Patent is an official document, recognized by law that confers a right or a title especially the sole right to make, use or sell some invention or process, hence protecting the said invention or process. Filing & registration of patents in Pakistan is governed by Patent Ordinance, 2000 & Patent Rules, 2003.
How to Apply for Patent in Pakistan
An application for the grant of a patent may be submitted by any of the following persons:
- The true and first inventor or inventors of the invention
- Assignee or successors-in-interest of the true and first inventor or inventors
- The legal representatives of any deceased person who was entitled to file an application immediately before his death.
Every application shall be made in respect of one invention only. However an application may also be made for an improvement or modification to the main invention. (Patent of Addition). In case an application is not made by the inventor himself, it must be endorsed by him in the presence of two witnesses with a statement that the application may be made in his name.
- Patent application fee in Pakistan is Rs. 4,500
- Once a patent is granted and sealed in Pakistan; the duration of the patent is 20 years from the date of application.
Every application, other than a convention application (Convention application is an application made in Pakistan within 12 months of an application made in a convention country. i.e. a member country of the WTO), must be accompanied by specifications of the invention which the applicant wants to be patented. These specifications must be either a provisional or a complete specification. Where provisional specification has been filed with the application, a complete specification must be filed within 12 months of the filing of the application otherwise the application shall be considered abandoned.
Every complete specification for patent registration in Pakistan shall consist of:
- A full description of the invention.
- The method by which it is to be performed.
- Must end with a claim defining the scope of the invention.
- An abstract.( should not be more than 2 pages and must include the entire technical details relating to the invention)
- Drawings may also be submitted along with the abstract either at the applicants will or the controller’s request.
Every application that is submitted to the Controller, is referred to an examiner who shall assess the application in accordance with the following points:
- Whether the invention is new.
- Whether the invention involves an inventive step.
- Whether the rules and requirements contained in the Patent Ordinance have been complied with.
After an examination of the application by an examiner referred to by the Controller, the Controller may direct the applicant to:
- Fulfill any rules of the Ordinance in case the application does not comply with them
- Cause the application to be amended by the insertion of a reference to any other patent by way of notice to the public.
Withdrawal of Patent Application
The applicant has the right to withdraw the application by making a request to the Controller at any time. However:
- Where the invention relates to genetically modified organisms, it will require clearance from the federal government
- Where the invention relates to a pharmaceutical or agricultural chemical product and for availing related exclusive marketing rights, it shall be filed in the mail box provided for this purpose in the manner directed by the Controller.
- If the application is withdrawn before the its acceptance and advertisement in the official gazette, the application and its accompanying specifications shall not be available for public inspection.
Acceptance of Patent Registration Application in Pakistan
On the acceptance of the application and specifications by the Controller he shall advertise them in the Official Gazette after which the documents will become available for public inspection. Within 30 days of the advertisement of the application, the applicant must forward a copy of the complete specification to certain institutions and organizations.
Once the application has been accepted and till the date of the sealing of the patent, or the expiration of the time for sealing, the applicant shall be entitled to the rights and privileges as if the patent for the invention had been sealed on the date of advertisement of the complete specification.
Any person may file a notice of opposition with the controller to the grant of patent within 4 months of the advertisement. Incase such a notice is filed the applicant may have to go through opposition proceedings.
Patent Registration Shall not be Granted When:
- For an invention, the commercial exploitation of which would be injurious to public order, morality, environment or the protection of human, animal and plant life.
- For plants and animals other than micro-organisms
- For biological processes for the production of plants and animals.
- For diagnostic, therapeutic and surgical methods for the treatment of humans and animals.
- For a new and consequent use of a known product or process.
- For a change in the physical appearance of a chemical product where the chemical formula or process of manufacture remains the same. However, this clause shall not apply to an invention that does fulfill the criterion of patentability.
Opposing a Patent in Pakistan
A notice of opposition may be filed on the following grounds:
- The invention is not a patentable invention within the meaning of the Patents Ordinance,2000
- The applicant obtained the invention sought to be patented from the person filing the notice of opposition or his assignee, agent or legal representative.
- The specification does not elaborate on the invention in a clear manner and hence renders it incapable of being carried out by a person skilled in the art.
- The claims are not clear or extend beyond the scope of the disclosures contained in the complete specification that was originally filed.
- The complete specification describes an invention other than that described in the provisional specification.
- Such other invention forms the subject of an application filed by the opponent where if a patent is granted would bear a date in the interval between the date of the application and the leaving of the complete specification
- Or if such an invention has been made available to the public by publication in any document in that interval
Rights of Patent Holder in Pakistan
The holder of a valid patent shall have the following rights:
- The owner of a product patent has the right to prevent third parties from the acts of making, using, offering for sale, selling or importing the product for these purposes.
- The owner of a valid process patent has the right to prevent third parties from the act of using the process and also from the acts of using, offering for sale, selling or importing for these purposes the product obtained from the use of the process.
- The owner of the patent reserves the right to assign, transfer by succession and to conclude licensing contracts with reference to the patent
- The owner of the patent has the right to institute court proceedings against any person who infringes the patent or performs any act that make it likely that the infringement will occur.
- The owner of an invention that relates to pharmaceutical or agricultural chemical product also had the right to file in an application for the grant of exclusive marketing rights of the product.
In the event of the loss or destruction of the patent, the owner of the patent must make an application in the prescribed manner to the Controller and pay the prescribed fee who shall cause a duplicate of the original patent to be sealed and delivered to the applicant.
The grant of the patent protects the patentable invention from the unauthorized making, using or selling for practical use or profit, during the life of the patent. In case of any such infringement, the law allows the patentee to institute legal proceedings against the infringer and obtain a wide variety of reliefs ( damages, injunctions, etc.) for the protection of his work.