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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The statutory criteria for patentability are:

  • patentable subject matter;
  • novelty;
  • inventive step (or non-obviousness); and
  • industrial applicability.

What are the limits on patentability?

The following cannot be patented:

  • inventions that are contrary to public order or morality;
  • animals and plants and essentially biological processes for the production of animals and plants;
  • diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
  • new or subsequent use of a known product or process; and
  • mere changes in the physical appearance of a chemical product where the chemical formula or process of manufacture remains the same.

To what extent can inventions covering software be patented?

Computer programs (or software) are excluded from patent protection. Thus, a claim for a computer program as such may not succeed. However, a claim (drafted in ‘means for’ language format) for a system or device working under the control of a program which, as a whole, makes a technical contribution to the state of the art or improves the effectiveness of the system or device may receive protection. For example, due to the technical purpose of their functionality, the following may be considered patentable:

  • a system for processing a physical entity; and
  • a computer-controlled method for operating an apparatus.

To what extent can inventions covering business methods be patented?

In the sense contemplated by the patent legislation, in order to be patentable an invention must result in a “new and useful” or improved product or process (ie, manner of new manufacture of a product). Thus, the following types of business method application will be rejected:

  • a business method application that does not result in a technical or scientific advancement;
  • a business method application that is of an entrepreneurial nature rather than a technological nature; and
  • a business method application that is of an abstract nature and does not fulfil the manner of new manufacture test, which requires a physical anchor to turn an invention into a viable commercial product.

To what extent can inventions relating to stem cells be patented?

Excluding human embryonic stem cells and stem cell lines per se, isolated stem cells, their modified versions, novel processes for their isolation or processes involving the use of somatic cell nuclear transfer technology for the development of patient-specific stem cell lines may be protected, provided that the specification describes a specific, concrete and credible function of the cell line, supported by some experimental data or working examples.

Are there restrictions on any other kinds of invention?

Restrictions are imposed on:

  • discoveries, scientific theories or mathematical methods;
  • literary, dramatic, musical or artistic works or any other creations of purely aesthetic character;
  • schemes, rules or methods of performing mental acts, playing games or doing business;
  • the presentation of information; and
  • substances that exist in nature or are isolated therefrom.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A novelty grace period of 12 months is provided under the law by excluding from consideration the inventor’s own disclosure of the invention in respect of goods that are displayed at an official or officially recognised international exhibition before the filing date or, if priority is invoked later, the date of introduction of the article into the exhibition.

The term ‘official and officially recognised international exhibition’ has the same definition as set out in the Paris Convention. Therefore, in Pakistan, the meaning of this term has not yet been extended to cover transient disclosures such as lectures at scientific conferences. However, it is well established that an invention cannot be considered to lack novelty unless the evidence relied on to establish that the information conveyed through an oral disclosure was “disclosed/made available to the public” beyond any reasonable doubt. An alleged prior publication with speculative information cannot destroy novelty. In other words, something cannot be said to have been “made available to the public” merely through a published statement of its existence unless the working method was so self-evident as to require no explanation to a person skilled in the art.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Two types of opposition procedure are available: pre-grant and post-grant.

A pre-grant opposition can be filed at any time within four months of the date of publication of the acceptance of a complete specification in the Official Gazette of Pakistan (Part V) on any of the following grounds:

  • The patent was wrongfully obtained.
  • The invention is not patentable.
  • The disclosure is non-enabling.
  • The claims are unclear.
  • The claims extend beyond the scope as originally filed.
  • The invention is not fairly based.
  • The invention is not novel (ie, prior claim or prior publication).
  • A post-grant opposition can be filed with the controller within 12 months of grant by any interested person that did not oppose its grant. However, if a patent infringement action or revocation proceeding is pending before a court, an application to the controller cannot be made without leave of the court.

The forum for both pre and post-grant opposition proceedings is the Pakistan Patent Office. 

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Apart from oppositions, third-party observations regarding the novelty of an invention can be made at any time after the specification has been published. The person making such an observation cannot become a party to the proceedings before the Pakistan Patent Office concerning the application.

How can patent office decisions be appealed in your jurisdiction?

