PATENTS

TRIPS AND PAKISTAN

LEGISLATION

BY
NAZIR A. SALEEMI
nazir45pk@hotmail.com
Mobil: 0300 5320517
 WHAT IS A PATENT?
• An exclusive right granted for an invention (product and
process) that provides a new way of doing something or
offers a new technical solution to a problem.
• It provides protection to the owner of patent for an
invention for a minimum period of 20 years.
• It is applicable to all fields of technology, for example,
industrial products/processes, agro-chemicals,
pharmaceuticals, food and food products etc.)
 Background History

Fairly old history in ancient England.

• Elizabethan Monopoly Grants.
• Statute of Monopolies in England 1624.

Continental Europe:
• Inventors Statues of Venice, 1474.
• Patent for Galileo innovative machine meant for Irrigation
purposes, 1594.
• Similar Patent provision in Germany, France and
Netherlands.
 Background History – USA

The US Legislative system also draws from:

• Provision in US Constitution.
• Patent Laws 1790 – 1870.
• US Supreme Court decisions an guideline.
• Patent Laws 1952 – 1995.
Patent Legislation of Pakistan
• Prior to TRIPS Agreement, Pakistan followed Patent and
Design Act 1911 that fell short of current economic
environment in terms of coverage and efficacy.
• TRIPs became effective w.e.f. 1.1.1995 under the WTO
framework of “Single Understanding”.
• Pakistan as such obliged to upgrade its legislation to
meet TRIPS provisions.
• Transition period of 5 years was allowed to developing
countries.
• Pakistan drew its Patents Ordinance in year 2000 that
repaeled the Act of 1911.
 TRIPS - Pakistan VS USA
• As required under TRIPS provisions Member countries
were obliged to set up MAILBOX system during
transitional period to receive patent applications in the
area of pharmaceutical and Agro-chemicals to be
opened on 1st January 2005 (Article 64.5).
• Pakistan non-compliance for MAILBOX was challenged
by USA in April 1996.
• EU subsequently joined USA in May 1996.
• A compromise was reached as Pakistan assured to set–
up the MAILBOX.
• MAILBOX set-up under Ordinance XXVI of 1997.
 Patent Ordinance of Pakistan
• Patent and Design Act 1911 was split and two separate
TRIPS compliant Ordinances viz. the Patent Ordinance
and Design Ordinance, 2000.
• Relevant ministries were asked to draw draft legislations
that were discussed in inter-ministerial committee
meetings involving major stake-holders including PIPRA.
• Major thrust/input was by Ministry of Commerce in
collaboration with the Ministry of Law.
• The draft Patent legislation, inter alia, was got vetted
from WIPO.
• Patent Ordinance was issued in year 2000 and notified
to WTO.
 Patent Ordinance of Pakistan
• Pakistan legislation was reviewed by WTO TRIPS
Committee in the end 2000.
• Some 246 questions were raised by different members
on Pakistan IPR legislations.
• For many questions the practicing IPR lawyers were
consulted and responses were submitted to TRIPS
committee.
• Rules were drawn to implement Patent Ordinance
• Certain issues were felt by stake-holders to be reviewed
that was undertaken in consultation with the stake-
holders in 2002.
 Salient Features of Patent
Ordinance of Pakistan
• Short Title: The Patents Ordinance 2000.

• Section 1(2): It extends to the whole of Pakistan.

• Section 1(3): It shall come into force at once except for

the provisions relating examination, sealing, grant and
post-grant matters of patents relating to the chemicals
products intended for use in agriculture and medicines,
but excluding the grant of exclusive marketing rights
therefore and mailbox filing that shall come into force on
and from the first day of 2005.
 What is Invention?
• Section 2(1): “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; (existing).

• “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
manufacturer and includes any new and useful
improvement of any of them and an alleged invention
(prior art)
 Process Patent
• Section 2(s): “process” means any art, process or
method or manner of new manufacture of a new product;
(existing)

• “any art, process or method of manufacture of a product

and includes a new use of a known process or a
product”. (old)
 Product Patent
• Section 2(t): “product” means any substance, article,
apparatus, or machine; (existing)

