Patent

Patents are a form of intellectual property. A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a process.

The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a granted patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others, or at least to try to prevent others, from commercially making, using, selling, importing, or distributing a patented invention without permission.

A patentable invention can be a product or a process that gives a new technical solution to a problem. It can also be a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

2. Patent in Pakistan

According to section 7 of the Patent Ordinance, 2000 an invention should be a patent if it is:

a) A Process or Product
b) A Novel or New
c) It involves an inventive step
d) Capable of industrial application

Invention may be a Product or Process

Invention means any new and useful product or process, in any field of technology; and includes any new and useful improvement of either of them. Whereas as a “process” means any art, process or method or manner of new manufacture of a product and a “product” means any substance, article, apparatus, or machine.

Novel

Novelty of an invention is defined in section 8 of the ordinance as under:

(2) 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.

(3) Notwithstanding the provisions of sub-section (2), 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.
(4) In this section references to the inventor include references to any proprietor of the invention for the time being.

Inventive step

Inventive step is defined under section 9 of the ordinance as under:

An invention 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

Industrial application is defined under section 10 of the Ordinance as under:

An invention shall be considered to be capable of industrial application if it is capable of being manufactured or otherwise industrially used.

Inventions which are not regarded as patentable in Pakistan

According to sub section 2 of section 7 of the ordinance following inventions are not patentable in Pakistan.

(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
(e) Substances that exist in nature or if isolated there from.`

A patent shall not be granted in following inventions

According to sub section 4 of section 7 of the ordinance a patent shall not be granted :-

(a) 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;
(b) 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;
(c) For diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(d) For a new or subsequent use of a known product or process; and
(e) 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.

3. Patent Filing in Pakistan

Once an application for the grant of a patent is filed, it is examined with respect to compliance with formalities and patentability provided for under the Patent Law, including novelty, inventiveness and industrial application. In case of rejection, the applicant has the right to appeal to the High Court within 90 days as of the date of receiving the notification of rejection.

Accepted applications are published in the Official Gazette and any interested party has the right to appeal to the Controller of opposition within 120 days as of the date of publication in the Official Gazette. In the absence of opposition, the letters patent is issued. A patent is valid for 20 years. Annuities are to be paid starting from the fifth year of the patent term and are paid in advance at the beginning of the year.

The right to a patent may be assigned or licensed. An assignment shall have no effect against third parties unless it has been recorded at the Patent Office and published in the Official Gazette.

Types of Patents granted in Pakistan

Under the Patents Ordinance, three kinds of patents are granted:

I. An ordinary patent, which is dated as of the official date of the application
for the patent.
II. A patent claiming “priority” which is dated as of the official date of the corresponding application for patent first made in a country which is the member to the WTO.
III. A patent of addition, for the purpose of improving or modifying an invention for which a patent has already been applied or granted.

Patents Filing Requirements

1. A Power of Attorney simply signed on Form P-28.
2. Name, address and nationality of the applicant.
3. An abstract of the invention of no more than 200 words.
4. Three copies of the specifications and claims.
5. Three sets of the drawings relating to the invention, if any.
6. A certified copy of the application giving the filing date, number and country, if the application is to be filed with a priority claim.

4. Opposition to the Grant of Patent:

At any time within four months from the date of advertisement of the acceptance of a complete specification under this Ordinance, any person may give notice to the Controller of opposition to the grant of patent on any of the following grounds, namely:-
(a) That the applicant for the patent obtained the invention or any part thereof from him or from the person of whom the opponent is the legal representative, assignee, agent or attorney;
(b) That the invention is not a patentable invention within the meaning of this Ordinance;
(c) That the specification does not disclose the invention in a manner clear and complete enough for it to be carried out by a person skilled in the art;
(d) That the claims are not clear or extend beyond the scope of the disclosures in the complete specification as originally filed; and
(e) That the complete specification describes or claims an invention other than that described in the provisional specification and that such other invention either forms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document in that interval.

Where a notice is given as above, the Controller shall give notice of the opposition to the applicant, and shall, before deciding the case, give to the applicant and the opponent an opportunity of being heard.

The Benefits of Registering a Patent

Once you register a patent, apart from using the patent to prevent others from exploiting your invention, you can employ it to raise funds for your business, license it to third parties for commercial returns or sell the patented invention.

Term of Patent

According to section 31 of the Ordinance the term of a patent shall be twenty years from the filing date.

5. Patent Annuities

In Pakistan The annuity for first four year is taken at the time of grant of patent and the first regular annuity becomes due before expiry of the fourth year from grant which is the application date.

Annuities have to be paid annually from the 5th uptil 20th year in advance and have to be paid before the end of current year. All or any of the prescribed annual renewal fee may also be paid in advance.

According to Rule 24 of the Patent Rules, 2003,

If it is desired, at the expiration of the fourth year from the date of a patent, or of any succeeding year during the term of the patent, to keep the patent in force, the prescribed renewal fee shall be paid along with requisite information in the form as set out in Form P-12 before the expiration of that year.

Grace period for Paying the Annuities

There is a grace period of 6 months for the payment of any annual renewal fee due.
According to Section 32 of Patent Ordinance,

A patent shall cease to have effect on the expiration of a period for the payment of any renewal fee if that fee is not paid within the prescribed period or within the period as extended under this section.

The period prescribed for the payment of any renewal fee shall be extended to such period not being more than six months if the request is made to the controller and the renewal fee and the prescribed additional fee is paid before the expiration of the extended period.

6. Infringement of a Registered Patent

A patentee may institute a suit in a District Court against any person who, during the continuance of a patent acquired by him in respect of an invention, makes, sells or uses the invention without his license, or counterfeits it, or imitates it:

Reliefs in Suit for Infringement:

(1) Interlocutory/ interim injunction.
(2) Damages or account of profits.
(3) Permanent injunction.