicant; (ii) the number and the date of the application; (iii) the name and the domicile or residence of the inventor; (iv) the particulars stated in the description and patent claim(s) as well as the contents of drawing(s) attached to the request; (v) the particulars stated in the abstract attached to the request; (vi) in the case of foreign language file application, the particulars stated in the foreign language file and foreign language abstract; (vii) the number and date of the laying open; (viii) other necessary particulars.
(2) In the case whether the Commissioner of the Patent Office recognizes that a statement of the abstract attached to the request does not comply with Section 36(7) or, in other case where he recognizes it necessary, he may, in lieu of the particulars stated in the abstract under Subsection (2)(v), publish those prepared by himself.
To avoid overlapping research and development as well as overlapping applications, due to time-consuming of examination procedure of hues number of patent applications, delaying the timing of publications, the front page of unexamined applications, containing the bibliographic data, including the name of the applicant, abstract of the invention and representative drawings attached with the full text of the specification and drawings are issued under laying-open system of publication.
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Recently a system for early laying-open of application is introduced in the year 2000. Under this system only the application, with which all necessary and relevant documents has already been submitted in the Patent Office, is published before 18-months period has passed, if one so request,
*Before formality checking, immediate after filing the application, the bibliographic data of the patent applications (no abstract/summary of the invention) are generally published in the official gazette of Bangladesh.
6.1. Publication & Opposition (DPDT): According to Section 25 of the draft P&D Act, 2003, on the acceptance of a complete specification, the Registrar shall give notice thereof to the applicant and shall advertise in the Official Gazette the fact that the specification has been accepted, and thereupon the application and the specification with the drawings (if any) filed in pursuance thereof shall be open to public inspection.
After the acceptance of the application and until the date of sealing a patent in respect thereof, or the expiration of the time of 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 according to the provisions of the following Section of the draft Patents and Designs Act, 2003:
As provided in Section 26 of the Act, on and from the date of advertisement of the acceptance of a complete specification in the Official Gazette and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement of acceptance of the complete specification;
Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
* A patent right is invalidated or cancelled even after it is granted. On the acceptance of a complete specification, the Registrar shall give notice thereof to the applicant and shall advertise in the Official Gazette the fact that the specification has been accepted, and thereupon the application and the specification with the drawings (if any) filed in pursuance thereof shall be open to public inspection.
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This happens after the examination is complete and is done to invite any opposition to the grant by the public within a period of four months from the date of such advertisement. The opposition may be raised on any or more of the following grounds such as, wrongful obtaining; prior publication; concurrent anticipation; prior public knowledge and use; obviousness; not an invention; insufficient description; and failure to provide information regarding foreign filings. Where as according to Section 27 of the Act: (1) At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act, or within such further period not exceeding one month in the aggregate as the Registrar may allow on application being made to him in the prescribed manner before expiry of the four months aforesaid, any person interested may give notice to the Registrar of opposition to the grant of the patent on any of the following grounds, namely: -
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims; (b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim- (i) in any specification filed in pursuance of an application for a patent in Bangladesh on or after 1st day of January, 1912; or
(iv) in Bangladesh or elsewhere outside Bangladesh, in any other document: Provided that the ground specified in Sub-Clause (ii) of this Clause, shall not be available where such publication does not constitute an application of the invention by virtue of Sub-Section (2) or Sub-Section (3) of Section 31 of this Act.
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in Bangladesh, being a claim of which the priority date is earlier than that of the applicant’s claim; (d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in Bangladesh before the priority date of that claim. 52
(e) that the invention so far as claimed in any claim of the complete specification is obvious and does not involve any inventive step, having regard to the matter published as mentioned in Clause (b) of this Sub-Section or having regard to what was used in Bangladesh before the priority date of the applicants claim;
(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act ;
(g) that the subject of any claim of the complete specification is not patentable under this Act ; (h) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(i) that the applicant has failed to disclose to the Registrar the information required by Section 13 of this Act or has furnished information which in any material particular was false to his knowledge; (j) that in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title; (2) Where any such notice of opposition as is referred to in Sub-Section (1) of this Section is given, the Registrar shall within two months after expiry of the period mentioned in Sub-Section (1) of this Section, hear the applicant and the opponent, if desirous of being heard, and decide on the case.
