Intellectual Property Rights, Scope of

Patents and Infringement of Patents Rights

CASE STUDY BASED

Presented By

Wamic Hassan, Saad Asif, Areeb Hashim, Ali Akbar,

Fahim Amin
| Legal Environment for Business |

Introduction_________________________________________________________3
IPO Pakistan_____________________________________________________________3
World Intellectual Property Organization______________________________3

PATENT______________________________________________________________5
Importance and Advantages of Patent Rights_________________________5
Advantages of Patents___________________________________________________________5

Kind of protection patent provide______________________________________6

Term of the patent from the date of application______________________6
Exceptions & Non-Patentable Inventions in Pakistan______________________________6
Patent shall not be granted for:__________________________________________________6

different types of applications and patents___________________________7

Provisional application___________________________________________________________7
Complete application (leading to standard patent)_______________________________7
Divisional application____________________________________________________________7
Innovation patent________________________________________________________________7

INFRINGEMENT OF PATENT RIGHTS________________________________7

PROTECTION OF INTELLECTUAL PROPERTY UNDER PATENTS
ORDINANCE 2000________________________________________________________8
Suit for infringement of a patent_________________________________________________8
Reliefs in suits for infringement__________________________________________________8

PROTECTION UNDER REGISTERED DESIGNS ORDINANCE 2000_______8

Remedies under Section 8_______________________________________________________8

Monitor and defend your rights________________________________________9

Exceptions and Limitations to Patent Rights_____________________9

Determining the scope of a patent________________________________9
The purpose of claims___________________________________________________9

Conclusion_________________________________________________________10
The main objectives of the Patent Office are to:_____________________10

Bibliography_______________________________________________________11

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Introduction
Intellectual property (IP) is a legal concept which refer to creations of mind for which
exclusive rights are recognized.
Under intellectual property law, owners are granted certain exclusive rights to their
tangible and intangible assets.

IPO PAKISTAN

The Intellectual Property Organization of Pakistan (IPO-Pakistan) was established as an

autonomous body on 8th April, 2005 under the administrative control of the Cabinet
Division for integrated and efficient intellectual property management in the country. The
Trade Marks Registry, Copyright Office and Patent & Design Office became part of the
new Organization under a unified and integrated management system. The major
functions of the Organization, inter alia, include: Administer and coordinate all Government systems for protection and strengthening
of Intellectual Property (IP);
Manage all IP offices in the country;
Create awareness about IP Rights;
Advise Federal Government on IP Policy;
Ensure effective enforcement of IP rights through designated IPR Enforcement
Agencies (Police, FIA, and Pakistan Customs).
WORLD INTELLECTUAL PROPERTY ORGANIZATION

WIPO is the global forum for Intellectual Property services, policy, information and
cooperation. They are a self-funding agency of the United Nations, with 188 member
states.
Their mission is to lead the development of a balanced and effective international
intellectual property (IP) system that enables innovation and creativity for the benefit of
all. Their mandate, governing bodies and procedures are set out in the WIPO convention,
which established WIPO in 1967.

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A trademark is a sign that individualizes the goods of a given enterprise

