4.

(1) For the purposes of these Regulations, a “patent” means the title granted to protect an invention.

(2)

(a) For the purposes of these Regulations, “invention” means an idea of an investor which permits in practice the solution to a specific problem in the field of technology.

(b)  An invention may be, or may relate to, a product or a process.

(3)  The following, even if they are inventions within the meaning of subsection (2), shall be excluded
from patent protection:

i)  discoveries,. Scientific theories and mathematical methods;

(ii)  schemes, rules or methods for doing business, performing purely mental acts of playing games;

iii)  methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body; this provision shall not apply to products for use in any of those methods.

Patentable Invention

5.

(1) An invention is patentable if it is new, involves an inventive step and is industrially applicable.

(2)

(a) An invention is new if it is not anticipated by prior art.

(b) prior art shall consist of everything disclosed to the public, anywhere in the world, by  publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention.

(c) For the purposes of paragraph (b), disclosure to the public or the invention shall not be taken  into consideration  if it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application, and if it was by reason or in consequence of acts committed by the applicant or his consequence of acts committed by the applicant or his  predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

(3)  An invention shall be considered as involving an inventive step if , having regard to the prior art relevant to the application claiming the invention and as defined in subsection (2) (b), it would not have been obvious to a person having ordinary skill in the art.

(4)  An invention shall be considered industrially applicable if it can be made or used in any kind of industry. “Industry” shall be understood in its broadest sense; it shall cover, in particular, handicraft, agriculture, fishery and services.

(5)  Inventions, the commercial exploitation of which would be contrary to public order or morality, shall not be patentable.

Right to Patent; Naming of Inventor

6.

(1) The right to a patent shall belong to the inventor. 

(2)  If  two or more persons have jointly made an invention, the right to the patent shall belong to them jointly.

(3)  If and to the extent to which two or more persons have made the same invention independently of each other, the persons whose application has the earliest filing date or, if priority is claimed, the earliest validly claimed priority date shall have the right to the patent, as long as the said application is not withdrawn, abandoned or rejected.

(4)  The right to a patent may be assigned, or may be transferred by succession.

(5)  Where an invention is made in execution of an employment contract, the right to the patent shall belong, in the absence of contractual provisions to the contrary, to the employer.

(6)  The inventor shall be named as such in the patent, unless in a special written declaration signed by him and addressed to the Registrar he indicates that he wishes not to be named. Any promise or undertaking by the inventor made to any person to the effect that he will make such a declaration shall be without legal effect.

Application

7. 

(1) The application for a patent shall be filed in the prescribed manner with the Registrar and shall contain a request, a description, on or more claims, one or more drawings (where required), and an abstract.  It shall be subject to the payment of the prescribed application fee.

(2)

(a) The request shall contain a petition to the effect that a patent be granted, the name of and other prescribed data concerning the applicant, the inventor and the agent, if any, and the title of the invention.

(b)  Where the applicant is not the inventor, the request shall be accompanied by a statement justifying the applicant’s right to the patent.

(3)  The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art, and shall, in particular, indicate at least one mode known to the applicant for carrying out the invention.

(4)  (a) The claim or claims shall define the matter for which protection is sought. The description and the drawings may be used to interpret the claims.

(b)  Claims shall be clear and concise.  They shall be fully supported by the description.

(5)  Drawing shall be required when they are necessary for the understanding of the invention.

(6)  The abstract shall merely serve the purpose of technical information; in particular, it shall not be taken into account for the purpose of interpreting the scope of the protection.

(7)  The applicant may withdraw the application at any time during its pendency.

Unity of Invention; Amendment and Division of Application

8.

(1) The application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

(2)  The applicant may, up to the time when the application is in order for grant, amend the application, provided that the amendment shall not go beyond the disclosure in the initial application.

(3)  (a) The applicant may, up to the time when the application is in order for grant, divide the application into two or more applications (“divisional applications”), provided that each divisional  application shall not go beyond the disclosure in the initial application.

(b)  Each divisional application shall be entitled to the filing date and, where applicable, the priority date of the initial application.

(4)  The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention under subsection (1) shall not be a ground for the invalidation of the patent.