An appeal against a decision, order or direction of the controller may be lodged with the High Court or the federal government within three months or within a further period following the date of the decision, order or direction as set down by the High Court. However, a decision, order or direction made or issued by the federal government cannot be appealed.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The cumulative effect of the relevant legal provisions suggests that the patent grant procedure must end within four years of filing of patent application. This is critical to avoid, for example, activating legislative provisions providing for the grant of compulsory licences. However, since the new prosecution regime came into force in 2006, it has been used by many applicants to delay prosecution until the best commercial strategy for working the patent has evolved, and this may have led to an increase in the number of patents and patent applications that are forfeited or revoked.

Since prosecution delay cannot be used to justify a delay in the working or non-working of a patented invention, a carefully thought-out patent strategy is vital.

The cost will depend on two factors:

  • the reputation of the counsel engaged; and
  • the patented technology and the complexity of the examination report.
  • On average, patent prosecution costs between $3,000 and $5,000.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Civil judicial procedure

The most effective ways to enforce patent rights are through civil judicial proceedings and remedies, such as:

  • an injunction ordering a party to desist from infringement;
  • compensation for damages; and
  • the destruction or removal from the market of infringing goods and materials or the tools and machinery used to produce infringing goods, and the closure of related facilities).

In urgent cases, the court or IP tribunal can issue interim or ex parte injunctions to order provisional or temporary measures to prevent infringement and/or to preserve relevant evidence(eg, raids, seizure, suspension of release into trade and provisional closure of retail outlets).

Customs actions
Where an infringing product originated in another jurisdiction, a plaintiff may either attempt to prevent the infringement at its source or intercept the infringing articles at the point of import. If this includes imported goods, the rights holder must apply for customs action as soon as it becomes aware that the goods will be imported. This application must be supported by evidence that the applicant is the rights holder, as well as relevant information, samples or details of the goods in order for Customs to identify them. Upon receipt, the application is processed by Customs and, if it finds goods which it suspects of being infringing, it may suspend the release of the goods or detain them. The applicant is then informed and can inspect the goods and remove samples for analysis. Under the Pakistan Patents Ordinance, 2000, Customs cannot detain the goods for long and may release them where:

  • the applicant fails to initiate court proceedings within 20 working days or 31 calendar days; or
  • court proceedings are initiated, but the goods are found not to be infringing or no threat of infringement is found. In the latter situation, at the defendant’s request, the court may order compensation for the damage caused.

On the other hand, if the rights holder commences an action, Customs may continue to detain the goods pending the outcome of the full trial. If the goods are found to be infringing, the competent authorities can destroy them and may take other measures to deprive the infringer of the benefit of the transaction.

What scope is there for forum selection?

Given the transnational dimension of IP rights, the exclusive jurisdiction to hear infringement proceedings rests with the special IP tribunals. Within Pakistan, the appropriate forum is generally the place where the defendant has its domicile or place of business. Where the infringement crosses national boundaries, at present neither the law nor practice is amenable to the idea of injunctions covering foreign territories (so-called ‘long-arm’ injunctions). However, in exceptional circumstances the court may be motivated to grant such injunctive relief.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Litigation involves the following stages:

  • filing of the complaint, together with all relevant documents supporting the claims made therein;
  • a preliminary hearing to rule on whether the suit is valid, its registration or dismissal and the issuance of a summons to the defendant if the required threshold of a strong prima facie case (or at least a serious question to be tried) is established;
  • filing of defence or written statement by the defendant, together with all supporting documents;
  • framing of the issue, filing of the witness list and the list of documents to be relied on;
  • recordal of evidence, including examination and cross-examination of witnesses; and
  • final arguments and court decision.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

In Pakistan, the procedural practice is very similar to that in other jurisdictions. A party may delay proceedings by:

  • citing the non-availability of counsel, requisite documents or witnesses on a particular date;
  • requesting extensions to prepare the defence at every stage of the proceedings;
  • showing a lack of trust in the court or tribunal; or
  • repeatedly changing counsel.

The other party may frustrate such attempts by filing a civil miscellaneous petition for the early or urgent hearing of a matter. If this fails, it can file a petition for either the imposition of a nominal fine or the transfer of the proceedings to another court or tribunal.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Patent revocation proceedings challenging the validity of a patent in anticipation of a potential infringement suit may be the result of:

  • pre-litigation (or without prejudice)communication with the defendant containing an explicit or implicit threat to litigate; or
  • the right of a competitor to challenge the patent’s validity on one or more legal grounds (eg, lack of novelty or inventive step).