and distinguishes them from the goods of others. It can be in the form
of words, designs, letters, numerals or packaging, slogans, devices,
symbols, etc.
A patent is a grant from the Government, which confers on the grantee,
for a limited term of 20 years, the following acts, namely 1) When
patents has been granted in respect of a product. 2)When the patents has
been granted in respect of a process.
An industrial design is the ornamental or aesthetic aspect of an article,
in other words, that part which makes the article attractive & appealing.
It may consist of three-dimensional features, such as the shape or
surface of an article or two-dimensional features, such as patterns, lines
or colours.
Integrated circuit means a product, in its final form or an intermediate
form, in which the elements, at least one of which is an active element,
and some or all of the interconnections are integrally formed in and/or
on a piece of material and which is intended to perform an electronic
function.
Copyright deals with the protection of literary and artistic works. These
include writings, music, and works of the fine arts, such as paintings
and sculptures, and technology-based works such as computer programs
and electronic databases.
Geographical Indication in relation to goods, means , an indication
which identifies such goods, as originating or manufactured or
produced in a territory of a qualifying country or a region or a locality
of a qualifying country , where a given quality, reputation or other
characteristic of such goods, is essentially attributable to its
geographical origin.
Plant Breeders' Rights (PBR), also known as plant variety rights (PVR),
are rights granted to the breeder of a new variety of plant that give them
exclusive control over the propagating material (including seed,
cuttings, divisions, tissue culture) and harvested material (cut flowers,
fruit, foliage) of a new variety for a number of years.
GRTKF stands for Genetic Resources, Traditional Knowledge and
Folklore. GRTKF have been identified as types of non-conventional
Intellectual Property (IP) during last few decades. These important
types of IP have been recognized valuable intellectual asset of
indigenous communities, traditional societies and local population of
many countries residing there since long.

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PATENT
A patent is grant of exclusive rights for an invention to make, use and sell the invention
for a limited period of 20 years. The patent grant excludes others from making, using, or
selling the invention. Patent protection does not start until the actual grant of a patent.
A patent owner has the right to decide who may or may not use the patented invention for
the period in which the invention is protected. The patent owner may give permission, or
license, to other parties to use the invention on mutually agreed terms. The owner may
also sell the right to the invention to someone else, who will then become the new owner
of the patent. Once a patent expires, the protection ends and invention enters the public
domain, that is, the owner no longer holds exclusive right to the invention which becomes
available to commercial exploitation by others.
The patent system is desirable in the public interest that industrial techniques should be
improved. The monopoly rights are granted in lieu of disclosure of the invention i.e
advancement in technology. In order to encourage improvements and to encourage also
the disclosure of improvements in preference to their use in secret. Any person devising
any improvement in a manufactured article or in machinery or methods for making it,
may upon disclosure of his improvement at the Patent Office demand to be given a
monopoly in the use of it for a limited period. After that period, it passes into the public
domain.
IMPORTANCE AND ADVANTAGES OF PATENT RIGHTS

When it comes to inventing, the very first thing you need to do is protect your idea before anyone can steal
it.
Today, every institute, university, and company is creating a patent fence around their inventions. The
importance of patents has increased tremendously over last few decades. Every company is creating a
strong patent portfolio. So what are the advantages involved in getting a patent? How the inventor or
assignee does benefit from having a patent? It is very important to know the advantages before applying
for a patent.

Advantages of Patents
1

A patent gives the inventor the right to stop others from manufacturing, copying, selling or
importing the patented goods without permission of the patent holder.

The patent holder has exclusive commercial rights to use the invention.

The patent holder can utilize the invention for his/her own purpose.

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The patent holder can license the patent to others for us. Licensing provides revenue to business
by collecting royalties from the users.

The patent holder can sell the patent any price they believe to be suitable.

KIND OF PROTECTION PATENT PROVIDE

In principle, the patent owner has the exclusive right to prevent or stop others from
commercially exploiting the patented invention. In other words, patent protection
means that the invention cannot be commercially made, used, distributed, imported
or sold by others without the patent owner's consent.

TERM OF THE PATENT FROM THE DATE OF APPLICATION

An standard patent lasts for up to 20 years.

An innovation patent only lasts for up to 8 years.

Pharmaceutical patents can last up to 25 years.

You will be required to pay annual maintenance fees on your patent/patent application
otherwise it will lapse and you will not be able to enforce your patent.

Exceptions & Non-Patentable Inventions in Pakistan

The following shall not be regarded as invention within the meaning of the Patent
ordinance, 2000:

a discovery, scientific theory, law of nature or mathematical method;

a literary, dramatic, musical or artistic work or any other creation of purely

aesthetic character whatsoever;

a scheme, rule or method for performing a mental act, playing a game or doing
business;

the presentation of information, computer software; and

substances that exist in nature or if isolated there from.

