Bhutan Local Governance

How to Apply

Chapter 1: Filing of Patent Application and accord of Filing Date

  1. Contents of a Patent application(Section 7)

A Patent application must contain:

  1. A request for grant of a Patent(Form PT-1); and
  2. Patent application specification:
    • a title;
  • a description;
  • a claim or claims;
  • a drawing or drawings, where required; and
  • an abstract.

Format of Request for grant of a Patent (PT-1) can be referred to Annexure II.

Format of patent application specification can be referred to Annexure III.

  1. Reception of Patent application (Rule 23(1))

Applications for Patent are received at the front office of the Patent Registry.

  1. Office Action

Upon receipt of the application, the Administrative Assistant shall mark the date and time of receipt of the application and assign an application no. in the format BT/P/last two numbers of the year in which the initial papers were received/a five-digit number allotted in the sequential order in which applications are received, eg. BT/PT/15/00001in the appropriate place on Form PT-1.

  1. The Office shall calculate the applicable fee as per the Schedule of Fees for Patent Registration based on the checklist provided on page 7 of the Form PT-1 and issue an authorization for fee payment (Annexure IV).
  1. Applicant’s Action
  1. The applicant shall submit the authorization along with the fees at the Regional Trade and Industry Office (RTIO), Thimphu.
  2. After the fee is deposited, a copy of the receipt of the fee payment shall be submitted to the office for record.
  1. Office Action
  1. The Office issues an acknowledgement PT-A to the applicant for receipt of Form PT-1.
  2. The Office shall open a physical file for the application and mark the file with the assigned application number.
  3. All pages of any document received in respect of a new application should be marked with the application number. In addition, copies of all correspondence issued by the office should be included in the file, filed in chronological order in which the correspondence is sent to the applicant.
  4. The file is then forwarded to the Examiner for necessary actions.

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  1. According and Notifying Filing Date(Section 11(1) (a) (2) and Rule 24)
  2. Office Action

The first task for the Examiner is to determine whether the application meets the following requirements for according the Filing Date:

  1. An express or implicit indication that the elements are intended to be an application for patent; example check PT-1
  2. Indications allowing identity of the applicant to be established; where there is more than one applicant each applicant must be similarly identified.
  3. A description.
  4. Drawings (where application refers to drawings)
    1. The documents iii. and iv. referred above do not have to meet any particular requirements as to form or presentation. It is essential however they be sufficiently legible to enable the information to be discerned. The applicant should be considered sufficiently identified whenever it is possible to establish the identity of the applicant beyond reasonable doubt on the basis of all data contained in the documents filed. No objection should be raised at this stage with regard to the status of the applicant or his entitlement to apply. The contents of the description and claims do not require close scrutiny.  It will be sufficient to identify a document which appears to include description and one or more claims.
    2. Where an application meets the aforementioned requirements, the receiving date becomes the Filing Date and the same must be so communicated to the applicant in writing vide Form PT-B.
    3. If the application does not fulfill these requirements, the examiner is required to invite the applicant within ten working days from the date of the examination, to submit the required correction. The invitation Form PT-C should indicate that the applicant has two months to comply.
    4. Where the application refers to drawings which are not included in the application, the examiner should invite the applicant to furnish the missing drawings, and, if the applicant complies with the invitation, the filing date should be re-dated to the date of receipt of the missing drawings. If the applicant does not comply with the invitation any reference to the drawings should be treated as nonexistent.
  1. Applicants Action

The applicant shall submit the required corrections on Form PT-2.

  1.  Office Action

Upon receipt of the Form PT-2, an authorization for fee payment shall be issued to the applicant for the payment of fees at RTIO.

  1. Applicants Action

The fees shall be deposited at the RTIO and a copy of the payment receipt is to be submitted to the office.