Right of Priority

9.

(1) The application may contain a declaration claiming the priority, as provided for in the Paris Convention, of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any state party to the said Convention.

(2)  Where the application contains a declaration under subsection (1), the Registrar may request that the applicant furnish, within the prescribed time limit, a copy of the earlier application certified as correct by the Registry with which it was filed.

(3)  The effect of the said declaration shall be as provided in the Paris Convention.

(4)  If the Registrar finds that the requirements under this Section and the Rules pertaining thereto have not been fulfilled, the said declaration shall be considered not to have been made.

Information Concerning Corresponding Foreign Applications for Patents

10

(1) The applicant shall, at the request of the Registrar, furnish him with the date and number of any application for a patent filed by him abroad (“foreign application”) relating to the same or essentially the same invention as that claimed in the application filed with the Industrial Property Registry.

(2)

(a) The applicant shall, at the request of the Registrar, furnish him with the following documents relating to one of the foreign applications referred to in subsection (1):

(i)  a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;

(ii)  a copy of the patent granted on the basis of the foreign application;

(iii)  a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application.

(b)  The applicant shall, at the request of the Registrar, furnish him with a copy of any final decision invalidating the patent granted on the basis of the foreign application referred to in paragraph (a).

Filing Date; Examination

11.

(1) (a) The Registrar shall accord as the filing date the date of receipt of  the application, provided that, at the time of receipt, the application contains;

(i)  an express or implicit indication that the elements are intended to be an application for a patent;

(ii)  indications allowing the identity of the applicant to be established;

(iii)  a description.

(b) If the Registrar finds that the application did not, at the time of receipt, fulfill the requirements referred to in paragraph  (a) he shall invite the applicant to file the required correction and shall accord as the filing date the date of receipt of the required correction, but if no correction is made, the application shall be treated as if it had not been filed.

(2)  Where the application refers to drawings which in fact are not included in the application, the Registrar shall invite the applicant to furnish the missing drawings. If the applicant complies with the said invitation, the Registrar shall accord as the filing date the date of receipt of the missing drawings.  Otherwise, the Registrar shall accord as the filing date the date of receipt of the application and shall treat any reference to the said drawings as non existent.

(3)  After according a filing date, the Registrar shall examine whether the application complies with the requirements of section 7(1) and (2) and the Rules pertaining thereto and those requirements of these Regulations and the Rules which are designated by the Rules as formal requirements for the purposes   of these Regulations and whether information requested under  Section 10, if any has been provided.

Grant of Patent; Changes in Patents

12.

(1) Where the Registrar finds that the conditions referred to in Section 11 (3) are fulfilled, he shall grant the patent.  Otherwise, he shall refuse the application and notify the applicant to that decision.

(2)  When he grants a patent, the Registrar shall:

(i)  publish a reference to the grant of the patent;

(ii)  issue to the applicant a certificate of the grant of the patent and a copy of the patent;

(iii)  record the patent;

(iv)  make available copies of the patent to the public, on payment of the prescribed fee.

(3)  The Registrar shall, upon request of the owner of  the patent, make changes in the text or drawings of the patent in order to limit the extent of the protection conferred thereby, provided that the change would not  result  in the disclosure  contained in  the patent going beyond the disclosure contained in the initial application on the basis of  which the patent was granted.

Rights Conferred by Patent

13.  (1) The exploitation of the patented invention in Bhutan by person other than the owner of the patent shall require the latter’s agreement.

(2)  For the purposes of these Regulations, “exploitation” of a patented invention means any of the following acts;

(a)  When the patent has been granted in respect of a product:

(i)  making, using, offering for the sale, selling or importing for these purposes that product;

(ii)  stocking such product for the purposes of offering for sale, selling or using;

(b)  When the patent has been granted in respect of a process;

(i)  using the process;

(ii)  doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.

