Registration of patents in Pakistan is governed by “Patents Ordinance 2000” and “Patents Rules,2003” in order to give effect the laws and provisions of “International convention on trade related intellectual property rights,1994” also known as “TRIPS agreement”. The TRIPS agreement introduced intellectual property law into the international trading system for the first time.  However, it is important to mention here that Pakistan on July 22nd, 2004 has signed the Paris Convention for the Protection of Industrial Property the “Paris Convention”. On Dec 2000 the president of Pakistan promulgated “Patent ordinance 2000”. The Ordinance repealed the “Patent and Design Act, 1911”.

Rights of patent is governed by “Intellectual property” refers to the idea, concepts related to material items that any person can claim an exclusive or monopoly for these things, for a limited period of time prescribed by the laws related to it.Intellectual property covers all rights related to copyright,trademark,patents etc..

Purpose:

The very purpose of patents laws is to provide protection for intention. It is a legal enforceable right which prevents others from exploiting an invention.

Before going into details about registration process of patents first we should know what is patent.

 

WHAT IS PATENT?

“Patents is a grant or license by the government authority conferring an exclusive or monopoly right or title for a limited period (in Pakistan 20 years) and excluding others from using, making, reproducing, selling an invention which is his exclusive right.

 

WHAT IS PATENTABILITY?

Section 7 has guided us in this regard and stated that “any invention is patentable, if it is “NEW”, involves an “INVENTIVE STEP” and is capable of “INDUSTRIAL APPLICATION”,

NOVELT:

“NEW”

An invention shall be considered to be “NEW” if it does not form part of the state of the art.

The state of the art shall comprise-

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

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

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

Notwithstanding the provisions (a-c), 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, then 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.

 

INVENTIVE STEP

An “INVENTIVE STEP” 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.

 

INDUSTRIAL APPLICATION

An invention shall be considered to be capable of “INDUSTRIAL APPLICATION” if it is capable of being manufactured or otherwise industrially used.

 

DEFINE INVENTION

Invention:

The word “invention” here means “any new useful process or idea which is not previously exits”.

2014 CLD 897:

““Invention” was the act of or operation of finding out something new, the process of contriving and producing something not previously known or existing, by the exercise of independent investigation and experiment and also the article or contrivance or composition so invented”.

However 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 substances that exist in nature or if isolated therefrom.

The above provisions (a-d) 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.

 

PATENT SHALL NOT BE GRANTED

A patent shall not be granted

1. for invention the prevention of commercial exploitation of which would be necessary to protect the “ordre 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;
2. 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;
3. for diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
4. for a new or subsequent use of a known product or process; and
5. 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 of patentability.

KINDS OF PATENTS

The patents may be of three kinds, namely:

Utility patents

Utility patents are an invention of a new and useful process, machine, manufacture etc.

Design patent :

It is an invention of new, original and ornamental design which applied to an article for manufacturing.

Plants patents:

Grants for any novel or asexual reproduction of plants.

In broad and general sense, we can also bifurcate patents into two:

1. Process: The process covers a new process used in the production of a product.
2. Product: Patent product is a new invention of product or in relation to a patent process of a product.

 

PROCEEDURE FOR REGISTRATION OF PATENT IN PAKISTAN

Gather information about your invention

Note down the following information about your invention:

1. Area of Invention
2. Description of the invention what it does
3. How it does
4. Advantages of the invention

It is strongly advisable that if you have worked on the invention during research and development phase you should have lab record with duly signed by you and respective authorities.

Besides above, all drawings, diagrams and sketches should be designed so as to explain the working of invention.

 

Check whether the invention is patentable:

Before filling of Application for the registration of Patent, check whether the invention is patentable because all invention is not patentable under the law of Patent as mentioned above.

 

Who can apply for the registration of Patent?

Before filling of Application for the registration of Patent, you should be aware that the following persons are entitled to make an application for Patent:-

1. 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

2. The legal representative of any deceased person who immediately before his death was entitled to make such application

Application for grant patents:

3. An application for grant of a patent, by the true and first inventor shall be made in for, P-1 other than conventional application.

