Legal Advice on Patent Law in Pakistan

As a leading law firm in Pakistan, Josh and Mak International offers a comprehensive range of legal services related to the Law of Patents. Our expert team of patent attorneys and professionals can provide assistance and guidance to both local and foreign entities and individuals in various aspects of patent law in Pakistan. Some of the key services we provide include:

1. Patent Filing and Prosecution: We assist clients in preparing and filing patent applications in Pakistan, including drafting the required specifications, claims, and other necessary documents. Our team handles the prosecution process, including responding to examination reports and overcoming any objections raised by the Intellectual Property Office.

2. Patent Search and Analysis: We conduct thorough patent searches to assess the novelty and patentability of inventions, ensuring that clients’ inventions do not infringe on existing patents.

3. Patentability Assessment: Our experts evaluate clients’ inventions to determine their eligibility for patent protection, considering the criteria of novelty, inventiveness, and industrial applicability under Pakistani patent law.

4. Patent Portfolio Management: We offer strategic advice on managing patent portfolios, including patent maintenance, renewals, and monitoring competitors’ patent activities.

5. Pre-grant and Post-grant Opposition: Our team handles pre-grant and post-grant oppositions on behalf of clients to challenge or defend the grant of a patent based on valid grounds.

6. Patent Enforcement and Infringement Actions: We represent clients in enforcing their patent rights and taking legal action against infringers. We also defend clients facing patent infringement claims.

7. Patent Licensing and Assignment: Our attorneys assist in negotiating, drafting, and reviewing patent licensing agreements and assignments to ensure clients’ intellectual property rights are protected.

8. Compulsory Licenses and Government Actions: We provide guidance on compulsory licenses, including applications and defending against compulsory license petitions. Additionally, we offer advice on government actions concerning patents.

9. Rectification Proceedings: Our team assists clients in initiating rectification proceedings to correct errors or omissions in the Register of Patents.

10. International Patent Protection: For foreign entities and individuals, we provide guidance on seeking international patent protection through the Patent Cooperation Treaty (PCT) and other relevant treaties.

At Josh and Mak International, our priority is to protect and safeguard our clients’ intellectual property rights. We offer personalized and strategic legal solutions to meet the unique needs of each client. With our in-depth knowledge of the Law of Patents in Pakistan and our commitment to excellence, we strive to ensure that our clients’ innovations are duly protected and their legal rights are upheld in the complex world of patent law.If you have any questions or need legal assistance please contact us at [email protected]

A Guide to Patent Filing in Pakistan

Patent filing in Pakistan is regulated by the Patents (Amendment) Act, 2010, in conjunction with the Patent Rules, 2003. The country’s patent laws have undergone various amendments over the years. The first patent law was introduced as the Patent and Design Act of 1911, which was later replaced by the Patents Ordinance of 2000. Subsequent amendments were made to the ordinance in 2002, 2007, and 2010. Presently, the Patents (Amendment) Act, 2010, and the Patent Rules, 2003 govern the patent system in Pakistan.

Definition of Patent:

Under the Act, a patent is an exclusive right granted for a limited period to the inventor, allowing them to make, use, and sell the invention. This exclusivity prevents others from making, using, or selling the patented invention without obtaining prior permission or a license from the patent holder.

Eligibility for Patent Application:

According to Section 11 of the Patents Ordinance, 2000, the following individuals, whether alone or jointly with others, are eligible to apply for a patent in Pakistan:

• Inventor: The person who conceived the invention.
• Legal Representative: In the case of the inventor’s death or incapacity, their legal representative can apply.
• Assignee: The person to whom the inventor has assigned the rights.
• Joint Applicants: More than one person can apply jointly for a patent.

Patentable Inventions in Pakistan:

To be considered patentable under Section 7(1) of the Patents Ordinance, 2000, an invention must possess the following characteristics:

• Novelty: The invention must be new and not previously disclosed or publicly available.
• Inventive Step: It should involve an inventive step that is not obvious to someone skilled in the field.
• Industrial Applicability: The invention must have a practical and useful application in industry.

Non-Patentable Inventions in Pakistan:

Sub-sections (2) and (4) of Section 7 of the Patents Ordinance specify the following as “non-patentable” inventions in Pakistan:

• Discoveries and Scientific Theories: Purely scientific discoveries and theories are not patentable.
• Plant and Animal Varieties: Varieties of plants and animals, other than microorganisms, are excluded.
• Essentially Biological Processes: Processes for the production of plants and animals through biological methods are not patentable.

Filing a Patent Application:

To file a patent application in Pakistan, the following documents are required:

• Applicant and Inventor Details: Complete information regarding the applicant and inventor(s), including their names, nationality, and addresses.
• Application Form: A duly executed application form for either a convention or non-convention application.
• Patent Specification and Claims: The invention’s description and claims in the English language, along with any accompanying drawings.
• Priority Document: A certified copy of the priority document (if applicable).
• Power of Attorney: A duly executed Power of Attorney.

Prosecution Process:

The process of obtaining a patent in Pakistan involves several stages, including filing, publication, examination, pre-grant opposition, grant, post-grant opposition, and renewal registration.

Term of Patent:

The term of a patent in Pakistan is twenty years from the date of the application.

Patent Search in Pakistan:

Conducting a patent search before filing an application is essential to ensure that the invention is not already known as “prior art” or “state of the art.” Section 8(2) of the Patents Ordinance, 2000, defines these terms.

In conclusion, understanding the patent filing process in Pakistan is vital for inventors and businesses seeking protection for their innovations. The Patents (Amendment) Act, 2010, and the Patent Rules, 2003, govern the patent system, and adherence to the defined procedures is essential for a successful application. Conducting a patent search before filing can help applicants determine the novelty of their inventions and enhance their chances of securing a patent. For detailed assistance and guidance, applicants can reach out to the relevant offices, including the IPO Pakistan, Patent Office Karachi, IPO-headquarters Islamabad, and IPO Regional Office Lahore.

Understanding the Different Types of Patent Applications in Pakistan

Applying for a patent in Pakistan requires a clear understanding of the different types of applications available. At Josh and Mak International, we aim to provide comprehensive guidance to inventors and businesses seeking patent protection. Let’s explore the various types of patent applications in Pakistan:

a) Ordinary Application:

An ordinary patent application is filed with the Pakistan Patent Office without claiming priority from any other application under process with any other Patent Office. It is the standard application format for seeking patent protection in Pakistan.

b) Provisional and Complete Application:

A provisional specification is often the initial application submitted for an invention. It typically contains a brief description of the invention and is not required to include claims. However, within 12 months from the date of filing the provisional specification, a complete specification must be submitted. The complete specification provides a full and detailed description of the invention, including the title, field of invention, background, related art, summary, preferred embodiments, claims, abstract, and the best mode of working.

c) Convention Application:

As per Section 2(c) of the Patents Ordinance, a convention application is filed in Pakistan within twelve months after the date of an application made in a convention country. This application allows applicants to claim single or multiple priorities from their corresponding application filed in the convention country.

d) Patent of Addition:

Under Sections 39 and 40 of the Patents Ordinance, 2000, a patent of addition pertains to a mere improvement or modification of an already filed invention. The application for a patent of addition must either have the same date of filing as the complete specification of the main invention or a later date. Notably, a patent of addition is not granted independently; it is valid and expires along with the main invention’s patent. However, if the main patent is revoked, the patent of addition may be converted into an independent patent upon the applicant(s) request. In such cases, the same renewal fee as that of an independent patent is required to be paid.

e) Divisional Application:

As per Section 13 of the Patents Ordinance, 2000, an applicant may divide an application into two or more applications before its acceptance, provided that each divisional application must not extend beyond the disclosure of the first application. Such applications are known as divisional applications. Each divisional application carries the same priority date as the first application.

At Josh and Mak International, our experienced legal team can assist you in determining the most suitable type of patent application for your invention. Whether you require an ordinary application, a convention application based on international priority, or a divisional application for distinct aspects of your invention, we provide comprehensive legal support throughout the process.

Understanding the nuances of patent applications can significantly impact the success of obtaining patent protection for your invention. Our legal experts are equipped with the knowledge and experience to guide you through each step, from initial filing to the final grant of the patent.

For further information and personalized legal assistance, please don’t hesitate to contact our legal team at Josh and Mak International. We are committed to safeguarding your intellectual property rights and helping you achieve your patent objectives in Pakistan and beyond.

Patent Application Filing Requirements in Pakistan

When it comes to patent application filing in Pakistan, understanding the process and requirements is crucial for securing protection for your invention. At Josh and Mak International, we are committed to assisting inventors and businesses in navigating the complexities of patent filing. Let’s explore the key aspects of filing a patent application in Pakistan:

Who can file a Patent Application in Pakistan?

An application for a patent in Pakistan can be filed by any of the following persons, either individually or jointly with others:

• The True and First Inventor: The individual who came up with the invention and can rightfully claim ownership as the original creator.
• The Assignee: If someone else claims to be the true and first inventor and has assigned their rights to another party, the assignee may file the patent application.
• Legal Representative: In the event of the death of the inventor, the legal representative of the deceased, who was entitled to make the application before their passing, can file the application.

Where to file a Patent Application in Pakistan?

A patent application can be filed at the Pakistan Patent Office, located in Karachi, or at one of its Branch Offices in Lahore or the headquarters in Islamabad.

How to file a Patent Application in Pakistan?

There are two ways to file a patent application in Pakistan:

• Ordinary Application: An ordinary application can be filed without claiming priority from any other application under process with any other Patent Office.
• Convention Application: A convention application can be filed in Pakistan within twelve months after the date of an application made in a convention country, with the option to claim single or multiple priorities from the corresponding application filed in that country.

Documents required for filing:

All details and formal documents for the patent application must be filed in English.

Patentability Requirements in Pakistan:

To be deemed patentable in Pakistan, an invention must meet the following criteria:

• Novelty: The invention should be new, not publicly disclosed anywhere in the world before the filing date or priority date.
• Inventive Step: It must involve an inventive step that is not obvious to someone skilled in the relevant field.
• Industrial Application: The invention must be capable of practical and industrial application.

Non-Patentable Inventions in Pakistan:

The Patents Ordinance, 2000, excludes certain inventions from being granted patents in Pakistan. These include, but are not limited to:

• Discoveries, Scientific Theories, and Mathematical Methods
• Literary, Dramatic, Musical, or Artistic Works
• Methods for Mental Acts, Games, or Business
• Presentations of Information
• Naturally Occurring Substances
• Inventions Against Public Morality or Environment
• Diagnostic, Therapeutic, and Surgical Methods for Humans or Animals
• New Uses of Known Products or Processes

Prior Art in Patent Filing:

The concept of “prior art” is essential in patent filing. It includes anything that has been disclosed to the public before the filing date or priority date of the claimed invention. This may include published information, oral disclosures, or use of the invention before the application is filed.

Filing a patent application in Pakistan requires a thorough understanding of the legal intricacies and requirements. At Josh and Mak International, our team of experienced patent attorneys is dedicated to guiding you through the entire process. From determining the appropriate application type to ensuring compliance with patentability criteria, we provide comprehensive legal support to protect your innovative ideas.

For more information on patent filing, types of patent applications, filing requirements, and patentability in Pakistan, please refer to the Patents Ordinance, 2000, or reach out to our expert legal team at Josh and Mak International. We are here to assist you in safeguarding your intellectual property rights and achieving success in the competitive world of innovation.

Conducting Patent Searches and Filing Patent Applications in Pakistan

Securing a patent for your innovative idea is a critical step in protecting your intellectual property rights. At Josh and Mak International, we strive to provide comprehensive legal assistance in conducting patent searches and filing patent applications in Pakistan. Let’s delve into the key aspects of patent search and application filing:

Patent Search in Pakistan:

At present, the Patent Office of Pakistan does not offer an online patent search database. However, individuals or businesses can request a patent search by submitting Form P-27 along with the prescribed fees to the Patent Office. The following details are required for the patent search:

• Patent Number
• Application Number for Patent
• Name of Patentee/Applicant
• Title of Invention/Application
• Subject Matter of Patent(s)
• Classification of the Patent(s)

Our legal team at Josh and Mak International can assist you in conducting a thorough patent search to ensure that your invention is not already patented or publicly disclosed. Obtaining a patent search is a crucial step to evaluate the novelty and patentability of your invention.

Filing a Patent Application in Pakistan:

To file a patent application in Pakistan, applicants have two options:

• Physical Filing: A physical copy of the patent application can be submitted directly to the Pakistan Patent Office.
• Electronic Filing: The application may also be sent electronically, but the prescribed fee must be sent manually. Upon receipt of the fee, a filing date is allotted. The hard copy of the application may be submitted later.

Documents Required for Filing:

The following documents and information are essential for filing a patent application in Pakistan:

• Patent Specification and Claims: The complete description of the invention, including drawings (if applicable), in the English language.
• Applicant(s) and Inventor(s) Details: Complete information, including names, nationalities, and addresses.
• Application Form: The application form, whether for a convention or non-convention application, must be signed by the applicant(s).
• Duly Executed Power of Authority: A Power of Authority, duly executed, is required if the application is being filed through an agent.
• Certified Copy of Priority Document: If the application claims priority from a previous application, a certified copy of the priority document must be provided.

English Translation of Non-English Documents:

If any document is in a language other than English, a verified English translation, duly notarized by a notary public, must be filed at the Pakistan Patent Office along with the original document.

At Josh and Mak International, our team of experienced patent attorneys is well-versed in the nuances of patent search and application filing in Pakistan. We understand the importance of ensuring accurate and timely submissions to protect your intellectual property.

For expert guidance on conducting patent searches, filing patent applications, and safeguarding your innovative ideas, reach out to our legal team at Josh and Mak International. We are dedicated to supporting your intellectual property endeavors in Pakistan and beyond.

Understanding Patent Law in Pakistan

Patent protection is vital for inventors and businesses seeking to safeguard their innovative ideas and secure exclusive rights over their inventions. In Pakistan, the patent system has undergone significant changes and amendments over the years. Let’s delve into the key aspects of patent law in Pakistan, the importance of early filing, and the criteria for patentability.

Historical Evolution of Patent Law in Pakistan:

The journey of patent law in Pakistan began with the Patent and Design Act of 1911. Subsequently, the Patents Ordinance of 2000 replaced this Act, and it has since been amended through the Patents (Amendment) Ordinances of 2002, 2007, and 2010. Presently, the patent law in Pakistan is governed by the Patents (Amendment) Act, 2010, in conjunction with the Patent Rules, 2003.

Territorial Nature of Patent Rights:

Patent rights are territorial, meaning a patent obtained in Pakistan is only enforceable within the country’s borders. Similarly, foreign patents, including those from the United States, are not enforceable in Pakistan. As Pakistan has not acceded to the Patent Cooperation Treaty (PCT), PCT filings will not provide protection within Pakistan’s jurisdiction.

Market Entry Planning and Early Filing:

Inventors must prioritize early patent application filing in Pakistan, regardless of their immediate plans for using the invention in the country. Pakistan follows a “first to file” basis, wherein the first applicant is granted the patent rights. Therefore, being the first to apply for patent protection is of utmost importance.

To protect proprietary rights during the early stages of invention development, inventors may consider using non-disclosure agreements with recipient parties. This ensures that the recipients are bound by contractual obligations to maintain confidentiality about the disclosed invention. Additionally, framework agreements defining the relationship between parties and their respective rights and obligations should be signed at the earliest possible moment.

Who Can Apply for a Patent in Pakistan?

The following persons are eligible to apply for a patent in Pakistan:

• The true and first inventor of the invention.
• The assignee of a person claiming to be the true and first inventor.
• The legal representative of a deceased person who, before their death, was entitled to make such an application.

Criteria for Patentability:

To be eligible for patent protection, an invention must possess the following three essential ingredients:

• Novelty: The invention must be new and not previously used or disclosed anywhere in the world.
• Inventive Step: The invention must involve a technological advancement beyond existing technology, which is not obvious to a person of ordinary skill in the relevant field.
• Industrial Application: The invention must be capable of practical and industrial application, demonstrating utility and usefulness.

In conclusion, understanding patent law in Pakistan is crucial for inventors and businesses seeking to protect their intellectual property. Early filing of patent applications is of utmost importance to secure exclusive rights and prevent the risk of losing rights to others. Our legal team at Josh and Mak International is well-versed in patent law matters and committed to providing expert guidance to clients seeking patent protection in Pakistan. Protect your innovative ideas with the support of our experienced attorneys and ensure a competitive edge in the world of intellectual property.

Non-Patentable Subject Matter under the Pakistani Patent System

The Pakistani patent system allows for the patenting of a wide range of technological inventions, providing inventors and businesses with the opportunity to protect their innovations. However, there are certain types of subject matter that are not considered eligible for patent protection in Pakistan. Let’s explore the non-patentable categories:

(i) Discovered Things:**

Natural discoveries or things that already exist in nature are not patentable. Only inventions that have been created or invented by human effort are eligible for patent protection. For instance, human genes in their isolated form or the discovery of a new star cannot be patented as they are considered discoveries, not inventions.

(ii) Mathematical Methods and Scientific Theories:

Purely mathematical methods and scientific theories, such as Newton’s Law of Motion or the Archimedes Principle, cannot be patented. These concepts are considered fundamental principles of knowledge and are not subject to patent protection.

(iii) Aesthetic Creations:

Literary, dramatic, musical, or artistic works, including any other aesthetic creations, are not eligible for patent protection. Copyright law typically governs the protection of these creative works.

(iv) Mental Act, Game, and Business Methods:

Schemes, rules, and methods for performing a mental act, playing a game, running a business, etc., fall under the category of non-patentable subject matter.

(v) Presentation of Information:

The mere presentation of information, such as data or facts, is not eligible for patent protection.

(vi) Substances Existing in Nature:

Substances that exist in nature, even if they are isolated or purified, cannot be patented.

(vii) Contrary to Public Order or Morality:

Any invention that is contrary to public order or morality is not patentable in Pakistan.

(viii) Prejudice to Life, Health, or Environment:

Inventions that cause serious prejudice to human, animal, or plant life or health, or to the environment, are not eligible for patent protection.

(ix) Plants and Animals (Other than Micro-organisms) and Biological Processes:

Plants and animals, except for micro-organisms, and biological processes for the production of plants or animals, are not patentable.

(x) Diagnostic, Therapeutic, and Surgical Methods:

Inventions related to diagnostic, therapeutic, and surgical methods for the treatment of human beings or animals are not eligible for patent protection.

(xi) Mere Discovery of New Property or Use for a Known Product or Process:

The mere discovery of any new property or new use for a known product or process is not patentable unless it meets the criteria for patentability.

(xii) Mere Change in Physical Appearance of Chemical Product:

A mere change in the physical appearance of a chemical product, where the chemical formula or manufacturing process remains the same, is not patentable, unless it fulfills the criteria for patentability.

(xiii) Local or Indigenous Knowledge:

Inventions that comprise traditionally developed or existing knowledge available or in possession of a local or indigenous community are not eligible for patent protection.

(xiv) Mere Combination of Properties:

Substances obtained by a mere combination resulting only in the aggregation of the properties of the components thereof or a process for producing such substances are not patentable.

In conclusion, understanding what is non-patentable in Pakistan is crucial for inventors and businesses before filing a patent application. Our team at Josh and Mak International is well-versed in patent law matters and can provide expert guidance on patent eligibility and protection. Protect your inventions effectively and navigate the complexities of patent law with the support of our experienced attorneys.

Rights of a Patentee in Pakistan:

Securing a patent in Pakistan grants the patentee exclusive rights over their invention. The patentee enjoys the following rights:

• Exclusive Use: The patentee has the right to prevent third parties from making, using, offering for sale, selling, or importing the patented product. Additionally, they can prevent others from using the patented process and from using, offering for sale, selling, or importing a product obtained directly through the patented process.
• Assignment and Licensing: The patentee has the right to assign or transfer the patent to another party and can enter into licensing contracts, allowing others to use the patented invention under specific terms.
• Enforcement: The patentee can institute court proceedings against any person infringing the patent or engaging in activities likely to lead to infringement.

Procedure for Grant of Patent:

The patent system in Pakistan operates on a “first-to-file” basis. The process for granting a patent in Pakistan generally takes around eighteen to twenty-four months. The following steps are involved in the patent grant process:

• Select a Patent Agent: Engage a local IP law firm or a patent agent with expertise in patent matters to guide you through the filing process.
• Preparation and Filing of Application: The patent application must be made in the prescribed form and filed at the Intellectual Property Office in Karachi or Lahore. The application should be accompanied by a declaration confirming the applicant’s possession of the claimed invention.
• Provisional or Complete Specification: The application should include either a provisional or a complete specification along with any relevant drawings. The complete specification must include:
  • Description of the invention, its operation, and method of performance.
  • The best method known to the applicant for performing the invention and claiming protection.
  • Claims defining the scope of the protected invention.
  • Abstract providing technical information about the invention.
• Examination and Publication: The patent application undergoes examination to assess its patentability. If found satisfactory, it is published in the Patent Journal.
• Opposition and Grant: After publication, there is a specific period during which third parties can oppose the grant of the patent. If no opposition is raised, the patent is granted.
• Term of Patent: The term of a patent in Pakistan is twenty years from the date of filing the application.

At Josh and Mak International, our experienced patent attorneys can assist you throughout the patent application process. From initial filing to enforcement of patent rights, we are dedicated to protecting your intellectual property and ensuring your innovations receive the appropriate legal recognition and protection in Pakistan.

Publication and Examination of Patent Applications in Pakistan

The process of publication and examination of patent applications in Pakistan plays a crucial role in determining the patentability and grant of patents. Let’s explore the key aspects of this process:

Provisional and Complete Specification:

When filing a patent application, an inventor may choose to submit either a provisional specification or a complete specification. If the application is accompanied by a provisional specification and not a complete specification, the applicant must file the complete specification within twelve months from the initial filing date. Failure to do so within the specified timeframe will result in the application being deemed abandoned.

Examination and Report:

For applications accompanied by a complete specification, the Controller refers them to an examiner. The examiner thoroughly reviews the application and its complete specification to assess its patentability. Based on the examination, the examiner prepares a report to be submitted to the Controller.

Opportunity to Comply:

If the examiner identifies any deficiencies or non-compliance with the requirements of the law, the Controller gives the applicant an opportunity to be heard and a chance to comply with the necessary legal requirements. This allows the applicant to address any issues and rectify the deficiencies, ensuring that the application meets the criteria for patentability.

Publication and Public Inspection:

Once the application and complete specification are accepted and all legal requirements are met, the application is published in the Official Gazette. After publication, the patent application becomes open to public inspection. This step is essential for promoting transparency and allowing interested parties to be aware of the patent application’s details.

Observations by Third Parties:

Following the publication of the specification, any person can submit written observations to the Controller regarding the novelty of the invention. The person submitting the observations must provide evidence supporting their claims. The Controller takes these observations into consideration before granting the patent. However, the individual making the observations does not become a party to the proceedings before the Controller.

In conclusion, the publication and examination process in Pakistan ensures that patent applications undergo rigorous evaluation and meet the necessary criteria for patentability. At Josh and Mak International, our team of experienced patent attorneys can guide inventors and businesses through this process, providing expert assistance in filing patent applications and ensuring compliance with legal requirements. Protect your inventions effectively and navigate the complexities of patent law with our dedicated legal support.

Grant of a Patent in Pakistan

The grant of a patent in Pakistan marks a significant milestone in the patent application process. Once the complete specification of the application has been accepted, and there are no oppositions filed against it or if any opposition has been filed and is decided in favor of the applicant, the patentee can request the grant of the patent.

Request for Grant:

To initiate the process of patent grant, the applicant submits a request in the prescribed form to the Controller. This request expresses the applicant’s desire for the patent to be granted to them. It serves as an official application for the grant of the patent.

Sealing of the Patent:

Upon receiving the request for grant and ensuring all legal requirements are met, the Controller seals the patent with the seal of the Patent Office. The sealing signifies the formal recognition of the patent and its official acceptance by the authorities.

Entry in the Register of Patents:

The patent is entered into the Register of the Patents by the Controller. This register serves as an official record of granted patents in Pakistan. The entry includes essential details about the patent, such as its date of filing and grant.

Effective Date of the Patent:

Each granted patent is dated as of the date of filing of the original patent application. If the application is a Paris Convention application, the date of grant will be the date of the earliest application made under the Paris

In conclusion, the grant of a patent in Pakistan is a formal process that involves the applicant’s request, examination of the application, and compliance with legal requirements. Once the patent is granted, it is recorded in the Register of Patents, affirming the inventor’s exclusive rights over the invention. At Josh and Mak International, our team of skilled patent attorneys can guide you through the patent grant process, ensuring a smooth and successful journey to obtaining patent protection for your valuable inventions in Pakistan. Protect your innovations effectively and maximize the benefits of your intellectual property with our dedicated legal support.

Pre-Grant and Post-Grant Opposition in Pakistan

The patent system in Pakistan allows for both pre-grant and post-grant opposition, providing an avenue for interested parties to raise concerns or challenge the grant of a patent. Let’s explore the key aspects of pre-grant and post-grant opposition procedures:

Pre-Grant Opposition:

During the patent application process, if an application for a patent has been published but the patent has not been granted yet, any person can oppose the application by making a representation to the Controller within four months of the publication in the Official Gazette. Pre-grant opposition can be made on the following grounds:

• Invention Source: The opposing party claims that the applicant obtained the invention or any part thereof from them or from someone they represent, such as the legal representative, assignee, agent, or attorney.
• Non-Patentable Invention: The invention is not eligible for patent protection as per the provisions of the Patents Act.
• Insufficient Disclosure: The specification does not adequately and clearly disclose the invention in a manner that allows a person skilled in the relevant art to carry it out.
• Invalid Claims: The claims in the complete specification are unclear or extend beyond the scope of the disclosures made in the original complete specification.
• Contradictory Specifications: The complete specification describes or claims an invention different from the one described in the provisional specification, and this other invention is the subject of an earlier patent application made by the opponent or has been previously made available to the public through publication in any document.

The Controller may schedule a hearing if requested by the person opposing the patent application. After due consideration, if the opposition is decided in favor of the applicant, the patent will be granted, and the patent will be published in the Official Gazette.

Post-Grant Opposition:

After the grant of the patent, any interested person has the option to file a notice of opposition within one year after the patent grant. The notice of opposition requests the Controller to revoke the patent. The Controller will then hear both the patentee and the opponent and may decide to maintain, revoke, or amend the patent based on the evidence and arguments presented during the hearing.

In conclusion, pre-grant and post-grant opposition procedures in Pakistan provide an opportunity for interested parties to challenge the grant of a patent or seek revocation if they believe the patent should not have been granted or is invalid. At Josh and Mak International, our experienced patent attorneys can assist you with pre-grant and post-grant opposition matters, ensuring proper representation and protection of your intellectual property rights. Protect your innovations effectively and navigate the complexities of patent law with our dedicated legal support.

Term and Revocation of a Patent in Pakistan

The term of a patent in Pakistan is fixed at twenty years from the date of the application. However, to maintain the validity of the patent for the entire twenty-year term, the patentee must pay an annual renewal fee. Failure to pay the renewal fee within the prescribed time will result in the patent ceasing to have effect.

Renewal of Patent:

To ensure the continued protection of the invention throughout the patent’s term, the patentee must pay the renewal fee every year. The renewal fee is a mandatory payment, and if it is not paid within the specified period, the patent will lose its validity.

Revocation of Patent:

During the life of the patent, there are several instances in which the patent can be revoked. The High Court, the Controller, or the Federal Government has the authority to revoke a patent.

Revocation by High Court:

The High Court can revoke a patent based on a successful petition by any of the following parties:

• Any interested person,
• The Federal Government, or
• The defendant in a suit of infringement through a counterclaim.

The grounds for filing a petition for revocation are the same as those on which a patent application can be rejected. Additionally, the Federal Government may also file a petition for revocation if the patentee has failed to comply with the Government’s request to make, use, or exercise the patented invention for government services on reasonable terms.

Revocation by the Controller:

The Controller can revoke a patent on a petition made by any interested person, using the same grounds on which a patent application can be opposed.

Revocation by Federal Government:

The Federal Government can revoke a patent under the following circumstances:

• If the patent or the way it is exercised is harmful to the State or prejudicial to the public in general,
• If the patent was obtained through concealment or misrepresentation in the application, or
• If a compulsory license granted to prevent abuse resulting from the exclusive rights conferred by the patent has not been sufficient.

Opportunity to be Heard:

Before revoking a patent, the patentee is given an opportunity to be heard and present their case. However, if the Federal Government makes an unfavorable decision, it will publish a declaration of revocation in the Official Gazette, and the patent will be deemed revoked.

Compulsory License and Revocation:

The revocation proceeding concerning a patent shall not commence until at least two years have passed from the grant of the first compulsory license.