(3) The grant of a patent shall not be refused on the ground stated in Clause (c) of Sub-Section (1) of this Section if no patent has been granted in pursuance of the application mentioned in that Sub-Section.
(4) For the purposes of any inquiry under Clause (d) or Clause (e) of Sub- Section (1) of this Section, no account shall be taken of any secret use.
* Over and above opposition proceedings there is another post acceptance procedure to invalidate an accepted case where prior publication is the only ground available and further since, the person is not having the legal status of being interested, and there is no responsibility other than bringing to the notice of the Registrar the relevant prior publication. 53
An application, specification and drawings (conventional application only) can be amended before or after acceptance and even after grant. However, such amendments are limited to (a) correction, (b) disclaimer and in no case can expand the scope of protection through claims. If the application with prescribed fee is submitted to DPDT before acceptance, such proposed amendments are not advertised in the official gazette and the subject matter of deciding, whether such amendments are allowable or not entirely lie with the Registrar. But in the case of a post- acceptance or post-grant application for amendment, members of the public are duly given notice of such proposed amendment through the official gazette (Bangladesh Gazette, Part-iv). Any member of the public can oppose such amendments wherein the Registrar is required to decide the fate of such proposed amendments only after offering the opportunity of being heard.
By the amendment in 2003, (enforced on January 1, 2004) the provisions of the system of opposition in the Japanese Patent Law have been deleted on the ground that the system of opposition to a patent is more limited in respect of invalidating the patent. According to Section 123 of the Law, a trial may be demanded for the invalidation of a patent, and the person demanding a trial must submit a written demand to the Patent Office.
7. The Patent Right and Time limit for grant and sealing of patent: According to Japanese Patent Law of Section 66-(1) A patent right shall come into force upon registration of its establishment.
(2) The establishment of a patent right shall be registered when the annual fees for the first to third years under Section 107 (1) have been paid or exemption or deferment of such payment has been granted.
(3) Upon registration under the preceding subsection, the following particulars shall be published in the Patent Gazette. However, this provision shall not apply to the particulars listed in paragraph (v) where the patent application has already been laid open for public inspection: (i) the name and the domicile or residence of the patentee; (ii) the number and filing date of the patent application; (iii) the name and the domicile or residence of the inventor; (iv) the features stated in the description and patent claim(s) as well as the contents of drawing(s) attached to the request of the application; (v) the particulars stated in the abstract to the request; 54
(vi) the patent number and the date of the registration of the establishment; (vii) other necessary particulars. (4) Section 64(3) shall apply mutates mutandis where the particulars stated in the abstract listed in Section 64(3)(v) are published in the Patent Gazette under Subsection (3).
(5) During five months after the date of publication of the Gazette containing the Patent, the Commissioner of the Patent Office shall make the application files and their attachments available for public inspection at the Patent Office. However, this provision shall not apply to documents or articles liable to injure the reputation or peaceful existence of an individual or documents and articles liable to contravene public order or morality, which the Commissioner of the Patent Office considers it necessary to keep secret.
(6) Where the Commissioner of the Patent Office is to lay open for public inspection documents or articles other than those liable to injure the reputation or peaceful existence of an individual or documents or articles liable to contravene public order or morality, which the Commissioner of the Patent Office considers it necessary to keep secret, the Commissioner shall notify a person who has submitted the documents or articles to that effect with a reason therefor.
· According to Section 44 of the draft Act, (1) where a complete specification in pursuance of an application for a patent has been accepted and either-
(a) the application has not been opposed under Section 27 of this Act and the time for filing the opposition has expired; or
(b) the application has been opposed and the opposition has been finally decided in favor of the applicant; or
(c) the application has not been refused by the Registrar in exercise of any power vested in him under this Act , the patent shall, on request being made by the applicant in the prescribed form and within the time mentioned in Sub-Sections (2) and (3) of this Section, be granted to the applicant or, in 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 and the date on which the patent is sealed shall be entered in the Register.