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Patent shall not be granted for:

a. invention against the order public or morality, including to protect human,

animal or plant life or health or to avoid serious prejudice to the environment;
b. 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. diagnostic, therapeutic and surgical methods for the treatment of humans or
animals;
d. a new or subsequent use of a known product or process; and
e. a mere change in physical appearance of a chemical product.
DIFFERENT TYPES OF APPLICATIONS AND PATENTS
Provisional application

The first step in filing a patent application in Australia is often the lodgment of an
application, accompanied by a provisional specification, at the Patent Office. The
provisional specification describes the invention and (in most cases0 its date of lodgment
determines the priority date, on which date the invention must be new.
Complete application (leading to standard patent)

Within 12 months of lodging the provisional application can be lodged at the Patent
Office. Where an invention is in development when a provisional specifications can be
lodged in the 12-months period to include additional material. All such provisional
specifications can be combined in a single with a series of numbered paragraphs called
claim. The claims define the monopoly sought both the particular embodiment of the
invention as described in detail in the specification and variations.
Divisional application

Under the Patents Act 1990 it is possible to file a patent application that claims the same
priority date as one previously filed and claims matter disclosed in an earlier application.
These divisional in an application have a maximum term of 20 years, common with the
parent case, but must be filed prior to sealing of the parent complete application.
Innovation patent

The novelty test for an innovation patent, as for a standard patent, includes publication or
use anywhere in the world. However a lower innovative step applies. The innovation
patent contains a maximum of five claims, has a shorter term (eight years instead of 20)

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and no extension of term is available. Applications are not subjected to examination,

however, for the patent to be relied on infringement proceedings the patentee must
request examination and the patent must be validated

INFRINGEMENT OF PATENT RIGHTS

Patent infringement is the act of making, using, selling, or offering to sell a patented
invention, or importing into the United States a product covered by a claim of a
patent without the permission of the patent owner. Further, you may be considered to
infringe a patent if you import items into the United States that are made by a
patented method, unless the item is materially changed by subsequent processes or
becomes a trivial and nonessential component of another product. A person
infringes a patent by practicing each element of a patent claim with respect to one
of these acts. Further, actively encouraging others to infringe patents, or supplying
or importing components of a patented invention, and related acts can also give rise
to liability in certain cases.

PROTECTION OF INTELLECTUAL PROPERTY UNDER PATENTS ORDINANCE 2000

Suit for infringement of a patent

A patentee may institute a suit under section 60 in the District Court which have the
jurisdiction to try the suit against any person who during the continuance of the patent
acquired by him under this law, in respect of an invention, makes, sells or uses the
invention without his license, or counterfeits it, or imitates it.
Reliefs in suits for infringement

If a patent is infringed by infringer and a suit for infringement has been field against him
then the remedies can be availed by the patentee. The Court can order to:

desist form infringement;

infringer to pay the right holder damages adequate to compensate for the injury he
has suffered because of infringement;

pay the right holder expenses which may include appropriate attorneys fee;

the recovery of profits, damages and pre-established damages;

dispose off the goods (which found to be the infringing) outside the channels of
commerce without giving any compensation to the infringer;

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dispose off the material, implements and predominant, use of which has been in
infringing goods, outside the channels of commerce to minimize the risk of more
infringement without giving any compensation to the infringer;

infringer to inform the right holder of the identity of third parties involved in
production and distribution of the infringing goods and their channel of commerce
in case of serious infringement;

adequate compensation to the party who has been wrongfully restrained by the
party on whose request measures has been taken;

the applicant to pay the defendants expenses including attorneys fee.

prevent an infringement, if there are imported goods the court can order to prevent
its customs clearance;

preserve its relevant evidence in the alleged infringement; and

provisional measures to prevent the delay which cause harm to the right holder or
where there is a demonstrable risk of evidence being destroyed.