In conclusion, the term of a patent in Pakistan is twenty years from the date of application, subject to annual renewal fees. However, the patent can be revoked by the High Court, the Controller, or the Federal Government under specific circumstances. At Josh and Mak International, our team of skilled patent attorneys can guide you through the process of patent renewal and provide expert representation in revocation proceedings, ensuring the protection of your intellectual property rights. Protect your inventions effectively and navigate the complexities of patent law with our dedicated legal support.

Compulsory Licenses in Pakistan

In certain circumstances, the Federal Government or the Controller in Pakistan can issue a compulsory license for a patent without the consent of the patentee. A compulsory license allows someone else to produce the patented product or use the patented process without the patent owner’s permission. Here are the situations under which a compulsory license can be issued:

1. Public Interest or National Security: The Federal Government may issue a compulsory license if the public interest, national security, nutrition, health, or the development of vital sectors of the national economy so requires.

2. Anti-Competitive Practices: If the manner of exploiting the patent by the owner or his licensee is considered anti-competitive, the Federal Government may grant a compulsory license.

3. Refusal to Grant a License: If the patent holder refuses to grant a license to a third party on reasonable commercial terms and conditions, a compulsory license may be issued.

4. Lack of Exploitation: If the patent has not been used in a manner that contributes to the promotion of technological innovation and the transfer and dissemination of technology, a compulsory license may be granted.

Procedure and Opportunity to be Heard:

Before making any decision to issue a compulsory license, the Federal Government must give the patentee and any interested parties an opportunity to be heard. This ensures that the affected parties have a chance to present their case and defend their interests.

Termination of Compulsory License:

After granting a compulsory license to a third party, the Federal Government may, at the request of the patent owner, terminate the license if it is satisfied that the circumstances that led to the decision have ceased to exist and are unlikely to recur. The license may also be terminated if the licensee fails to comply with the terms of the compulsory license.

Appeal and Controller’s Power:

An appeal against the decision of the Federal Government to issue a compulsory license can be made to the High Court. Additionally, the Controller has the power to issue a compulsory license to prevent abuses that might result from the exercise of patent rights. This can be done if a request is made in the prescribed manner after four years from the date of filing the patent application or three years from the date of the patent grant, whichever period expires last.

Conditions of Compulsory License:

When issuing a compulsory license, the Controller must determine the scope and function of the license, the time limit within which the licensee must start using the patented invention, and the remuneration to be paid to the patent owner (up to three percent of the total sales, considering the trade price) along with the conditions of payment.

In conclusion, compulsory licenses in Pakistan are granted under specific circumstances, ensuring that the public interest is protected while promoting innovation and technology dissemination. At Josh and Mak International, our team of experienced patent attorneys can guide you through the process of obtaining or responding to compulsory licenses, safeguarding your intellectual property rights effectively. Protect your innovations and navigate the complexities of patent law with our dedicated legal support.

Infringement and Enforcement Remedies of Patents in Pakistan

In the event of patent infringement, a right holder in Pakistan has the option to initiate a civil action against the infringer. The right holder can file a suit for infringement against any person who, during the validity of the patent, makes, sells, or uses the patented invention without the right holder’s license, or counterfeits or imitates the invention. Such a suit may be filed in a District Court with jurisdiction to hear the case.

However, if the infringer files a counter-claim for the revocation of the patent, the suit, along with the counter-claim, is transferred to the High Court for a decision. In any suit for infringement, the Court can grant various remedies to the right holder, including damages, injunctions, or an accounting of profits.

Court Decisions on Patent Infringement:

There have been notable court cases in Pakistan where patent holders have successfully sought injunctions against infringers. For instance, in the case of Glaxo Group Limited and others v. Evron (Private) Limited and another {1992 CLC 2382 (Karachi)}, the Division Bench of Karachi High Court granted an interim injunction against Evron for importing a drug called “Malfax,” containing rantidine from Canada during the validity of Glaxo’s process patent for preparing rantidine in Pakistan. The Court ruled that importing a product using processes overseas that would infringe on processes in Pakistan constitutes infringement and deprives the Pakistani patentee of the benefits of their invention.

Similarly, in the case of Smith Kline Beecham Corporation and others v. Pharma Evo (Pvt.) Ltd. {2006 CLD 716 (Karachi)}, the Karachi High Court granted an interim injunction to Smith Kline Beecham, restraining Pharma Evo from manufacturing, importing, or offering for sale the pharmaceutical “Rosiglitazone” since Smith Kline Beecham held a valid process patent for the drug’s manufacture.

Administrative Provisions:

In addition to civil remedies, the Customs Act, 1959, in Pakistan also includes provisions that prohibit the import or export of goods that infringe on a patent holder’s rights. Customs authorities have the power to detain, seize, or confiscate goods found to violate these provisions. Penalties for infringement under the Customs Act, 1969, are described in detail.

At Josh and Mak International, our team of skilled patent attorneys can assist you in enforcing your patent rights and taking necessary legal actions against infringers. We can guide you through the complexities of patent infringement cases and work diligently to protect your intellectual property rights effectively. Whether you need assistance with patent litigation or enforcement strategies, we are here to provide dedicated legal support for your intellectual property matters in Pakistan.

Expected Developments in Pakistan’s Patent System

The patent system in Pakistan is undergoing some significant expected developments that will enhance the efficiency and accessibility of the patent filing process.

1. Electronic Filing of Patent Applications: It is anticipated that a system of electronic filing of patent applications will be introduced in Pakistan. This development will streamline the patent application process, making it faster and more convenient for applicants to file their patent applications online. The Intellectual Property Office is currently preparing for the launch of this system, which will bring modernization and efficiency to the patent application process in the country.

2. Accession to the Patent Cooperation Treaty (PCT): The government of Pakistan is actively considering the possibility of acceding to the Patent Cooperation Treaty (PCT). The PCT is an international treaty that simplifies the process of filing patent applications in multiple countries by allowing applicants to seek protection for their inventions simultaneously in several PCT member countries. If Pakistan becomes a signatory to the PCT, it will open up new opportunities for patent applicants in the country to protect their inventions globally.

Current Patent Legislation in Pakistan

The patent law in Pakistan is governed by the following legislation:

1. Patents (Amendment) Act, 2010: This Act is the current governing legislation for patents in Pakistan. It amends and updates the previous patent laws, providing the legal framework for the grant and enforcement of patents in the country.

2. Patent Rules, 2003: The Patent Rules, 2003, provide detailed regulations and procedures for various aspects of patent filing and prosecution in Pakistan.

International Patent Treaties

Pakistan is a signatory to the following international patent treaties:

1. Paris Convention for the Protection of Industrial Property: The Paris Convention is an international treaty that provides protection for industrial property in member countries. It establishes principles such as national treatment and priority rights for patent applicants.

2. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): TRIPS is an agreement under the World Trade Organization (WTO) that sets minimum standards for intellectual property protection, including patents, for member countries.

As Pakistan continues to update its patent laws and consider new international agreements, it is taking steps to align its patent system with global standards and provide better protection for inventors and their innovations. At Josh and Mak International, we stay up-to-date with all these developments to provide our clients with accurate and timely legal advice and services for patent matters in Pakistan. Whether you need assistance with patent filing, prosecution, or enforcement, our team of experienced patent attorneys is here to guide you through the process.

FAQs on Filing and Grant of Patents in Pakistan

1. Do I have to file the complete specification of the invention at the time of filing of the patent application?

No, you can initially file the patent application with a provisional specification. However, you must file the complete specification within twelve months of the filing date of the patent application. Failure to do so will result in the application being deemed abandoned.

2. How do I file a patent application in Pakistan?

To file a patent application in Pakistan, you need to follow the procedure for the grant of a patent, which includes submitting the required paperwork to the Intellectual Property Office. The process involves the filing of either a provisional or complete specification, along with other necessary documents. It is advisable to seek assistance from a patent attorney or agent who can guide you through the entire process.

3. What are the different types of patent applications under the Pakistani patent system?

The different types of patent applications in Pakistan include:

• Ordinary Application: Filed without claiming priority from any other application.
• Application for Patent of Addition: Granted for improvements or modifications to an already patented invention, for the remaining term of the main patent.
• Divisional Application: Filed in case of multiple inventions disclosed in the main application.
• Convention Application: Claims priority based on a prior filing in a Convention Country.

4. What is the duration of patent protection in Pakistan?

A patent in Pakistan is valid for twenty years from the date of filing the patent application.

5. Can rectification proceedings be initiated for a patent?

Yes, rectification proceedings can be initiated against a patent if there are errors or omissions in the entries in the Register of Patents. An aggrieved person can approach the High Court and seek orders for variation or deletion of any incorrect entry in the register.

At Josh and Mak International, we have a team of skilled patent attorneys who can provide expert guidance and support throughout the patent application process in Pakistan. Whether it’s filing the application, dealing with rectification proceedings, or handling any other patent-related matter, we are here to assist you with our comprehensive legal services.

Patent Law in Pakistan: Courts and Lawsuits on Patent Protection in Pakistan

In this section regarding Patent Law in Pakistan we will be looking at administrative and legal proceedings are available in terms of enforcing patent rights against infringements and which courts deal with these kind of cases.Protection against the infringement of patents can be implemented via legal actions which can take the shape of criminal, administrative or civil proceedings. Section 60 of the Patent Ordinance 2000 states that a patentee can launch a suit in district court, if it carries the required jurisdiction, against any person or persons who make, sell or use a patented invention without first acquiring the necessary permission or licence or attempts to counterfeit or imitate the said patented invention. There are, at present, no specialist courts which deal with infringements on patents but the federal government, under section 16 of the IPO 2012 and through an Official Gazette notification, established their intellectual tribunals.

Courts have the authority to mandate provisional measures, or inaudita altera parte, wherever appropriate and this relief can be employed whenever a delay could be deemed to cause irreparable damage to the registered owner or if there is a demonstrable risk that evidence could be destroyed. Additionally, there are also administrative measures in place which can offer redress to an aggrieved party such as, for example, one that is provided within section 15 of the Customs Act 1969, which states that goods that involve infringement in the context of the Patent Ordinance 2000 shan’t be imported or exported across Pakistan borders and, if such an attempt be made, they will be confiscated, seized and/or detained by customs officials and handed to the Assistant Collector of Customs. In addition, another administrative avenue that is open to parties tied up in a patent infringement case is one of arbitration wherein cases of differing views may use this method to resolve the dispute under the 1940 Arbitration Act.

Patent Law in Pakistan: Trial formats and timing for Patent Protection in Pakistan

One of the most frequently asked questions regarding patent infringement trails relates to the format. A patent infringement trial is a civil proceeding and therefore, according to section 26 of the CPC, Civil Procedure Code, a suit should be instituted by the plaint being presented to, and accepted by, a presiding officer. Thereafter, a summons could be issued to a defendant in order to appear and then answer the subsequent claim. The court could then make an order as reasonable or necessary for the answering or the interrogation relating to the admission of facts or documents, production and/or return of documents or of any other materials accepted to be producible evidence.

The court can also order facts to be proven by an affidavit and thus award the interim relief a plaintiff has claimed. Once the case has been presented, the court will pronounce its judgment and once this has been made the decree will follow. Juries play no role in civil suits and a typical one can last from 6 months up to 5 years. Additionally, and according to S68 of the Patent Ordinance, courts have the power to appoint independent scientific advisers to assist courts or to investigate and then report back on any question regarding either opinion or fact and produce a conclusive report on the same.

Furthermore, as stated in S104 of the Patent Ordnance 2000, high courts have the power to bring rules into line with the ordinance as pertaining to the conduct and the procedure with respect to the proceedings which have gone before it.

Patent Law in Pakistan: FAQs on Patent Protection in Pakistan

This section deals with some of the most frequently asked questions relating to the patents laws in Pakistan.

Q: When establishing invalidity and infringement of a patent what are the burdens of proof?

A: Patent Law in Pakistan: As stated in section 117 of the Qanun-e-Shahadat Order 1984, the burden of proof is the responsibility of the plaintiff. However, as cited in S61 (2) of the Patent Ordinance 2000 the court has the authority to request that the applicant provide evidence that is reasonably available in order to satisfy this requirement with a satisfactory degree of certainty regarding the applicant being the correct holder and that the rights of the applicant is indeed being infringed and/or the said infringement is imminent, Additionally, the court can ask that the applicant supplies further information deemed necessary for the identification of the items concerned. Should a patent be infringed it is viewed as being invalid and unenforceable. Burdens of proof for the establishment of invalidity, unenforcability and infringement is of civil standard working on the balance of probability.
Furthermore, if a patent is being infringed it is invalid and therefore unenforceable. The burden of proof for establishing infringement, invalidity and being unenforceable is a civil standard of proof, which is on balance of probability.

Q: Who can sue for the infringement of a patent? What are the condition under which those accused of infringement can launch a lawsuit in order to obtain a judicial declaration or ruling regarding the accusation?[ayssocial_buttons id=”2″]

A: Patent Law in Pakistan: Any judicial or non-judicial person, association or body, whether they are incorporated or not, can sue for the infringement of a patent provided that that person is the valid holder of the patent. This person is referred to as the patentee and in terms of the relation to the patent could include one who’s been included in the register as the proprietor or grantee of a patent and it may also include any subsequent successor-in-interest, assignee or a patent recording of the name that appears on the register is pending approval by the controller.

The person accused of the infringement has the right to bring a law suit with the aim of receiving a judicial ruling in their favor. Should a person who is interested or entitled in patent threaten anyone for the infringement of that patent, the person who’s innocent yet aggrieved by the threat can bring forth a proceeding under S66 of the Patent Ordinance 2000; groundless threat of infringement.

Q: Patent Law in Pakistan: What is the measured extent to which somebody can be found liable for the induction or contribution to patent infringement? Could multiple parties be held jointly liable for an infringement if they each practice only a selection of the elements within a patent claim but as a group practice all of them?

A: Any person can be found liable of contributing to an infringement of a patent
if they offer to import or sell one of the components essential to a patented invention or a composition or combination of the material covered by the patent or anything which constitutes a material or significant part of the invention covered by the patent. In this case, civil liability exists for contributory infringement whereby injunctions can be directed at the person contributing to the infringement.

Multiple parties may therefore be found liable of patent infringement if they each practice one or more of the elements within the patent but together practice them all. Parties can also be found liable for patent infringement if they infringe several of the steps of the invention but not the entire patent.

Q: Can a multiple party become joint defendants within the same lawsuit, if they can what are the requirements and must they all be accused of infringement of the same patent/s?

A: As stated in section 3 of the CPC 1908 Order 1, any person/s or parties can become joint defendants in a single suit in respect of any acts that have arisen from a single action or series of actions and/or transaction alleged to be in existence against a person. It is essential however that all defendants are infringing the same patent in order for them to become joint defendants.

Q: Patent Law in Pakistan: Can activities which take place beyond the boundaries of jurisdiction support bring about a charge of patent infringement and if so to what extent?

A: Patents are classed as territorial rights in that they’re exclusive only in the region or country where the patent was filed and granted. Those activities which amount to infringement, but which have occurred outside the jurisdiction or region can’t be penalized but the patentee could make the effort to prevent others from producing or selling the subject of the patent overseas. They can achieve this by employing patent coverage from that foreign country which consists of filing patent applications in every country separately which will them be examined before issue. However, should the infringed product enter the territory/ies where the patent of a product exist legal action can be brought against the persons causing the infringement.

Q: Patent Law in Pakistan: Is there a certain extent to which ‘equivalents’ of claimed subject matters can be shown to infringe?

A: Equivalents exist within the patent system to allow a court to hold parties liable for a patent infringement even if the infringing process or device doesn’t fall inside the literal range of the claim but is deemed as being equivalent to the invention. There’s no statutory provisions or judicial rulings that govern the scope of infringements in terms of equivalents. However, courts welcome new doctrines and terminologies as they enter the Patent Law of Pakistan which it in the development stage.

Q: Patent Law in Pakistan: What tools are available when it comes to obtaining evidence from outside of Pakistan, opponents or third parties when it comes to proving invalidity, damages or infringement?

A: In order to obtain the necessary evidence is case of patent infringement, you have to wait until the suit’s been filed in court and at the first hearing it will be ascertained whether each party will deny or admit the infringement charges. The court can, with the parties’ consent, conduct examinations of the witnesses and submit any pertinent documents. As stated in CPC 1908, the court can order documents possessed by either or both parties to be produced that relate directly to the case. Aside from this documentary evidence the court could also order the parties to give evidence or to produce documents.

In those instances where the party/ies live outside of Pakistan, the court could issue a letter of request or commission to examine the party who can’t attend the hearing due to being out of the country. In this case the commissions report, and/or any evidence he or she has given, will form a vital part of the evidence record.

Q: Patent Law in Pakistan: Is there a typical timetable for patent infringement lawsuits within the trial and appellate court?

A: There’s no fixed time scale for infringement or dilution cases being dealt with as each case is unique. It can take around 2-6 months for a preliminary injunction whilst a lawsuit is generally finalized around 2-3 years later. There is no fixed time frame for finalizing an appeal against any order relating to the preliminary or permanent decision but could take around 2-3 years/

Q: Patent Law in Pakistan: What does a typical patent infringement lawsuit cost in total and does the court permit contingency fees?

A: This query is another difficult one to answer as the total cost of such a lawsuit is dependent upon the complexity of the case.Technically, the successful plaintiff could be able to recoup reasonable costs but this depends on how the courts assess the matter and what losses the plaintiff has incurred. It must be noted however that the courts in Pakistani are very reticent when it comes to granting pecuniary relief or granting costs on IP, or intellectual property, matters. In rate cases, however, where costs or damages have been granted, they’re limited to a fraction of the cost.

In Pakistan there’s no bar as such on contingency fees however, under both Canons of Professional Conduct and Etiquettes of Advocates as given in Chapter XII of the Pakistan Legal Practitioners and Bar Council Rules 1976, several factors have been stipulated which are deemed as proper in order to consider the determining of the advocate’s fee.

Q: Patent Law in Pakistan: What Legal avenues are open in terms of appeal after an adverse decision has been made in a patent infringement lawsuit and is any new evidence allowed to be presented at the appellate stage?

A: As stated in the Patent Ordinance 2000 lawsuits relating to patent infringement will be instituted within a district court that exercises original jurisdictions.

Any order, degree or judgment passed by a district court can be appealed against in the High Court. If this appeal has been filed against an order it will be heard by a sole judge but should the appeal challenge a decree or judgment that has been passed by a district court it will be heard by the High Court’s division bench.

Subject to those provisions laid down by the Constitution of Pakistan, any order, judgment or decree that is passed by the High Court is eligible for appeal to be heard by the Supreme Court of Pakistan provided that a special leave to appeal has been granted by the Supreme Court and that an decision the Supreme Court makes on such an appeal is final and cannot be challenged.

This rule has one, very important exception that involves the unique jurisdiction of Karachi’s High Court of Sindh. Due to Karachi having the status of the commercial hub of Pakistan, civil suits which exceed a certain pecuniary value including any proceedings involving patent infringements, can be directly filed before a single judge at the High Court of Sindh. Any judgment, decree or order that has been passed by a sole judge can be appealed against in from the High Court’s division bench that comprises of 2 judges. Any judgment, order or decree can be appealed against in front of the Supreme Court of Pakistan in the same way as earlier described.

Once it reaches the appellate stage, the admissibility of any new evidence is generally disallowed but there are a few exceptions to this rule. As stated in
Order 41, Rule 27 CPC 1908, new evidence can only be admitted at the appellate stage if it satisfied one of two conditions;

• It must be evidence that should have been admitted to the lower court but wasn’t
• If the appellate court needs this new evidence in order to deliver its judgment

Whenever this additional evidence is permitted, the court has to record the reason why it has accepted its admission.

Q: Patent Law in Pakistan: What is the extent to which the enforcement of a patent can expose the owner of that patent to liability for unfair competition, a business related tort or a competition violation?

A: All patent rights are considered to be valid and exclusive rights the subsequent enforcement of those rights bring about an exclusion for all other parties in terms of using a valid invention that doesn’t give rise to any form of competition violation. An exception to this is if the owner of the patent has obtained it via unlawful means. These unlawful measures can include, among others, employing patenting strategies with the sole purpose of unjustly extending the legal term of the patent or threatening other parties with litigation. This issue, however, hasn’t yet been tackled by either the Competition Commission of Pakistan, the regulatory body relating to competition matters, or the courts.

As well as the above, certain limitations are in place that is contained within the patent law and which permits the federal government to disallow the patent owner from exercising an exclusivity. These limitations include fair usage provisions which cover research, government use etc, ans well as those provisions relating to compulsory licensing in terms of compelling patent owners to license this patent to one or more third parties.

Q: In terms of alternative techniques to reach a dispute resolution, to what extent are these available in order to resolve a patent dispute?

A: Such ADR techniques as arbitration and meditation are available within Pakistan. Whilst not in common use, it is often a cheaper and quicker way of resolving disputes that by going down the court route and is thus widely encouraged.

Settlement decisions are legal and binding and can’t be challenged. However, the actual enforcement of this settlement is, at least on some occasion, problematic should one party refuse to accept the mediators or arbitrators decision regarding settlement. The arbitrator then has to approach the court to get this decision enforced, and this can often be a lengthy process.

The parties are under no compulsion to enter into the mediation process. However, should there be a pre-existing agreement in place between the those parties caught up in the dispute which stipulates that this matter must be referred to arbitration, the courts are then expected to refer it rather than permitting any civil proceedings to come before the court.

Q: Patent Law in Pakistan: Can patents be obtained that cover any kind of invention? Does this include software, medicinal procedures and business methods?

A: There is a clear distinction listed in the Patents Ordinance 2000 that clarifies which inventions in Pakistan can be covered by a patent and which can’t. The provisions which govern which ones can be patented are covered under S7 (1) where a set criteria pertaining to a new invention must be evaluated against those that require the invention to be new; involve innovative new steps; be capable of utilization in industry; not contrary to any morality or law.Whilst Section 7 (1) does provide quite a broad platform in terms of what inventions can be patented, Section 7 (2) states the limitations relating to those inventions which cannot be patented and include the following;

Discoveries pertaining to the law/s of nature
New methods of sound production
Computer programs; in particular software
Productions
Methods of writing music
Machines dealing with perpetual motion
Special names for articles
Trademarks
The discoveries of new properties within a known substance
New alphabet system
Pharmaceutical and chemical products pre 2004
Shorthand systems
Musical, dramatic, artistic or literary works
Patented medicines or doctors prescriptions
Indexing systems
Diagrams, printed sheets or ordinary charts
Surgical procedures
Articles deemed to be harmful to both public health and prosperity
The treatment of animals, human beings, plants and flowers
Mathematical and scientific principles and formulas

Q: Patent Law in Pakistan: Who is determined to be the owner of a patent for an invention that has been created by an independent contractor, company employee, joint venture or multiple inventors? How is the ownership of a patent official recorded and/or transferred?

A: A patent forms one of the integral parts of the assets of a business and the ownership of this patent is crucial in that it is essentially a mass investment product. All matters which pertain to patent ownership are governed under sections 11 & 12 of Patents Ordinance 2000 as this states that any application can be filed by anyone, whether they are solo are in partnership with others. In short, independent contractors, joint ventures and multiple inventors are all eligible to apply for the ownership of a patent either by themselves or jointly.

In regards to those inventions which are the brainchild of company employees, section 12 of Patents Ordinance 2000 does state that the patent rights for inventions made by employees during the course of their employment, and in the absence of any contractual obligations to the contrary, belong to that inventor unless their employer can prove that the invention couldn’t have been created without using the employers equipment, facilities or any other entities needed for the invention. It also states that any invention deemed to be of exceptional economic value will entitle its inventor to equitable remuneration that takes into account the nature of their duties, salary and benefits they receive from their employer.

Additionally, section 34 of Patents Ordinance 2000 stipulates that in the event when a patent has been granted to 2 or more people they each shall, providing there is no contrary agreement in place, be entitled to an equal and undivided share of that patent.

In terms of the recording and transfer of patent ownership, we look to section 55 of Patents Ordinance 2000 which explains that whenever a person becomes entitled to a patent, or a share of it, by transmission, operation or transmission of law he or she will apply in writing to the controller for the registration of their title or, in certain cases, give notice of their interest in the registration.

Additionally, applications for the registration of a title of any person who becomes entitles to a patent or share of a patent by assignment can be made in a prescribed manner by the mortgagor, licensor, assignor or any other party.

When an application has been made for the registration of a persons title the controller will, upon proof of title that satisfies his criteria and whereby that person is then entitled to the patent or a share of it, register them as the proprietor or the co-proprietor of that patent and thus enter into the register the particulars of the event or instrument by which they have derived that title. If that person has entitlement to any of the other interests in the patent, he will enter into the register his interest and particulars to create the listing.

In regards to the provision of the ordinance in relation to the co-ownership of patents, and also subject to any rights that are vested in any other person to which notice has been entered into the register, that person or persons who are registered as the proprietor or grantee of a patent then has the power to grant and assign licenses under the patent and given effectual receipts pertaining to any such dealing, assignment or license.

Q: Patent Law in Pakistan: How can you challenge, and on what grounds, the validity of a patent? Is there specialist administrative tribunal or special court through which this is done?

A: There are 2 ways in which you can challenge the validity of a patent; opposition and revocation. Revocation applications should be filed with the High Court as under section 46 they are deemed to be the special court, under section 48 by the federal government of under section 47 by the Controller of Patents, the latter being an administrative tribunal. Oppositions, however, can only be filed directly with the controller.

Section 23 of the Patents Ordinance2000 stated that patents can be challenged on several grounds and at any time as long as it is within 4 months of the date of the advertisement for the acceptance of complete specification. These challenges are done by giving notice of the opposition to the granting of the patent to the controller. The grounds on which you can contest this are;

The applicant for a patent obtained the invention, or any part thereof, from the person of whom the opponent is an attorney, agent, assignee or legal representative

The invention isn’t actually one that can be patented under the direction of the ordinance

The specification doesn’t disclose the invention in a manner that is clear or complete enough for it to be carried out by any person that is skilled in the art

The claims aren’t clear or extend past the scope for disclosure in the total specification as was originally filed

The complete specification claims that, or describes, an invention that is not covered by the Patents Ordinance 2000 as described in the provisional specifications and as such this invention forms either a subject of an application made by an opponent for a patent that, if granted, would thereby hear a date in the gap between the applications date and the leaving of the specification, or which has been made available to the general public due to the publication of a document during that interval.

When a notice is given the controller then gives notice of any opposition to the applicant and will, before making a decision on the case, make it known to the applicant and give the opponent the opportunity to be heard.

Q: Patent Law in Pakistan: Is there any ‘absolute novelty’ requirements for patents and if there are is there any exceptions?

A: Yes. Pakistan has an absolute novelty requirement when it comes to patents. Suffice to say that Pakistan is very stringent when it comes to adhering to this requirement and should a prior art to that claimed in a specification be found the applicant is instantly rejected. There are no exceptions to this rule and therefore no leverage on the absolute novelty requirement.

Q: Patent Law in Pakistan: What are the legal standards when it comes to determining whether or no a patent is inventive or obvious in terms of a prior art?

The legal standard in Pakistan when it comes to determining whether or not a patent is inventive or obvious in relation to a prior are is the consideration of whether the invention is of a kind that isn’t obvious to a person, prior to an applications date and is skilled in the art in regards to any matters which form part of that state of art.

Q: Patent Law in Pakistan: Are there any legal grounds on which a patent that otherwise would be valid can be deemed as unenforceable due to the misconduct of the inventors, the owner of the patent or for any other reason/s?

A: Yes, it’s possible for an otherwise valid patent to be deemed as unenforceable should the government decide that the patents owner is acting against the publics interests, health, national security or other vital areas of the nations economy.

The courts have, in recent cases, been considering the way in which specifications have been drafted and have decided that specifications should be drafted in such a manner as to sufficiently explain the invention allowing a person or persons skilled in that art to reproduce the invention, thus allowing transference of technology once the patent has expired. In this case, patents containing specifications that fail this test could well be considered to be unenforceable.

Additionally, the federal government also reserves the right to issue licenses which dis-entitle the owner of the patent from exercising any exclusivity.

Q: Patent Law in Pakistan: As part of their defense, can somebody accused of infringement claim to have been using the device or method privately prior to the date of either the filing or the publication of the patent? If they can could this defense cover all inventions or is it limited to commercial usage?

A: As it stands according to the Patent Ordinance 2000, any prior usage can not be used as a defense in a law suit involving infringement. If somebody accused of infringement can prove that they had been using either the device or the method prior to the aforementioned dates then the patent in question would not be given as, essentially, the invention then does not have the novelty requirement mentioned earlier.

Q; Patent Law in Pakistan What monetary damages can be claimed from somebody who infringes a copyright? When do the damages, if any, begin to accrue and do these damages tend to provide fair compensation, be nominal or punitive? How are any royalties calculated?

