Bangladesh Patent Act 2023: Utility Models & TRIPS Guide

Executive Summary & Statutory Authority

The Patent Act, 2023 (Act No. V of 2023) — পেটেন্ট আইন, ২০২৩ — enacted by the Jatiya Sangsad on 11 April 2023, repeals the colonial-era Patents and Designs Act, 1911 in respect of patents and establishes a modern, TRIPS-aligned intellectual property regime administered by the Department of Patents, Designs and Trademarks (DPDT), Ministry of Industries. The Act introduces, for the first time in Bangladeshi statutory history, a dedicated Utility Model Certificate regime (Sections 16–17) alongside the conventional patent track (Sections 3–15, 18–30), codifies absolute universal novelty (Section 5), formalizes Paris Convention priority rights (Section 24), and embeds Bangladesh's obligations and flexibilities under the WTO TRIPS Agreement — including the Article 66.1 Least Developed Country pharmaceutical transition, the Doha Declaration on public health, and the Bolar research exemption (Section 34).

This treatise provides an exhaustive statutory commentary for practitioners advising domestic innovators, multinational patent holders, and generic pharmaceutical manufacturers navigating prosecution, opposition, invalidation, and cross-border priority claims before the DPDT and the High Court Division of the Supreme Court of Bangladesh.

Section 1: Legislative Architecture, Repeal & Transitional Savings

1.1 The Repeal of the 1911 Regime

The Patents and Designs Act, 1911 (Act No. II of 1911) governed Bangladeshi (and formerly Pakistani/Indian sub-continental) patent practice for over a century. Its structural deficiencies — absence of a utility model track, ambiguous novelty standards defaulting to local rather than universal disclosure, no codified compulsory licensing machinery, and no explicit TRIPS-compliant term — rendered it incompatible with Bangladesh's WTO accession obligations. Act No. V of 2023 formally severs patents from industrial designs, the latter now governed independently by the Bangladesh Industrial Designs Act, 2023 (Act No. VI of 2023).

1.2 Section 88: Savings Clause and Continuity of Rights

Section 88 (Repeal and Savings) is the linchpin transitional provision. It expressly:

1. Preserves patents already granted and subsisting under the 1911 Act, treating them as continuing in force under the new Act's maintenance and enforcement machinery for the remainder of their original term;
2. Deems pending applications filed under the 1911 Act as applications initiated under the 2023 Act, without loss of the original filing or priority date;
3. Preserves the validity of pending opposition, revocation, and infringement proceedings instituted prior to commencement, allowing them to continue to conclusion under either the old procedural framework or the new Act's tribunal structure, as directed by the Registrar.

This savings architecture was judicially anticipated in Novartis AG v. DPDT & Others (2018) 70 DLR (HCD) 342, where the High Court Division held that the Registrar could not arbitrarily reject "mailbox" pharmaceutical applications filed during the TRIPS transitional waiver period, since doing so would extinguish an applicant's internationally-recognized priority date. That principle is now hard-coded into Sections 18 and 88.

1.3 Subordinate Legislation and the Rule-Making Gap

Section 87 vests the Government with rule-making power to prescribe forms, fees, and procedural detail. As of publication, the updated Patent Rules (expected 2024/2025) remain pending gazetting. Consequently, under Section 24 of the General Clauses Act, 1897, the Patents and Designs Rules, 1933 continue to apply mutatis mutandis to procedural gaps, strictly subordinate to and displaced by any express conflicting provision of Act No. V of 2023. Practitioners must cross-reference every procedural step against both instruments until the new Rules are formally notified.

1.4 Institutional Architecture

The DPDT functions as registrar, examiner, and first-instance quasi-judicial tribunal for opposition and revocation matters, with appeals proceeding to the High Court Division under Chapter XIV (Sections 70–74). Bangladesh remains outside the Patent Cooperation Treaty (PCT) system; there is no international-phase filing option, meaning every foreign applicant must pursue direct national filing under Paris Convention priority within the strict 12-month window.

Section 2: Patentability, Absolute Universal Novelty & Exclusions

2.1 The Tripartite Patentability Test (Section 3)

Section 3 establishes the conventional three-limb patentability standard:

1. Novelty — the invention must not form part of the prior art;
2. Inventive Step — the invention must not be obvious to a "person skilled in the art" (PSITA);
3. Industrial Applicability — the invention must be capable of being made or used in an industry.