PROTECTION UNDER REGISTERED DESIGNS ORDINANCE 2000

Remedies under Section 8

If any person infringes a registered proprietors right, the proprietor may:

bring a suit against him for the recovery of damages; and

bring a suit for an injunction for the continuance of the infringement.

MONITOR AND DEFEND YOUR RIGHTS

Once you own IP, you are responsible for monitoring the market to ensure you are not
being infringed. If you are the victim of infringement, it is up to you to take the
appropriate steps. An IP lawyer or attorney can assist you with enforcing your rights. IP
Australia is not in charge of monitoring IP infringement - this is your responsibility.
You need to safeguard your IP by letting others know you own your innovation. That is
why many products contain the symbol - to let everyone know the trade mark is
registered. Copyright owners do a similar thing by using the symbol with their work,
while many new products will have patent pending or the patent number displayed.

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Unfortunately, in some instances legal action may be necessary. However, your chance of
success is greatly improved with robust, registered IP.

Exceptions and Limitations to Patent Rights

While the granting of exclusive patent rights is considered as an incentive for investment
in innovative activities and the production of knowledge, allowing the enforcement of the
full scope of the exclusive rights in all circumstances may not always meet the ultimate
goal of the patent system to enhance the public welfare. Therefore, in order to strike the
right balance between the interests of the right holders, third parties and the public, the
scope of the enforceable exclusive rights may be set under national patent laws according
to certain exceptions and limitations to patent rights that have been reserved for decision
by individual countries.

Determining the scope of a patent

THE PURPOSE OF CLAIMS

The claims (typically found at the end of a patent document) provide a definition of what
the patent protects. Terms used in a claim may be defined by the whole document, but
ultimately only what is described in the claims is protected.
To infringe, each and every element of a claim must be present in the infringing product.
If even a single element is missing, the product does not infringe. It doesn't matter if the
patent document says that that single element is optional: if it's in the claim, it is required.
The claims are used in a very similar manner when judging the validity of a patent (or
application). When prior art is found, it must be compared against the claims to determine
if the patent is new and nonobvious. Even if the "spirit of the invention" or the "general
idea" is the same as in the prior art, if the claims contain one feature that is not mentioned
in the prior art, the invention is new. If the one new feature is not obvious, then the claim
is patentable.

Proving infringement using the claims

Extending the scope of patent protection
Infringement through equivalence
Redefining terms to increase the scope

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Conclusion
The Patent Office is responsible for the establishment and maintenance of the national
framework of intellectual property rights. It also represents the United Kingdoms
interests in the development of international intellectual property rights systems.

THE MAIN OBJECTIVES OF THE PATENT OFFICE ARE TO:

grant intellectual property rights promote and supervise moves to

modernise and simplify the law on intellectual property

work towards the harmonisation of international rules and procedures

raise awareness of British industry and business to the opportunities provided

by intellectual property to enhance their profitability and competitiveness

ensure the academic community are aware of the potential rewards for
exploitation of research

provide services that combine quality with good value for money.

A healthy business environment is one where original ideas flourish and turn into
business opportunities. The Governments white paper on competitiveness has
emphasised the importance of knowledge at the heart of competitive activity. The Patent
Office gives confidence to enterprising people in the business sector by providing
protection against copying for their original ideas.

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Bibliography
http://www.ipaustralia.gov.au/get-the-right-ip/patents/
http://www.wipo.int/about-wipo/en/#who
http://law.zafcointl.com/area_patent_design_law.html
http://www.uspto.gov/patents-maintaining-patent/patent-litigation/about-patentinfringement
http://ipo.gov.pk/
http://www.csb.uncw.edu/people/eversp/classes/BLA361/Intl%20Law/Cases/Study
%20of%20Basmati%20Rice%20Intl%20Case.ssrn.pdf

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