A: One who infringes a patent is liable for paying damages once the court has granted relief to the patentee for an infringement action. The damages could include the person who infringed on the patent have to pay an amount deemed as adequate compensation suffered by the patentee due to this infringement as well as the costs of the lawsuit, the recovery of any profits, awarded damages and any pre-established damages. As we mentioned earlier, Pakistani courts still remain pretty conservative in terms of awarding large amounts of damages and as such any damages tend to remain nominal but in rare cases they do provide fair compensation.

Damages shall not, however, be awarded against the infringer if they prove that on the date of the alleged infringement they were not aware of, and had no real reason for knowing, the patent existed. Awareness of a patent isn’t determined from any application of the word patent or patented or any other words that would express or imply that a patent had been obtained for, for example, an article unless that the patent numbers the amount of words in question.

There are no regulations or laws in place that either restrict or ascertain the amount of royalties that are to be paid to the owners of patents or any other guidelines that specify how to determine royalties. A number of factors is generally taken into account that include, without any limitation, the length of time that is applies to, a unit on which the calculations are based, the remaining lifespan of the licensed rights, any supportive assistance or any other contractual obligations.

The only place, however, where the law prefers to patents being commercialized is in the Patents Ordinance 2000, section 58. This refers to the granting of compulsory licenses and in particular the obtaining of a said license on what are classed as ‘reasonable commercial terms’. In addition, the Patent Rules of 2003 go one step further by stating that in the case of a compulsory license the patentee is actually entitled to up to 3% remuneration from the licensee.

Q: Patent Law in Pakistan: Is it possible and, if so, to what extend can you obtain either a temporary or final injunction against any future infringement? Is such an injunction effective against the supplier/s or customer/s of the person accused of the infringement?

A: The chances of obtaining an injunction, most likely a temporary one, against any future infringement are pretty good in Pakistan as long as the patentee has solid reason to believer that the person alleged to have infringed the patent will infringe either their patented process or product.

The injunction is, however, ineffective against that person’s suppliers without those supplier having been made party to a lawsuit should the order have been granted by a court and is wide enough to the cover the alleged infringement, their distributors or agents or representatives. An injunction is not effective in any shape or form against customers.

Q: Patent Law in Pakistan: To what extent, it any, is it possible to block infringing products from being imported into the country and is there a specific proceeding or tribunal that is available to do this?

A: As stated in the Patents Ordinance 2000, section 30, one of the rights which are conferred when a patent is granted is that the holder of that patent, should it be for a product, can prevent third parties who don’t have consent from the owner from using, making, selling, or importing that product. Additionally, where the patents subject matter is a process, the holder of the patent can also prevent a third party who doesn’t have permission using, selling or importing the process.

Under section 61 of the Patents Ordinance 2000, when an infringement lawsuit is brought before the court they have the power to order immediate and effective measures to be provisionally put in place to prevent any infringement. This is particularly prevalent to prevent goods, including those which have been imported, from entering the channels of commerce after they have been cleared through customs.

Moreover, section 15 of the provisions of Customs Act 1969 prohibits both the importing and exporting of goods which infringe patents covered by the guidelines of the Patents Ordinance 2000.

The patent owner can enforce all of these rights against any third parties by either filing an application with the customs authorities, or by making a declaration and obtaining a specific performance order from the court.

Q: Patent Law in Pakistan: Can a successful litigant recover their costs and lawyers fees?

A: The successful litigant can indeed claim the costs that are listed in the prayer clause of the infringement suit. It is as the discretion of court to grant the relief.

Q: Patent Law in Pakistan: Are there any additional measures available against those who willfully or deliberately infringe? If there are, what’s the test to determine whether that infringement was deliberate and can opinions of the counsel be used as defense in a charge of willful infringement?

A: There is no difference made between those who infringe in the Patents Ordinance 2000 so there are no additional measures in place for those who infringe deliberately or willfully. Although, in section 62, it does state that damages won’t be awarded against the one found guilty of infringement if they can prove that on the date the infringement took place they weren’t aware, and had no reason for supposing, that the patent actually existed.

The counsels opinion can be used in the defense of one charged with infringement and thus it mitigates any penalty received. It must, however, be shown that the infringement is the outcome of the counsels incorrect opinion and once established must be restrained immediately. Additionally, under the Patents Ordinance 2000 the federal government has the power to strike from the register any patent agent who is found guilty of any misconduct within their professional capacity.

Q: Patent Law in Pakistan: What time limit exists for seeking redress for a patent infringement?

A: Although the Patent Ordinance 2000 doesn’t specify any time limits for seeking redress from patent infringements the law of limitation does apply. As stated in Part IV the Limitation Act of 1908, any claims of compensation for copyright infringement or any exclusive privileges is limited to a period of 3 years from the date the infringement took place. Therefore, actions pertaining to patent infringement that are brought after this 3 year period are barred by law. However, it’s an established principle of the patent laws that each new act of infringement brings about a new cause for action.

Q: Patent Law in Pakistan: Must the holder of a patent mark their patented products and if so how must they mark them? What consequences do they face for not marking them or for false marking?

A: Whilst patent markings aren’t mandatory under Pakistani law, there usage is hugely beneficial in that they reduce the risk of any infringers claiming to be innocent for not being aware of the status or existence of the patent.

Q: Patent Law in Pakistan: Do any restrictions exist relating to the contractual terms by which owners of patents can license that patent?

A: There are no restrictions as such on those contractual terms a patent owner is bound by when licensing a patent.

Q:Patent Law in Pakistan: What methods are available in order to obtain a patent compulsory license and how are the terms of this license determined?

A: Section 59 of the Patents Ordinance 2000 states which method or mechanism should be used in order to obtain a patents compulsory license;

59. Powers of Controller in granting compulsory licenses.

(1) On request, made in the prescribed manner to the Controller after the expiration of a period of four years from the date of filing of the Patent application or three years from the date of the grant of the Patent, whichever period expires last, the Controller may issue a non-voluntary license to prevent the abuses which might result from the exercise of the rights conferred by the Patent, for example, failure to work.

Part 3 of this section also states that;

(3) The decision issuing the non-voluntary license shall fix:

(i) the scope and function of the license;

(ii) the time limit within which the licensee must begin to exploit the Patented invention; and

(iii) the amount of the adequate remuneration to be paid to the owner of the Patent and the conditions of payment.

Q: Patent Law in Pakistan: How long, on average, does it take to obtain a patent and what is the average cost?

A: After you have filed the patent application in Pakistan the examiner will issue their examination report within 12 months. The entire examination process can take between 2-3 years but it really depends on how many examination reports are being issued at that time by the Pakistan Patent Office and the response of the clients to any objections.

Should the examiner be satisfied with the applicants response then their application will be accepted and thus published in the Gazette of Pakistan which is essentially an invitation for any objections, which must be filed within 4 months of the date of publication. After the opposition period has expired, the patent in sealed for 20 years.

2 payments are made in order to obtain a patent in Pakistan. The first is the official fees which are paid to the Intellectual Property Office and this amounts to around $100 and includes the actual filing of the patent application, the examination process and the ultimate granting of the patent.

The second payment is paid to a lawyer and is their professional fees to cover overseeing the procedure, attending hearings and countering any oppositions on their clients behalf. The professional fees vary greatly in accordance with how complex the case is and it’s not pertinent of us to give an estimation of these costs without seeing the case in question.

Q: Patent Law in Pakistan: Are there any procedures in place regarding expediting patent prosecution?

A: No, there are no procedures for expediting patent prosecution within Pakistan as there’s no specialist tribunals yet in existence so therefore applicants must go through the standard route of litigation.

Q: Patent Law in Pakistan: What must you disclose or describe about an invention in the patent application? Are there particular guidelines to follow or known pitfalls to avoid when deciding what to include within the application?

A: Various documents have to be sent to the patent office when filing a patent application in Pakistan and these include;

• A complete specification along with abstracts and claims written in English
• Any drawings
• The application form which states the full name, address and nationality of the inventor/s or applicant/s
• The priority application number
• Certified copies of the priority documents in English if priority is being claimed

In regards to the descriptions and disclosures, these must be made within the complete specification. This document must include the inventions title, a summary or abstract of the invention, it’s background including any information of prior arts which are relevant to this technology. The very last paragraph of the background section must contain a comparative analysis of this invention against any prior arts and the advantage this one has over the priors. A detailed description must include methods of preparation and mechanism, its application and any claims which are related to the salient features of this proposed invention.

Q: Patent Law in Pakistan: Does an inventor have to disclose prior arts to the examiner at the patent office?

A: As mentioned above, this is part of the procedure for any inventor or applicant and prior arts must be included in the complete specification. There is, however, no obligation on the inventor or applicant to disclose these prior arts but the failure to do so will lead to objections being raised by the office which in turn will delay the granting of the patent so therefore the disclosure of prior arts is encouraged to avoid unnecessary delays.

Q; Patent Law in Pakistan: Can a patent applicant file subsequent applications in order to pursue any additional claims to an invention that has been disclosed in the earlier filed application? If so, are there any limitations or requirements?

A: Yes, applicants can file subsequent applications in order to pursue additional claims on an invention that has been disclosed in an earlier application. This is called the divisional application but can only be filed before the original application is accepted. Any additional claims, however, cannot go beyond the first applications disclosure.

Q: Patent Law in Pakistan: Can you appeal against an adverse decision made by the patent office in court?

A: Appeals against any decision, direction or order of the controller can be made to the High Court. This appeal procedure is covered by the Patent Ordinance 2000 section 69 (2)

Q: Patent Law in Pakistan: Are there any mechanisms in place at the patent office for opposing the granting of a patent?

A: As previously mentioned, the provisions covered by section 23 of the Patents Ordinance 2000 does indeed provide a mechanism for the opposing of the granting of a patent. There are various grounds on which the granting of a patent can be opposed but any oppositions must be filed within 4 months from the date of the official advertisement and all persons who have objections must give full notice to the controller.

Q: Patent Law in Pakistan: Does the patent office have any mechanisms in place for the resolution of priority disputes between different people applying for patents of the same invention? What factors are in place to determine who has priority?

A: The Patent Ordinance 2000 doesn’t provide any specific mechanism that deals with those disputes relating to priority being claimed by different applicants for the same invention apart from determining the date of the actual application and if any priority/ies have been claimed within the application.

Q: Patent Law in Pakistan: Does the patent office have procedures in place for the modification, re-examination or revoking of a patent? Can a court amend any patent claims made during a lawsuit?

A: Under the Patents of Addition section in the Patent Ordinance 2000 there are provisions for modifying patents. As stated in section 39, an application must be made directly to the controller relating to any modification of, or improvement to, a patent. The controller may grant the patent with a proviso for modifications and improvement as a patent of addition.

The re-examination process is where the controller re-examines a subject matter to ensure that it can indeed be covered by a patent. Thus, re-examination is linked with revoking as the former is the first step in the process that can result in the latter. In regards to a patents revocation, section 47 of the Patents Ordinance 2000 provides the controller with the mechanism needed for that revocation.

In regards to the court making an amendment to a patent claim during a lawsuit, section 43 of the Patents Ordinance 2000 states that the high court can, by order, permit the patent applicant to amend their complete specification subject to such terms relating to costs, advertising etc as they see fit. If the case is relating to a possible revocation, the High Court can make the decision that the patent is invalid and they can then allow amendments to be made so the patent doesn’t get revoked.

Q: Patent Law in Pakistan: How does the patent office determine the duration/s of patent protection?

A: The duration of the patent protect is determined by using the date of the application being filed and, in the case of convention applications, the date that the earliest application was filed in the convention country from where priority was claimed.

Patent Law in Pakistan: Updates On The Pakistan Patents Process and Latest Trends

The patent landscape in Pakistan has long been dominated by agricultural, scientific, biotechnology and pharmaceutical sectors, as an overwhelming majority of applications for patents have been filed in these areas. Patent litigation and opposition have been largely limited to biotech or pharmaceutical inventions and we don’t foresee any major changes to this anytime soon due to the nature of the industrial output in Pakistan.

There some valid, and serious, concerns regarding the effectiveness of protection and the enforcement of patents in Pakistan and, in particular, several business organizations have been lobbying strongly in order to get their IP assets better protected. One of the main concerns is the current lack of effective enforcing of court orders as well as the considerable delays taking place in legal proceedings.

The statute knows as the IP Act 2012, was ratified by both the Assembly and the Senate and since coming into force it has brought with it provisions relating to the establishment of specialist IP tribunals.

Another area where there have been concerns is the signing of the PCT; Patent Cooperation Treaty which was expected in 2015. The general consensus is that due to Pakistan not being present in the current PCT regime this has resulted in a major reduction in the number of patent applications being filed in Pakistan, and it is thought likely that this will only be reversed once the PCT has been signed. The PCT’s absence has also hindered the filing of international patents by Pakistani patent holders. The government has been carrying out new measures aimed at capacity building, including digitization of records, and it’s hoped that this will, sooner rather than later, accede to the Patent Cooperation Treaty regime.

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🛡️ Are you an inventor or a company with groundbreaking inventions? Do you wish to safeguard your intellectual property rights in Pakistan? Look no further! Josh and Mak International, Pakistan’s leading law firm, is here to guide you through the intricate world of patent registration in Pakistan.

🔬 Understanding Patentability:

At Josh and Mak International, we help you determine the patentability of your invention. A patent is granted to inventions that are new, involve an inventive step, and have industrial application. Our expert team conducts comprehensive patent searches to ensure your invention stands out from prior art.

💡 The Path to Patent Registration:

The process to register a patent in Pakistan may seem complex, but with our support, it becomes seamless. We offer assistance with both ordinary and convention patent applications. Our meticulous approach ensures that your patent documents, including specifications, abstracts, and drawings, are prepared with precision.

🕵️ Examination and Acceptance:

Once your complete specification is filed, our team works closely with the Patent Office’s examiners to ensure compliance with patent law requirements. We guide you through any necessary amendments to achieve acceptance.

🌐 International Reach:

For foreign entities and individuals, we offer valuable advice on international patent protection through treaties such as the Patent Cooperation Treaty (PCT). Our global expertise ensures your inventions get the recognition they deserve on an international level.

⚖️ Protection against Infringement:

With our expert team of attorneys, we help you enforce your patent rights against any infringement. We initiate civil actions against infringers and ensure they face the consequences.

💼 Corporate Patent Strategy:

At Josh and Mak International, we understand the value of a robust patent portfolio. We offer strategic guidance on patent portfolio management, licensing, and assignments to strengthen your competitive advantage in the market.

👩‍⚖️ Legal Expertise and Support:

With years of experience in patent law, our team of experts handles all aspects of patent registration and protection. We pride ourselves on personalized and client-centric services, ensuring your inventions are in safe hands.

📈 Looking Forward:

As pioneers in the legal landscape, we are always evolving to serve you better. We are working diligently to launch an electronic filing system to streamline patent applications. Additionally, we are actively considering Pakistan’s accession to the Patent Cooperation Treaty, bringing more opportunities for patent protection.

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With a commitment to excellence and a passion for innovation, Josh and Mak International is your partner in patent protection. Join hands with us to safeguard your inventions and propel your business to new heights!

Contact Us Today!

For expert legal advice on patents and intellectual property, reach out to us at [email protected] Protect your inventions, protect your future!

📢 Protect Your Innovations with Josh and Mak International!

🔬 Discover the World of Patent Law:

Welcome to the world of patent law, where innovation meets protection! At Josh and Mak International, we specialize in guiding you through the intricacies of patent registration and intellectual property strategy. Patents are no longer limited to just tangible inventions; they now encompass a diverse range of creations, from cutting-edge technologies to groundbreaking business practices.

🛡️ Expertise in Diverse Disciplines:

Our experienced team has filed patents in various domains, including Information Technology, Biotechnology/Life Sciences, Chemicals, Manufacturing, and Electronics, among others. We understand that obtaining patents is only the beginning; developing a robust patent portfolio that offers optimal protection and marketability is the key to success. That’s why we continuously review patent use, competitor actions, and market trends to ensure your patents remain a valuable asset.

🌐 Protecting Your Rights Globally:

Whether you’re a local or foreign entity, we’ve got you covered! Our firm adeptly handles both Pakistani and foreign patents for large corporations and enterprises. With our extensive knowledge of international patent treaties, such as the Patent Cooperation Treaty (PCT), we offer expert advice on global patent protection.

🛡️ Understanding Patents:

What is a patent? A patent is an exclusive right granted by the government to the inventor of a novel, inventive, and useful invention in exchange for its public disclosure. Patents provide you with the power to exclude others from exploiting your invention for up to 20 years from the filing date.

🔍 What Can Be Patented?

Virtually any new and useful advance can be patented, ranging from mechanical devices and chemical compounds to genetically altered life forms and computer software. Even small improvements or variations can be eligible for patent protection, as long as they involve an inventive step.

🚫 What Can’t Be Patented?

Certain items, such as plans, schemes, artistic creations, and mental processes, generally cannot be patented. Patent laws have evolved over time, and permissible subject matters vary from country to country.

📝 Different Types of Patent Applications and Patents:

• Provisional Application: File an application accompanied by a provisional specification to determine the priority date. Within 12 months, a complete application can be lodged.
• Complete Application (Leading to Standard Patent): Follow up the provisional application with a complete application within 12 months. The claims in the complete application define the monopoly sought.
• Divisional Application: File a patent application that claims the same priority date as a previously filed one and discloses matter from an earlier application.
• Innovation Patent: The novelty test is lower for an innovation patent, with a shorter term of eight years.
• Patents of Addition: Apply for a patent of addition for a single improvement or modification of the main invention in an earlier patent.

🌍 No Worldwide Patent:

Remember, patents are obtained on a country-by-country basis. Regional patent arrangements and the Patent Cooperation Treaty exist, but ultimately, national patents result.

⚖️ Role of Josh and Mak International:

As your patent attorney, we provide the expertise needed to obtain and protect your intellectual property rights. We manage the patent and trademark granting processes and advise on validity and infringement issues.

Contact Us Today!

Are you ready to safeguard your innovations? Reach out to Josh and Mak International at [email protected] to embark on a journey of innovation and protection. Let us be your guiding light in the world of patents!

Patent Law in Pakistan: A Comprehensive Guide by Josh and Mak International

In Pakistan, the regulation and protection of patents underwent a significant transformation with the introduction of the Patents Ordinance, 2000. This replaced the previous Pakistan Patents and Designs Act, 1911, and aligned the country’s patent law with the GATT/ TRIPS agreements. To facilitate the implementation of the Patents Ordinance, The Patents Rules, 2003, were introduced on 31 December 2003.

Patent Application in Pakistan: Who Can Apply?

An application for a patent can only be filed by the true and first inventor, his assignee, or successor-in-interest. In case of an assignee, the inventor or inventors must endorse the application in the presence of two witnesses. The application must be accompanied by a Specification (complete specification where conventional priority is claimed).

Conventional Patent Application in Pakistan: Claiming Priority

A conventional Patent Application can be filed in Pakistan, claiming priority from a basic application filed in Paris Convention member countries or any WTO member country. The application must be filed within twelve months of the priority/basic application. A certified copy of the priority application, along with an English translation if needed, must be submitted.

PCT National Phase Patent Application in Pakistan: Not Available

Pakistan is not a contracting country of the PCT (Patent Cooperation Treaty), hence PCT national phase patent applications cannot be filed in Pakistan.

Patent Filing Requirements in Pakistan:

To file a patent application in Pakistan, the following requirements must be met:

• Name, nationality, and full address of the Applicant.
• Name, nationality, and full address of the Inventors.
• Specification in English on A4-sized paper with specified margins.
• Drawings, if any, on smooth/durable white A4-sized paper with specified margins.
• Power of Authority in favor of Attorney (duly notarized).
• Certified copy of the priority application (where priority is claimed) to be filed at the time of filing the Pakistan application or within three months thereafter.
• Certified verification of English translation of the priority document, if the priority application is in a language other than English.

Procedure for Patent Prosecution in Pakistan:

The process of patent prosecution in Pakistan involves several steps:

• Filing of Patent Application accompanied by Specification (provisional or complete).
• Filing of Complete Specification where the earlier Specification filed was provisional.
• Completion of procedural requirements, including POA, certified copy of the priority document, and certified verification of English translation, if applicable.
• Examination and issuance of Examination report.
• Responding to Office action.
• Acceptance of Patent Application.
• Publication in Official Gazette.
• Sealing if no opposition within 4 months of publication and on payment of sealing fee.
• Grant of Patent.
• Annuity Payment to keep the Patent in force.

Sealing of Patent Application:

After acceptance, the application is advertised in the Official Gazette to invite opposition to the grant of Letters Patent. If no opposition is filed within four months from the date of publication of acceptance, the application is sealed on payment of the sealing fee.

Renewal/Annuity Payment:

Under the Patents Ordinance, 2000, the term of a registered patent has been extended to 20 years. The renewal fee is payable from the 5th year from the accorded filing date, with a grace period of 6 months available with payment of surcharge/penalty. The Patents (Amendment) Ordinance 2006 allows the due annuities/renewal fee to be paid if the application is accepted and sealed after the due date of the 5th annuity from the accorded filing date.

Trust Josh and Mak International for Your Patent Matters:

Navigating the complexities of patent law requires expertise and precision. At Josh and Mak International, we have a dedicated team of patent experts who can assist you with the entire patent application process, from filing to prosecution and beyond. With our extensive knowledge of Pakistan’s patent laws and international treaties, we ensure that your intellectual property is well-protected and maximizes its potential value. Let us be your trusted partner in safeguarding your innovations and ensuring their success in the global marketplace. Contact us today to discuss your patent needs and embark on a journey of intellectual property protection with confidence.

How to File a Patent in Pakistan: A Step-by-Step Guide

If you have an innovative invention and want to protect your intellectual property, filing a patent in Pakistan is a crucial step. Here’s a step-by-step guide on how to successfully file a patent in Pakistan:

Step 1: Determine Patentability

Before filing a patent application, ensure that your invention meets the criteria for patentability:

• Novelty: The invention must be new and not publicly disclosed anywhere in the world.
• Inventive Step: It should involve an inventive or non-obvious step to a person skilled in the relevant field.
• Industrial Applicability: The invention must be capable of being industrially applied or used.

Step 2: Choose the Right Type of Patent

Select the appropriate type of patent for your invention. Options include:

• Ordinary Patent: For general inventions, dated as of the official filing date.
• Black Mail/Mailbox Patent: For chemical products intended for use in agriculture and medicine.
• Patent Claiming “Priority”: Based on the official date of the corresponding application in a WTO member country.
• Patent of Addition: For improvements or modifications to an existing patented invention.

Step 3: Prepare Patent Specification

Create a detailed and clear patent specification that describes your invention. The specification should provide enough information for a person skilled in the relevant field to understand and implement the invention.

Step 4: File the Patent Application

Submit the patent application at the Pakistan Patent Office using the prescribed forms (P-1, P-1A, P-2, P-2A) and pay the filing fee (PKR 2250). The application can be accompanied by either a Provisional or a Complete Specification.

Step 5: Examination and Response

Once filed, the application is assigned to a patent examiner for examination. The examiner will check for compliance with legal requirements and conduct a search through databases to assess novelty and non-obviousness. If any objections are raised, you will receive a written examination report (Office action).

Step 6: Respond to Office Action

In case of objections, respond to the examination report by filing amendments to address the issues raised. The examiner will reevaluate the application based on your response. If the objections remain unresolved, you may receive another report.

Step 7: Acceptance and Advertisement

When all objections are resolved and the application meets the requirements, it will be accepted by the examiner. The acceptance will be advertised in the Official Gazette Part V.

Step 8: Sealing of the Patent

After acceptance, the patent application is sealed, completing the process. Once sealed, the patent grants you exclusive rights to the invention for 20 years from the filing date.

Step 9: Renewal/Annuity Payment

To maintain the patent’s protection, you must make renewal or annuity payments at the 5th year from the filing date and subsequently as required.

Protect Your Intellectual Property with Confidence

Filing a patent in Pakistan can be a complex process, requiring attention to detail and compliance with legal requirements. At Josh and Mak International, we have a team of experienced patent attorneys who can guide you through the entire process with confidence. From filing the application to responding to office actions, we ensure that your invention is well-protected and your patent rights are safeguarded. Let us be your trusted partner in securing your innovative ideas and inventions in Pakistan and beyond. Contact us today to start the journey of protecting your intellectual property.

How to File a Patent Application in Pakistan: A Comprehensive Guide

Are you a proud inventor of a brilliant and unique product or process? Do you wish to protect your innovation from being stolen by competitors? Filing a patent application in Pakistan can safeguard your intellectual property rights and prevent others from using or selling your invention without your consent. Here’s a step-by-step guide to help you through the patent filing process in Pakistan:

Step 1: Prepare a Patent Specification

The first step is to create a patent specification that clearly and comprehensively describes your invention. The specification must include:

• Title of Invention: A concise title representing your invention’s subject matter.
• Abstract: A brief summary of the essential technical aspects of your invention (limited to 2 pages).
• Field of the Invention: Specify the area of technology to which your invention belongs.
• Background of the Invention: Explain why your invention is necessary or useful and its development background.
• Detailed Description: Provide a detailed description of the components, systems, or methods that make your invention work.
• Claims: Precise legal statements that distinctly define the subject matter of your invention.
• Drawings: Include drawings if they are necessary to understand the invention.

Step 2: Fill the Required Forms

You need to fill out various forms for the patent application:

• Form P-1 (For Non-convention Application) or Form P-2 (For Convention Application) to initiate the patent request.
• Form P-1A (For Non-convention Application) or Form P-2A (For Convention Application) if the application is filed by an assignee or organization.
• Form P-3A for Complete Specification or Form P-3 for Provisional Specification.
• Form P-28 for authorization of a patent attorney/agent.
• NOC (No Objection Certificate) if the applicant is a student or employee of an institution.
• Demand draft or pay order as per the applicable filing fees.

Step 3: Pay the Filing Fees

The filing fees must be paid in the form of a pay order or demand draft from a scheduled bank, payable to the Director General of IPO Pakistan. The fees are non-refundable and depend on the type of specification filed.

Step 4: Submit the Application

Mail or hand-deliver your patent application to the Patent Office at one of the following addresses:

• Controller of Patents, the Patent Office, Plot # ST 1 & 2, New Broadcasting House (Ground Floor), Behind KDA Civic Center, Block -14, Gulshan-e-Iqbal, Karachi.
• Basement of Lahore Chamber of Commerce Building, 11-Shahrah-e-Aiwan-e-Sanat-o-Tijarat (Near China Chowk), Lahore, Pakistan.
• IPO HQs, 3rd Floor NTC building, sector G-5/2, Islamabad, Pakistan.

Step 5: Patent Examination

The patent examiner will study your application for compliance with patent requirements and conduct searches through databases to assess novelty and usefulness. If there are any objections or deficiencies, you will receive an Examination Report, and you can respond to address these issues.

Step 6: Acceptance and Advertisement

Once all requirements are met, your patent application will be accepted, and it will be advertised in the Patent e-Journal or Official Gazette Part V.

Step 7: Grant and Sealing of the Patent

After acceptance, your patent will be granted, and the patent process concludes with the sealing of the patent.

By following these steps, you can successfully file a patent application in Pakistan and secure your innovative ideas and inventions from potential theft or exploitation. Safeguard your competitive advantage and intellectual property rights with the help of Josh and Mak International, your trusted partner in patent protection and legal expertise.

Patentable Inventions in Pakistan: Characteristics and Types of Applications

For an invention to be patentable in Pakistan, it must possess the following characteristics:

1. Process or Product: An invention can be a new and useful process, product, or an improvement in either of them. A process refers to any method of new manufacture, while a product includes substances, articles, apparatus, or machines.

2. Novelty: The invention should be novel or new, meaning it should not be a part of the state of the art. The state of the art comprises everything disclosed to the public worldwide before the filing or priority date of the patent application.

3. Inventive Step: The invention must involve an inventive step, implying that it should not have been obvious to a person skilled in the art before the date of the patent application.

4. Industrial Application: The invention should be capable of industrial application, meaning it can be manufactured or industrially used.

Exceptions and Non-Patentable Inventions:

Certain subject matters are not regarded as inventions under the Patent Ordinance, 2000, and are, therefore, non-patentable. These include:

• Discoveries, scientific theories, laws of nature, or mathematical methods.
• Literary, dramatic, musical, or artistic works or purely aesthetic creations.
• Schemes, rules, or methods for mental acts, games, or business.
• Presentations of information and computer software.
• Substances that exist in nature or if isolated from nature.

Additionally, patents shall not be granted for the following:

• Inventions against public order, morality, human, animal, or plant life, health, or the environment.
• Plants and animals other than microorganisms, and essentially biological processes for their production.
• Diagnostic, therapeutic, and surgical methods for treating humans or animals.
• New or subsequent uses of known products or processes.
• Mere changes in the physical appearance of a chemical product.