In case of the inventor is not a party to the application, the applicant has to produce the original deed of assignment or the other document from the inventor and he must be entitled to apply for patent unless is set out in form P-1A, endorsed by the true inventors, in the presence of two witness with a statement that the application shall be made without his name as an applicant for patent.

If the applicant is representative of deceased, must produce will of deceased or the letter of administration shall be produced at the patent office as set out in section: 8(3).

4. A convention application by the true inventor shall be made as set out in form P-2.

If he is not party to the application, the application shall produce the original deed of assignment or the other document from the inventor and he must be entitled to apply for patent unless is set out in form P-2A, endorsed by the true inventors, in the presence of two witness with a statement that the application shall be made without his name as an applicant for patent.

5. Provisional specification has to be filed in form P-3.

6. Complete specification has to be filed under form P-3A. complete specification required:

      (a) to fully and particularly describe the invention and the method by which it is to be performed
(b) disclose the invention
(c) with a claim defining the scope of the invention for which protection is claimed.

7. Each Application shall relate to one invention only;

8. It is also important to mention here that the applicant may, 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.

9. Each divisional application shall be entitled to the filing date and, where applicable, the priority date of the first application.

10. 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.

11. 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.

12. An application for availing exclusive marketing rights for a patentable invention relating to pharmaceutical or agricultural chemical product shall be filed in the mailbox provided for this purpose by the Controller who may require the form and manner for submitting such application as may be prescribed.

Examination by authority:

The application will examine at patent office by the authority.

If there is any opposition regarding the patent from some other party that lays claim of the same patent either wholly or some part of it, the applicant will have to defend it.

Party who oppose registration can apply by filling out form P-7 in he has to laid down ground for opposing registration.

 

Publication:

After successful examination, the application will be published after 18 months of first filing.

Grant of license:

If there is no objection or opposition from any person, the patent is sealed once the application have been duly filled and submitted form P-10 and the applicant is granted for 20 years.

Patent renewal:

After a patent is sealed the patent has to renew every following year after 4 years and this process have to be followed till 20 years.

In order to renew the patent, form P-12 has to be submitted by grantee before expiration of 4 years or after.

If he fails to do so or not comply with, the patent officer can withhold their patent or license as penalty for some period before invalidated it permanently.

 

Request for restoration:

Grantee can request for restoration before invalidation of it in form P-13.

Barred on grant of patent:

After 20 years, no renew can be allowed for same patent and a patent can be used my public.

Revocation of patent:

An applicant can revoke his application at any time by form P-14 in which he has to state the grounds and reason for such revocation.

Surrender of patent:

A notice of an officer by a patentee to surrender his patent shall be set out in form P-15 and same will be advertised by the controller in the official Gazette.

Anyone who opposes advertisement can give notice for opposition to the controller set out in form P-7 within 2 months.

Limitation on filing application for grant.

Limitation for filing application for grant is 12 years in Pakistan.

Rights of patentee:

The holder of a valid patent have the right to prevent others, from the acts of making, using, offering for sale, selling, or importing and having the right to assign, or transfer by succession, the patent and to conclude licensing contracts without owners consent.
In addition to any other rights, remedies or action available to him under the Ordinance, the owner of the patent shall have the right to institute Court proceedings against any person who infringes the patent.

Remedies:

The Court is empowered to grant relief in any suit for infringement of patent, which includes granting relief by way of “damages”, “injunction” or “accounts” provided it must be permitted. The court is also empowered to order prompt and effective provisional measures.

NOTE

This information provided in the article do not constitute legal advice and are not intended by the author.

The Lawyers (Law Firm)

“A Simple Choice for Complex Legal Issues”

Suite # 301, 3rd Floor
Imperial Trade Tower (68-C)
Jami Commercial Street # 7
Khayaban-e-Ittehad, Phase VII,
DHA. Karachi
Phone: 92-21-35382410-03222999303
Email: info@thelawyers.pk
Website: www.thelawyers.pk