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8. Term of Patent Right: Section 67 (1) of the Japanese Patent Law provided that the term of the patent right shall be 20 years from the filing date of the patent application.
(2) The term of the patent right may be extended, upon application for registration of an extension, by a period not exceeding five years if, because of the necessary of obtaining an approval or other disposition which is governed by provisions in Laws intended to ensure safety, etc. in the working of the patented invention, and which is provided for in Cabinet Order as being such that, in view of the object of the relevant disposition, proceedings, etc. a considerable period of time is required for the proper action for the disposition, there was a period in which it was not possible to work the patented invention.
According to the provisions of Section 54 of the draft P&D Act, (1) Subject to the provisions of this Act, the term of every patent granted under this Act shall be twenty years from the date of the patent. (2) Notwithstanding anything in this Act or in the patent, a patent shall cease to have effect on the expiry of the period prescribed for the payment of any renewal fee if it is not paid within that period. (3) If during the period of six months immediately following the expiry of the prescribed period the renewal fee and any prescribed additional fee are paid, the patent shall notwithstanding Sub-Section (2) of this Section, be treated for the purposes of this Act as is it had never expired, and accordingly- (a) anything done under or in relation to it during that further period shall be valid;
(b) an act which would constitute an infringement of it if it had expired shall constitute an infringement; (c) an act which would constitute the use of the patented invention for the purposes mentioned in Section 48 of this Act if the patent had not expired shall constitute that use.
(4) Rules shall provide requiring the Registrar to notify the registered proprietor of a patent that a renewal fee has not been received from him in the Patents and Designs Wings of the Department of Patents, Designs and Trade Marks before the end of the prescribed period.
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* According to the provisions of Section 67 (2) of the Japanese Patent Law, the term of the patent right may be extended, upon application for registration of an extension, by a period not exceeding five years, while the provisions for such extension of the term of Patent are not provided in the draft Patents and Designs Act, 2003.
9. PATENTS OF ADDITION:
In respect of any improvement in, or modification of, a previous invention already patented, the applicant may obtain a patent called ‘patent of addition.’ The term of the patent of addition runs concurrently and terminates with the main patent. The applicant needs not to pay any renewal fee with respect to the patent of addition so long as the main patent remains in force.
* There are no such provisions in the Japanese Patent Law.
According to the provisions of Section 55 of the draft P&D Act, (1) Subject to the provisions of this Section, where an application is made for a patent in respect of any improvement in or modification of an invention (in this Act referred to as ‘the main invention’) and the applicant also applies or has applied for a patent of that invention or is the patentee in respect thereof, the Registrar may, if the applicant so request, grant the patent for the improvement or modification as a patent of addition.
(3) Subject to the provision of this Section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Registrar may, if the patentee so request, by order revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.
(4) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or later than the date of filing of the complete specification in respect of the main invention.
(5) A patent of addition shall not be sealed before the sealing of the patent for the main invention; and if the period within which, but for the provisions of this Section, a request for the sealing of a patent of addition could be made under Section 44 of this Act expires before the period within which a request for the sealing of the patent for the main invention may 57 be so made, the request for the sealing of the patent of addition may be made at any time within the last mentioned period.
According to Section 56 of this Act, (1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall remain in force during that term or until the previous ceaser of the patent for the main invention and no longer:
Provided that if the patent for the main invention revoked under this Act, the court, or, as the case may be, the Registrar, on request made to him by the patentee in the prescribed manner, may order that the patent of addition shall become an independent patent for the remainder of the term of the patent for the main invention, and thereupon the patent shall continue in force as an independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent becomes an independent patent under Sub-Section (1) of this Section the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
As provided in Section 57 of the Act, (1) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of- (a) the main invention described in the complete specification relating thereto; or (b) any improvement in, or modification of , the main invention described in the complete specification of a patent addition to the patent for the main invention or of an application for such a patent of addition, and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(2) For the removal of doubts it is hereby declared that in determining the novelty of the invention claimed in the complete specification filed in pursuance of an application for a patent of addition regard shall be had also to the complete specification in which the main invention is described.