Types of Patent Applications:

There are different types of patent applications that can be applied for:

• Ordinary Patent Application: This application can have either a provisional or a complete specification and is dated as of the official date of the application for the patent.
• Convention Patent Application: This application claims “right of priority” and is dated as of the official date of the corresponding application for patent made in a country that is a member of the World Trade Organization (WTO).
• Patent of Addition Application: This application is for an improvement or modification of an invention for which a patent has already been applied for or granted.

Understanding these characteristics and types of patent applications is crucial when seeking protection for your inventions in Pakistan. For a successful patent application, it is advisable to seek the expertise of legal professionals, like Josh and Mak International, who can guide you through the process and ensure that your invention is adequately protected.

Application for Registration of a Patent in Pakistan

When applying for the registration of a patent in Pakistan, it is important to adhere to the requirements and procedures set forth by the Patent law. Here are the key steps and information needed for a successful patent application:

• Prescribed Form and Declaration: The application must be submitted on the prescribed form, and it should contain a declaration stating that the applicant possesses an invention, and they are the true and first inventor of the said invention. If there are joint applicants, at least one of them must claim to be the true and first inventor.
• One Invention or Group of Linked Inventions: Each application should be for the registration of one invention only or a group of inventions that are linked and form a single inventive concept.
• Complete or Provisional Specifications: The application must be accompanied by either a complete specification or a provisional specification. The specifications should:
  • Fully and particularly describe the invention and the method by which it is performed.
  • Disclose the invention.
  • End with a claim or claims defining the scope of the invention for which protection is claimed.
• Clear and Succinct Claims: The claims in the complete specification should relate to a single invention, be clear and succinct, and based on the matter disclosed in the specification. An abstract of the invention is also required.
• Acceptance and Opposition: The new law stipulates that each application should be accepted or refused within eighteen months from the date of filing. If an application for an extension of time is filed, the acceptance/refusal period becomes twenty-one months. Once accepted, the application will be open for opposition for four months from its publication in the Gazette.
• Additional Information for Foreign Applicants: Foreign applicants may be required by the Controller to furnish information and documents related to any foreign application for the same or essentially the same invention claimed in the application filed in Pakistan. The required documents may include:
  • Copies of any communication received concerning the search or examination of the foreign application.
  • Copy of the patent granted based on the foreign application.
  • Copy of any final decision rejecting the foreign application.

To ensure a smooth and successful patent application process in Pakistan, it is advisable to seek guidance from legal experts such as Josh and Mak International, who can help navigate the complexities of the patent law and ensure compliance with all requirements.

Rights Conferred by Patent in Pakistan

According to the Patent law of Pakistan, the owner of a granted patent has exclusive rights to the invention for a specified period, and any exploitation of the patented invention by others without the owner’s agreement constitutes infringement. The law defines exploitation to include the following acts:

• For a patented product:
  • Making, importing, offering for sale, selling, and using the product.
  • Stocking the product for the purpose of offering for sale, selling, or using.
• For a patented process:
  • Using the process.
  • Doing any of the acts mentioned above in relation to a product obtained directly by means of the process.

In case of infringement, the patent owner has the right to institute court proceedings against the infringer. The court may grant various reliefs in suits for infringement, including:

• Ordering the infringer to desist from the infringement.
• Preventing the entry into commerce of imported infringing goods immediately after custom clearance.
• Awarding damages to compensate the patent owner for the injury caused by the infringement.
• Requiring the infringer to pay expenses, including attorney’s fees, incurred by the patent owner.
• Ordering the recovery of profits, damages, and pre-established damages, even if the infringer did not knowingly engage in the infringement.
• Ordering the disposal of infringing goods outside the channels of commerce without compensation.
• Disposing of materials and implements primarily used in creating infringing goods without compensation.
• Requiring the infringer to provide information about third parties involved in producing and distributing infringing goods.
• Awarding adequate compensation to a party wrongfully enjoined or restrained due to an abuse of enforcement procedure.

The court also has the authority to order prompt and effective provisional measures to protect the patent owner’s rights during the course of legal proceedings.

Intellectual Property in Pakistan

Intellectual Property refers to ideas, concepts, and material items created or developed by individuals or groups, with exclusive rights granted to them for a specified period as per the country’s legal regulations. It encompasses various forms like Copyright, Trademarks, Industrial Designs, Patents, etc. Each country has defined standard procedures for claiming and registering intellectual property.

Patent Procedures and Costs in Pakistan

Pakistan’s Patents Office, under the Intellectual Property Organization of Pakistan (IPO), is responsible for granting patents to new and novel inventions, representing the government in IP-related matters internationally, providing knowledge and educational services to inventors, and promoting industrial development in the country.

For an invention to be granted a patent, it must meet the following criteria:

• It must be new.
• It must involve an inventive step.
• It must have industrial applicability.
• It must not be contrary to law or morality.

Application for a Patent in Pakistan

Under the new law, every application for a patent in Pakistan must adhere to the following requirements:

• The application must be on the prescribed form.
• The application must include a declaration stating that the applicant possesses an invention of which they claim to be the true and first inventor.
• Each application must be in respect of one invention or a group of inventions so linked as to form a single inventive concept.
• Complete or provisional specifications must accompany the application.
• The complete specification must:
• a) Fully and particularly describe the invention and the method by which it is to be performed.
• b) Disclose the invention.
• c) End with a claim or claims defining the scope of the invention for which protection is sought.
• The claims in the complete specification must relate to a single invention, be clear and succinct, and be based on the matter disclosed in the specification.
• An abstract of the invention is also required to be furnished.

Upon submission of the application, it will be examined, and the new law mandates that each application must be accepted or refused within eighteen months (or twenty-one months if an extension of time is filed) from the date of filing. Once accepted, the application will be open for opposition for four months from the date of its publication in the Gazette.

Additional Information and Documents for Foreign Applications:

According to Section 20 of the new law, the Controller has the authority to request foreign applicants to provide information about any application for a patent filed abroad relating to the same or essentially the same invention as claimed in the application filed in Pakistan. The applicant may be required to furnish the following documents related to foreign application(s):

a) A copy of any communication received concerning the result of any search or examination carried out for the foreign application(s).

b) A copy of the patent granted based on the foreign application(s).

c) A copy of any final decision rejecting the foreign application(s).

Term of a Patent in Pakistan:

As required by TRIPs (Trade-Related Aspects of Intellectual Property Rights), the term of a patent in Pakistan is 20 years from the date of the application. However, patents granted under the old 1911 Act will have a term of 16 years. Section 106(4) of the new law creates some confusion as it allows suits for infringement or proceedings for revocation pending under the 1911 Act to continue and be disposed of as if the new law had not come into force, but the term of the patent remains 20 years.

Patentable Inventions in Pakistan:

To qualify for the grant of a patent in Pakistan, an invention must meet certain criteria as defined by the law:

• Novelty: An invention shall be considered novel if it does not form part of the state of the art. The state of the art includes 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, before the filing date of the patent application. It also includes the contents of complete specifications and priority documents published under the law.
• Inventive Step: An invention involves an inventive step if it is not obvious to a person skilled in the art. This means that the invention must not be a mere obvious or straightforward development of existing knowledge or technology.
• Industrial Application: The invention must be capable of industrial application, meaning it can be used or applied in any kind of industry. The concept of “industry” is interpreted in its broadest sense, and the law clarifies that a product consisting of a substance or composition will not be excluded from industrial application simply because it was invented for use in a particular method.

Additionally, the new law states that patents shall not be granted for animals or plants other than micro-organisms, and essentially biological processes for the production of animals or plants. However, this prohibition shall not apply to micro-biological processes or products of such processes.

Convention Priorities:

To comply with TRIPs requirements, the new law provides for priority arrangements for all WTO member countries. If a patent application is filed in Pakistan within 12 months of the priority country filing, the applicant can claim priority. Priority documents must be filed either along with the patent application or within 3 months from the filing date. The Controller may allow further extensions on good cause. This provision allows inventors to secure priority rights for their inventions in multiple countries based on the first filing date in any WTO member country.

Procedure for Grant of a Patent in Pakistan:

• Filing of Patent Application: The process begins with filing the patent application along with the prescribed fees at the appropriate office of the Patent Office.
• Request for Examination: After the publication of the application, the applicant needs to file a request for examination in the prescribed format. The current time limit for this is within 48 months from the filing date.
• Publication: The patent application is not open to the public for 18 months from the filing date or priority date. However, the applicant can request early publication if desired.
• Substantive Examination: The patent application is examined substantively, and a first examination report stating any objections is communicated to the applicant. The applicant may amend the application to address the objections.
• Objection Compliance: The applicant must meet all objections within 12 months from the date of the first examination report. Failure to comply may lead to application abandonment.
• Publication in Official Journal: Once all requirements are met, the application is published in the Official Journal.
• Opposition and Grant: At this stage, opposition can be filed on limited grounds. If no opposition is successful, and the application is found to be in order, the patent is granted.
• Maintenance and Renewal: The patentee is responsible for maintaining the issued patent by paying annuities until the patent expires. The term of patents in Pakistan is 20 years from the date of filing.
• Infringement Protection: It is the patentee’s responsibility to monitor and protect their patent rights. If infringement occurs, the patentee can file a suit for infringement and seek appropriate reliefs, such as injunctions, damages, or account of profits.

International Protection: There is no international or world patent. An inventor must file separate applications in each country where they seek to protect their invention. However, regional and international treaties, such as the Paris Convention, facilitate the process of seeking protection in multiple countries.

New Patents Ordinance (2000): The Patents Ordinance, 2000 brought significant changes to Pakistan’s patent law, allowing product patents and extending the patent term to 20 years. It aligns with TRIPs requirements and modernizes the century-old legislation. The new law’s definitions cover inventions, processes, products, and improvements, among others.

Types of Patents: There are two main types of patents: process patents, which cover new processes used in the production of a product, and product patents, which relate to patented inventions or products resulting from patented processes.

Exclusive Rights: Registering a patent grants the patentee exclusive rights to use, manufacture, or sell the invention for the term of the patent. Others cannot commercially use or distribute the invention without the patentee’s consent.

Criteria for Patentability: To be patentable, an invention must be industrially applicable, new, and involve an inventive step that is not obvious to a skilled person in the field. Additionally, it must fall within the categories considered “patentable” under the law.

Application and Filing: Inventors or assignees can apply for a patent by filing an application with the appropriate office of the Patent Office, accompanied by the required forms and fees. The application can be filed by the inventor or their assignee. The jurisdiction of the appropriate patent office is determined by the residency or principal place of business of the applicant or their agent.

Prior Art Searches: It is advisable to conduct prior art searches early in the process to ensure the invention is novel and not already publicly available in published literature or common knowledge.

Provisional and Complete Specification: The patenting process typically involves filing a provisional specification, which provides a brief description of the invention, followed by a complete specification within 12 months. The complete specification contains a detailed description of the invention, including claims, which define the legal protection sought.

Importance of Claims: Claims are a crucial part of the patent specification, as they determine the extent of patent protection for the invention. The description and drawings may be used to interpret the claims.

Overall, obtaining a patent is a significant step in protecting an inventor’s rights and granting exclusive rights to their invention for a specified period.

Patent registration in Pakistan offers several advantages to the patentee, including:

• Exclusive Rights: The patentee enjoys exclusive rights to their invention, preventing others from commercially using, manufacturing, or selling the patented invention without their consent.
• Legal Enforcement: Patent registration provides a legal framework for enforcing the patentee’s exclusive rights. They can take legal action against any unauthorized use of their invention.
• Commercial Opportunities: Patents can be valuable assets for businesses, attracting investors and potential partners. The protection offered by patents can facilitate raising capital for commercializing the invention on a larger scale.
• Licensing Opportunities: If the patentee cannot or does not wish to commercialize the invention themselves, they can license it to other parties for use. This allows them to profit from their invention without direct involvement in manufacturing or marketing.
• Expanding Reach: Through licensing agreements, the patentee can extend the reach of their invention to a broader audience, benefiting more people while earning licensing fees.
• Encouraging Innovation: Patents promote innovation by providing inventors with the assurance that their efforts will be protected and rewarded. This encourages further research and development.
• Official Record: Patent registration creates an official record of the invention and its ownership, making it easier to establish rights and protect against infringement.
• Competitive Advantage: A patent can provide a competitive advantage in the market, as competitors cannot copy or use the patented technology without permission.
• Marketing and Branding: Having a patent can enhance the company’s reputation and branding, showcasing their innovative capabilities to customers and investors.
• International Protection: Patent registration in Pakistan can also facilitate seeking protection in other countries through international treaties and agreements.

Overall, patent registration offers significant benefits to inventors and businesses, providing them with the means to protect their inventions, profit from their innovations, and encourage further advancements in technology and industry.

Thank you for providing additional information about patents granted in respect of a product and a process, as well as the different types of patents that can be applied for in Pakistan. To summarize:

Patents Granted in Respect of a Product:

When a patent is granted in respect of a product, the patentee has the exclusive right to perform the following acts:

• Making the product
• Importing the product
• Offering the product for sale
• Selling the product
• Using the product
• Stocking the product for the purposes of offering for sale, selling, or using

Patents Granted in Respect of a Process:

For patents granted in respect of a process, the patentee has the exclusive right to use the process, as well as to perform any of the acts listed under product patents, but only in relation to a product obtained directly by means of the patented process.

Types of Patents in Pakistan:

Under the Patents Ordinance in Pakistan, various types of patents can be applied for, including:

• Ordinary Patent: This is the most common type of patent application, which is dated as of the official date of the application for the patent.
• Black/Mail Box Application: This type of application is specific to chemical products intended for use in agriculture and medicines. It is part of the mailbox system, which allows early filing for certain subject matters even before the formal laws are enacted.
• Patent Claiming Priority: This type of patent application claims priority based on a corresponding application for patent first made in a country that is a member of the World Trade Organisation (WTO).
• Patent of Addition: A patent of addition is for an improvement or modification of an invention for which a patent has already been applied for or granted. It relates to the original invention and cannot be separately enforced.

It’s important to understand the specific requirements and procedures associated with each type of patent application to ensure successful filing and protection of the invention in Pakistan.

A patent is a legal grant of exclusive rights given to the inventor of a novel and useful invention. It allows the inventor to have a monopoly over the invention for a limited period, typically 20 years from the date of filing the patent application. During this time, the patent owner has the right to exclude others from making, using, selling, or importing the patented invention without their permission.

The patent system encourages innovation and technological advancements by rewarding inventors with exclusive rights to their inventions in exchange for disclosing the details of their invention to the public. This disclosure enables others to learn from the invention, build upon it, and further advance the field of technology once the patent expires and the invention enters the public domain.

In Pakistan, the Patents Office is responsible for granting patents to new and novel inventions. To be eligible for patent registration, an invention must meet certain criteria, including novelty, inventive step, and industrial applicability. It should be new, not obvious to a person skilled in the field, and capable of being used in an industry.

Once a patent is granted, the patentee must renew it annually after the 4th year (for each year until the 20th year) to maintain the protection. If the patentee fails to renew the patent, it may be forfeited or canceled by the Patents Office.

After the 20-year term, the patent protection expires, and the invention enters the public domain. This means that the invention becomes freely available for anyone to use, improve upon, or further develop without the need for permission or payment to the original patent owner.

In summary, a patent is a valuable tool for inventors to protect their innovations and have exclusive rights to their inventions for a limited time, fostering innovation and technological progress. Once the patent term expires, the invention becomes accessible to the public, promoting further advancements and developments in the field of technology.

Last Updated: Wednesday January 2023

Patents’ Rules, 2003

[Gazette of Pakistan, Extraordinary, Part II, 31^st December, 2003]

S.R.O. 1142(I)/2003, dated 23-12-2003.—In exercise of the powers conferred by section 105 of the Patents Ordinance, 2000 (LXI of 2000), and. in suppression of the late Department of Industries and Labour Notification No. A197, dated the 2nd February, 1933, the Federal Government is pleased to make the following rules.

CHAPTER-I

PRELIMINARY

1. Short title and commencement.–(1) These rules may be called the Patents Rules, 2003.

(2) They shall come into force at once.

2. Definitions.–In these rules, unless there is anything repugnant in the subject or context,–

(a) “agent” means an advocate, or, a person registered as an agent whose name is on the register of patent agents kept under section 79, and rule 45;

(b) “chemical product” means a chemical compound;

(c) “claim” means claims made in the Patent application;

(d) “Controller” means .the Controller of Patents appointed under section 3;

(e) “Convention application” shall have the meaning attributed to it under clause (c) of section 2;

            (f) “Form” means a Form as set out in the Second Schedule to, these rules;

(g) “graduate” means a graduate of a University established by law in Pakistan, or any foreign University recognized by the Federal Government;

(h) “Ordinance” means the Patents Ordinance, 2000 (LXI of 2000);

(i) “patent” means a patent granted under the provisions of the Ordinance.

(j) “Register” means the Register of Patents kept under section 54;

(k) “research” means an effort to create or improve any product or process, especially “by, discovering new technology or advancing existing technology; and

(l) “section’ means a section of the Ordinance.

3. Fee.—(1) The fee to be paid in respect of any application, registration or any other’ matter under the Ordinance and thee rules shall be those specified under the First Schedule to these rules, hereinafter referred to as the prescribed fee.

(2) Fee may be paid in cash at the Patent Office or may be sent by money order or postal order or cheque or bank drafts on a scheduled bank, payable to the Controller of Patents at Karachi, and if sent through the post shall be deemed to have been paid at the time when the money order or the properly addressed and prepaid letter containing the cheque or the bank draft or the postal order, would be received in the ordinary course of post or courier.

(3) Cheques or bank drafts not carrying the correct addition for commission, and other cheques on which the full value cannot be collected in cash within the time allowed for payment of the fee shall be accepted only at the discretion of the Controller.

(4) Stamps shall not be received in payment of fee.

4. Forms.—The forms as set out in the Second Schedule to these rules with such variations as the circumstances of each case require, shall be used for the respective purposes therein mentioned and if used shall be sufficient.
5. Language, Size and nature of documents.-(1) All documents (including drawings) making tip an application for a patent or replacing such documents shall be in the English language. In case any document is in a language other than English a translation thereof in English verified by statutory declaration or otherwise to the satisfaction of the Controller shall be furnished.

All documents referred to in sub-rule (1)-shall be so presented as to permit of direct reproduction by photography, electrostatic processes, photo offset and micro-filming, in an unlimited number of copies, all sheets shall be free from cracks, creases and folds. Only one side of the sheet shall be used.

(3) All documents referred to in sub-rule (1) shall be on stout white A4 size paper (29.7cm X 21cm).

(4) The request for the grant of a patent and the description, claims, drawings and abstract shall each commence on a new sheet.

(5) Subject to sub-rule, (1) of rule 11 the minimum margins shall be as follows, namely:-

Top 2.Ocm

Left side 2.5cm

Right side 2.0cm

Bottom 2.0cm.

(6) The margins of the documents making up the application may contain the marginal numbers.

(7) In the application, except in the drawings,-

(a) all sheets in the request shall be numbered consecutively; and

(b) all other sheets shall also be numbered consecutively of drawings contained in the application shall be numbered

(8) All sheets of drawing contained in the application shall be numbered consecutively.

(9) Every document (other than drawings) referred to in sub-rule (1) shall be typed or printed in legible characters in a black indelible ink in at least 1½ line spacing:

Provided that any forms may be filled in writing, and that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a black indelible colour.

(10) In all documents referred to in sub-rule (1) units of weights and measures shall be expressed in terms of the metric system. If a different system is used they shall also be expressed in terms of the metric system. Temperatures shall be expressed in degrees Celsius. For the other physical values, the units recognized in international practice shall be used, for mathematical formulae the symbol, in general use, and for chemical formulae the symbols, atomic weight and molecular formulae in general use shall be employed. In general, use should be made of technical terms, signs and symbols generally accepted in the relevant field.

(11) If a formula or symbol is used in the specification, a copy thereof prepared in the same manner as drawings shall be furnished if the Controller so directs.

(12) The terminology and the signs shall be consistent throughout the application.

(13) All documents referred to in sub-rule (1) shall be reasonably free from deletions and other alterations, over-writings and interlineations and shall, in any event, be legible.

6. Leaving and serving documents.-(1)Any application, notice or other document authorized or required to be left, made or given at the Patent Office, or to the Controller or to any other person under the Ordinance or these rules, may be sent by hand, or by a prepaid letter through the post or courier service, and if sent by a prepaid letter shall be deemed to have been left, made or given at the time when the letter’ containing the same would be received in the ordinary course of post and courier service.

(2) Any written communication addressed to a right holder at his address as it appears on the Register or at his address for service, or to any applicant or other person in any proceedings under the Ordinance or these rules, at the address appearing on the application or notice, or given for service, shall be deemed to be properly addressed.

7. Address for service.-(1) Every applicant or opponent in any proceedings under the Ordinance or these rules and every person who shall thereafter becomes a patentee shall give an address for service in Pakistan and such address may be treated, for all purposes connected with the patent, as the actual address of such applicant, opponent or registered proprietor. Unless such an address is given, the Controller shall be under no obligation either to proceed with the application or the opposition, or to send any notice that may be required by the Ordinance or these rules.

(2) For all matters falling under the provisions of section 81, any person may, unless otherwise directed by the Controller, authorize, under his personal signatures, a legal practitioner or a patent agent to act as his agent and to receive all notices, requisitions and communications. The authority may be given in the form as set out in Form P-28.

CHAPTER II.–APPLICATION FOR GRANT OF PATENTS

8. Application for the grant of patents.-(1) An application for grant of a patent, other than a Convention application, by the true and first inventor shall be made in the form as set out in Form P-1, provided, that if the true and first inventor is not a party to the application, the applicant shall produce the original deed of assignment or other document from such true and first inventor, under which he is entitled to apply for a patent, unless such an application made in the form as set out in Form P-1A itself is endorsed by the true and first inventor(s) in the presence of two witnesses with a statement that the application shall be made without his name as an applicant for the patent.

(2) A convention application by the true and first inventor shall be made in the form as set out in Form P-2 provided that if the true and first inventor is not a party to the application, the applicant shall produce the original deed of assignment or other document from such true and first inventor, under which he is entitled to apply for a patent, unless such application made in the form as set out in Form P-2A itself is endorsed by the true and first inventor in the presence of two witnesses with a statement that the application shall be made without his name as an applicant for a Patent.

(3) In the case of an application, other than a Convention application, by the personal representative of a deceased person, who, immediately before his death, was entitled to make such an application, the probate of the will of the deceased, or the letter of administration of his estate, or an official copy of the probate or letter of administration, shall be produced at the Patent Office in proof of the applicant’s title to act as the personal representative.

(4) Where in pursuance of sub-section (3) of section 14, the Controller allows a -single complete specification to be proceeded with in respect of two or more applications in respect of which two or more provisional specifications have been filed, the single complete specification may include any matter disclosed in any of the said specifications and shall be deemed to have been filed on such date, not earlier than the earliest date on which all the matter disclosed in the said single complete specification has been disclosed to the Patent Office in or in connection with the applications, as the Controller may direct.

(5) Where an applicant has made an application for a patent and, before the acceptance of the complete specification, makes a divisional application for a patent for matter included in the first mentioned application or in any specification filed in pursuance thereof, the Controller may direct that the fresh application or any specification filed in pursuance thereof shall be ante-dated to a date not earlier than the date of filing of the first mentioned application or specification if the applicant includes in the fresh application a request to that effect:

Provided that the Controller may require such amendment of the complete specification filed in pursuance of either of the aid applications as may be necessary to ensure that neither of the said complete specification includes a claim for matter claimed in the other.

(6) Where a complete specification has been filed pursuant to two or more applications accompanied by provisional specifications for inventions which the applicant believes to be cognate or modifications one of another, and the Controller is of opinion that such inventions are not cognate or modifications one of another, the Controller may allow the complete specification to be divided into such number of complete specifications as may be necessary to enable that applications to be proceeded with as two or more separate applications for patents.

(7) Where a single Convention application has been made in respect of all or part of the inventions in respect of which two or more applications for protection have been made in one or more Convention countries, and the Examiner reports that the claims of the specification filed in the said Convention application relate to more than one invention, the Controller may allow one or more further applications to be filed and the specification to be divided into such number of specifications as may be necessary to enable two or more separate Convention applications to be proceeded with and may direct that the said applications be deemed to have been filed on the date of filing of the original application.

(8) Wherein pursuance of sub-section (1) of section 88 the Controller allows more than three months to file a copy or copies of the specification or specifications, and drawings or documents filed or deposited by the applicant or his predecessor in title, as the case may be, in respect of the Conventional application, a request for such extension of time shall be made in the form as set out in Form P-4 provided, however that such extension shall not exceed maximum three periods of three months each from the date of filing of the Convention application.

(9) Save as aforesaid, all proceedings in connection with a Convention application shall be taken within the time and in the manner required by the Ordinance or prescribed by these rules for ordinary applications.

(10) Applications shall on receipt by the Controller, be numbered and dated in the order of their receipt.

CHAPTER III.–SPECIFICATION, ABSTRACT AND DRAWINGS

9. Specification.-(1) Every specification, whether provisional or complete; shall begin with title and be signed and dated at the end by the applicant or his agent.

(2) A specification in respect of a patent of addition shall contain a specific reference to .the number of the main patent and patent application as the case may be with a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent or patent application as the case may be.

(3) Where the invention is capable of elucidation and presentation by drawings, such drawings shall be prepared in accordance with rule 11 and shall be supplied with and referred to in detail in the specification.

Irrelevant or other matter not necessary, in the opinion of the Controller, for elucidation of the invention, shall be excluded from the title, description, abstract, claims and drawings.

(5) The Third Schedule to these rules shall have effect in relation to certain applications for patents, and patents for inventions which involve the use of or concern biological material.

10. Abstract.-(1) The abstract shall commence with the title for the invention.

(2) The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention belongs and be drafted in a way which allows a clear understanding of the technical problem to which the invention relates the gist of the solution to that problem through the invention and the principal use or uses of the invention. Where appropriate, the abstract shall also contain the chemical formula, which, among those contained in the specification, best characterizes the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.

(3) The abstract shall normally consist tit’ not more than two pages.

(4) If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally the figures of the drawings which he suggests should accompany the abstract when published. The Controller may decide to publish one or more other figures if he considers that they better characterize the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.

11. Drawings.-(1) Drawings shall be on sheets the usable surface area of which shall not exceed26.2 cmby 17 cm. The sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follows, namely:–

Top 2.5 cm

Left side 2.5 cm

Right side 1.5 cm

Bottom 1.0 cm

(2) Drawings shall be executed as follows namely:-

(a) without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction;

(b) cross-sections shall be indicated by hatching which does not impede the clear reading of the reference signs and leading lines;

(c) the scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. If, as an exception, the scale is given on a drawing it shall be represented graphically:

(d) all numbers letters, and reference sign, appearing on the drawings shall be simple and clear and brackets, circles and inverted commas shall not be used in association with numbers and letters;

(e) elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure;

(f) the height of the numbers and letters shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall, be used;

(g) the same sheet of drawings may contain several figures. Where figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. The different figures shall be arranged without wasting space; clearly separated from one another. The different figures shall be numbered consecutively in English numerals, independently of the numbering of the sheets;

(h) reference signs not mentioned in the description or claims shall not appear in the drawings, and vice versa. The same features, when denoted by reference signs, shall, throughout the application, be denoted by the same signs;

(i) the drawings shall not contain textual matter, except, when required for the under standing of the drawings, a single word or words such as “water”, “steam”, “open” “closed”, section on AA”, and, in the case of electric circuits and block schematic or flow sheet diagrams a few short catchwords; and

(j) the sheets of the drawings shall be numbered in accordance with sub­-rule (9) of rule 5.

(3) Flow sheets and diagrams shall be considered to be drawings for the purposes of these rules.

(4) Drawings shall bear:-

(a) in the left-hand top corner the name of the applicant and, in the case of drawings filed with a complete specification after one or more provisional specifications, the numbers and years of the applications;

(b) in the right-hand top corner the number of sheets or drawings sent and the consecutive number of each sheet, and the words `original’ or ‘true copy’ as the case may require; and

(c) in the right-Hand bottom corner the signature of the applicant or his agent.

(5) The title of the invention shall not appear on the drawings.

(6) No descriptive matter shall appear on constructional drawings, but drawings in the nature of flow sheets may bear descriptive matter to show the materials used and the chemical or other reactions or treatments effected in carrying out the invention.

(7) Drawings showing a number of instruments or units of apparatus and their interconnections either mechanical or electrical, where each such instrument or unit is Shown only symbolically may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections.

(8) No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol or equation, shall appear in the vernal part of the specification and if such a formula, symbol or equations used therein in a copy thereof, prepared in the same manner as original drawings, shall be furnished if the Controller so directs.