• “any substance, article, apparatus, machine or a

chemical product” (old)
 Patentable Inventions
• Section 7(1): Any invention is patentable, if its is new,
involves an inventive step and is capable of industrial
application.
• Following shall not be regarded as invention:
*a discovery, scientific theory 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; and substances that
exist in nature or if isolated therefrom.
 A Patent shall not be granted
• Section 7(4): …necessary to protect the “ordre public” or
public morality, including human, animal or plant life or
health or to avoid serious prejudice to environment;
• Plants and animals other than micro-organisms,
essentially biological processes for the production of plants
or animals other than non- biological and micro-biological
processes;
• Diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;
• For a new or subsequent use of a known product or
process;
• A mere change in physical appearance of a chemical
product where chemical formula or process of mfg.
remains same . This shall not apply to an invention fulfilling
the criteria of patentability.
 Industrial Application

A product can be patented if it involves:

• An innovative step;
• It is non-obvious;
• An invention shall be considered capable of patenting if it
is capable commercial exploitation or otherwise industrial
use.
• Usefulness approach
 Contents of Specification
• For a chemical product intended for use in medicine or
agriculture, the specification shall be specific to one
chemical product only describing physical,
pharmacological and pharmaceutical properties, or as
the case may be, the properties related to its use in
agriculture and its impact on environment.
 Contents of Specification

• Section 15(3)– every complete specification shall

a. Describe the invention and the method by which it
is to be performed;
b. Disclose invention which is known to applicant for
which he is entitled to claim protection; and
c. End with a claim or claims defining the scope of the
invention for which protection is claimed.
Rights Conferred by Patent (Section 30)

• Exploitation of patent invention by a person other than

owner is subject to owner’s agreement.
• Exploitation of a patented invention it relates to product
means (Sec 30.2.a):
i) making, importing, offering for sale, selling or using; or
ii) Stocking for purpose of offering for sale, selling or using
• Exploitation of a patented invention it relates to process
means:
i) using the process; or
ii) doing any of the acts under section 30.2.a for a product directly
obtained by means of patented process.
Rights Conferred by Patent (Section 30.5)

• Right under the patent shall not extend to:

(a) Acts in r/o articles put on the market anywhere in the world
by owner of patent or with his consent; or by an
authorized person or in any other legitimate manner such as
compulsory license;
(b) the use of articles on an aircraft, land vehicles, or
vessels of other countries which temporarily or accidentally
enter Pakistan;
(c) acts done only for experimental purposes relating to a
patented invention; or
(d) Acts performed by any person in good faith e.g. for
education and research purposes.
Exploitation by a Government Agency or
Third Person: (Section 58.1-3)
• Fed. Govt. may, w/o prior consent of the owner of patent
decide where:
i) Public interest, national security, nutrition, health or
development of other sectors of economy so requires;
ii) Fed. Government determines that manner of exploitation
by owner or his licensee is anti-competitive; and the
Govt. intends to remedy such practices.
• Prior to Fed. Govt. decision the patent owner or any
interested person shall be provided an opportunity to be
heard;
• Exploitation to be limited for specific objective only;
•Patent owner to be compensated adequately.
Exploitation by a Government Agency or
Third Person (Section 58.4)
• When the patent owner refuses to grant license to a
third person on reasonable commercial terms and
conditions and within a reasonable time. This shall
not, however, apply in case of:-
(i) National emergency or other urgency where owner of
patent shall be informed of Fed. Govt. decision as soon
as possible;
(ii) Public non-commercial use; and
(iii) Anti-competitive practices as determined by judicial or
administrative body (Section 58.1.ii).
• For semi-conductor technology authorization only
for non-commercial public use or where judicial or
administrative body so decides to curb anti-
competitive behavior.
 Compulsory Licensing (Section 59)
• Under the powers vested in Controller Patents under Patent
Ordinance, 2000, he ca grant a non-voluntary compulsory license
specified time, if he is satisfied that patent invention is not exploited or
insufficiently exploited;

• Voluntary license shall not be issued if patent owner satisfies

Controller Patent justifying reasons for non- exploitation or under-
exploitation of invention.
 Infringement of Patents (Section 59)
• Suit for infringement of a patent – to be lodged with District Court by
patentee;
• In case counter-claim for revocation of patent is made by defendant,
the suit along with counter claim shall be transferred to High Court
for decision;
• Relief for infringement includes: Court to order to desist
from infringement; infringer to compensate the patent owner; his
attorney’s fee; prevent the infringed goods to enter channels of
commerce; confiscate goods and material/machinery used in
manufacture of infringed goods.
• Infringer to face fine and/or imprisonment or both to serve as a
deterrence from future activity of infringement.
THANK YOU VERY MUCH