  1. Office Action(Examiner)
  1. On receipt of Form PT-2, acknowledgement videForm PT-A shall be sent to the applicant.
  2. The Office shall check the corrections and if it fulfills the requirements, the date of receipt of the correction should be accorded as the Filing Date.
  3. The Filing Date must be communicated to the applicant in writing vide Form PT-B.
  4. If the applicant does not comply with the invitation, the Officeshould treat the application as if it had not been filed, and inform the applicant in writing on Form PT-Dwithin ten working days, specifying the reasons.
    1. Data capture in Industrial Property Automation System (IPAS)

After according Filing date, the details in Form PT-1 and patent application specification are captured in the IPAS.

  1. Office Action
  1. Entry of applicant, inventor and agent (if any) details;
  2. Entry of received date and filing date;
  3. Entry of Title of invention, abstract, description and claims(requires scanning and converting to word format when claims are very long); and 
  4. Scanning of drawings and uploading.

Chapter 2: Formal Examination (Section 11(3))

The patent examination can broadly be classified in two distinct forms, the formal examination and the substantive examination.

The formal examination involves verifying the followings:

2.1. Application (Section 7(1))

The Office shall check whether the application complies with the following:

  1. If it contains a request (PT-1), a title, description, one or more claims, one or more drawings (where required) and an abstract; and
  2. If a prescribed application fee has been paid or not.

2.2. Examination of contents of the Form PT-1 (Section 7(2), Rule 10)

The Office shall check whether the content of the request (PT-1) complies with the following:

  1. Title of invention:

The title of the invention shall be short (preferably from two to seven words) and specific for efficient indexing, classifying, searching etc.

  1. Applicant(s)
  1. Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indicated before the given name(s); the names of legal entities shall be indicated by their full, official designations.(Re-visit form, middle name, block letter)
  2. Addresses  shall  be  indicated  in  such  a  way  as  to  satisfy  the  customary requirements for prompt postal delivery at the indicated address and, in any case, shall consist of all the relevant administrative units, including the house number, if any; addresses shall also indicate the telephone and fax number and email address.
  3. Nationality shall be indicated by the name of the State of which a person is a national; legal entities shall indicate the name of the State under whose laws they are constituted and their office is registered.
  4. Residence shall be indicated by the name of the State of which a person is a resident.
  1. Agent
  1. If the applicant is represented by an agent, the request shall so indicate and state the agent’s name and address (as indicated in Page 3 of Form PT-1).
  2. The request shall be signed by each applicant.
  1. Inventor

Where the applicant is the inventor, the request shall contain a statement to that effect (as indicated in Page 2 of Form PT-1) and where the applicant is not the inventor, it shall indicate each inventor’s name and address and be accompanied by the statement justifying the applicant’s right to the patent (as indicated in Page 3 of Form PT-1)

  1. Divisional application (where applicable)
  1. If the application is not a divisional application, no action required at this stage.
  2. If it is a divisional application, cross check if the details of the filing date are provided in the Form PT-1.
  1. Priority declaration (where applicable)

If the application claims priority under Paris Convention, the following declaration shall be required:

  1. Application No.: The application number of the priority application to be reflected.        
  2. Date of Filing: Filing date of the priority application to be reflected.
  3. Filing Office: Name of the office    
  4. Country of Filing: Country name    
  5. Status of the Application: Whether the application is at formal examination/substantive examination/granted/refused
  6. International Patent Classification: Symbol of the International Patent Classification, if any, which has been allocated to the earlier application.
  1. For application claiming priority, it is mandatory to submit all the details as per Form PT-1, page 5. The applicant is given three months from the filing date to submit information pertaining to (i), (v) and (vi) along with the documents spelled in the Form PT-1, page 5 are necessary. In addition, six months is given where translation of documents from other languages to English is necessary. If these requirements are fulfilled, the application proceed to the next stage i.e. Substantive examination. If the application fails to meet the requirement, the application is rejected.
  2. If the requirements are fulfilled, the office shall carry out the following:
    1. Validate the priority date claimed with the filing date of the application. For example, if the applicant has filed an application in country A (a member of Paris Convention) on 1st Jan. 2015, in order to claim priority date of this application, he/she needs to file the application in country B on/before 31st Dec. 2016 (i.e. within twelve months).
    2. The application will be eligible for priority date provided the status of the application in country A is not withdrawn, rejected or abandoned. In other words, the applicant will be eligible if the status of his/her application is active (eg. Under formal examination, substantive examination, publication etc.).
    3. If the application qualifies for the priority date, the application is accepted for substantive examination. If it does not qualify, the application is rejected on the grounds of prior art and novelty.
  1. Checklist (To be filled in by the applicant(s))
    1. Re-confirm the number of documents pertaining to description, claims, abstract and drawing submitted together with the application and if the calculation of the fee is done correctly.
    2. Disclosures to be Disregarded for Prior Art Purposes