(9) Drawings shall be delivered at the Patent Office free front folds, breaks or creases, which would render them unsuitable for reproduction.

(10) If an applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for his complete specification, he shall refer to them in the complete specification as those filed with the provisional specification.

12. Manner of making amendments.-(1) When a specification, or any drawing accompanying it, requires an amendment one copy shall be returned to the applicant or his agent and all’ amendments shall be made thereon as fat as possible. Additional matter may be interpolated, if necessary, by rewriting such pages as are required to form a continuous document. Amendments shall not be made by slips pasting, or as footnotes, or by writing in the margin.

(2) The amended document shall be returned to the Controller together with the cancelled or replaced pages or drawings, if any, duly marked, cancelled and initialed by the applicant or his agent, along with a duplicate of any pages that have been added or substantially amended. Amendments, alterations or additions shall be initialed in the margin by the applicant or his agent.

(3) No amendments, alterations or additions shall be made in a document returned for amendment, beyond those necessary to comply with the requirements of the Controller.

13. Application under section 101.-Application under section 101 shall be made in the form as set out in Form P-30.

CHAPTER IV : EXAMINATION OF APPLICATIONS, PUBLICATION, OPPOSITION, SEALING OF PATENT AND RENEWALS

14. Procedure under section 16.-(1) When the Examiner, in pursuance of the requirements of sub-section (1) of section 16, reports that the invention as claimed in any claim’ of the complete specification has been published in any specification or other document, or otherwise cannot be accepted for the reasons specified in his report, the applicant shall be so informed in writing and shall be afforded an opportunity of amending his specification:

(2) If the applicant re-files his specification and the Examiner is not satisfied with the amendments, the applicant shall be given an opportunity to be heard in the matter if he so requests.

(3) Whether or not the applicant has re-filed his specification, the Controller may appoint a hearing if he considers it desirable to do so, having regard to the time remaining for putting the application in order or other circumstances of the case.

(4) When a hearing is appointed, the applicant shall be given at least ten days’ notice of the appointment or such shorter notice as appears to the Controller to be reasonable in the circumstances and shall as soon as possible notify the Controller in the form as set out in Form P-8 whether he will attend the hearing,

(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard the Controller may prescribe or permit such amendment as will be to his satisfaction and may refuse to accept the complete specification unless the amendment is made within such period as he may fix, not exceeding the total period prescribed under sub-section (6) of section 16.

(6) An application for extension of time under the first proviso of sub­section (6) of section 16 shall be made in the form as set out in Form P-4.

(7) An application for postponement of normal acceptance by the applicant under the second proviso of sub-section (6) of section 16 shall be made in the form as set out in Form P-4.

15. Reference to other patents.-(1) When, pursuant to the requirements of sub-section (1) of section 17, the Controller directs that reference to a patent shall be inserted in the applicant’s complete specification, the reference shall be inserted in the following form:-

“Reference has been directed in pursuance of sub-section (I) of section 17 of the Patents Ordinance 2000, to Patent No.———

(2) An application under sub-section (2) of section 17 for the deletion of a reference inserted pursuant to a direction under sub-section (1) of section 17 shall be made in the form as set out in Forth P-5, and shall state fully the facts relied upon in support of the application.

16. Substitution of applications, etc. under section 18.-(1) A. claim under sub-section (1) of section 18 that an application for a patent shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other join applicants shall be made in the form as set out in Form P-6 and shall be accompanied by a certified copy of any assignment or agreement upon which the claim is based.

(2) The original assignment or agreement shall also be produced for the Controller’s inspection, and the Controller may call for such other proof of title or written consent as he may require.

17. Advertisement of application.-(1) The Controller shall advertise the acceptance of every application in the official Gazette.

(2) Within thirty days from the date of receipt of the notice of acceptance of the application, the applicant shall send a copy of the abstract of the complete specification ‘as accepted’ to the institutions at the addresses mentioned in the Fourth Schedule to these rules by registered post.

18. Opposition to grant of patent.-(1) A notice of opposition to the grant of a patent-

(a) shall be given in the form as set out in Form P-7;

(b) shall state the ground or grounds on which the opponent intends to oppose the grant, and

(c) shall be accompanied by a statement in duplicate setting out fully the nature of the opponent’s interest, the facts upon which he relies and the relief which he seeks.

(2) A copy of the notice and of the statement shall be sent by the Controller to the applicant.

(3) If the applicant desires to proceed with his application, he shall, within two months of the receipt of such copies, file a counterstatement setting out fully the grounds upon which the opposition is contested and deliver to the opponent a copy thereof.

(4) The opponent may within two months from the receipt of the copy, of the counterstatement file evidence in support of his case and shall deliver to the applicant a copy of the evidence.

(5) Within two months from the receipt of the copy of the opponent’s evidence or, if the opponent does not file any evidence, within two months from the expiration of the time within which the opponent’s evidence might have been filed, the applicant may file evidence in support of his case arid shall deliver to the opponent a copy of the evidence; and within two months from the receipt of the copy of the applicant’s evidence, the opponent may the evidence confined to matters strictly in reply and shall deliver to the applicant a copy of the evidence.

(6) No further evidence shall be filed by either party except by leave or direction of the Controller.

(7) Copies of all documents referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition, shall be furnished in duplicate for the Controller’s use unless he otherwise directs. Such copies shall accompany the notice, statement or evidence in which they are referred to.

(8) Where specification or other document in a foreign language is referred to, a translation thereof, verified by statutory declaration or otherwise to the satisfaction of the Controller, and two copies of the translation, shall also be furnished.

(9) On completion of the evidence if any, or at such other time as he may deem fit, the Controller shall appoint a time for the hearing of the case, and shall give the parties at least thirty days’ notice of the appointment.

(10) If either party desires to be heard he shall within ten days of receipt of the notice under sub-rule (9) notify the Controller in the form as set out in Form P-8 and the Controller may refuse to hear either party who has not filed the said form prior to the date of hearing.

(11) If either party intends to refer at the hearing to any publication not already mentioned in the proceedings, he, shall give to the other patty and to the Controller at least ten days notice of his intention, together with details of each publication to which he intends to refer.

(12) After hearing the party or parties desiring to be heard or, if neither patty desires to be heard, then without a hearing, the Controller shall decide the case and notify his decision to the parties.

(13) If in consequence of the proceedings the Controller directs that a reference to another patent shall be inserted in the applicant’s specification under sub-section (1) of section 17, the reference shall be as specified under rule 15.

(14) If the applicant notifies the Controller that he does not desire to proceed with the application, the Controller in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if the opponent had given reasonable notice to the applicant before the opposition was filed.

19. Observations under section 24.——(1) Observations under section 24:–

(a)        shall be given in the form as set out in Form P-9; and

(b)        shall be accompanied by a statement in duplicate setting out fully the nature of the observant’s interest, the facts upon which lie relies.

(2) Subject to sub-rule (2), the Controller shall send to the applicant a copy of,-

(a)        any document containing observations which he receives under sub-rule (1); and

(b)        any document referred to in any such observations being a document which he receives from the person making them.

(1) Nothing in sub-rule (2) above shall impose any duty on the Controller in relation to any document.-

(a)        a copy of which it appears to the Controller is readily available for retention by the applicant; or

(b)        which in his opinion is not suitable for photocopying, whether on account of size or for any other reason.

(4) The Controller shall refer the observations to the Examiner and the Examiner shall consider and comment upon them as he thinks fit.

(5) The Controller shall send a copy of the Examiner’s comments to the applicant.

(6) A person does not become a party to any proceedings under the Ordinance before the Controller by reason only that he makes observations under section 24.

20. Secrecy directions under section 25.——Where directions given by the Controller under sub-section (1) of section 25, prohibiting the publication of information with respect to an invention forming the subject of an application for a patent have been revoked and a patent is granted on the application, no renewal fees shall be payable in respect of any year which commences in the period during which directions were in force.
21. Sealing of patents under section 27.——(1) A request for the sealing of patent on an application shall be made in the form as set out in Form P-10 and shall accompany a copy of the evidence of dispatch of abstract under sub-rule (2) of rule 17.

(2) An application under sub-section (3) of section 27 for the extension of the period for making a request for the sealing of a patent shall be made in the form as set out in Form P-4

22. Form of patent.——–(1) Subject to sub-rule (2), the patent shall be in the form as set out in the Fifth Schedule to these rules with modifications as the circumstances of each case may require and shall bear a number according to the application, after acceptance:

(2) The patents granted to applications filed under sub-section (7) of section 16, shall be in the form as set out in the Sixth Schedule to these rules.

23. Procedure under section 28:——–An application under section 28 for the amendment of a patent granted to deceased person shall be made in the form as set out in Form P-1 I and shall be accompanied by evidence verifying the statements therein.
24. Renewals.——(1) If it is desired, at the expiration of the fourth year from the date of a patent, or of any succeeding year during the term of the patent, to keep the patent in force, the prescribed-renewal fee shall be paid alongwith requisite information in the form as set out in Form P-12 before the expiration of that year.

(2) All or any of the prescribed annual renewal fees may be paid in advance.

(3) A request for extension of the period for payment of any renewal fee under sub-section (2) of section 32 shall be made in the form as set out in Form P-4.

(4) On compliance with the terms of sub-rule (1), the Controller shall issue a certificate on form as set out in the Seventh Schedule to these rules.

(5) For the patents granted under the Patents and Designs Act, 1911, (II of 1911), no renewals shall be admitted after the expiry of the term of sixteen years.

CHAPTER V -RESTORATION, REVOCATION AND SURRENDER

OF PATENTS

25. Restoration of lapsed patents.—–(1) An application under sub-section (1) of section 45 for restoration of a patent shall be made in the form as set out in form P-13 and shall be accompanied by evidence in support of the statements made in the application.

(2) If upon consideration of the evidence the Controller is not satisfied that a prima facie case for an order under sub-section. (3) of section 45 has been made out he shall notify the applicant accordingly and, unless within two months the applicant requests to be heard in the matter, the Controllers shall refuse the, application.

(3) I: the applicant requests a hearing; within the time allowed, the Controller after giving the applicant an opportunity of being heard shall determine whether the application may proceed to advertisement in the official Gazette or whether it shall be refused.

(4) At any time within two months of the advertisement of the application under sub-rule (3), any person may give notice of opposition thereto in the form as set out in Form P-7.

(5) Such notice shall be accompanied by a copy thereof together with a statement in duplicate„ setting out fully the nature of the opponent’s interest and the facts upon which he relies.

(6) A copy of the notice and of die statement shall be sent by the Controller to the applicant.

(7) Upon notice of opposition being given, provisions of sub-rule (3) to (12) of rule 18 shall apply.

(8) If the Controller decides in favour of the applicant he shall notify him accordingly, and require him to give the requisite information in the form as set out in Form P-12, in respect of the unpaid renewal fee(s).

(9) In every order of the Controller restoring a patent the following provision shall be inserted for the protection of persons who have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application,

No action or other proceeding shall be commenced or prosecuted nor any damage recovered in respect of any manufacture, use or sale of the patented product in the interim period as herein after defined by any person to have effect, the who after such date and before the, the date of the application has made, used, exercised or sold the patented product or has manufactured or installed any plant, machinery or apparatus claimed in the specification of the patent or for carrying out a method or process so claimed.

26. Revocation of patents under section 47,—(1) An application for the revocation of a patent under section 47 shall,-

(a)        be made, in the form asset out in Form P-14,

(b)        state the grounds for the application, and

(c)        be accompanied by a copy thereof, and a statement in duplicate setting out fully the nature of the applicants’ interests the facts upon which he relies and the relief which he seeks.

(2) A copy of the application and of the statement shall be sent by the Controller to the patentee.

(3) Upon such application, being made and a copy thereof sent to the patentee the provisions of sub-rules (3) to (12) of rule 18 shall apply with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.

(4) If the patentee offers to surrender his patent under section 49, the Controller, in deciding whether costs should be awarded to the applicant for revocation, shall consider whether proceedings might have been avoided if the applicant had given reasonable notice to the patentee before the application was filed.

(5) Revocation petition shall be disposed of within a period not exceeding one year.

27. Surrender of patents under section 49.—(1) A notice of an offer by a patentee under section 49 to surrender his patent shall be given in the form as set out in Form P-15 and shall be advertised by the Controller in the official Gazette.

(2) Any time within two months from the advertisement any person may give notice of opposition to the Controller in the form as set out in Form P-7, which shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.

(3) A copy of the notice and of the statement shall be sent by-the Controller to the patentee.

(4) Upon such notice of opposition being given and a copy there of sent to the patentee. the provisions of sub-rules (3) to (12) of rule.18 shall apply with the substitution of references to the patentee for references to the applicant.

CHAPTER VI.-AMENDMENT OF SPECIFICATION

28. Amendment of specification.—–(1) An application to the Controller for leave to amend an accepted complete specification ,under sub-section (3) of section 42 shall be made in the form as set out in Form P-16, and shall be advertised by publication of the application and the nature of the proposed amendment in the official Gazette.

(21 An application to the Controller for leave to amend an application. under sub-section (2) of section 42 shall be made in the form as set out in Form P-16 and the Controller shall determine whether and subject to what conditions, if any-the amendment shall be allowed.

(3) Unless the Controller otherwise directs, an application or proposal for amendment of a specification shall be accompanied by a copy of the specification and drawings clearly showing the amendment sought in bold and underlined.

(4) Any person wishing-to oppose the application filed under sub-rule (1) shall; within two months from the date of the advertisement in the Official Gazette give notice to the Controller in the form as set out in Form.P-7.

(5) Such notice shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the opponent’s interest, the facts upon which he relies and the relief which fie seeks.

(6) A copy of the notice and of the statement shall be sent by the. Controller to the applicant or the patentee as the case may be.

(7) Upon such notice of opposition being given and a copy thereof sent to the applicant the provisions of sub-rules (3) to (12) of rule 18 shall apply.

(8) An application for leave to amend a complete specification, which has not been accepted, except when the amendment is made to meet an objection contained in an examiner’s report shall be made in the form as set out in Form P-17.

(9) Where leave to amen a specification is given the applicant shall, if the Controller so requires, and within a time to be fixed by him, file a new specification and drawings as amended, which shall be prepared in accordance with these rules.

CHAPTER VII.–POWERS OF THE CONTROLLER

29. Powers of the Controller-under section 35.—-(1) An application for directions under sub-section (1) of section 35 by a co-grantee or co-proprietor of a patent shall be made in the form asset out in Form P-18 and shall be accompanied by a statement setting out fully the facts upon which the applicant relics and the directions which he seeks.

(2) A copy of the application and of the statement shall be sent by the Controller to each other person registered as grantee or proprietor of the patent and the applicant shall supply a sufficient number of copies for that purpose.

(3) Thereafter the Controller may give such directions as he may think fit with regard to the subsequent procedure.

(4) An application for directions under sub-section (2) of section 35 by a co-grantee or co-proprietor of a patent shall be made in the form as set out in Form P-19, and shall be accompanied by a copy thereof, and a statement in duplicate setting out fully the fats upon which the applicant relies, and the directions which he seeks.

(5). A copy of the application and of the statement shall be sent by the Controller to the person in, default.

(6) Thereafter the Controller may give such directions as he may think fit with regard to the, subsequent procedure.

30. Power of the Controller under section 36.—-(1)An application under sub-section (1) of section 36 to determine a dispute as to right in an invention shall be made in the form as set out in Form P-20, and shall be accompanied by a copy thereof together with a statement in duplicate setting out fully the facts of the dispute and the relief which is sought.

(2) A copy of the application and of the statement shall be sent by the Controller to the other party to the dispute, who within two month’s after receipt thereof shall file a counterstatement in duplicate setting out fully the grounds on which he disputes the right of the applicant to the relief sought.

(3) The Controller shall send a. copy of this counterstatement to the applicant and thereafter, subject to such directions as the Controller may think fit to give, the provisions of sub-rules (3) to (12) of rule 18 shall apply with the substitution of references to the applicant for references to the opponent and references to the other party for references to the applicant.

31. Power of the Controller under section 51.——(1) A request for the correction of a clerical error in an application for a patent or any document filed in pursuance of such an application or in any patent or in the register, shall be made in the form as set out in Form P-21.

(2) Where the Controller requires notice of the nature of the proposed correction to be advertised under sub-section (4) of section 51, the advertisement shall be made by publication of the request and the nature of the proposed correction in the official Gazette.

(3) Any person may, at anytime within two months from the date of the advertisement in the official Gazette, give notice to the Controller of opposition to the proposed correction in the form as set out in Form P-7.

(4) Such notice shall be accompanied by a copy thereof and as statement in duplicate setting out fully the nature of the opponent’s interest, the facts on which he relies, and the relief which he seeks.

(5) A copy of the Notice and of the statement shall be sent by the Controller to the person making the request, and thereafter the provisions of sub-rules (3) to (12) of rule 18 shall apply.

(6) Where, in accordance with sub-section (3) of section 51; a hearing, is appointed, at least fourteen days notice of the appointment shall be’ given to the patentee or the applicant for a patent and to any other person to whom notice of the proposed correction has been given by the Controller.

32. Procedure under section 59.——(1) An application under sub-section (1) of section 59 shall be made in the form as set out in Form P-22 and shall be accompanied by a statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.

(2) If upon consideration of the evidence submitted under sub-rule (1), the Controller is not satisfied that a prima facie case is made out for the grant of a non-voluntary license he shall notify the applicant accordingly, and unless, within two months of making such notification, the applicant requests to be heard in the matter, the Controller shall refuse the application.

(3) Where the applicant requests a hearing within the time allowed, the Controller, after giving the applicant the opportunity of being heard, shall determine whether the application may proceed or whether it shall be refused.

(4) If upon consideration of the evidence the Control or is satisfied that a prima facie case has been made out for the grant of a non-voluntary license, or if, after hearing the applicant, he to determines, he shall direct the, application to be advertised in the official Gazette, and shall send a copy of the application, the statement and the evidence filed in support thereof, to the proprietor of the patent and to any other person shown on the register as having any right in or under the

CHAPTER VIII.-REGISTER OF PATENTS

33. Entry of grant.——Upon the sealing of a patent the Controller shall cause to be entered in the register the name, address, and nationality of the patentee as the grantee thereof, the title of the invention; the date of the patent, and the date of the sealing thereof, together with the address for service.
34. Entry in respect of Convention applications:—-The patent granted on any Convention application shall be entered in the Register as dated of the official date of the first Convention application in a Convention country in respect of which the Convention application was made, and the payment of renewal fees and the expiration of the patent shall be reckoned as from that date. The date of the Convention application filed in the Convention country shall also be entered in the Register.
35. Entry of renewal fee.—–Upon the issue of a certificate of payment under rule 24, the Controller shall enter in the Register the fact that the fee has been paid, and the date .of payment as stated on the certificate.
36. Alteration of name, nationality or address:——(1) A request by a patentee for the alteration of a name, nationality or address or address for service entered in the Register in respect of a patent shall be made in the form as set out in Form P-23.

(2) If the Controller is satisfied that the request may be allowed, he shall cause the register to be altered accordingly:

37. Recordal of assignment, transmissions under section 55, etc.——-­An application for the registration of the title of any person becoming entitled by assignment, transmission or operation of law to a patent or to a share in a patent, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent, shall be made,-

(a) in the case of an application under sub-section (1) of section 55 by the person becoming so entitled, in the form as set out in Form P-24; and

(b) in the case of an application under sub-section (2) of section 55 by the assignor, mortgagor, licensor, or other party conferring the interest, in the form asset out in Form P-25

33. Production of documents of title and other proof.—(1) Every assignment, and every other document containing, giving effect to or being evidence of the transmission of a patent or affecting tile proprietorship thereof as claimed by such application shall, unless the Controller otherwise directs, be presented to him together with application and he may call for such other proof of title or written consent as he may require for firs satisfaction:

Provided that in the case of a document which is a public document, an official or certified copy thereof may be specified.

39. Form of entry.-The entry to be made in the Register on a request under rule 36 shall be as set out in Schedule Y to these rules.
40. Entry of notification of documents:——An application for entry in the register of patents of the notification of any other document purporting to affect the proprietorship of the patent by an attested copy thereof may be certified for its accuracy as the Controller may direct, alternatively the original document may be produced at the Patent Office for further verification.
41. Inspection of the Register.—–The Register shall be open to public inspection at all times on which the Patent Office is open to the public, except at times when they are required for actual official use.
42. Inspection of, and extracts from, the Register, under section 57 etc.——(1) Certified copies of any entry in the Register, or certified copies of, or extracts from, patent, specifications, and other public documents in the Patent Office, or of or from register and other records kept there, may be furnished by the Controller on making an application in the form as set out in Form P-26.

(2) A request under section 57 for information relating to any patent or application for a patent may be made,-

(a)        as to when a complete specification following a provisional specification has been filed;

(b)        as to when an application for patent has been accepted or deemed to have been abandoned or deemed to have been- refused;

(c)        as to when a complete specification is or will be published;

(d)        as to when a patent has been sealed or when the time for requesting sealing has expired; renewal fee: has been paid; patent-has expired;

(g)        as to when an entry has been made in the Register or application has been made for the making of such entry; or

(h)        as to when any application is made or action taken involving an entry in the Register or advertisement in the official Gazette.

(3) Any such request shall be made in the form as set out in Form P-27 and a separate form shall be used in respect of each of the said matters.

43. Grant of exclusive marketing rights.—–(1)Where an invention has been made whether in Pakistan or outside Pakistan and a mail box application for the same chemical product intended for the to medicine or agriculture has been filed in a convention country on of after’ first day of January 1995 patent and the approval to sell or distribute the chemical product intended for use to medicine or agriculture in that country have been granted and the applicant thereof has received approval to sell or distribute chemical product intended for use in medicine or agriculture from the Ministry of Industries and Production or any concerned organization authorized by the Ministry of Industries and Production, Government of Pakistan, then, he shall have exclusive marketing rights by himself, his agents) or licensee(s) to sell or distribute in Pakistan, the chemical product intended for use in medicine or agriculture on and from the date of approval for five years or till the date of grant of patent or date of rejection of application, as the case may be, whichever is earlier.

(2) When an invention has been made in Pakistan and a mail box application for the chemical product intended for use in medicine or agriculture has been filed and approval of marketing has been granted to the applicant thereof by the Ministry of Industries and Production or any concerned organization authorized by the Ministry of Industries and Production in respect of that invention, then the applicant shall have the exclusive marketing rights by himself his agent(s) or licensee(s) to sell and distribute in Pakistan the chemical product intended for use in medicine or agriculture and from the date of approval for five years or till the date of grant of patent or date of rejection of application, as the case may be, whichever is earlier.

44. Compulsory licences—–(1) For the purpose of this Ordinance the patentee shall be entitled to a payment up to three percent remuneration’ by the licensee, on the basis of total sales of that chemical product taking into consideration its trade price, under clause (iii) of sub-section (3) of section 59.

(2), Subject to the sub-section (1) of section 59. none or insufficient exploitation of a patent in case of a chemical product intended for use, in agriculture or medicines shall be determined on the basis of health care requirements of Pakistan ,and monopolization of the market against the, public interest:

Provided, that the patent holder does not snake available the subject patented product, in sufficient quantities, so as to meet the requirement of the licensee(s). The licensees) shall be at liberty to import or procure the-said chemical product form anywhere.

CHAPTER IX.-PATENT AGENTS

45. Register of patent agents.——(1) The Patent office shall maintain the register of patent agents wherein shall be entered the name, the address, the business address, the qualifications and the date of registration of every patent agent.

(2) Legal practitioners shall not be required to be on the register of patent agents to act as patent agents otherwise than by way of drafting any specification.

46. Eligibility for registration.-(1) No person shall be eligible for registration as a patent agent unless he is resident in Pakistan,-

(2) A person shall not be qualified for registration as a patent agent unless he is a citizen of Pakistan and,-

(a)        is at least a graduate in basic sciences (for example Physics, Chemistry, Mathematics, Pharmacy, Computer Sciences, and Genetics) or in engineering from a recognized university with at least one year experience of working with a patent agent or a legal practitioner practicing before the Patent Office and has passed a written and oral examination about law and procedure of patents; designs and. integrated circuits with more than fifty percent score; or

(b)        has passed an examination in patent drafting from an institution or organization listed in the eighth Schedule to these rules; or

(c)        has been a officer of BPS-17 or above in the Patent Office for a period of not less then ten years:

Provided that no such person shall be entitled to registration for a period of three years from the date of retirement or termination of service:

Provided further that no such person shall be entitled to registration if he has been dismissed or removed from service;

(d)        is already recognized as a Patent Agent and has been practicing as such for more then three years prior to coming into force of these rules.

47. Persons debarred from registration or remaining on the register of patent agents.———A person shall not be eligible for registration as a patent agent or continue to remain on the register of patent agents if he,–

(a)        is barred by the provisions of section 84;

(b)        has been adjudged by a competent court to be of unsound mind;

(c)        is an undischarged insolvent;

(d)        being a discharged insolvent has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;

(e)        Pas been convicted by a competent court, whether within or without Pakistan of an offence punishable with transportation or imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Federal Government has by order in this behalf, removed the disability; or

(f)         is considered by the Federal Government not to be a fit and proper person by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity.

48. Manner of making application.——All applications for registration of a patent agent shall be made in the form as set out in Form PTA-1.
49. Procedure on application.—–(1) On receipt of an application for the registration of a person as a patent agent, the Controller shall grant him an opportunity of appearing in a written and oral examination that will be conducted once in a year.

(2) If the applicant has passed the written and oral examination and qualifies requirements of clause (a) of sub-rule (2) of rule 46 or has proved to the satisfaction of the Controller that he is exempt from appearing in such examination under the exemptions granted in clause (b) and (c) of sub-rule (2) of rule 46, the Controller shall send an intimation to that effect to the applicant, and any person so intimated may pay the prescribed fees for his registration as a patent agent. On receipt of the prescribed fees, the Controller shall cause the applicant’s name to be entered in the register of patent agents, and shall issue to him a certificate on the form as set out in the Ninth Schedule to these rules.

50. Continuance of a name in the register of patent agents.——Subject to rule 47, the continuance of a person’s name in the register of patent agents shall be subject to his payment of the fee prescribed in that behalf.
51. Removal of agent’s name from the register of patent agents.——-­(1) The Federal Government may remove permanently or temporarily from the register of patent agents the name of any patent agent,-

(a)        from whom a request has been received to that effect; or

(b)        from whom the annual fee has not been received on the expiry of three months from the date on which it became due; or

(c)        who is found to have been subject at the time of his registration or there after has become subject, to any of the disabilities stated in clauses (a) to (e) of rule 47; or

(d)        whom the Federal Government has declared not to be a fit or proper person to remain on the register of patent agents under sub-section (1) of section 83:

Provided that before making such declaration, the Federal Government shall call upon the person concerned to show cause why his registration should not be cancelled and shall make such further enquiry, if any, as it may consider necessary.

(2) The Federal Government shall remove from the register of patent agents the name of any patent agent who is dead.

(3) The removal of the name of any person from the register of patent agents shall be notified in the official Gazette and shall, wherever possible, be communicated to the person concerned.

52. Restoration of removed names.——–(1) The Federal Government may, subject to the provisions of sub-section (2) of section 83, on an application in the form as set out in Form PTA-2 from a person whose name has been temporarily removed under sub-rule (1) of rule 51, restore his name to the register of patent agents.

(2) The restoration of a name to the register of patent agents shall be notified in the official Gazette, and shall wherever possible be communicated to the person concerned.

53. Alteration in the register of patent agents.–-(1) A patent agent may apply in the form as set out in Form PTA-3 for alteration of his name, address, business address or qualifications entered in the register of patent agents. On receipt of such application and the fee prescribed in that behalf, the Controller shall cause the necessary alteration to be made in the register of patent agent.

(2) Every alteration made in the register of patent agents shall be notified in the official Gazette.

54. Publication of the register of patent agents.—–The register of patent agents shall be published, as the Controller or the Federal Government may deem fit, the entries being arranged in the alphabetical order of the surnames of the registered agents and copies thereof shall be placed on sale.
55. Agency.——For all matters falling under the provisions of section 81, any person may, unless otherwise directed by the Controller, authorize under his personal signature, any person who is either a legal practitioner or a registered patent agent and to receive all notices, requisitions and communications. The authority may be given in the form as set out in Form P-28.

CHAPTER X-MISCELLANEOUS PROVISIONS

56. Procedure for evidence before the Controller.———(1)Where under these rules evidence is required to be filed it shall be by way of statutory declaration or affidavit unless otherwise expressly provided in these rules.

(2) The statutory declarations and affidavits required by these rules, or used in any proceedings thereunder, shall beheaded in the matter or matters to which these relate, and shall be divided into paragraphs consecutively numbered, and each paragraph shall so far as possible be confined to one subject.

