COUNTRY : PAKISTAN
CAPITAL : ISLAMABAD
LANGUAGE : ENGLISH & URDU
MEMBER : WTO TRIPS, PARIS CONVENTION
The Intellectual Property Rights aspects are looked after by the IPO Pakistan, Departments of Ministry of Cabinet Division.
The Patents Office currently is a part of IPO Pakistan (Intellectual Property Organisation) under Cabinet Division.
Paris Convention and TRIPS
For an Invention to be patentable, it should contain the following:
(i). Novelty: An invention is considered new & novel it is not predictable owing to prior publication, prior use or prior public knowledge.
(ii). Inventive Step: Apart from the invention not being obvious to a person skilled in the art, inventive step would be a feature of an invention that involves either:
• A technical advancement compared to the existing knowledge
• Having economic significance or,
(iii). Industrial Application: An invention must be capable of industrial application, which means, the invention should be capable of being made or used in an industry.
A patent shall not be granted if it is not new and relates to invention which is not capable of Industrial Application and:
For a Patent in pakistan we need the following information/documents:
are defined in section 30 of the Patents Ordinance, 2000, which reads as under:
Rights conferred by patent.-
(1) Subject to other provisions of this Ordinance, the holder of a valid patent in Pakistan shall have the following rights, namely:-
(a) Where the subject matter of 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 mailbox, 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 until a product patent is granted or rejected whichever period is shorter, provided that, subsequent to the first January, 1995, a patent application has been filed and a patent granted for that product in any 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 sub-section (4) and has obtained a patent for the same and has filed an application in the mailbox 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 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 in 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;
(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; or
(e) acts, including tests, necessary for the approval of a product for its
commercialization after the expiration of the patent; or
(f) acts done for teaching purposes in educational or research institutions.
(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.
This subject is being dealt with in section 58 and 59, which are as under:
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 dissemination 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 arid 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 therefor, 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 anti-competitive 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 he 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 justified 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.-
(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.
(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 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 fee.
(10) The provisions of sub-sections (2) to (10) of section 58 shall apply mutatis mutandis for issuance of an non-voluntary license under this section.