If an applicant wishes a disclosure of the invention to be disregarded for prior art purposes, it shall so indicate on the application and shall furnish, in writing, with the application or within one month of filing the application:

  1. full particulars of the disclosure;
  2. where the disclosure was made at an exhibition, the applicant shall file, within twelve months from the date of exhibition, a duly authenticated certificate issued by the authority responsible for the exhibition containing particulars of the exhibition and stating that the invention was exhibited there.

In the event if the disclosure time frame exceeded twelve months preceding the filing date, the application will be rejected.

The applicant is notified through Notification PT-F.

The exhibition in iv. above refers to an official or officially recognized international exhibition within the meaning of Article 11 of the Paris Convention, or Article 1 of the Convention Relating to International Exhibitions done at Paris on 22 November 1928.

Article 11 of the Paris Convention states:

"(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them."

An exhibition will be official if it is organized by a State or other public authority, and be officially recognized if it has been recognized by such a State or authority. Moreover, the exhibition has to be international, i.e. it must include the exhibition of goods from another country.

Article 1 of the Convention Relating to International Exhibitions states:

"(1) An exhibition is a display which, whatever its title, has as its principal purpose the education of the public: it may exhibit the means at man's disposal for meeting the needs of civilization, or demonstrate the progress achieved in one or more branches of human endeavor, or show prospects for the future.

(2) An exhibition is international when more than one State is invited to take part in it."

2.3. Examination of the Patent application specification (title, abstract, description, claims and drawings)

2.3.1. Measures, Terminology and Signs (Rule 15)

The patent application specification (title, abstract, description, claims and drawings) must be checked for the following:

  1. Units of weights and measures shall be expressed in terms of the metric system.
  2. Temperatures shall be expressed in degrees centigrade (Celsius).
  3. Density shall be expressed in metric units.
  4. For indications of heat, energy, light, sound, and magnetism, as well as for mathematical  formulae  and  electrical  units,  rules  in  general  use  shall  be observed; for chemical formulae, the symbols, atomic weights, and modular formulae, in general use, shall be employed.
  5. The terminology and the signs shall be consistent throughout the application.

Any corrections are requested through PT-E.

  1. Subject matter relating to biological resources.

If the application pertains to a biological resource, the applicant is required to indicate the source of the biological material. If the source of the biological material is from Bhutan,  the  applicant  is  required  to submit the documentary evidence of the permission sought from the National Biodiversity Center, Ministry of Agriculture and Forests any time  before  the  grant  of the  patent. 

If the applicant fails to submit the documents, the application will be rejected.

 

Chapter 3: Substantive Examination (Section 11(4))  

3.1. Transmittal of Patent applications to World Intellectual Property Organization (WIPO) for Search and Examination

A. National applications:

a)       Office Action

The Office shall notify the applicant vide Notification PT G (Letter) to submit the request for search and examination on Form PT 3A(Letter) and the WIPO form within ten working days from the date of this notification.

Instruction for filling in the WIPO Patent Information Services for Developing Countries (Annexure V)

b)      Applicant’s Action

A request for search and substantive examination shall be submitted to the office by filing WIPO-Form and Form PT-3A.

c)       Office Action (Examiner)

  1. Upon receipt of Form PT-3A and WIPO Form, acknowledgement vide PT-A shall be sent to the applicant.
  2. The WIPO Form and Patent application specification are scanned by the Office in PDF format.
  3. The scanned files are then uploaded in the WinSCPfor Search and Examination by WIPO.
  4. An email is sent to the Focal person of WinSCP at WIPO to notify and confirm whether they have received the files uploaded in the Win SCP.
  5. The documents uploaded in the WinSCP shall be maintained in their respective files.