57. Form, etc., of affidavit.–-(1) The affidavits required by the Ordinance and these rules, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, shall be drawn up in the first person and shall be divided into paragraphs consecutively numbered; and each paragraph shall as far as possible, be confined to one subject. Every affidavit shall state the description and true place of abode of the person making the same, shall bear the name and address of the person leaving it and shall state on whose behalf it is left.

(2) Affidavits shall be confined to such facts as the deponent is able of tits own knowledge to prove, except on interlocutory applications on which statements of his belief may be admitted, provided that the grounds thereof are stated.

(3) The affidavits referred to in sub-rule (1) shall be made and subscribed, as follows, namely:-

(a)        in Pakistan before any court or person having by law authority to receive evidence, or before any officer empowered by such court or person as aforesaid to administer oaths, or before the commanding officer of any military, naval or air force station or ship occupied by troops in the service of Pakistan; and

(b)        in any other part of the world before any court, Judge, justice of the peace any officer authorized by law to administer an oath for the purpose of a legal proceeding, and be legalized by the Embassy of Pakistan in the country or region.

(4)        Every statutory declaration or affidavit shall state the description and true place of abode of the person making the same, and shall be written, typed, or printed.

58. Action consequent upon Court order.—Where an order has been made by the High Court in any case under the Ordinance, the person in whose favour the order has been made shall forth with lodge an application in the form as set out in form P-29, accompanied by a sealed duplicate of the order or a certified copy of the order, and thereupon the register shall, if necessary, be corrected or rectified by making of any entry therein or the variation or deletion of any entry therein.
59. Controller may require statements.—Where an applicant or an agent desires to be heard or not, the Controller may at any time require him to submit a statement in writing within a time to be notified by the Controller, or to attend before him and make explanations with respect to such matters as the Controller may require.
60. General power of amendment.——Any document for the amending of which no special provision is made by the Ordinance may be amended, and any irregularity in procedure which, in the opinion of the Controller, may be obviated without detriment to the interests of any person may be corrected if the Controller thinks fit, and upon such terms as he may direct.
61. Exercise of discretionary power and removal of difficulties:—–(1) Except as otherwise provided in these rules, before exercising any discretionary power given to him by the Ordinance or these rules adversely to an applicant for a patent or for amendment of a specification, the Controller shall give at least ten days’ notice to the applicant of the time when he may be heard.

(2) Where, under these rules, any person required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the Controller that for any reasonable cause that person is unable to do that act or thing, or that document or evidence cannot be produced or filed, the Controller may, upon the production of such evidence and subject to such terms as he thinks fit, dispense with the doing of any such act or thing, or the production or filing of such- document or evidence.

(3) Where the hearing before the Controller of any dispute between two or mote parties relating to any matter in connection with a patent or an application for a patent takes place after the date of the publication of the complete specification, the hearing of the dispute shall be in public unless the Controller, after consultation with those parties to the dispute who are represented at the hearing, otherwise directs.

62. General power to extend time.—-(1) The time prescribed by these rules for doing any act or taking any proceeding thereunder may be enlarged by the Controller if he thinks fit and upon such terms as he may direct:

Provided that no such extension of time granted under this rule shall exceed a period of more than one month at a time, provided that total period of such enlargements shall not exceed three months against the statutory period prescribed.

(2) Every application for extension of time under sub-rule (1) shall be made in the form as set out in Form P-4.

63. Publications of the Patent Office.——–(1) The Controller may publish from time to time reports of such cases relating to patents.

(2) The Controller may arrange for the publication and sale of copies of specifications, drawings and other documents in the Patent Office, and of indices to and abridgements of such documents.

64. Savings.——Notwithstanding the super session of Patents Rules, 1933. any application or other matter pending under those rules shall be disposed of under those rules.

The First Schedule

[See rule 3(1)]

Fee

The Second Schedule

[See rule 4]

From P-1

Fee:Rs

Patents Ordinance 2000

Application for patent when the true and first

inventor is sole or joint applicant

(Section 13(1)rule 8(1)

(To be accompanied in duplicate by a Provisional Specification

on From P-3 or the Complete Specification on Form P-3A)

Insert (in full)the name                            I (or we)_______________________________________

Address and nationality                            _____________________________________________

of the applicant or applicants,                 hereby declare:

Insert title of the invention.                    (i) that I am in possession of an invention

For_________________________________________

Insert who is the inventor.                       ____________________________________________

                                Said(____________________)claim to be the time and first inventor thereof:

(ii)that the ___________ invention is not in use in Pakistan by any other person:

State here whether the                                             (iii)that the ____ specification filed with this application is ,and any

Specification accompanying this              amended specification which may hereafter be filed in this behalf will be , true of the invention to which this application relates;

Form provisional or complete.                                 (iv)that following particulars of  my application,

Address for service in Pakistan

Insert address for

service in Pakistan                                   I (or we ) humbly pray that a patent may be granted to me (or us ) for the said invention,

Dated this ___ day of ___ 20___

Signature______________________________________________

Name:_____________________________

Designation:________________________

Address :___________________________

Insert name

designation and

address of the

signatory . in case of

Agent also include                                    To

latest tele- communication                       Controller of Patents

details                                                      The Patent Office

Karachi

From P-1A

Fee:Rs

Patents Ordinance 2000

Application for patent when the true and first

inventor is Not a party to the application

(Section 13(1)rule 8(1)

(To be accompanied in duplicate by a Provisional Specification

on From P-3 or the Complete Specification on Form P-3A)

Insert (in full)the name                            I (or we)_______________________________________

Address and nationality                            _____________________________________________

of the applicant or applicants,                 hereby declare:

Insert title of the invention.                    (i) that I am in possession of an invention

For_________________________________________

Insert who is the inventor.                       ____________________________________________

                                Said(____________________)claim to be the time and first inventor thereof:

(ii)that the ___________ invention is not in use in Pakistan by any other person:

State here whether the                                             (iii)that the ____ specification filed with this application is ,and any

Specification accompanying this              amended specification which may hereafter be filed in this behalf will be , true of the invention to which this application relates;

Form provisional or complete.                                 (iv)that following particulars of  my application,

Address for service in Pakistan

Insert address for

service in Pakistan                                   I (or we ) humbly pray that a patent may be granted to me (or us ) for the said invention,

Dated this ___ day of ___ 20___

Signature______________________________________________

Name:_____________________________

Designation:________________________

Address :___________________________

Insert name

designation and

address of the

signatory . in case of

Agent also include                                    To

latest tele- communication                       Controller of Patents

details                                                      The Patent Office

Karachi

Patents Ordinance 2000

Application for patent when the true and first

inventor is NOT a party to the application

(Section 13 (1) ( rule 8 (1)

From P-1A

Fee-Rs.

ENDORSEMENT BY INVENTOR

I (or we) ___________________________________________________________

___________________________________________________________________

Insert (in full) the name.          ___________________________________________________________________

Address and nationality of        ______________________________

The applicant or                      Referred to on the reverse the this document as claiming to be the true and first inventor(s) agree that applicant                                    the said application shall be made with out my (or our ) name  (s) as (an ) applicant (s) for a patent.

Dated this ____ day of ____ 20

Name _____________________________________

Designation: ______________________

Address _________________________

________________________________

Insert name

Designation and

Address of the

Signatory.

Name and signatures of two witnesses;

1______________________________

2______________________________

From P-1B                                                               Patents Ordinance, 2000

Fee;Rs.                                     Application of patents of addition when the true and first

                                                                Inventor is sole or joint applicant

                                                                (Section 39)

(To be accompanied in duplicate by a Provisional Specification on

Form P-3 or the Complete Specification on Form P-3A)

                                                                I (or We)

                                                                _________________________________________________________

                                                                _________________________________________________________

Insert (in full ) the name                          _________________________________________________________

address, and nationality                            _________________________________________________________

of the applicant or                                   hereby declare:—

applicants.                                                               (i) that I am in possession of an invention for_____________________

                                                                _________________________________________________________

                                                                _________________________________________________________

Insert title of the invention.                    (ii) that __________________________________________________

                                                                Claim to be the true and first inventor(s) thereof:

                                                                (iii) that the said invention is an improvement in or modification of my (or our)

State who is or are the inventor                               invention of which a patent was applied for or the_________________

or inventors.                                            And numbered __________[for which I was/we were the applicants(s)] of

                                                                which I am/we are the patentee(s)];

                                                                (iv) that the _________________ specification filed with this application is.

State here whether the

specification accompanying this

from is provisional or

complete

Strike out the words and

brackets (and the complete

                                                                                Address for service in Pakistan

I (or we ) humbly pray that a patent be granted to me (or us) for the said invention and request that the term limited in such further patent for the duration there be the same as that of the original patent or so much that term as is unexpired.

Insert address for

service in Pakistan                                   Dated this ___day of ____20

                                                                Signature_________________________________________

                                                                Name _________________________________________

                                                                Designation:____________________________________

Address:_______________________________________

Insert name

designation and

address of the                                           To

signatory in case of                                  Controller of patents

Agent also include                                    the patent office

latest tele-                                                                Karachi

Communication

detail.

From P_IC                                                               Patents Ordinance 2000

fee:Rs                                       Application for patent of addition when the true and first

Inventor is NOT a party to the application.

(Section 39)

(To be accompanied in duplicate by a Provincial Specification

on Form P-3 or the Complete Specification on Form P-3A)

                                                                I (or we)

                                    Address for service in Pakistan

From P_IC Reverse                                                  Patents Ordinance,2000

Fee: Rs.                                    Application for patent of addition when the true and first

Inventor is NOT a party to the application

(Section 39)

ENDORSEMENT BY INVENTOR

                                                                I (or we) ________________________________________________

Form P-2                                                 Patents Ordinance, 2000

Fee: Rs                                     Convention application for patent when the true and first

                                                                Inventor is sole or joint applicant

                                                                (Section 13(2) (rule 8(2))

(To be accompanied in duplicate by a Complete Specification on Form P-3A)

                                                                I (or we) _______________________________________________

                                                Address for service in Pakistan

Form P-2A                                              Patents Ordinance, 2000

Fee: Rs                                     Convention application for patent when the true and first

                                                                Inventor is NOT a party to the application

                                                                (Section 13(2) (rule 8(2))

(To be accompanied in duplicate by a Complete Specification on Form P-3A)

                                                                I (or we) _______________________________________________

                                                Address for service in Pakistan

Form P-2A Reverse                                                 Patents Ordinance, 2000

Fee: Rs.                                                    Convention application for patent when the true and first

Inventor is NOT a party to the application

(Section 13(2) (rule 8(2))

ENDORSEMENT BY INVENTOR

                                                                I (or we) __________________________________________________

Form P-2B                                                                               Patents Ordinance,2000

Fee: Rs                                                     Convention application for patent           of addition

(Section 13(2) and 39)

                                                                I (or we) __________________________________________________

                                                Address for service in Pakistan:

Form P-2C                                                                               Patents Ordinance, 2000

Fee : Rs                                                    Convention application for patent of addition when

The true and first inventor is NOT a party to the application

(Section 39 and 13(2))

(To be accompanied in duplicate by a provisional Specification on

Form P-3 or the Complete Specification on Form P-3A)

                                                                I (or we)

                                    Address for service in Pakistan

Form P-2C Reverse                                  Patents Ordinance 2000

Fee: Rs                                     Convention application for patent of addition when

The true and first inventor is NOT a party to the application

(Section 39 and 13(2))

Form P-3                                                                 Patents Ordinance 2000

Fee: Rs                                                     Application for provisional specification

                                                                                (Section 14)

(To be supplied in duplicate with Forms P-1, P-1A, P-1B or P-1C)

Form P-3A                                              Patents Ordinance 2000

Fee : Rs                                                    Applicants for complete specification

                                                                (Section 14)

(To be supplied in duplicate with Forms P-2, P-2A, P-2B or P-2C)

or

Forms P-1, P-1A, P-1B or P-1C

(if a Provisional Specification is not accompanying)

                                    Address for service in Pakistan

Form P-4                                                 Patents Ordinance 2000

Fee: Rs                                     Application for extension of time/postponement of normal acceptance

                                                                (Sections 16(6), 27(3), 32(2), 88(1)

& rules 8(8) 14(6), 14(7), 21(2), 24(3), (62)

Form P-5                                                                 Patents Ordinance 2000

Fee: Rs                                                     Application for deletion of a reference

                                                                                (Sections 17(6), (rules 15(2))

(To be accompanied in duplicate by a copy of

the direction issued under section 17(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-6                                                                 Patents Ordinance 2000

Fee: Rs                                                     Application for substitution of applicant

                                                                                (Sections 18(1), (rules 16(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-7                                                                 Patents Ordinance 2000

Fee: Rs                                                                     Notice of Opposition

                                                                                (Sections 23)(rule 18(1)(a), 25(4) 27(2) 28(4) & 31(3))

Insert particulars of the                            IN THE MATTER OF

case

Form P-8                                                                 Patents Ordinance 2000

Fee: Rs                                                                     Notice of intension to attend hearings

                                                                                (Sections 23)(rule 18(10))

Insert particulars of the                            IN THE MATTER OF

case

Form P-9                                                                 Patents Ordinance 2000

Fee: Rs                                                     Application for third party observation

                                                                                On patentability.

(Sections 24)(rule 19(1)(a))

Insert particulars of the                            IN THE MATTER OF

case

Form P-10                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Request for sealing.

(Sections 27(1) (rule 21(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-11                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Application for the amendment of a patent

                                                                                Granted to a deceased person

                                                                                (Sections 28)(rule 23)

Insert particulars of the                            IN THE MATTER OF

case

Form P-12                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Applicant for renewal of patent.

(Sections 32) (rule 24(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-13                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Applicant for restoration of patent.

(Sections 45(1) (rule 25(1))

Form P-14                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Applicant for revocation of patent.

(Sections 47) (rule 26(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-15                                                                               Patents Ordinance 2000

Fee: Rs                                                                     Applicant for surrender of patent

(Sections 49) (rule 27(1))

Insert particulars of the                            IN THE MATTER OF

case

Form P-16                                                                               Patents Ordinance 2000

Fee: Rs                                                     Application for amendment of pending specification/accepted specification

(Sections 42(3)) (rule 28(1 and 2))

Insert particulars of the                            IN THE MATTER OF

case

Form P-17                                                                               Patents Ordinance 2000

Fee: Rs                                                     Application to amend specification when the

Amendment is made to meet an objection

Contained in an examiner report

(rule 28(8))

Insert particulars of the                            IN THE MATTER OF

case

Patents’ Ordinance, 2000

Ordinance No. LXI OF 2000

1. No. 2 (1)/2000-Pub.-The following Ordinance made by the President is hereby published for general information:-

AN ORDINANCE to amend and consolidate the law relating to patents in order to give effect in Pakistan to the provisions of the International Convention on Trade Related Intellectual Property Rights, 1994, in accordance with its objectives and principles.

Whereas it is expedient to amend and consolidate the law relating to patents.

NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution Order No I of 1999, read with the Provisional Constitution (Amendment) Order No 9 of 1999, and in exercise of all powers enabling him in that behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the following Ordinance.

CHAPTER I

PRELIMINARY

1. Short title, extent and commencement.- (1) This Ordinance may be called the Patents Ordinance, 2000

(2) It extends to the whole of Pakistan.

(3) It shall come into force at once except the provisions relating to examination, sealing, grant and post-grant matters of the patents relating to chemical products intended for use in agriculture and medicines, but excluding the grant of exclusive marketing rights therefor and mail box filings which shall come into force on and from the first day of January, 2005.

2. Definitions.- In this Ordinance, unless there is anything repugnant in the subject or context,

(a) “assignee” includes the legal representative of deceased assignee and references to the assignee of any person includes references to the assignee of the legal representative or assignee of that person;

(b) “Controller” means the Controller of Patents appointed under section 3;

(c) “Convention application” means an application made in Pakistan within twelve months after the date of an application made in a Convention country, whether claiming single or multiple priorities from such application;

(d) “Convention country” means a member country of the World Trade Organization or a country declared as such under Section 86;

(e) “date of advertisement” wherever appearing in this Ordinance, shall be the date on which the relevant Part V of the official Gazette is actually made available to the public;

(f) “date of filing”, in relation to an application for a patent, means-

(i) in case of an application which is post-dated or antedated under this Ordinance, the date to which it is so post dated or ante-dated; and

(ii) the date on which it is filed at the Patent Office or its branch office;

(g) “District Court” has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (Act V of 190S);

(h) “exclusive license’ means a license from a proprietor (IS, or an applicant ok a patent which confers on the licensee, or on the licensee and persons authorized by him, to the exclusion of all other persons, including the proprietor or applicant, any right in respect of the invention, to which the patent or application relates, and “exclusive licensee” and “ non-exclusive licensee” shall be construed accordingly;

(i) “invention” means any new and useful product or process, in any field of technology and includes any new and useful improvement of either of them;

(j) inventor” means the actual devisor of an invention and joint inventor shall be construed accordingly;

(k) “legal representative” means a person who in law represents the estate of a deceased person;

(ka) ‘mail box’ means the mail box facility provided under subsection (9) of section 13;

(l) patent agent” means an advocate or a person for the time being registered under this Ordinance as a patent agent;

(m) “patentee” in relation to a patent means the person or persons for the time being entered on the Register as the grantee or proprietor of the patent and includes any subsequent assignee or successor interest of a patent recordal of whose name on the Register is pending with the Controller;

(n) “patent of addition” means a patent of additions granted in accordance with section 39;

(o) “Patent Office” means the Patent Office established or deemed to have been established under section 4;

(p) “person” means any natural or juridical person and includes any association or body of individuals,-whether incorporated or not;

(q) “person interested” includes a person engaged in or in promoting research in the same field as that to) which the invention relates;

(r) “prescribed” meat1s prescribed by rules made under this Ordinance;

(s) “process” ; means any art, process or method or manner of new manufacture of a product

(t) “product” means any substance, article, apparatus or machine;

(u) “published” means made available to the public whether in Pakistan or elsewhere and a document shall be taken to he published under any provision of this Ordinance if it can be inspected as of right at any place in Pakistan by members of public whether on payment or free of cost;

(v) “Register” means the Register of Patents maintained under section 54; and

(w) “rules” means rules made under this Ordinance.

CHAPTER II

ADMINISTRATION

3. Appointment of Controller and other officers. – (I) For the purposes of this Ordinance the Federal Government shall by notification in the official Gazette appoint an officer who shall be called the Controller of Patents

(2) The Federal Government shall appoint such other officers with such designations as it deems fit

4. Patent Office.-(l) For the purposes of this Ordinance, there shall be established a Patent Office:

Provided that until such time the Patent Office is established the Patent Office is established under the Patents and Designs Act. 1911 (II of 1911) shall be the patent office for the purposes of this Ordinance.

(2) The Patent Office shall be under the immediate control of the controller who shall act under the superintendence and direction of the federal Government.

(3) The Patent Office shall be entrusted with all the functions relating to the procedure for the grant of patents and for the administration of granted patents as specified in this Ordinance and roles.

(4) There shall be a seal of the Patent Office and impression of the seal shall be judicially noticed.

5. Officers and employees incapable of an interest in a patent. – Any officer or a person employed ho the Patent office shall be incapable during the period of his appointment and for one year thereafter of applying for a patent or of acquiring, directly or indirectly, except by inheritance or bequest, any patent issued or to be issued by the Patent of five.
6. Officers and employees not to divulge certain information or advise in certain matters.-An officer or a person employed in the Patent Office shall not, except when required or authorized by this Ordinance or under a direction in writing of the Controller or by order of the Court.

(a) divulge any information available to him by virtue of his office in respect of any application for a patent or a patent granted in Pakistan; or

(b) advise in a matter which is under consideration or is likely to come under consideration of the Patent Office in pursuance of this Ordinance.

CHAPTER III

PATENTABILITY

7. Patentable inventions – (1) Any invention is patentable, if it is new, involves an inventive step and is capable of industrial application.

(2) Subject to sub-section (3), the following shall not be regarded as invention within the meaning of sub-section (1), namely:-

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other creation of purely aesthetic character whatsoever;

(c) a scheme, rule or method for performing a mental act, playing a game or doing business;

(d) the presentation of information; and

(e) substances that exist in nature or if isolated there from;

(3) The provisions of sub-section (2) shall prevent anything from being treated as an invention for the purposes of this Ordinance only to the extent that a patent or an application for a patent relates to that thing as such

(4) A patent shall not be granted

(a) for an invention the prevention of commercial exploitation of which would be necessary to protect the “order public” or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is, not made merely because the exploitation is prohibited by any law for the time being in force;

(b) for plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes;

(c) for diagnostic, therapeutic and surgical methods for the treatment of humans or animals.

(d) for a new or subsequent use of a known product or process; and

(e) for a mere change in physical appearance of a chemical product where the chemical formula or process of manufacture remains the same provided that this clause shall not apply to an invention fulfilling the criteria

8. Novelty:- (1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall comprise–

(a) everything disclosed to the public anywhere in the world, by publication no 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; or

(b) contents of the complete specification and priority documents published under section 21 or an application filed in Pakistan.

(c) traditionally developed or existing knowledge available or in possession of a local or indigenous community.

(3) Notwithstanding the provisions of subsection (2), disclosure of a patentable invention in respect of goods shall not constitute ‘state of the art’ if an article is exhibited at an official or officially recognized international exhibition within twelve months preceding the date of filing of an application for grant of patent. If later on, the right of priority is invoked, than the period shall start from the date of introduction of the article into the exhibition. The Controller may require proof, with such documentary evidence as considered necessary, of the identity of the article exhibited and the date of its introduction into the exhibition.

(4) In this section references to the inventor include references to any proprietor of the invention for the time being.

9. Inventive step:- An invention shall be considered as involving an inventive step if it has not been obvious to a person, prior to the date of application for a patent, skilled in

the art having regard to any matter which forms part of the state of art by virtue of section 8.

10. Industrial application- (1) An invention shall be considered to be capable of industrial application if it is capable of being manufactured or otherwise industrially used.

CHAPTER IV

APPLICATIONS

11. Persons entitled to make an application for patent:- (1) Any of the following persons, whether alone or jointly with any other person, may make an application for a patent, namely:

(a) the true and the first inventor or inventors of the invention or his or, as the case may be, their assignee or successor-in-interest; and

(b) the legal representative of any deceased person who immediately before his death was entitled to make such application.

12. Right to patent for invention made by employee:- The right to the patent for an invention made by an employee during the course of his employment in the area of activity of the employer shall, in the absence of contractual obligation to the contrary belong to the inventor unless the employer proves that the invention could not have been made without the use of employers facilities equipment and the like necessary for the invention:

Provided that an invention of exceptional economic value shall entitle the inventor to an equitable remuneration taking into account the nature of his duties, his salary and the benefits derived by the employer.

13. Application for patent:- (1) Every application for the patent shall be made in the prescribed forms and shall be filed at the Patent Office in the prescribed manner and shall contain a declaration to the effect that the applicant is in possession of an invention of which he, or in the case of the joint application, at least one of the applicants, claims to be the true and the first inventor of or the legal representative or assignee of such inventor or, as the case may be, inventors, provided that where the inventor is not the applicant, he shall be entitled to be mentioned as such in the application and if he is not so mentioned the Controller may upon an application made in the prescribed manner and after hearing any interested person, insert the name of such person as an inventor or co-inventor, as the case may be ,if he is satisfied that he be named as an inventor of the invention for which the applicant desires to obtain a patent.

(2) Where applications for protection have been made in one or more Convention countries in respect of two or more inventions which are cognate or of which one is modification of another, a single Convention application may, subject to the provisions of section 15, be made in respect of those inventions at any time within twelve months from the date of the earliest of the said applications for protection.

(3) Each application shall relate to one invention only.

(4) The applicant may, before the acceptance of the application, divide it into two or more applications, hereinafter referred to as divisional applications, provided that each divisional application shall not go beyond the disclosure in the first application.

(5) Each divisional application shall be entitled to the filing date and, where applicable, the priority date of the first application

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

(7) The applicant may at anytime withdraw the application by making a request to the controller.

Provided that where the application has been withdrawn before the advertisement of its acceptance in the official Gazette the application and the specification, claims and drawings, if any, shall not be open to public inspection

(8) An application for an invention relating to genetically modified organisms shall require clearance from the Federal Government and shall comply with such requirement as may be prescribed.

(9) An application for availing exclusive marketing rights for a patentable invention relating to pharmaceutical or agricultural chemical product shall be filed in the mail-box provided for this purpose by the Controller who may require the form and manner for submitting such application as may be prescribed.

14. Complete and provisional application.- (1) Every application for a patent, other than a Convention application, shall be accompanied by either a complete specification or a provisional specification, and every Convention application shall be accompanied by a complete specification.

(2) Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned.

(3) Where two or more applications in the name of the same applicant arc accompanied by provisional specification in respect of invention which are cognate or of which one is a modification or another, and the Controller is of the opinion that the whole of such inventions or such as to constitute a single invention and properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.

(4) Where an application for a patent, not being a Convention application, is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time before the acceptance of the specification, direct that it shall be treated for the purposes of this Ordinance as a provisional specification, and proceed with the application accordingly

(5) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (4) as a provisional specification the Controller may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

15. Contents of specification:- (1) Every specification, whether complete or provisional, shall describe in the Form and manner as may be prescribed.

(2) Subject to any rules made ha this behalf, drawings may, and shall if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional, and any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the specification, and reference in this Ordinance to a specification shall be construed accordingly.

(2A) For a chemical product intended for use in medicine or agriculture, the specification shall be specific to one chemical product onlyu describing the physical chemical, pharmacological and pharmaceutical properties or, as the case may be the properties related to its use in agriculture and its impact on environment.

(2B) Where a biological material is used, the specification shall disclose the place of origin and source of such biological material and shall also exhibit compliance with the relevant applicable rules on access, export and use of that material any where such a material is obtained in Pakistan. For use outside Pakistan, the permission of the Federal Government shall be necessary as may be prescribed.

(3) Every complete specification shall-

(a) fully and particularly describe the invention and the method by which it is to be performed;

(b) disclose the invention which is known to the applicant and for which he is entitled to claim protection; and

(c) end with a claim or claims concisely defining the scope of the invention for which protection is claimed,

(4) The claim or claims of a complete specification shall relate to a single invention, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

(5) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a Convention application, may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a Convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 11 to make a separate application for a patent.

(6) Every complete specification shall be accompanied by an abstract for the purposes of giving technical information and the Controller shall determine whether the abstract fulfills its purpose and, if it does not, shall instruct the applicant to make modifications to the satisfaction of the Controller.

(7) 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 protection.

(8) Claim or claims in respect of a complete specification of a chemical product intended for use in agriculture or medicine shall be structurally defined and shall relate to a single chemical product only, excluding its derivates and salts each of which with a material or a novel improvement in its claim from the main product, shall be filed as a separate invention or where applicable as a divisional application. Where structural description is not possible, as in the case of biological products, the “product by process” claim shall be made and protection shall be limited to the product obtained with the claimed process only:

Provided that claim which is based on a mere admixture resulting only in aggregation of the properties of the component substances thereof, or a processing of producing such substance shall not be allowed.

CHAPTER V

EXAMINATION OF APPLICATIONS

16. Examination of application:- (1) The Controller shall refer to an examiner every application ill respect of which a complete specification has been filed, for making a report to the Controller after detail scrutiny of the application, specification, claims and drawing, if any, to the effect whether the invention is new and involves an inventive step, and to also determine whether other requirements of this Ordinance and rules have been complied with

(2) The examiner shall make the report to the Controller as soon as is reasonably possible, but before the period of eighteen months from the date of filing of the application in Pakistan.

(3) if the examiner reports that any of the requirements of this Ordinance and rules are not complied with, the Controller shall give the applicant an opportunity, or more than one opportunity, to comply with such requirements as may be mentioned in the said report and to amend the application, ii necessary, within such time as may be prescribed, failing Which the Controller may refuse to proceed with the application.

(4) if the Controller considers, at any time, before the acceptance of the application, that the invention claimed therein has been wholly or in part claimed in a specification published on or after the date which the patent applied for would bear, if granted appertaining to an application for grant of a patent which, if granted, will be prior date to the patent applied for, he may require that the applicant’s specification be amended by the insertion of a reference to such other specification by way of notice lo the Public.

(5) The investigation required under this section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Federal Government or any officer by reason of, or in connection with, any such investigation or any proceeding consequent thereon.

(6) Unless an application is accepted within eighteen months from the date of the application, the application shall, except where an appeal has been lodged, be deemed to have been refused:

Provided that where, before, or within three months after the expiration of the said period of eighteen months, a request is made to the Controller for an extension of time, the application shall, on payment of the prescribed fee, be continued for any period so requested not exceeding in all three months from the expiration of the said period of eighteen months.

