Pakistani Law of Patents, Patent Law in Pakistan, Law of Patents in Pakistan
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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?
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. The cost of infringement cases could be as low as $5,000 but could also be as much as $25,000 or more. 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 value of $150,000, 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
Methods of writing music
Machines dealing with perpetual motion
Special names for articles
The discoveries of new properties within a known substance
New alphabet system
Pharmaceutical and chemical products pre 2004
Musical, dramatic, artistic or literary works
Patented medicines or doctors prescriptions
Diagrams, printed sheets or ordinary charts
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.