For instruction relating to WinSCP refer Annexure VI

The WIPO sends the application to one of the International Patent Office for Search and Examination.

  1. International applications:

For international application, the priority claims determines the action to be taken by the office.

  1. Application with priority claim:

If priority is claimed, it need not be sent to WIPO for Search and Examination. The office needs to search international Patent databases to retrieve the examination reports of external patent offices.

  1. Application without priority claim:

The procedure for transmitting the application without priority claim is same as (1) above.

3.2. Interpretation of Search and Examination reports received from WIPO for national applications and international applications without priority claim.

It takes minimum of six months to receive the Search and Examination reports from WIPO as WIPO assigns the applications to International Search Authorities (ISAs) and other competent Patent Offices.

The reports are received either by hard copies via postal service or electronically from the Focal Person of WinSCP, WIPO. For reports received via email, the office is required to further search and download the patent documents cited in the search report from the Patent database (eg. espacenet/patentscope etc.).The office receives reports which are of two categories:

  1. Search reports from Japan Patent Office (JPO) containing information only on prior art without examination report. The office is required to carry out interpretation of the search report and prepare examination report.
  2. Reports with Search and examination report (eg. Bulgarian Patent Office).
  1. Based on the WIPO Search and examination report, the office prepares the First Examination Report(FER)along with the prior art documents as well as taking into account the exclusions, public order morality and other relevant provisions of the Industrial Property Act of the Kingdom of Bhutan, 2001.
  2. If amendment is required, the applicant is given two months from the date of issue of the First Examination Report (FER) to submit the amendments.
  3. If amendment is not required, proceed for grant and publication.

3.3Examination of amendments for applications without priority claims

  1. The response/s to the FER and the earlier copy of the patent application are scanned and uploaded in WinSCP and transmitted to WIPO for examination.
  2. Re-examination of the amendments to the patent application by the WIPO and submission of search and examination report which could contain the following:
    1. Request for further amendment or
    2. IPD to provide a decision on the patent application (which could be either grant or refusal of Patent).

3.4. For international applications claiming priority.

For international applications claiming priority, search is carried out in the global patent databases such as the Patentscope, Espacenet, Depatisnetand Google patents, and access Patent Registers of external Patent Offices to retrieve examination reports. If Search and examination reports for those applications with priority claims are not published, the office puts on hold such applications till the time the reports are published.

When the search and examination reports are available, the office shall download the search and examination report. The office would have to perform the following activities based on the search and examination report:

  1. If there is/are no observations required in the search and examination report, the office prepares the First Examination Report (FER) taking into account the exclusions, public order morality and other relevant provisions of the Industrial Property Act of the Kingdom of Bhutan, 2001 and provides the decision on the application.
  2. If the search and examination report contains observations, the observations are replicated in the FER and forwarded to the applicant for amendment.  The amendments to the applications are received by the office within two months and the office keeps track of the search and examination report of external Patent Office concerned.
  3. Depending on the result of the search and examination of the amended patent application by the external Patent Office concerned, IPD takes a decision.

Chapter 4: Grant and Publication (Section 12, Rule 26)

  1. Office action

A notification PT-J shall e sent to the applicant notifying the decision of the office to grant a Patent. The notification shall invite the applicant to submit the grant and publication fees within three months from the date of notification.

  1. Applicant’s action
  2. he applicant shall submit Form No. PT-4 along with the grant and publication fees within three months from the date of notification.
  3. Office Action

The office shall issue fee payment authorization upon receipt of Form PT-4.

  1. Applicant’s action

Pay fees at the RTIO and submit copy of the receipt to the Office.

  1. Office Action

An acknowledgement vide Form PT-A shall be sent to the applicant for the receipt of FormPT-4.