Provided further that the Controller may upon a written request made by an applicant in the prescribed manner postpone the formal acceptance of the application until such date, not later than twenty-one months from the date of filing of the complete specification, as may be requested by the applicant.

Explanation:- When a request is made under any of the above provisos the Controller may permit the applicant to put the application in order of acceptance but shall not pass formal orders of acceptance and shall not proceed to advertise the acceptance till the date requested by the applicant.

(7) Notwithstanding anything in the preceding sub-sections, all applications claiming protection for chemical products intended for use in medicine or agriculture filed after the first day of January, 1995, in accordance with Article 70 (8) and 70 (9) of the World Trade Organization Agreement on Trade Related aspects of Intellectual Property Rights (TRIPs), shall be dealt with in accordance with subsection (3) of section 1

17. Reference to other patent. – (1) if, in consequence of the investigation under section 16, it appeals to the Controller that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public unless within such time as may be prescribed, either

(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or

(b) the complete specification is amended to the satisfaction of the Controller.

(2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under sub-section (1)-

(a) that other patent is revoked or other wise ceases to be in force;

(b) the specification of that other patent is amended by the deletion of the relevant claim; or

(c) it is found in proceedings before the court or the Controller, that the relevant clah1l of that other patent is invalid or is not infringed by any working of the applicant’s invention,

the Controller may, on the application of the applicant, delete the reference to that other patent

18. Substitution of applicants, etc:- (1) if the Controller is satisfied, on an application made us the prescribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for the patent, or by operation of’ law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, as the case may require.

(2) No such direction under sub-section (1) shall be given by virtue of’ any assignment or agreement made by one of two or more joint applicants for a patent except with the consent of the other joint applicant or applicants.

(3) No such direction under sub-section (I) shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless-

(a) the invention is identified therein by reference to the number of the application for the patent;

(b) there is produced to the Controller an acknowledgement by the parson by whom the assignment or agreement was made that the assignment or agreement relates to the invention in respect of which that application is made;

(c) the rights of the claimant in respect of the invention have been finally established by a decision of a court; or

(d) the Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under sub-section (5)

(4) Where one of two or more joint applicants for patent dies at any time before the patent has been granted, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

(5) if any dispute arises between Joint applicants for a patent whether or in What manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties and after giving to all parties concerned an opportunity of being heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.

19. Time for putting application in order of acceptance:- (1) if on the expiration of the period of eighteen months specified in sub-section (6) of section 16 or the extended period

(a) an appeal to the High Court is pending in respect of an application for a patent for an invention; or

(b) in the case of an application for a patent of addition, an appeal to the High Court is pending in respect either of that application or the application for the main invention,

the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the said period of eighteen months or the extended period, as the case may be, be extended until such date as the High Court may determine.

(2) if the time within which the appeal mentioned in sub-section (1) may be instituted has not expired, the Controller may extend the period of eighteen months or, as the case may be, the extended period, until the expiration of such further period as he may determine:

Provided that, if an appeal has been filed during the said further period and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the High Court.

20. Power of Controller to require certain information and documents relating to foreign application:-(l) The applicant shall, when required by the Controller, furnish him with the date and number of any application for a patent filed by him abroad, hereinafter referred to as foreign application, relating to the same or essentially the same invention as that claimed in the application filed in Pakistan.

(2) The applicant shall, when required by the Controller, furnish him with the following documents relating to one of the foreign applications referred to in sub-section (1), namely:

(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; and

(iii) a copy of any final decision rejecting the foreign application.

(3) The applicant shall, when required by the Controller, furnish him with a copy of any final decision invalidating the patent granted on the basis of foreign application referred to in sub-section (1).

21. Acceptance of complete specification:- On the acceptance of a complete specification, the Controller shall give notice thereof to the applicant and shall advertise in the official Gazette the fact that specification has been accepted and thereupon the application and the specification, and the priority documents, if any, filed in pursuance thereof shall be open to public inspection.
22. Effect of acceptance of complete specification:- After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time, for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application;

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.

CHAPTER VI

OPPOSITION TO GRANT OF PATENT

23. Opposition to the grant of patent.- (I) At any time within four months from the date of advertisement of the acceptance of a complete specification under this Ordinance, any person may give notice to the Controller of opposition to the grant of patent on any of the following grounds, namely:

(a) that the applicant for the patent obtained the invention or any part thereof from him or from the person of whom the opponent is the legal representative, assignee, agent or attorney;

(b) that the invention is not a patentable invention within the meaning of this Ordinance;

(c) that the specification does not disclose the invention in a manner clear and complete enough for it to be carried out by a person skilled in the art;

(d) that the claims are not clear or extend beyond the scope of the disclosures in the complete specification as originally filed; and

(e) that the complete specification describes or claims an invention other than that described in the provisional specification and that such other invention either forms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document in that interval.

(2) Where a notice is given under sub-section (2), the Controller shall give notice of the opposition to the applicant, and shall, before deciding the case, give to the applicant and the opponent an opportunity of being heard.

24. Third party observations on patentability.- (1) At any time after the publication of the specification under section 21, any person may make observations in writing to the Controller on the novelty of the invention giving evidence ha support of his observations and the Controller shall consider the observations in the light of the evidence made available to him before the grant of patent.

(2) The person who makes observations under sub-section (1) shall not become a party to the proceedings under this Ordinance before the Controller by reason only that he has made the observations, failing which the observations shall be rejected as if not filed at all.

CHAPTER VII

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS,

25. Information prejudicial to defence of Pakistan or safety of public.- (1) Where an application for a patent in respect of an invention is filed in the Patent office and it appears to the Controller that the invention is one of the class notified to him by the Federal Government as being one the publication of which might be prejudicial to the defense of Pakistan, or if he himself thinks so, then he may give directions prohibiting or restricting the publication of the invention or its communication to any specified person or class of persons.

(2) if it appears to the Controller that the specification of any application so filed contains information the publication of which might be prejudicial to the safely of the public, he may give directions prohibiting or restricting the publication of that information or its communication to any person until the end of a period not exceeding three months from the date of the acceptance.

(3) While directions are in force under this section, the application may proceed to the stage where it is in order for acceptance, but specification shall not be published.

(4) Where the Controller gives directions under this section with respect to any application, he shall give notice of the application and of the directions to the Federal Government and the following provisions shall then have effect, namely:

(a) the Federal Government shall, on receipt of the notice, consider whether the publication of the invention or the publication or communication of the information in question would be prejudicial to the defence of Pakistan or the safety of the public;

(b) if the Federal Government determine under clause (a) that the publication of the specification or the publication or communication of that information would be prejudicial to the safety of the public, it shall given notice to the Controller who shall continue his directions under sub-section (2) until they are revoked under clause (e);

(c) if the Federal Government determine under clause (a) that the publication of the specification or the publication or communication of that information would be prejudicial to the defense of Pakistan or the safety of the public, it shall, unless a notice under clause (d) has previously been given to the Controller, reconsider that question during the period of nine months from the date of filing the application and at least once in every subsequent period of twelve months;

(d) if on consideration of an application at any time it appears to the Federal Government that the publication of the specification or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to the defense of Pakistan or the safety of the public, it shall give notice to the Controller to that effect; and

(e) on receipt of a notice under clause (d), the Controller shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing any thing required or authorized to be done by or under this Ordinance in connection with the application, whether or not that time has previously expired.

(5) Where a complete specification filed in pursuance of an application for a patent for an invention in respect of which directions have been given under this section is accepted before the directions are revoked, then-

(a) if any use of the invention is made by or on behalf or to the order of the Federal Government, the provisions of section 58 shall apply in relation to that use as if the patent had been granted for the invention; and

(b) if it appears to the Federal Government that the applicant for the patent has suffered hardship by reason of the continuance in force of the directions, the Federal Government may make such payment, if any, by way of compensation to the applicant as appears to the Federal Government to be reasonable having regard to the inventive merit and utility of the invention, the purpose for which it is designed and any other relevant circumstances.

(6) Where a patent is granted in pursuance of an application in respect of which directions have been given under this section, no renewal fees shall be payable in respect of any period during which those directions were in force.

26. Residents not to apply outsidePakistanwithout permission.- (1 ) No person resident in Pakistan shall, without written authority granted by the Controller, file or cause to be filed outside Pakistan an application for the grant of a patent for an invention unless.

(a) an application for patent for the same invention has been filed in the Patent Office not less than six weeks before the application outside Pakistan; and

(b) either no directions have been given under section 25 in relation to the application in Pakistan or all such directions have been revoked.

(2) The provisions of sub-section (I) shall not apply in Pakistan to an invention in respect of which an application for a patent has first been filed in a country outside Pakistan by a person resident outside Pakistan.

CHAPTER VIII

GRANT AND SEALING OF PATENT

27. Grant and sealing of patent.- (1) Subject to the provisions of this Ordinance with respect to opposition and to any power of the Controller to refuse the grant, a patent scaled with the seal of the Patent Office shall, if the request is made within the time allowed under this section, be granted to the applicant or applicants within that time or as soon as may be thereafter, and the date on which the patent is sealed shall be entered in the Register.

(2) Subject to the provisions of this Ordinance with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of six months from the date of the publication of the complete specification:

Provided that-

(a) where at the expiration of the said six months any proceedings in relation to the application for the patent is pending in any court or before the Controller, the request may be made within three months after the final determination of that proceeding; and

(b) where the applicant or once of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.

Explanation.- Any proceedings shall be deemed to be pending so long as the time for any appeal therein has not expired, and any proceedings shall be deemed to be finally determined when the time for any appeal therein has expired without the appeal being brought.

(3) The period for making the request under sub-section (2) for the sealing of a patent may be extended by the Controller by six months if the application is made and the prescribed fee paid within the extended period.

28. Amendment of patent granted to a deceased person.- Where, at any time after a patent has been sealed in pursuance of an application under this Ordinance, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was sealed, he may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted, and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
29. Date of patent.- (1) Subject to the other provisions of this Ordinance, every patent shall be dated as of the filing date of the application and in case of a Convention application the date of such earliest application filed in the Convention country from which priority has been claimed.

(2) The date of every patent shall be entered in the Register.

30. Rights conferred by patent.- (1) Subject to the provisions of this Ordinance, the holder of a valid patent inPakistanshall have the following rights, namely:-

(a) Where the subject-matter of a patent is a product, the holder of valid patent may prevent third parties not having the owner’s consent from the acts of making, using offering for sale, selling or importing for these purposes that product; and
(b) Where the subject-matter of a patent is a process, the holder of a valid patent may prevent third parties not having the owner’s consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.

(2) The holder of a valid patent shall also have the right to assign or transfer by succession, the patent and to conclude licensing contracts.

(3) The owner of the patent shall, in addition to any other rights, remedies or actions available to him have the right, subject to sub-section (4) and section 59, 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 acts which make it likely that infringement will occur.

(4) Where a person has filed an application in the mail-box, in accordance with subsection (9) of section 13, for protection of an invention relating to a pharmaceutical or agriculture chemical product. Exclusive marketing rights shall be granted for a period of five years after obtaining marketing approved or intil a product patent is granted or rejected whichever period is shorter, provided that, subsequent to the first of January, 1995 a patent application has been filed and a a patent granted for that product to am Convention country and marketing approval obtained in such country;

(4A) where a person has made an invention in Pakistan in respect of a process of manufacture of any of the products referred to in subsection (4) and has obtained a patent for the same and has filed an application in the mail-box for protection of the invention, and has been granted marketing approval thereof, then he shall have the exclusive marketing rights for that product for a period of five years after obtaining marketing approval or until a product patent is granted or rejected whichever product patent is granted or rejected whichever period is shorter.

(5) The rights under the patent shall not extend to-

(a) acts in respect of articles which have been put on the market anywhere to the, world by the owner of the patent or with his consent or by an authorized person or in any other legitimate manner such as compulsory licenses;;

(b) the use of articles on an aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Pakistan;

(c) acts done only for experimental purposes relating to a patented invention

acts done for teaching purposes in educational or research institutions.

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

(6) The right of prior user referred to in Clause (d) of sub-section (5), 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 of preparations for use have been made.

31. Term of patent.- The term of a patent under this Ordinance shall be twenty years from the filing date.
32. Grant of patents to be subjected to certain conditions.- (1) Notwithstanding anything in section 31, a patent shall cease to have effect on the expiration of a period for the payment of any renewal fee if that fee is not paid within the prescribed period or within the period as extended under this section.

(2) The period prescribed for the payment of any renewal fee shall be extended to such period not being more than six months if the request is made to the Controller and the renewal fee and the prescribed additional fee is paid before the expiration of the extended period.

CHAPTER IX

MISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS

33. Priority date in case of invention obtained from other person.- (1) Where an application is made for a patent for an invention which has been claimed in a complete specification filed in pursuance of any other such application, then if-

(a) the Controller has refused to grant a patent in pursuance of that other application on the ground specified in clause (a) of sub-section (I) of section 23;

(b) a patent granted in pursuance of that other application has been revoked by the High Court under section 46 or by the Controller under section 47 on the ground specified in clause (a) of sub-section ( I ) of section 23; or

(c) the complete specification filed in pursuance of the said other application has been amended by the exclusion of the claim relating to the said invention in consequence of a finding by the Controller that the invention was obtained by the applicant or patentee from any other person,

the Controller may direct that the first-mentioned application and any specification filed in pursuance thereof shall be deemed, for the purposes of the provisions of this Ordinance relating to the priority date of claims of complete specification, to have been filed on the date on which the corresponding document was or was deemed to have been filed in the proceedings upon the said other application.

34. Grant of patent to two or more persons.- (1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.

(2) Subject to the provisions of this section and section 35, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to exploit, use, exercise and sell the patented invention for his own benefit without accounting to the other person or persons.

(3) Subject to the provisions of this section and section 35 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under a patent shall not be granted, and a share in a patent shall not be assigned, by one of such persons, except with the consent of the other person or persons.

(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of the patent relating to that article, the purchaser and any person claiming through him shall be entitled to deal with it in the same manner as if the article had been sold by a sole patentee.

(5) Subject to the provisions of this section, the provisions of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents, and nothing contained in sub-section (I) or sub-section (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.

35. Power of Controller to give directions to co-owners.- (1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licences under the patent, or the exercise of any right under section 39 in relation thereto, as he thinks fit.

(2) if any person registered as grantee or proprietor of the patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.

(3) Before giving directions in pursuance of an application under this section, the Controller shall give an opportunity of being heard

(a) in the case of an application under sub-section (1), to the other person or persons registered as grantee or proprietor of the patent; and

(b) in the case of an application under sub-section (2), to the person in default.

(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustee or of the legal representatives of a deceased person, or their rights or obligations as such.

36. Power of Controller or Court to determine the matter in dispute between employer and employee.- (1) Where a dispute arises between an employer and a person who is or was at the material time his employee as to the rights of the parties in respect of an invention made by the employee either alone or jointly with other employees or in respect of any patent granted or to be granted in respect thereof, the Controller may, upon application made to him in the prescribed manner by cither of the parties and after giving lo each of them an opportunity of being heard, determine the matter in dispute, and may make such orders for giving effect to his decision as he considers expedient:

Provided that, if it appears to the Controller upon an application under this section that the matter in dispute involves questions which should be determined by the Court, he may decline to deal therewith.

(2) in proceedings before the Court between an employer and a person who is or was at the material time his employee, or upon an application made to the Controller under sub-section (1), the Court or, as the case may be. the Controller may, if satisfied that both the parties are entitled to the benefit of an invention made by the employee, by order provide for the apportionment between them of the benefit of the invention, and of any patent granted or to be granted in respect thereof, in such manner as the Court or, as the case may be, the Controller considers just.

(3) A decision of the Controller under this section shall have the same effect as between the parties and persons claiming under them as a decision of the Court.

37. Avoidance of restrictive condition in contracts.- (1) Subject to the provisions of this section, any condition of a contract for the sale or lease of a patented article or of an article made by a patented process or for license to exploit a patented article or process, or relating to any such sale, lease or license, shall be void so far as it purports

(a) to require the purchaser, lessee or licensee to acquire from the vendor, lessor or licenser, or his nominees, or prohibit him from acquiring from any specified person, or from acquiring except from the vendor, lessor or licensor, or his nominees, any article other than the patented article or an article made by the patented process; or

(b) to prohibit the purchaser, lessee or licensee from using articles, whether patented or not, which are not supplied by, or any patented process which does not belong to, the vendor, lessor or licensor, or his nominees, or to restrict the right of the purchaser, lessee or licensee to use any such article or process.

(2) in proceedings against any person for infringement of a patent, it shall be a defense to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent of the plaintiff and containing a condition void by virtue of this section.

(3) A condition of a contract shall not be void by virtue of this section if

(a) at the time of the making of the contract the vendor, lessor or licenser was willing to sell or lease the article, or grant a license to use or exploit the article or process, as the case may be, to the purchaser, lessee or licensee, on reasonable terms specified in the contract and without any such condition as is mentioned in sub-section (I); and

(b) the purchaser, lessee or licensee is entitled under the contract to relieve himself of his liability to observe the condition upon giving to the other party three months notice in writing and subject to payment to him of a just compensation.

38. Determination of certain contracts.- Any contract for the sale or lease of a patented article or for license to manufacture, exploit a patented article or process, or relating lo any such sale, lease or license, whether made before or after the commencement of this Ordinance, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by either party on giving three months notice in writing to the other party.

CHAPTER X

PATENTS OF ADDITION

39. Patents of addition.- (1) Where an application is made for a patent in respect of any improvement in or modification of an invention, hereinafter referred to as the “main invention”, and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.

(2) 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 Controller may, if the patentee so requests, by order revoke the patent for the improvement or the 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.

(3) 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.

(4) 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 this provision, a request for the sealing of a patent of addition could be made expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of the patent of addition may be made at any time within the last-mentioned period.

40. Term of patents of addition.- (1) A patent of addition shall be granted for a term equal to that of the patent for the main Mention, or so much thereof as is unexpired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer:

Provided that-

(a) if the term of the patent for the main invention is extended under the foregoing provisions of this Ordinance, the term of the patent of addition may also be extended accordingly; and

(b) if the patent for the main invention is revoked under this Ordinance, the court or, as the case may be, Controller 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 by virtue of an order under sub-section (1), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

41. Patent of addition not to be refused, etc.- 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 of 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.

CHAPTER XI

AMENDMENT OF SPECIFICATION

42. Amendment of specification with leave of Controller.- (1) Subject to the provisions of section 44, the Controller may, upon an application made under this section by an applicant for a patent or a patentee, allow the application for the patent or the complete specification to be amended subject to such conditions, if any, as the Controller thinks fit:

Provided that the controller shall not allow a specification to be amended under this section upon an application made while any action before the Court for infringement of the patent or any proceeding before the court for the revocation of the patent is pending.

(2) Every application for leave to amend an application for a patent or a specification under this section shall state the nature of the proposed amendment and give full particulars of the reasons for which the application is made.

(3) Every application for leave to amend an application for a patent or a specification under this section made after the acceptance of the complete specification and the nature of the proposed amendment shall be advertised in the prescribed manner.

(4) Within the prescribed period after the advertisement of an application under sub-section (3), any person may give notice to the Controller of opposition thereto, and where such a notice is given within the period aforesaid, the Controller shall give notice to the person by whom the application is made and shall give to that person and to the opponent an opportunity of being heard before he decides the case.

(5) This section shall not apply in relation to any amendment of a specification effected in proceedings in opposition to the grant of a patent or effected in pursuance of any provision of this Ordinance authorizing the Controller to direct a reference to another specification or patent to be inserted, or to refuse to grant a patent, or to revoke a patent, unless the specification is amended to his satisfaction.

43. Amendment of specification with leave of High Court.- (1I) in any proceeding before the High Court for the revocation of a patent, the high Court may, subject to the provisions of section 44, by order allow the patentee to amend his complete specification in such manner, and subject to such terms as to costs, advertisements or otherwise, as the high Court may think fit, and if in any such proceedings for revocation the High Court decides that the patent is invalid, the High Court may allow the specification to be amended under this section instead of revoking the patent.

(2) Where an application for an order under this section is made to the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

44. Supplementary provisions as to amendment of specification.- (1) No amendment of specification shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment.

(2) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved by the Controller or the High Court under this Ordinance, the right of the patentee or applicant to make the amendment shall not be called in question except on the ground of fraud, and the amendment shall for all purposes be deemed to form part of the specification:

Provided that in construing the specification as amended reference may be made to the specification as originally published.

(3) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved under this section, the fact that the specification has been amended shall be advertised in the official Gazette.

CHAPTER XII

RESTORATION OF LAPSED PATENTS

45. Restoration of lapsed patents.- (1) Where a patent has ceased to have effect by reason of a failure to pay any renewal See within the prescribed period, an application for the restoration of the patent may be made to the Controller under this section within eighteen months from the date on which the patent ceased to have effect.

(2) An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect, and where the patent was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others.

(3) if the Controller is satisfied that

(a) the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that the fee and any prescribed additional fee were paid within six months immediately following the end of that period; and

(b) those fees were not so paid because of circumstances beyond his control,

the Controller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.

(4) An order under this section may be made subject to such conditions as the Controller thinks fit and if the proprietor of the patent does not comply with any condition of such an order, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.

(5) Where an order is made under this section and, between the end of the period of six months beginning with the date when the patent concerned ceased to have effect and the date of the application under this section, any person has begun in good faith to use the patented invention or has made effective and serious preparations lo make use of the invention, he shall, after the order comes into force, have the right to make use of the invention and the said use shall not amount to an infringement of the patent concerned.

(6) Where a patented product is disposed of by any person to another in exercise of a right conferred by sub-section (5), that other and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.

CHAPTER XIII

REVOCATION AND SURRENDER OF PATENTS

46. Revocation of patent by High Court.- (1) Subject to the provisions of this Ordinance, a patent may, on the petition of any person interested or of the Federal Government or on a counter-claim in a suit for infringement of the patent, be revoked in part or in whole by the High Court on any one or more of the grounds upon which grant of patent may be refused.

(2) Without prejudice to the provisions contained in sub-section (I), a patent may be revoked by the high Court on the petition of the Federal Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Federal Government to make, use or exercise the patented invention for the services of the Government upon reasonable terms.

(3) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the Register to be proprietor of that patent or to have shares or interests therein, and it shall not be necessary to serve a notice on any other person.

47. Revocation of patent by Controller.- (1) At any time within twelve months after the sealing of a patent, any person interested who did not oppose the grant of the patent may apply to the Controller for an order revoking the patent on any one or more of the grounds upon which the grant of the patent could have been opposed:

Provided that when an action for infringement, or proceedings for the revocation, of a patent are pending in any court, an application to the Controller under this section shall not be made except with the leave of the court.

(2) Where an application is made under this section, the Controller shall give notice to the patentee and shall give to the applicant and the patentee an opportunity of being heard before deciding the case.

(3) if, on an application under this section, the Controller is satisfied that any of the grounds specified in sub-section (I) are established, he may by order direct that the patent shall be revoked either unconditionally or unless within such time as may be specified in the order the complete specification is amended to his satisfaction:

Provided that the Controller shall not make an order for the unconditional revocation of a patent under this section unless the circumstances are such as would have justified him in refusing to grant the patent.

48. Revocation of patent by the Federal Government.- Where the Federal Government is of the opinion that-

(a) a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public; or
(b) a patent has been obtained through concealment or misrepresentation in the application; or
(c) where the compulsory license granted to prevent the abuse which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work or in relation to anti-competitive practices, has not been sufficient, it may, after giving the patentee an opportunity of being heard, make a declaration to that effect in the official Gazette, and thereupon the patent shall be deemed to have been revoked:
Provided that proceedings upon clause (c) shall not begin before the expiration of two years from the grant of first compulsory license.

49. Revocation of surrendered patent by Controller.- (1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.

(2) Where an offer under sub-section (1) is made, the Controller shall advertise the offer in the prescribed manner, and also give notice to every person other than patentee whose name appears in the Register as having an interest in the patent.

(3) Any person interested may, within the prescribed period after such advertisement, give notice to the Controller of opposition to the surrender, and where any such notice is given, the Controller shall give notice to the patentee.

(4) if the Controller is satisfied, after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.

CHAPTER XIV

POWERS OF CONTROLLER

50. Controller to have certain powers of a civil court.- (1) Subject to any rules made in this behalf, the Controller in any proceedings before him under this Ordinance shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908 (Act V of 1908), in respect of the following matters, namely:

(a) summoning and enforcing the attendance of any person and examining him on oath;

(b) requiring the discovery and production of any document; (c) receiving evidence on affidavits; (d) issuing commissions for the examination of witnesses or documents; and

(e) awarding costs.

51. Power of Controller to correct clerical errors.- (1) The Controller may, in accordance with the provisions of this section, correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the Register.

(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed lee, or without such a request.

(3) Where the Controller proposes to make any such correction as referred to in sub-section (1), otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity of being heard before making the correction.

(4) Where a request is made under sub-section (2), for the correction of any clerical error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be advertised in the prescribed manner.

(5) Within the prescribed time after any such advertisement as referred to in sub-section (4), any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity of being heard before he decides the case.

52. Evidence before Controller.- Subject to any rules made in this behalf, in any proceedings under this Ordinance before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary, but in any case in which the Controller thinks it right so to do he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be cross examined on the contents of his affidavit.
53. Exercise of discretionary powers by Controller.- Without prejudice to any provision of this Ordinance requiring the Controller to hear any party to the proceedings there under or to give any such party an opportunity of being heard, the Controller shall give to any applicant for a patent or for amendment of a specification, if within the prescribed time the applicant so requires, an opportunity of being heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Ordinance.

    CHAPTER XV

REGISTER OF PATENTS

54. Register of Patents.- There shall be kept at the Patent Office a Register of Patents, wherein shall be entered the names and addresses of grantees of patents, notifications of assignments and of transmissions of patents, of licenses under patents, and of amendments, extensions, and revocations of patents and particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.

(2) The Register of Patents kept under the Patents and Designs Act, 1911 (11 of 1911), shall be incorporated in, and form part of, the Register to be kept under this Ordinance.

(3) No notice of any trust, whether express, implied or constructive, shall be entered in the Register, and the Controller shall not be affected by any such notice.

(4) Subject to the superintendence and direction of the Federal Government, the Register shall be kept under the control and management of the Controller.

55. Registration of assignments, transmissions, etc.- (1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the Register.

(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, license or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.

(3) Where an application is made under this section for the registration of the title of any person, the Controller shall, upon proof of title to his satisfaction

(a) where that person is entitled to a patent or a share in a patent, register him in the Register as proprietor or co-proprietor of the patent, and enter in the Register particulars of the instrument or event by which he derives title; or

(b) where that person is entitled to any other interest in patent, enter in the Register notice of his interest, with particulars of the instrument, if any, creating it.

(4) Subject to the provisions of this Ordinance relating to co-ownership of patents and subject also to any rights vested in any other person of which notice is entered in the Register, the person or persons registered as grantee or proprietor of a patent shall have power to assign, grant licenses under, or otherwise deal with, the patent and to give effectual receipts for any consideration for any such assignment, license or dealing:

Provided that any equities in respect of the patent may be enforced in like manner as in respect of any other movable property.

56. Power of High Court regarding rectification of the Register.- (1) The High Court may, on the application of any person aggrieved

(a) by the absence or omission from the Register of any entry;

(b) by any entry made in the Register without sufficient cause;

(c) by any entry wrongly remaining on the Register; or

(d) by any error or defect in any entry in the Register,

make such order for the making, variation or deletion, of any entry therein as it may think fit.

(2) in any proceeding under this section, the High Court may decide any question that may be necessary or expedient to decide in connection with the rectification of the Register.

(3) Notice of any application to the High Court under this section shall be given in the prescribed manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear if so directed by the High Court.

(4) Any order of the High Court under this section rectifying the Register shall direct that notice of the rectification shall be served in the prescribed manner upon the Controller, who shall upon receipt of such notice rectify the Register accordingly.

57. Inspection of, and extracts from, the Register, etc.- (1) Subject to the provisions of this Ordinance and rules, the Register shall at all convenient times be open to inspection by the public, and certified copies, sealed with the seal of the Patent Office, of any entry in the Register shall be given to any person requiring them on payment of the prescribed fee.

(2) The Register shall beprimt2facie evidence of any matters required or authorized by or under this Ordinance to be entered therein.

(3) Except in the case of an application made under section 55, a document in respect of which no entry has been made in the Register under sub-section (3) of section 54 shall not be admitted in any Court as evidence of title of any person to a patent or share of or interest in the patent unless the Court other vise directs.