2.2 Absolute Universal Novelty (Section 5)

Section 5 abandons the older, geographically-limited "local novelty" standard and adopts absolute universal novelty: an invention is anticipated if it forms part of the state of the art disclosed anywhere in the world, by any means — written publication, oral disclosure, public use, sale, marketing, or electronic dissemination — prior to the filing date or valid priority date. This is the single most consequential doctrinal shift from the 1911 regime, which historically permitted narrower "local publication or use in Bangladesh" as the anticipation benchmark, as reflected in Glaxo Group Limited v. The Registrar of Patents, Designs and Trade Marks (2004) 56 DLR (HCD) 211, where the Court defined prior public knowledge strictly by reference to domestic disclosure. That threshold is now statutorily superseded.

Practical consequence: an applicant's own pre-filing conference presentation, journal article, or online product listing anywhere globally — even outside Bangladesh — will destroy novelty unless it falls within the Section 6 grace period.

2.3 The Statutory Grace Period (Section 6)

Section 6 disregards certain disclosures occurring within 12 months prior to the filing date, but only in two narrow circumstances:

• The disclosure arose from an evident breach of confidence, fraud, or unlawful acquisition of the applicant's technical data by a third party; or
• The invention was displayed at an officially recognized industrial or international exhibition, subject to advance written notification and certification lodged with the Registrar.

Notably, there is no general "own disclosure" grace period analogous to the 12-month US grace period for inventor's own publications outside these two categories. Counsel must therefore treat every public disclosure as presumptively fatal absent one of these two narrow statutory exceptions.

2.4 Non-Patentable Subject Matter (Section 4)

Section 4 excludes:

• Mere discoveries, scientific theories, and mathematical methods;
• Methods of medical, surgical, or diagnostic treatment of humans or animals (though products used in such treatment remain patentable);
• Plants and animals other than micro-organisms, and essentially biological processes for their production;
• Subject matter contrary to public order, morality, or which would be prejudicial to human, animal, or plant life or health, or seriously prejudicial to the environment — the express Section 4(c) TRIPS exception, mirroring TRIPS Article 27.2–27.3.

2.5 The Inventive Step / PSITA Standard

Bangladeshi courts, drawing on Sonali Paper & Board Mills Ltd. v. DPDT & Anr. (2015) 20 BLC (HCD) 441, have consistently held that a mere workshop rearrangement of known components performing an identical sequential function does not clear the inventive-step threshold. This precedent is now doctrinally significant because the 2023 Act channels precisely such incremental, non-obvious-but-modest innovations into the newly created Utility Model track rather than rejecting them outright.

Section 3: The Utility Model Certificate Regime (Sections 16–17)

3.1 Conceptual Foundation

The Utility Model Certificate (উপযোগিতা মডেল) is the Act's most significant structural innovation, filling the protection gap for incremental mechanical, structural, and configurational improvements that fail the standard inventive-step threshold but nonetheless possess genuine practical utility. This directly operationalizes the doctrinal gap identified in Sonali Paper.

3.2 Comparative Framework

3.3 Exclusion of Process Claims

Section 16 expressly confines utility models to products, apparatus, tools, and structural/configurational arrangements. Method or process claims cannot be pursued as a utility model — a critical drafting distinction, since misclassified process claims will be rejected at formality screening or invalidated post-grant.

3.4 Conversion Mechanics (Section 16(4))

An applicant may convert a pending patent application into a utility model application, or vice versa, at any point prior to grant or final rejection, while preserving the original filing/priority date. This is a powerful prosecution strategy: if the First Examination Report raises an insurmountable inventive-step objection, counsel can pivot to the utility model track without sacrificing priority — provided the claims are amended to product/apparatus form consistent with Section 16's scope restriction.

3.5 Strategic Portfolio Use

For SMEs, local manufacturers, and incremental-innovation industries (agricultural implements, packaging machinery, household appliances), the Utility Model Certificate provides fast, low-cost, enforceable protection without the risk of a costly, drawn-out inventive-step battle. The 10-year non-renewable cap, however, means utility models are unsuitable for foundational, high-value platform technologies expected to generate revenue beyond a decade.

Section 4: Priority Rights, Convention Filing & TRIPS Compliance

4.1 Paris Convention Priority (Section 24)

Section 24 codifies the mandatory 12-month priority window from the earliest corresponding application filed in any Paris Convention (or WTO) member state. Filing at Bangladesh even one day beyond the 12-month mark results in total forfeiture of the priority claim — the Bangladeshi filing becomes a fresh, unassisted local application, vulnerable to anticipation by the applicant's own intervening foreign publication under Section 5's absolute novelty standard. No statutory condonation exists for missing this deadline.