  1. Office Action

After receiving the grant and publication fees, the office shall:

  1. Publish a reference to the grant of the patent. The publication should include:
  1. the number of the patent;
  2. the name and address of the owner of the patent;
  3. the name and address of the inventor, except where he has asked not to be named in the patent;
  4. the name and address of the agent if any;
  5. the filing date and number of the application;
  6. if priority has been claimed and the claim has been accepted, a statement of the priority, the priority date and the name of the country or countries in which or for which the earlier application was filed;
  7. the effective date of grant of the patent(date of publication of reference to grant);
  8. the title of the invention;
  9. the abstract;
  10. the most illustrative of the drawings, if any; and
  11. the symbol of the International Patent Classification if indicated.

It shall be published both in the ministry and office website. A copy of the publication should also be emailed to the IP Agents and the concerned applicant.

  1. Issue a certificate of grant of patent and a copy of the Patent to the applicant. The certificate shall be signed by the Registrar and contain:
  1. the number of patent;
  2. the name and address of the owner of the patent;
  3. the filing date and, where applicable, priority date of the application;
  4. the effective date of grant of the patent; and
  5. the title of the invention

Chapter 5: Maintenance of Patent application/Patent (Section 14, Rule 28)

A Patent shall expire twenty years from the filing date of the application for the patent. In order to keep alive a patent application or a granted patent, an annual fee is annually due in advance by or before the anniversary of the filing date, starting one year after the filing date. However, the fee is payable within a grace period of six months provided that the applicant pays the prescribed surcharge.

  1. Applicant’s action

The applicant shall submit a request for the maintenance of the Patent application or Patent in advance, before the expiry of the date for the payment of the annual maintenance fee on Form PT-5

  1. Office Action
  1. Upon receipt of Form PT-5, the office shall cross check whether the request has been submitted within the due date.
  2. If it is within the due date, the office shall accept and issue a fee payment authorization.
  3. If it is not within the due date, the office shall direct the applicant to submit the request on Form PT-6 along with the annual maintenance fee and the surcharge.
  1. Applicant’s action

The applicant pays the fees and submits a copy of the receipt to the office.

  1. Office action
    1. An acknowledgement shall be sent to the applicant on PT-A notifying the validity of the Patent for the year under reference upon receipt of annual maintenance fee and Form PT-5 or PT-6.
    2. If an annual fee is not paid, the Patent application shall be deemed to have been withdrawn or the Patent shall lapse.A notification vide Form PT-K for the withdrawal of the application/lapse of a Patent shall be sent to the applicant.
    3. The Office shall publish the notification of the lapse of a Patent.

Chapter 6: Correction of Errors.

  1. Applicant’s action

The requestshall be made on Form PT-10for the correction of any clerical error in the application or document filed with the office or in any recordings made in line with the act.

  1. Office action
    1. An acknowledgement vide Form PT-A shall be sent to the applicant for the receipt of Form PT-10.
    2. An authorization for fee payment shall be issued.
  1. Applicant’s action

The applicant shall pay the prescribed amount of fees and submit a copy of the receipt for payment to the office.

  1. Office action

The office shall make necessary changes and notification vide Form PT-Q shall be sent to the applicant notifying that the requested changes has been made.

Chapter 7:  Extension of Time.

  1. Applicant’s action

An applicant shall request for extension of time on Form PT- 11 any time before the expiry of the time limits prescribed by the office for any action relating to the application.

  1. Office action
    1. An acknowledgement vide Form PT-A shall be sent to the applicant for the receipt of Form PT-11.
    2. An authorization for fee payment shall be issued.
  2. Applicant’s action

The applicant shall pay the prescribed amount of fees and submit a copy of the receipt for payment to the office.

  1. Office action
    1. The office shall extend the time for doing any act or taking any proceeding under the Section 38of the Act and rules pertaining thereto.
    2. A notification in response to Form No. PT-11 shall be sent to the applicant vide Form PT-R.

Chapter 8: Withdrawal of Application.

An applicant may withdraw application for a Patent anytime during its pendency.

  1. Applicant’s action

The applicant shall submit the request for withdrawal of a patent application in writing.

  1. Office action
    1. An acknowledgement vide Form PT-A shall be sent to the applicant for the receipt of written request for the withdrawal of Patent application.
    2. A notification to that effect shall be sent to the applicant vide Form PT-S.