CHAPTER XVI

COMPULSORY LICENSES, LICENSES OF RIGHT, EXPLOITING OF PATENTS AND REVOCATION

58. Exploitation by a Government agency or third person.- (1) Subject to sub-section (2), 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) the Federal Government has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive, and the Federal Government is satisfied that the exploitation of the invention in accordance with this sub-section would remedy such practices; or

(iii) the patent holder refuses to grant a license to a third party on reasonable commercial terms and conditions; or

(iv) where patent has not been exploited in a manner which contributes to the promotion of technological innovation and to the transfer and dissertation of technology,

the Federal Government may, even without the consent of the owner of the patent, decide that a Government agency or a third person designated By the Federal Government may exploit a patented invention.

(2) The Federal Government shall, before taking any decision under sub-section (2), give the owner of the patent and any interested person an opportunity of being heard if he wishes to be heard.

(3) The exploitation of the patented invention shall be limited to the purpose for which it was authorized and shall be subject to the payment to the said owner of an adequate remuneration therefore, taking into account the economic value of the Federal Government authorization, as determined in the said decision, and where a decision has been taken under sub-section (1), the need to correct anticompetitive practices.

(4) A request for the Federal Government 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 that person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time:

Provided that this sub-section shall not apply in cases of

(i) national emergency or other circumstantial urgency provided that in such cases the owner of the patent shall be informed of the decision of the Federal Government as soon as reasonably practicable;

(ii) public non-commercial use; and

(iii) anti-competitive practices determined as such by a judicial or administrative body in accordance with clause (ii) of sub-section (1).

(5) The exploitation of a patented invention in the field of semi-conductor technology shall only by authorized either for public non-commercial use or where a judicial or administrative body has determined that the manner of exploitation of the patented invention, by the owner of the patent or his licensee, is anti-competitive and if the Federal Government is satisfied that the issuance of the non-voluntary license would remedy such practices.

(6) The authorization shall be considered on its individual merits and shall not prohibit

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

(ii) the continued exercise, by the owner of the patent, of his rights under section 30; or

(iii) the issuance of a non-voluntary license under section 59.

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

(8) Where the exploitation of the invention by the Government agency or third person designated by the Federal Government is authorized under clause (i) of sub-section (1), it shall be predominantly for the supply of the market in Pakistan.

(9) Upon request of the owner of the patent, or of the Government agency or of the third person authorized to exploit the patented invention, the Federal Government 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.

(10) Upon the request of the owner of the patent, the Federal Government shall subject to adequate protection of the legitimate interest of the persons so authorized, terminate an authorization if it is satisfied, after hearing the parties, if either or both wish to be heard, that the circumstances which led to the decision have ceased to exist and are unlikely to recur or that the Government agency or third person designated by it has failed to comply with the terms of the decision.

(11) Notwithstanding the provisions of sub-section (10), the Federal Government shall not terminate an authorization if it is satisfied that the need for adequate protection of the legitimate interests of the Government agency or third person designated by it justifies the maintenance of the decision.

(12) An appeal shall lie to the High Court against the decisions of the Federal Government under sub-sections (1) to (9).

59. Powers of Controller in granting compulsory licenses.- (l) on request, made to the Controller after the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last, the Controller may issue a non-voluntary license to prevent the abuses which might result from the exercise of the rights conferred by the patent, for example, failure to work.

(2) Notwithstanding the provisions of sub-section (1), a non-voluntary license shall not be issued if the owner of the patent satisfies the Controller that circumstances exist which

justify the non exploitation or insufficient exploitation of the patented invention in Pakistan.

(3) The decision issuing the non-voluntary license shall fix

(i) the scope and function of the license;

(ii) the time limit within which the licensee must begin to exploit the patented invention; and

(iii) the amount of the adequate remuneration to be paid to the owner of the patent and the conditions of payment.

(4) The beneficiary of the non-voluntary license shall have the right to exploit the patented invention in Pakistan according to the terms set out in the decision issuing the license, shall commence the exploitation of the patented invention within the time limit fixed in the said decision and, thereafter, shall exploit the patented invention sufficiently.

(5) if the invention claimed in a patent, hereinafter referred to as “later patent”, cannot be exploited in Pakistan without infringing a patent granted on the basis of an application benefiting from an earlier filing or, where appropriate, priority date, hereinafter referred to as “earlier patent”, and provided that the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent, the Controller, upon the request of the owner of the later patent, may issue a non-voluntary license to the extent necessary to avoid infringement of the earlier patent.

(6) Where a non-voluntary license is issued under sub-section (5), the Controller upon the request of the owner of the earlier patent shall issue a non-voluntary license in respect of the later patent.

(7) in the case of a request for the issuance of a non-voluntary license under sub-sections (5) and (6), sub-section (3) shall apply mutatis mutandis with the provision that no time limit needs to be fixed.

(8) in the case of a non-voluntary license issued under sub-section (5), the transfer may be made only with the later patent, or, in the case of a non-voluntary license issued under sub-section (6), only with the earlier patent.

(9) The request for the issuance of a non-voluntary license shall be subject to payment of the prescribed See.

(10) The provisions of sub-sections (2) to (10) of section 58 shall apply mutatis mutandis for issuance of a non-voluntary license under this section.

CHAPTER XVII

PROCEEDINGS FOR INFRINGEMENT OF PATENTS

60. Suit for infringement of a patent.- (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Ordinance in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it:

Provided that, where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

(2) Every ground on which a patent may be revoked under the provisions of this Ordinance shall be available by way of defence to a suit for infringement.

61. Reliefs in suits for infringement.-

(1) in any suit for infringement the Court shall have the power

(a) to grant relief by way of damages, injunctions or accounts provided that where permitted, effective provisional measure may also be ordered by the Court:

(b) to order if the subject-matter of a patent is a process for obtaining a product the defendant to prove that the process to obtain an identical product is different from the patented process and that the identical product in question shall, in the absence of proof to the contrary, be deemed to have been obtained by cite patented process provided that the product obtained by patented process is new if it has not been put into the market for more than one year before the date of the initiation of the judicial action by the patentee

Provided that this provision shall apply subject to prior proof by the plaintiff that the allegedly infringing product is identical to the product directly produced by the patented process:

Provided further that in the addition of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.

(2) in any suit for infringement

(a) the Court shall have the authority to order prompt and effective provisional measures

(i) to prevent an infringement, and in particular, to prevent the entry into the channels of commerce of goods, including imported goods after custom clearance; and

(ii) to preserve relevant evidence in regard to the alleged infringement;

(b) the Court shall have the authority to order provisional measures, inaudita altera Parse where appropriate, in particular, where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed;

(c) the Court shall have the authority to require the applicant to provide any reasonably available evidence to satisfy it with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse;

(d) where provisional measures have been adopted, inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest, and a review, including a right to be heard, shall take place upon request of the defendant with a view to deciding within a reasonable period after the notice of the measures, whether these measures shall be modified, revoked or confirmed;

(e) the Court may require the applicant to supply other information necessary for identification of the goods concerned;

(f) without prejudice to the provisions of clause (d), provisional measures taken on the basis of clauses (a) and (b) shall ,upon the request of the defendant, be revoked or otherwise cease to have affect if proceedings leading to a decision on the merit of the case arc not initiated within a reasonable period not to exceed twenty working days or thirty-one calendar days; and

(g) where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement, the Court shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for an injury caused by these measures.

62. Damages not to be awarded against defendant in certain cases.- (1)in proceedings for the infringement of a patent, damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had not reasonable ground for supposing, that the patent existed, and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the application to an article of the word ‘patent”, “patented”, or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanied the word or words in question.

(2) Nothing in this section shall affect the power of the Court to grant an injunction in any proceedings for infringement of a patent.

63. Relief for infringement of partially valid specification.- (1) if in any proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of which infringement is alleged, is valid, but that any other claim is invalid, the Could may grant relief in respect of any valid claim which is infringed:

Provided that the Court shall not grant relief by way of damages or costs except in the circumstances mentioned in sub-section (2).

(2) Where the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the Court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the Court as to costs and as to the date from which damages should be reckoned.

64. Proceedings for infringement by exclusive licensee.- The holder of an exclusive license under a patent shall have the like right as the patentee to take proceedings in respect of any infringement of the patent committed after the date of the license, and in awarding damages or granting any other relief in any such proceedings the Court shall take into consideration any loss suffered or likely lo be suffered by the exclusive licensee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.
65. Certificate of contested validity of specification.- (1) if in any proceedings before the Court the validity of any claim of a specification is contested, and that claim is found by the Court to be valid, the Court may certify that the validity of that claim was contested in those proceedings.

(2) Where any such certificates has been granted, then, if in any subsequent proceedings before the Court for infringement of the patent or for revocation of the patent, a final order or judgement is made or given in favour of the party relying on the validity of the patent, that party shall, unless the Court otherwise directs, be entitled to the full costs so far as they concern the claim in respect of which the certificate was granted:

Provided that this sub-section shall not apply to the costs of any appeal in any such proceedings as aforesaid.

66. Remedy for groundless threats of infringement proceedings.- (1) Where any person, whether entitled to or interested in a patent or an application for a patent or not, threatens any other person by circulars, advertisements or otherwise with proceedings for infringement of a patent, any person aggrieved thereby may bring suit against him for any such relief as is specified in sub-section (2).

(2) Unless in any suit under sub-section (I) the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following reliefs, namely:

(a) a declaration to the effect that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as he has sustained thereby.

(3) For the avoidance of doubt, it is hereby declared that a mere notice of the existence of a patent does not constitute a threat of proceedings within the meaning of sub-section (1).

67. Power of Court to make declaration as to non-infringement.- (1) A declaration that the use by any person of any process, or the making or use or sale by any person of any article, does not or would not constitute an infringement of a claim of a patent may be made by the Court in proceedings between that person and the patentee or the holder of an exclusive license under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if it is shown

(a) that the plaintiff has applied in writing to the patentee or licensee for a written acknowledgement to the effect of tile declaration claimed, and has furnished him with full particulars in writing of the process or article in question; and

(b) that the patentee or licensee has refused or neglected to give such an acknowledgement.

(2) The costs of all parties in proceedings for a declaration brought by virtue of this section shall, unless for special reasons the Court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a claim of the specification of a patent shall not be called in question in proceedings for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.

(4) Proceedings for a declaration may be brought by virtue of this section at any time after the date of the publication of the complete specification in pursuance of an application for a patent, and references in this section to the patentee shall be construed accordingly.

68. Power of Court to appoint scientific advisers.- (1) in any suit for infringement or in any proceedings before a Court under this Ordinance, the Court may at any time,. and whether or not an application has been made by any party for that purpose, appoint an independent scientific adviser to assist the Court or to inquire and report upon any such question of fact or of opinion, not involving a question of interpretation of law, as it may formulate for the purpose.

(2) The remuneration of the scientific adviser appointed under sub-section (I) shall be fixed by the Court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the Court, and such remuneration shall be defrayed out of moneys provided by the Federal Government for the purpose.

CHAPTER XVIII

APPEALS

69. Appeals.- (1) No appeal shall lie from any decision, order or direction made or issued under this Ordinance by the Federal Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction,

(2) The public authorities and officials shall be exempted from liability to appropriate remedial measures where actions are taken or intended in good faith in course of administration of this Ordinance.

(3) Subject lo sub-section (l), an appeal shall lie to the High Court from any decision, order or direction of the Controller or, as the case may be, the Federal Government under any of the provisions of this Ordinance.

(4) Every appeal under this section shall be in writing and shall be made within three months from the date of the decision, order or direction of the Controller, as the ease may be, of the Federal Government, or within such further time as the High Court may allow.

70. Procedure for hearing appeals.- (1) Every appeal before the High Court shall be by petition and shall be in such form and shall contain such particulars as may be provided by rules made by the High Court.

(2) Every appeal under this section shall be heard by a single Judge of the high Court:

Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the proceedings to a larger Bench of the High Court.

(3) Every appeal under this section 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.

CHAPTER XIX

PENALTIES

71. Penalty for contravention of secrecy provisions relating to certain inventions.- If any person fails to comply with any direction given under section 25 or makes or causes to be made an application for the grant of a patent in contravention of section 26, he shall be punishable with imprisonment for a term which may extend lo two years, or with fine not exceeding twenty thousand rupees, or with both.
72. Penalty for false entry in any register, etc.- If any person makes, or causes to be made, a false entry in any register kept under this Ordinance, or a writing falsely purporting to be a copy of an entry in such a register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand rupees, or with both.
73. Penalty for false representation.- If any person falsely represents that any article sold by him is patented in Pakistan or is the subject of an application for a patent in Pakistan, he shall be punishable with fine which may extend to five thousand rupees.

Explanation 1.- For the purposes of this section, a person shall be deemed to represent

(a) that an article is patented in Pakistan if there is stamped, engraved or impressed on, or otherwise applied to, the article the word “patent” or “patented” or some other word expressing or implying that a patent for the article has been obtained in Pakistan; or

(b) that an article is the subject of an application for a patent in Pakistan, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent pending”, or some other words implying that an application for a patent for the article has been made in Pakistan.

Explanation 2.- The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in Pakistan, or to a pending application for a patent in Pakistan, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside Pakistan.

74. Penalty for wrongful use of words “patent office”.- if any person uses on his place of business or any document issued by him or otherwise the words “patent office” or any other words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Patent Office, he shall be punishable with imprisonment for a term which may extend to two years, aryl with fine which may extend to one million rupees.
75. Penalty for refusal or failure to supply information.- (1) if any person refuses or fails to furnish to the Controller any information or statement which he is required to furnish by grounder this Ordinance, he shall be punishable with fine which may extend to five thousand rupees.

(2) if any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or a statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with fine which may extend to fifty thousand rupees.

76. Penalty for contravention of section 20,- if the applicant fails to file the statement required under section 20 or has furnished information which in any material particular is false to his knowledge or if he fails to comply with the Controller s request within the specified time, he shall be punishable with fine whiff may extend to five thousand rupees.
77. Penalty for practice by non-registered patent agents.- If any person contravenes the provisions of section 82, he shall be punishable with fine which may extend to twenty five thousand rupees in the case of a first offense and one hundred thousand rupees in the case of a second or subsequent offense.
78. Offences by Companies:— Where person guilty of an offence under this Ordinance is a company, corporation, firm or institution, every owner, director, and employee of the company, firm, institution or corporation, having knowledge of the offence and consented to the commission of the offence shall be guilty of the offence.

CHAPTER XX

PATENT AGENTS

79. Register of patent agents.- There shall be kept at the Patent Office a register of patent agents wherein shall be entered the names and addresses of all persons qualified to practice before the Patent Office as patent agents.
80. Registration as patent agent.- The Controller may, on an application made in the prescribed manner, register as a patent agent any person who is a citizen ofPakistan, has completed the age of twenty-one years, possesses the prescribed qualifications and has paid the prescribed fee.
81. Subscription and verification of certain documents by patent agents.- (1) Subject to sub-section (2) and rubs, ail applications and communications to the Controller under this Ordinance may be signed by a patent agent authorized in writing is this behalf by the person concerned.

(2) The following documents, namely,

(i) applications for patents,

(ii) applications for the restoration of lapsed patents;

(iii) notices of opposition;

(iv) application for leave to amend;

(v) applications for con1pulsory licenses or for revocation; and

(vi) notices of surrender of patents,

Shall be signed and verified in the prescribed manner by the person making such applications or giving such notices:

Provided that, if such person is absent from Pakistan, they may be signed and verified by a patent agent authorized by him in writing in that behalf.

82. Restrictions on Practice as patent agent.- (I) No person, either alone or in partnership with any other person, shall practice or describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered.

(2) No company or other body corporate shall practice or describe or hold itself out as a patent agent or permit itself to be so described or held out.

Explanation.- For the purposes of this section, practice as a patent agent includes any of the following acts, namely:

(a) applying for or obtaining patents in Pakistan or elsewhere;

(b) preparing specifications or other documents for the purposes of this Ordinance or of the patent law of any other country; and

(c) giving advice, other than advice of a scientific or technical nature, as to the validity of patents or their infringement.

83. Removal from register of patent agents and restoration.- (I) The Federal Government may remove the name of any person Tom the register of patent agents when it is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as it thinks fit to make

(i) that his name has been entered in the register of patent agents by error or on account of misrepresentation or suppression of material facts; or

(ii) that he has been convicted of any offense and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Federal Government renders him unfit to be kept in the register of patent agents.

(2) The Federal Government may, on application and on sufficient cause being shown, restore to the register of patent agents the name of any person removed therefrom.

84. Power of Controller to refuse to recognize as agent.- (1) Subject to any rules made in this behalf, the Controller may refuse to recognize as agent in respect of any business under this Ordinance

(a) any person whose name has been removed from, and not restored to, the register of patent agents;

(b) any person who has been convicted of an offence under section 77;

(c) any person, not being registered as patent agent, who in the opinion of the Controller is engaged wholly or mainly in acting as agent in applying for patents in Pakistan or elsewhere in the name or for the benefit of the person by whom he is employed; or

(d) any company or firm, if any person whom the Controller could refuse to recognize as patent agent in respect of any business under this Ordinance, is a director or manager of the company or is a partner in the firm.

(2) The Controller shall refuse to recognize as agent in respect of any business under this Ordinance any person who neither resides nor has a place of business in Pakistan.

85. Saving in respect of other persons authorize to act as agents.- Nothing in this Chapter shall be deemed to prohibit-

(a) the applicant for a patent or any person, not being a patent agent, who is duly authorized by the applicant from drafting any specification or appearing or acting before Controller; or

(c) an advocate, not being a patent agent, from taking part in any proceedings under this Ordinance otherwise than by way of drafting any specification.

CHAPTER XXI

INTERNATIONAL ARRANGEMENTS

86. Power of the Federal Government to declare a country as Convention country.- (1) With a view to the fulfillment of a treaty, convention or arrangement between Pakistan and any other country, the Federal Government may, by notification in the official Gazette, declare such country to be the Convention country for the purposes of this Ordinance, in addition to the members of the World Trade Organization.

(2) A declaration under sub-section (I) may be made for the purposes either for all or for some only of the provisions of this Ordinance, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Ordinance is in force shall be deemed to be a Convention country for the purposes of those provisions only.

87. Supplementary provisions as to Convention application.- For the purposes of this Ordinance, any matter shall be deemed to have been disclosed in an application for protection in a Convention country if it was claimed or disclosed, otherwise than by way of disclaimer or acknowledgement of prior art, in that application or in any document submitted by the applicant for protection in support of and at the same time as that application, but no account shall be taken of any disclosure effected by any such document unless a copy of the document is filed in the Patent Office with the Convention application in accordance with the provisions of section 88.
88. Documents to be filed with a Convention application.- (1) Where a Convention application is made under this Ordinance, the applicant shall furnish, in addition to the complete specifications, copies of the specifications or corresponding documents filed or deposited by the applicant in the patent office of the Convention country in which the relevant application was made, certified by the official chief or head of the patent office of the Convention country, or otherwise verified to the satisfaction of the Controller, along with the application or within three months thereafter, or within such further period as the Controller may on good cause allow.

(2) if any such specification or other document referred to in sub-section (1) is in a foreign language, a translation into English of the specification or document, verified by affidavit or otherwise to the satisfaction of the Controller, shall be annexed to the specification or document.

(3) for the purposes of this Ordinance, the date on which an application was made in a Convention country is such date as the Controller is satisfied, by certificate of the official chief or head of the patent office of the Convention country or other vise, is the date on which the application was made in that Convention country.

CHAPTER XXII

MISCELLANEOUS

89. Fees.- (1) There shall be paid in respect of the grant of patents and applications therefor, and in respect of other matters in relation to patents under this Ordinance, such fees, to the Patent Office, as may be prescribed by the Federal Government.

(2) Any proceedings m respect of which a fee is payable under this Ordinance or the rules shall be of no effect unless the fee has been paid.

90. Restrictions upon publication of specifications, etc.- Subject to the provisions of Chapter VII, an application for a patent, and any specification filed ho pursuance thereof, shall not, except with the consent of the applicant, be published by the Controller or be open to public inspection at any time before the date of advertisement of acceptance of the application in the official Gazette.
91. Reports of examiners to be confidential.- The reports of examiners to the Controller under this Ordinance shall not be open to public inspection or be published by the Controller, and such reports shall not be liable to production or inspection in any legal proceedings unless the Court certifies that the production or inspection is desirable in the interests of justice, and ought to be allowed.
92. Publication of patented Inventions.- The Controller shall issue periodically a publication containing such information relating to patented inventions as the Federal Government may direct.
93. Power of Controller to call for information from patentees.- (I) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in Pakistan as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee, whether exclusive or otherwise, shall furnish in such manner and form and at such intervals, not being less than six months, as may be prescribed, statement as to the extent to which the patented invention has been worked on a commercial scale in Pakistan.

(3) The Controller may publish the information received by him under sub-section (I) or subsection (2) in such manner as may be prescribed.

94. Evidence of entries, documents, etc.- (I) A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorized by this Ordinance or any rule to make or do, shall be prima facie evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or omitted to be done.

(2) A copy of any entry in any Register or of any document kept in the Patent Office or of any patent, or an extracts from any such Register or document, purporting to be certified by the Controller and sealed with the seal of the Patent Office shall be admitted in evidence in all courts, and in all proceedings, without further proof or production of the original.

(3) The Controller or any other officer of the Patent Office shall not, in any legal proceedings to which he is not a party, be compellable to produce the Register or any other document in his custody the contents of which can be proved by the production of a certified copy issued under this Ordinance or to appear as a witness to prove the matters therein recorded unless by order of the Court made for special causes.

95. Declaration by infants, lunatics, etc.- (1) if any person is, by reason of minority, lunacy or other disability, incapable of making any statement or doing anything required or permitted by or under this Ordinance, the lawful guardian, committee or manager, if any, of the person subject to the disability, or if there be none, any person appointed by any Court having jurisdiction in respect of his property, may make such statement or a statement as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

(2) An appointment may be made by the Court for the purposes of this section upon the petition of any person active on behalf of the person subject to the disability or of any other person interested in the making of the statement or the doing of the thing.

96. Service of notice, etc., by post.- Any notice required or authorized to be given by or under this Ordinance, and any application or other document so authorized or required to be made or filed, may be given, made or filed by post.
97. Security for cost – if any party by whom notice of any opposition is given under this Ordinance or by whom application is made to the Controller for the grant of a licence under a patent neither resides nor carries on business in Pakistan, the Controller may require him to give security for the costs of the proceedings, and in default of such security being given may treat the opposition or application as abandoned.
98. Transmission of orders of High Court or Court to the Controller.- (1) Every order of the High Court on a petition for revocation, including an order granting certificate of validity of any claim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and reference thereto to be made in the Register.

(2) Where in any suit for infringement of a patent or in any suit under section li0 the validity of any claim or a specification is contested and that claim is found by the Court to be valid or not valid, as the case may be, the Court shall transmit a copy of its judgment and decree to the Controller who shall on receipt thereof cause an entry in relation to such proceedings to be made in the prescribed manner in a supplemental record.

(3) The provisions of sub-sections (I) and (2) shall also apply to the Court to which appeals are referred against decisions of the Courts referred to in those sub-sections.

99. Transmission of copies of specifications, etc., and inspection thereof.- Copies of all such specifications drawings and amendments left at the Patent Office as become open to public inspection under the provisions of the Ordinance shall be transmitted, as soon as may be, after the printed copies thereof are available, to such authorities as the Federal Government may appoint in this behalf, and shall be open to the inspection of any person at all reasonable times at places to be specified by those authorities with the approval of the Federal Government.
100. Information relating to patents.- Any person making a request to the Controller in the prescribed manner for information relating to any such matters, as may be prescribed, as respects any patent specified in the request or as respects any application for a patent so specified shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.
101. Loss or destruction of patents.- If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may at any time, on application made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.

103. Right of the Government to sell or use forfeited articles.- Nothing in this Ordinance shall affect the power of the Government or of any person deriving title directly or indirectly from the Government to sell or use any articles forfeited under any law for the time being in force.
104. Power of High Court to make rules.- The High Court may make rules consistent with this Ordinance as to the conduct and procedure in respect of all proceedings before it under this Ordinance.
105. Power of the Federal Government to make rules.- (I) The Federal Government may, by notification in the official Gazette make Mules for carrying out the purposes of this Ordinance.

(2) In particular and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following makers, namely:

(i) the form and manner in which any application for a patent, any specifications or drawings, and any other application or document may be filed in the Patent Office;

(ii) the time withal which any act or thing may be done under this Ordinance, including the manner in which and the time within which any matter may be advertised under this Ordinance;

(iii) the fees which may be payable under this Ordinance and the manner of payment of such fees;

(iv) the matters in respect of which an examiner may make a report to the Controller;

(v) the form of request for sealing of a patent;

(vi) the form and manner in which and the time within which any notice may be given under this Ordinance;

(vii) the provisions which may be inserted in an order for restoration of a patent for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had ceased;

(viii) the maintenance of the Register and the matters to be entered therein;

(ix) the time when and the manner in which the Register and any other document open to inspection may be inspected under this Ordinance;

(x) the qualifications of the preparation of a roll of scientific advisers for the purpose of section 68,

(xi) the manner in which any compensation for the acquisition by the Government of an invention may be paid

(xii) the manner in which the registered of patent agents may be maintained, an matters connected with the practiced and the conduct of the patent agents;

(xiii) the regulation of the making. pries g, publishing and selling Of indexes to, and abridgements or, specifications and other documents in the Patent office, and inspection of indexes and abridgements and other documents;

(xiv) the manner to establish the regime for exhaustion pit intellectual property rights

(xv) the details in respect of inventions referred to in subsection (4) of section 72

(xvi) the manner in which an invention shall be disclosed including the best mode known for the execution of the invention, the forms and limits of allowable claims and, in the case of inventions relating to microorganisms, the requirement and the manner of subsections of a culture for experimental purposes in relation to the scope of the claim and the procedure for grant of such patents;

(xvii) the procedure and the criteria for determining the remuneration for a compulsory licence and the terms and conditions for licensing agreements including, in particular those which do not adversely affect competition or cause impediment to the research and development in the country or to bind the licence to, transfer the improvements made by him to the licensor or to force the licensee to acquire technologies or inputs not needed or desired by

(xviii) the form of filing application and manner of grant of exclusive marketing rights

(3) The power lo make Mules under this section shall be subject to the condition Of the Mules being made after previous publication.

106. Repeal and savings.- (1) The Patents and Designs Act. 1911 (II of 1911) is hereby repealed.

(2) Notwithstanding the repeal of the patent and Designs Act, 1911 (II of 1911), the renewal See in respect of a patent granted under that Act shall be as fixed thereunder.

(3) Save as otherwise provided in sub-section (2), the provisions of this Ordinance shall apply to any application for a patent pending on the commencement of this ordinance and to any proceedings consequent thereon, and to any patent granted in pursuance thereof.

(4) Notwithstanding anything contained in this Ordinance, any suit for infringement of a patent, or any proceedings for revocation of a patent, pending in any Court an the commencement of this Ordinance, may be continued and disposed of under the Patent and Designs Act, 1911 (II of 1911), as if this Ordinance had not come into force,

107. Acts done in good faith-No suit, prosecution, or any other legal proceedings shall lie against the Federal Government employee or any person exercising any powers or performing any functions under this Ordinance or the rules made thereunder for any act or, thing which has been done in good faith.
108. Removal of difficulties-If any difficulty arises in giving effect to any of the provisions of this Ordinance, the Federal Government may, by notification in the official Gazette, make such provisions as it deems fir for removing that difficulty.

MUHAMMAD RAFIQ TARAR, President.

1. JUSTICE FAQIR MUHAMMAD KHOKHAR, Secretary.

(1) in any suit for infringement the Court shall have the power

(i) to order to desist from infringement;

(ii) to prevent the entry into the channels of commerce of imported goods that involve the infringement immediately after custom clearance of such goods;

(iii) to order the infringer to pay to the right holder damages adequate to compensate for the injury he has suffered because of infringement;

(iv) to pay the right holder expenses which may include appropriate attorney’s fee;

(v) in appropriate cases, to order recovery of profits, damages and pre-established damages even where the infringer did not knowingly or with reasonable ground to know, engage in infringing;

(vi) to order that goods found to be infringing be, without compensation of any sought, disposed off outside the channels of commerce;

(vii) to order that material and implements the predominant use of which has been in the creating of infringing goods be, without compensation of any sought, disposed off outside the channels of commerce in such a manner as to minimize risk of further infringement, and ha considering such orders, the need for proportionality between seriousness of infringement and remedies ordered as well as interests of third parties shall be taken into account,

(viii) unless this would be out of proportion to the seriousness of infringement, to order infringer to inform the right holder of the identity of third parties involved in production and distribution of the infringing goods and of their channels of commerce; and

(ix) to order a party at whose request measures were taken and who has abused enforcement procedure, to provide to a party wrongfully enjoined or restrained, adequate compensation for injury suffered because of such abuse; and

(x) to order the applicant to pay the defendant expenses, which may include appropriate attorney’s fee.