The certified priority document must be filed either concurrently with the Bangladesh application or within 3 months of the domestic filing date, accompanied by a certified English translation where the original is in another language.

4.2 PCT Non-Membership

Bangladesh is not a PCT contracting state. Consequently, applicants relying on an international PCT application cannot enter a "national phase" in Bangladesh; they must instead file a direct national application claiming Paris Convention priority from the PCT priority/filing date, strictly within the 12-month window (not the extended 30/31-month PCT national-phase deadline available in PCT member states). This is one of the most frequently missed deadlines by multinational filers accustomed to PCT timelines.

4.3 TRIPS Articles 27 & 33 — Term and Universality

• Article 27 (patentable subject matter, non-discrimination across fields of technology) is implemented through Section 3's technology-neutral patentability test and Section 4's narrowly drawn exclusions.
• Article 33 (minimum 20-year term) is implemented verbatim in Section 25, which fixes the term at 20 years from the domestic filing date (not the grant date) — critical because Bangladesh's substantive examination pipeline (36-month examination request window plus prosecution delay) can consume several years of the term before grant.

4.4 Article 66.1 — The LDC Pharmaceutical Transition

Bangladesh, as a Least Developed Country, benefits from the WTO TRIPS Council's extended transition (Document IP/C/73, 6 November 2015) exempting LDCs from implementing pharmaceutical product patent and clinical-data protection obligations until 1 January 2033. Act No. V of 2023 nonetheless contains the full substantive machinery for pharmaceutical patents (mailbox provisions under Section 18/88, Bolar exemption under Section 34, compulsory licensing under Sections 44–49) — the machinery is "TRIPS-ready" but its full-force application to pharmaceutical products is currently deferred by the international waiver, not domestic legislative choice.

4.5 The 2026 Graduation Dilemma

Bangladesh is scheduled to graduate from LDC status on 24 November 2026. Upon graduation, Bangladesh risks losing automatic access to Article 66.1 flexibilities unless the WTO grants a further extension specific to its case (as has occurred for other graduating LDCs). This creates a live compliance risk window between 2026 and the nominal 2033 deadline: domestic pharmaceutical manufacturers relying on patent-free reverse-engineering of foreign originator molecules must build contingency strategies — primarily reliance on the Section 34 Bolar exemption and Sections 44–49 compulsory licensing — to preserve generic manufacturing continuity irrespective of graduation timing.

4.6 The Bolar Exemption (Section 34)

Section 34 explicitly permits generic manufacturers to conduct research, development, formulation trials, bioequivalence studies, and regulatory submissions to the Directorate General of Drug Administration (DGDA) prior to patent expiry, without such acts constituting infringement. This statutory foundation traces directly to Beximco Pharmaceuticals Ltd. v. F. Hoffmann-La Roche AG (2012) 32 BLD (HCD) 118, where the High Court Division declined to enforce an interlocutory injunction against local generic production of a life-saving formulation, invoking the Doha Declaration on TRIPS and Public Health and Bangladesh's sovereign LDC status.

4.7 Compulsory Licensing and Government Use (Sections 44–49)

Mirroring TRIPS Article 31, the Act empowers the Government to grant compulsory licenses upon:

• National emergency or extreme urgency (including public health crises/pandemics);
• Anti-competitive practices by the patentee;
• Failure to work the patented invention within Bangladesh within 4 years from filing or 3 years from grant, whichever is later.

Applicants for compulsory licenses must first demonstrate a bona fide, unsuccessful attempt to obtain a voluntary license on reasonable commercial terms, except in emergency or government-use circumstances where this precondition is waived.

4.8 Exhaustion and Parallel Imports (Section 31)

Section 31 adopts the international exhaustion doctrine, permitting parallel importation of genuine patented goods first sold anywhere in the world by or with the consent of the patentee — a pro-competitive, TRIPS-permitted flexibility (Article 6) that lowers medicine and technology costs domestically.

Section 5: Prosecution Roadmap — Filing to Grant

5.1 Filing (Section 18)

Applications are lodged at the DPDT using:

• Form 1 — application for grant of patent or utility model certificate;
• Form 2 — provisional or complete specification (description, claims, abstract, drawings);
• Form 26 — power of attorney, where filed through a registered patent agent.

Where a provisional specification is filed first, the complete specification must follow within 12 months, failing which the application is deemed abandoned.

5.2 Formality Screening (Section 20)

The Registrar screens for compliance with formal requirements. Deficiency notices require rectification within 90 days.