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10. Trial: An applicant, who is dissatisfied with the examiner’s decision of refusal of the Japanese Patent Office, may demand an appeal to have the application reexamined by a collegiate body of appeal examiners in an appeal or trial. If there is dissatisfaction with the decision made by a collegial body of appeal examiners in an appeal or trial, it is possible to dispute it before the Tokyo District Court, and subsequently at the Supreme Court.
As provided in Section 121-(1) of the Japanese Patent Law: A person who has received the examiner’s decision that his application is to be refused and is dissatisfied may demand a trial thereon within 30 days from the transmittal of the examiner’s decision.
(2) Where, due to reasons outside his control, a person is unable to demand an appeal trial against examiner’s refusal within the time limit under the preceding subsection, he may, notwithstanding that subsection, make the demand within 14 days (where he is a resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months, following the expiration of the said time limit.
Japanese Patent Law sets 4 categories of trial including (1) Trial against examiner’s decision of refusal (121) (2) Trial for invalidation of patent (Section-123) (3) Trial for invalidation of registration of extension of term (Section- 125bis(125-2) (4) Trial for correction (Section -126) Besides, in Trial examination procedure, Japanese Patent Law adopts intervention system according to Section 148 of the Japanese Patent Law.
As in, Section 119, of the draft Act, 2003, Save as otherwise expressly provided in this Act, an appeal shall lie to the High Court Division,- (a) from any decision, order, judgment or direction of the Court of District Judge or the Court of Additional District Judge;
(b) from any decision, order or direction of the Registrar under any of the following provisions of this Act , that is to say- 59
Section 17, Section 18, Section 19, Section 20, Section 21, Section 22, Section 27, Section 29, Section 30, Section 52, Section 55, Section 58, Section 61, Section 63, Sub-Section (3) of Section 69, Section 77, Section 81, Section 82, Section 83, Section 86, Section 90 of this Act.
(1) No appeal shall lie from any decision, order or direction made or issued under the provisions of this Act by the Government or order of the Registrar for the purposes of giving effect to any such decision, order or direction.
(2) Every appeal under Sub-Section (1) of this Section shall be in writing and shall be made within three months from the date of the decision, order, judgment or direction of the court or, as the case may be, of the Registrar, or within such further time as the High Court Division may in accordance with rules made by it allow.
According to Section 120 of the Act, 2003: (1) Every appeal before the High Court Division under Section 119 of this Act, shall be in such form and shall contain such particulars as may be prescribed by rules made by the High Court Division.
(2) Every such appeal shall heard by a Single Judge of the High Court Division: Provided that the Chief Justice may, if he considers necessary, refer an appeal at
any stage of the proceeding, to a Bench of two or more Judges for hearing and disposal.
(3) Every such appeal shall be heard as expeditiously as possible and endeavor shall be made to decide the appeal within a period of twelve months from the date on which it is filed.
* To cover the defects contained the decision of the examiner, Japanese Patent Law provides for a trial system to allow a disposal with such defects and inadequate situation arising there from to be corrected and resolved, so as to protect the interests of applicants or the public interests. According to the draft Act, 2003, there are no such provisions for a collegial body of appeal examiners in an appeal or trial boards, as well as ‘Trial for invalidation of registration of term’ or ‘Trial for correction,’ like Japanese Patent Law. According to the draft Act, the applicant can lodge an appeal directly to the High Court Division, if he is not satisfied with the decision of the Registrar of DPDT. Besides, in trial examination procedure, Japanese Patent Law adopts intervention system, as provided in Section 148 of the Japanese Patent Law. No such provisions, are also adopted in the draft Patents and Designs Act, 2003. 60 Conclusion: The economic environment of Bangladesh continues to be severe. Under these adverse circumstances, enhancing international competitiveness and activating entire Bangladeshi economy and society is imperative. Through creativity in the broad areas of science, technology and culture, will lead to the development of industries, economic growth and improvement of people’s daily lives. The government needs to implement various reforms and essential policy in the field of intellectual property to establish a nation built on intellectual property. Technologies from the industrialized developed countries should be introduced in Bangladesh to improve and enhance through solid teamwork at production sites.
