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Pakistan Patent Ordinance 2000
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A Memorandum on Pakistan's new Patent Ordinance, 2000)
Effective December 2, 2000
Pakistan as a member of WTO and signatory
to the Agreement on Trade Related Aspects of Intellectual
Property Rights ("TRIPs") undertook to amend its
patent law to conform to TRIPs' obligations. Beside TRIPs'
requirements, the industrial developments since 1911 have
also made it mandatory to amend the Patents & Designs
Act, 1911.
We are pleased to inform you that on December 2, 2000 the
President of Pakistan promulgated the Patents Ordinance,
2000 which complies with TRIPs' requirements, as well as,
it corresponds to the regime of new patent laws promulgated
around the globe. While product patents have been allowed
in the law, as well as, life of the patent has been extended
to 20 years, the new law is a remarkable departure from
nearly century-old legislation. This memorandum gives salient
features of the new law.
Definitions:
Section 2(c) of the Ordinance defines invention to include
"any new and useful product, including chemical products,
art, process, method or manner of manufacture, machine,
apparatus or other article; substance or article or product
produced by manufacture and includes any new and useful
improvement of any of them and an alleged invention".
Process is defied to mean "any art, process or method
of new manufacture of a product and includes a new use of
a known process or a product". Similarly, product is
defined to include "any substance, article, apparatus,
machine or a chemical product".
Patentable Inventions:
To qualify grant of patent, the law requires an invention
to be new (state of the art), involving an inventive step,
and be capable of industrial application. Section 8 of the
law provides that an invention shall be considered novel
'if it does not form part of the state of art'. State of
art is defined to include '(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… and (b) contents of complete specification
and priority documents published under the law'. Inventive
step is defined with its traditional meaning of non-obviousness
to a person skilled in the art. Industrial application is
defined to include capability of the invention to be used
in any kind of industry. The law emphasizes that 'the industry
shall be understood in its broadest sense'. The law clarifies
that 'a product consisting of a substance or composition
shall not be prevented from being treated as capable of
industrial application merely because it was invented for
use in such a method'.
Though under the new law patents are not to be granted for
"animals or plants other than micro-organisms and essentially
biological process for the production of animals or plants",
however, the new law clarifies that this probation shall
not apply to "micro-biological processes or products
of such processes".
Convention Priorities:
As required by TRIPs, the new law provides priority arrangements
for all WTO member countries if the Pakistan application
is filed within 12 months of the priority country filing.
Priority documents are required to be filed either along
with the application, or within 3 months, or within such
further period 'as the Controller may on good cause allow'.
Application for a patent:
The new law requires every application for the patent to
be on the prescribed form and to contain a declaration to
the effect that the applicant is in possession of an invention
of which he, or in the case of joint application, at least
one of the applicants, claims to be the true and the first
inventor. The law requires each application to be in respect
of one invention only or to be in respect of a group of
inventions so linked as to form a single inventive concept.
Complete or provisional specifications are required to accompany
the application. Every complete specification is required,-
(a) to fully and particularly
describe the invention and the method by which it is
to be performed;
(b) disclose the invention; and
(c) end with a claim or claims defining the scope of
the invention for which protection is claimed. |
The claim or claims of a complete specification are required
to relate to a single invention, to be clear and succinct
and to be fairly based on the matter disclosed in the specification.
An abstract is also required to be furnished.
The new law requires each application to be accepted or refused
in eighteen months (or twenty-one months, in case an application
for extension of time is filed) from the date of the filing.
Once accepted, each application will be open for opposition
for four months from the date of its publication in the Gazette.
Additional information and documents relating to foreign applications:
Section 20 of the new law empowers the Controller to require
foreign applicants to furnish date and number of any application
for patent filed by the foreign applicant abroad relating
to the same or essentially the same invention as that claimed
in the application filed in Pakistan. The applicant, when
required by the Controller, is required to furnish with the
following documents relating to foreign application(s),-
- a copy of any communication received by the applicant
concerning the result of any search or examination
carried out in respect of the foreign application(s);
- a copy of the patent granted on the basis of
the foreign application(s); and
- a copy of any final decision rejecting the foreign
application(s).
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Term of a patent:
As required by TRIPs, term of a patent is 20 years from
the date of the application. Provided however, term of the
patent granted under the old 1911 Act shall remain 16 years.
However section 106(4) of the new law creates confusion
since it provides that if at the commencement of this new
law, a suit for infringement of a patent, or any proceedings
for revocation of a patent is pending in any Court, the
said suit or proceedings may be continued and disposed of
under the 1911 Act, as if the new law had not come into
force, provided that term of the patent shall be 20 years.
Rights conferred by patent:
The law provides that 'the exploitation of a patented invention
in Pakistan by a person other than the owner of the patent
shall require the latter's agreement'. Law defines the exploitation
of a patented invention to include any of the following
acts, namely,-
(a) when patent has been granted in respect
of a product,-
- making, importing, offering for
sale, selling and using the product; or
- stocking such product for the purposes
of offering for sale, selling or using;
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(b) when the patent has been granted in
respect of a process,-
- using the process; or
- doing any of the acts referred
to in clause (a) in respect of a product obtained
directly by means of the process.
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The law also provides that the owner of
the patent shall (unless in the case of compulsory licensing
or mail box provisions), in addition to any other rights,
remedies or actions available to him, have the right to
institute court proceedings against any person who infringes
the patent by performing, without his agreement, any of
the acts referred above or who performs acts which make
it likely that infringement will occur.
Reliefs in suit for infringement:
Section 61 of the new law lists reliefs that a Court may
grant in suits for infringements. These include,-
- to order to desist from infringement,
- to prevent the entry into the
channels of commerce of imported goods that
involve the infringement immediately after custom
clearance of such goods;
- to order the infringer to pay
the right holder damages adequate to compensate
for the injury he has suffered because of infringement;
- to pay the right holder expenses
which may include appropriate attorney's fee;
- 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;
- to order that goods found to
be infringed be, without compensation of any
sought, disposed off outside the channels of
commerce;
- to order the 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 in 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;
- unless this would be out of proportion
to the seriousness of the infringement, to order
infringer to inform the right holder of the
identity of third parties involved in the production
and distribution of the infringing goods and
of their channels of commerce; and
- 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.
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The Court is also granted powers to order prompt and effective
provisional measures.
Disclaimer:-
This Memo is intended merely to highlight issues and not
to be comprehensive, nor to provide a legal advice. Should
you have any queries please contact us.
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