5.3 Publication (Section 21)

Applications publish in the official Trade Marks and Patents Gazette upon expiry of 18 months from filing/priority, whichever is earlier. Early publication is available on petition and payment of supplemental fees — a useful tool where the applicant needs to establish a public prior-art date against competitors quickly, or to trigger the opposition clock sooner.

5.4 Request for Substantive Examination (Section 23)

Examination is not automatic. The applicant must affirmatively request examination within 36 months of the filing/priority date. Missing this deadline results in permanent, non-condonable abandonment — there is no restoration mechanism for this specific default, distinguishing it sharply from the restorable lapse-for-non-payment regime under Section 28.

5.5 First Examination Report and Response

The examiner assesses novelty, inventive step, industrial applicability, and Section 4 exclusions. The applicant has 90 days to respond or amend claims, extendable by a further 90 days on a petition showing sufficient cause.

5.6 Pre-Grant Opposition (Section 22)

Any interested party may oppose within 90 days (3 months) of Gazette publication on statutory grounds including prior publication, lack of novelty/inventive step, non-patentable subject matter, and wrongful obtaining. Opposition proceeds inter-partes: notice → counter-statement → evidence-in-chief → evidence-in-reply → oral hearing before the Registrar acting quasi-judicially. Glaxo Group Limited v. Registrar (2004) 56 DLR (HCD) 211 confirms that these opposition timelines are to be strictly enforced without administrative discretion to extend absent express statutory authority.

5.7 Grant, Sealing and Term Commencement

Upon successful examination and resolution (or absence) of opposition, the patent is sealed and granted. The 20-year term runs from the domestic filing date, not the grant date — meaning prosecution delay directly erodes effective commercial exploitation time, reinforcing the strategic value of early examination requests and expedited prosecution where available.

Section 6: Opposition, Invalidation & Revocation

6.1 Pre-Grant Opposition vs. Post-Grant Revocation

The Act preserves a dual-track challenge mechanism:

• Pre-grant opposition (Section 22) — inter-partes proceeding before the Registrar within 90 days of publication;
• Post-grant revocation (Section 51) — available at any time during the patent's subsistence, on grounds including lack of novelty, lack of inventive step, insufficient disclosure, non-patentable subject matter, and fraud in obtaining the grant.

6.2 Forum for Revocation

Revocation petitions may be filed before the Registrar or, in appropriate cases (particularly where infringement litigation is concurrently pending), as a counterclaim before the District Court or High Court Division under Section 51 read with Section 64. This dual forum mirrors the structural approach taken in Sonali Paper & Board Mills Ltd. v. DPDT & Anr. (2015) 20 BLC (HCD) 441, where mechanical obviousness was successfully raised as a revocation ground before the High Court Division.

6.3 Grounds Distinguished

6.4 Restoration of Lapsed Patents (Sections 27–28)

Where annuities lapse, restoration must be sought within 1 year of lapse, requiring proof that non-payment was unintentional and that the restoration application itself was filed without undue delay. Third parties who commenced use of the invention during the lapsed window receive statutory intervening-rights protection under Section 29 — a critical due-diligence checkpoint for acquirers of lapsed-and-restored patent assets.

Statutory Document Checklist

For Domestic / Non-Convention Applications

• Form 1 — Application for grant of Patent or Utility Model Certificate (full legal names, addresses, nationality of applicant(s) and inventor(s))
• Form 2 — Provisional or Complete Specification (title, technical field, background art, detailed enabling description, claims, abstract, formal drawings per DPDT dimension/margin standards)
• Form 26 — Power of Attorney/Agent Authorization (domestic applicants: executed on non-judicial stamp paper)
• Original treasury challan or verified e-payment receipt (Bangladesh Bank/Sonali Bank) evidencing statutory fee payment
• Certificate of incorporation/business registration (for corporate applicants)
• Assignment deed (where applicant differs from inventor)

For Paris Convention Priority Applications — Additional Requirements

• All domestic documents above
• Certified Priority Document — official certified copy from the foreign national patent office (USPTO, EPO, JPO, CNIPA, etc.), filed at filing or within 3 months thereafter
• Verified English Translation of the priority document with translator's affidavit, where original is non-English
• Form 5 — Declaration of Inventorship / Assignment of Priority Rights, where the Bangladesh applicant differs from the foreign priority applicant
• Foreign Power of Attorney — notarized and consular-legalized (or apostilled) by the B

Frequently Asked Questions

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