To steer Bangladesh towards industrialized and stronger economy, it is essential to enforce reformation nationally toward preparation of an environment in which creativity is a top priority in all aspects. This reformation should be taken as a national policy for structuring the civilization of 21st century Bangladesh. Maintaining international cooperation and proper execution of the intellectual property strategy principles, Bangladesh can strengthen the international competitiveness.
Like the strategy taken by Japan, a nation built on intellectual property should be a national strategy and to reenergize the economy and society of Bangladesh, the national strategy should be the declaration of the direction of respective invention and creation of technologies and to stimulate intellectual creation activities at all levels including the Government, Universities, enterprises and individuals to meet the challenges of global activities as well as the system must be properly protected the resulting inventions, copyrights, etc., as intellectual properties and effectively utilize them as the source for added values to products and services. The national IP system should be keep in harmony with international norms, since the intellectual property as the source of re-structuring industrial competitiveness and providing a firm domestic base for innovative activity and contributing greatly to provide a stable and reliable environment that will encourage the transfer of technology to Bangladesh from the industrially developed countries.
The administrative agencies must endeavor to establish an intellectual property related law system, and the objective should be to enhance the knowledge pool and add value to it through the generation and skillful use of national innovation and creativity, as well as other information infrastructure on intellectual property to enable the education of youths from primary to university to cultivate their creativity, the education of specialists, and the promotion of 61 protection and utilization of achievements of their inventions. In the legal field, various reformations should be taken to promote active trade and diplomatic policies to counter the proliferation of unauthorized copies and pirated products overseas and take all possible measures in a broad range of areas.
Recommended future action to modernize IP protection and develop our industry in Bangladesh:
1. Awareness building in respect of intellectual property rights and adequate publicity through different information media including introduction of necessary curriculum on intellectual property rights in all educational institutes and private sectors.
2. To encourage and invest the R&D activities in different R&D institutes, universities and in private sectors for creativity as well as facilitating the filing intellectual property applications to obtain intellectual property rights.
3. To promote greater public understanding through seminar and symposium about the importance of intellectual property and its protection in connection with industry’s growth and economic strength.
4. Promotion of effective enforcement of intellectual property rights against the infringers as well as effective measures to be taken against the party distributing counterfeits and pirated products.
5. Establishing a high and effective level of protection of intellectual property in new areas and promotion of cooperation and international harmonization of the intellectual property laws and system.
6. To improve dissemination of patent information by introducing intellectual property database with great supports by developed countries, and promote technology transfers from overseas to cultivate our own industry.
7. Utilization of intellectual property to enhance our own R&D activities and protect our technology in order to strengthen our industrial competency and achieve our future economic growth and to promote the strategic measures for creation of intellectual property at enterprises and universities. 62
References: · Graeme B. Dinwoodie & others (2001), International Intellectual Property Law and Policy, Lexis Nexis, 2001, pp1-28 · Graeme B. Dinwoodie & others (2002), International and Comparative Patent Law, Lexis Nexis, 2001, pp 3-411 · Japanese Patent Law · Japanese Utility Model Law · Japanese Design Law · JPO Status Report (2004), Japan Patent Office, pp 1-23 · JPO Annual Report (2003), JIII, 2003 · Examination Guidelines for Patent and Utility Model in Japan, Japan Patent Office, Published by AIPPI. JAPAN, 1994 · Examination Guidelines for Patent and Utility Model, Japan Patent Office, Published by AIPPI. JAPAN, 2001 · Examination Manual for Patent and Utility Model in Japan, AIPPI.JAPAN · IPR Training Textbooks (CD-ROM), JPO, APIC, JIII, 2000. · History of Japanese Industrial Property System · Outline of the Japanese Patent Law and Utility Model Law · Industrial Property Rights Standard Textbook, JPO, pp 35-145 · Japanese Laws Relating to Industrial Property, AIPPI, 2003, pp 3-90 · Herbert F. Schwartz & others, 2003, Patent Law and Practice, Fourth Edition · JIII homepage (2004), IP Culture, Assuring and Developing our Dreams (2004), http://www.hatsumei100.com · Draft Patents Designs Act, 2003 of Bangladesh.