(3)  The owner of the patent shall, in addition to any other rights, remedies or actions available to him, have the right, subject to subsection (4) hereof and section 15, to institute Court proceedings against any person who infringes the patent by performing, without his agreement, any of the acts referred to in subsection (2) or who performs act which made it likely that infringement will occur.
(4)  (a) The rights under the patent shall not extend:

(i)  to acts in respect of articles which have been put on the market in Bhutan by the owner of the patent or with his consent; or

(ii)  to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of  Bhutan; or

(iii)  to acts done only for experimental purposes relating to a patented invention; or

(iv)  to acts performed by any person who in good faith, before the filing or, where priority is claimed, the priority date of the application on which  the patent is granted, was using the invention or was making effective and serious preparations for such use in Bhutan.

(b)  The right of prior user referred to in paragraph (a) (iv) may be transferred or devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the use or preparations for use have been made.

Duration; Annual Fees

14.

(1) Subject to subsection(2), a patent shall expire 20 years after the filing date of the application for the patent.

(2)  In order to maintain the patent or patent application, an annual fee shall be paid in the prescribed manner in advance to the Registrar for each year, starting one year after the filing date of the application for grant of the patent.  A period of grace of  six months shall be allowed for the late payment of the annual fee on payment of the prescribed surcharge.  If an annual fee is not paid in accordance with the provisions of this subsection, the patent application shall be deemed to have been withdrawn or the patent shall lapse.

Exploitation by Government or Person thereby Authorized

15.

(1) Where

(i)  the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy so requires, or 

(ii)  a judicial or administrative body has determined that the manner or exploitation, by the owner of the patent or his licensee, is anti - competitive, and the Minister is satisfied that the exploitation of the invention in accordance with this subsection would remedy such practice, the Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Minister may exploit the invention.  The exploitation of the invention shall be limited to the purpose for which if was authorized and shall be subject to the payment to the said owner of an adequate remuneration therefor, taking into account the economic value of the invention, as determined in the said decision and where a decision has been taken under paragraph 

(ii), the need to correct anti- competitive practices.  The Minister shall take his decision after hearing  the owner of the patent and any interested person if they wish to be heard.

(2)  Upon request of the owner of the patent, of the Government agency or of the third person authorized to exploit the patented invention, the Minister may, after hearing the parties, if either or both wish to be heard, vary the terms of the decision authorizing the exploitation of the patented invention to the extent that changed circumstances justify such variation.

(3)  (a) Upon the request of the owner of the patent, the Minister shall terminate the authorization if he is satisfied, after hearing the parties, if either or both wish to be heard, that the circumstances which led to his decision have ceased to exist and are unlikely to recur or that the Government agency or third person designated by him has failed to comply with the terms of the decision.

(b)  Notwithstanding paragraph (a), the Minister shall not terminate the authorization if he is satisfied that the need for adequate protection of the legitimate interests of the Government agency or third person designated by him justifies the maintenance of the decision.

(4)  Where a third person has been designated by the Minister, the authorization may only be transferred with the enterprise or business of that person or with the part of the enterprise or business within which the patented invention is being exploited.

(5)  The authorization shall not exclude:

(i)  the conclusion of license contracts by the owner of the patent; or

(ii)  the continued exercise, by the owner of the patent of his rights under section 13 (2).

(6)  (a) A request for the Minister’s authorization shall be accompanied by evidence that the owner of the    patent has received, from the person seeking the authorization, a request for a contractual license, but the person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time.

(b) Paragraph (a) of the subsection shall not apply in cases of national emergency or other circumstances of extreme urgency provided, however, that in such cases the owner of the patent shall be notified of the Minister’s decision as soon as reasonably practicable.

(7)  The exploitation of the invention by the Government agency or third person designated by the Minister shall be predominantly for the supply of the market in Bhutan.

(8)  The decisions of the Minister under subsections (1) to (3) may be the subject of an appeal before the court.

Invalidation

16

(1) Any interested person may request the Court or the Registrar to invalidate a patent.

(2)  The Court or the Registrar shall invalidate the patent if the person requesting the invalidation proves that any of the requirements of Section 4 (2) and (3), Section 5 and Section 7(3), 

(4) and (5) are not fulfilled or if the owner of the patent is not the inventor or his successor in title.

(3)  Any invalidated patent, or claim or part of a claim, shall be regarded as null and void from the date of the grant of the patent.

(4)  The final decision of the Court shall be notified to the Registrar who shall record it and publish a reference thereto as soon as possible.

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