At trial
What level of expertise can a patent owner expect from the courts?

The Pakistan patent system dates back to the 19th century, but only in September 2015 did the government constitute IP tribunals as specialised substitutes for the district courts, which were previously the primary judicial forum for IP disputes. The goal behind the creation of the IP tribunals was to conceptualise and create a judicial mechanism that could address the technical and complex nature of IP laws and ensure adjudication of cases with speed, economy, consistency, predictability and quality. Although judges and presiding officers are not yet IP specialists, they are experienced and consider cases with the assistance of technical and scientific experts. Thus, a patent owner can expect a high level of expertise from the Pakistani courts.

Are cases decided by one judge, a panel of judges or a jury?

At the court or tribunal of first instance (trial or appeal), the case is heard by a single judge. However, in further appeal or review petitions or where he or she thinks fit, the judge may refer the case to a larger bench of the High Court or the Supreme Court.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist.

What role can and do expert witnesses play in proceedings?

Given the technical and complex nature of patent infringement proceedings, the courts or IP tribunals are used to relying on expert evidence in a range of different matters – for example, the meaning of technical terms, know-how about new technologies (eg, genes, stem cells and research tools), and how the patented product or process differs from the infringing product or process.

Although the court or IP tribunal can hear expert evidence, ultimately it is for the court to decide the case on its merits.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

To date, there are no reported judgments which have debated the application of the doctrine of equivalents. However, building on the well-recognised concept of the purposive rather than literal construction of claims (as advocated by the House of Lords in Catnic v Hill, Remington Smith v Improver Consumer Products and Kirin-Amgen v Hoeschst Marion Roussel Ltd), it has been established that the replacement of a material element with a structurally obvious and functionally equivalent element, falling within the scope of the claims, may constitute infringement. Further support on the likely application of the doctrine of equivalents can be found in the Patent Law and the rules of practice, according to which a generic claim to a new chemical entity per se covers its structurally similar compounds or obvious variants, provided that all of these can be reasonably proved potentially to:

  • work in substantially the same way;
  • have substantially the same function, and
  • produce substantially the same result.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

It is possible to obtain a preliminary injunction pending full trial. Such injunctive relief is discretionary and requires the plaintiff to demonstrate that:

  • it has a strong prima facie (or arguable) case of infringement. This can be established by showing that:
    • the plaintiff is the rights holder;
    • the patent in suit has been granted and is deemed to be valid;
    • the infringement either has occurred or is impending (the threatened infringement); and
    • the infringing or likely infringing activities cannot be stopped other than by an injunction;
  • the matter involves urgency and, if an injunction were not granted, “irreparable loss” (or substantial disadvantage) would be caused to the plaintiff;
  • the loss cannot be cured by the award of damages and an injunction at full trial;
  • considering the balance of inconvenience, a remedy in equity is justified; and
  • an interim injunction would not jeopardise the public interest.

How are issues around infringement and validity treated in your jurisdiction?

Infringement and validity are dealt with in separate proceedings. An infringement suit is normally heard by the IP tribunal; however, where a counterclaim for revocation of the same patent is made by the defendant, the suit and the counterclaim are transferred to the High Court. If an infringement action or revocation proceedings are pending, leave must be obtained from the court or IP tribunal in order to initiate revocation proceedings before the controller.

The forum for validity or revocation proceedings may be the Pakistan Patent Office, the courts or the federal government. Each forum has different periods for filing a petition and grounds for revocation.

Before the controller, such proceedings must be initiated within 12 months of grant of the patent and based on one or more grounds on which the grant could have been opposed (ie, non-entitlement, lack of patentability, insufficiency, claims lacking clarity or extending beyond the scope of original disclosure, lack of fair basis or a prior claim).

Where the forum for judicial proceedings is the High Court, the grounds for revocation must be one or more of the grounds on which the grant of a patent may be refused (ie, lack of novelty, lack of fair basis, non-unity, insufficiency, double patenting or a prior claim).

Where the government has filed a petition for revocation, the High Court may revoke the patent if the patentee has no reasonable cause to comply with the government’s request to make, use or exercise the patented invention for its service on reasonable terms.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The recognition and enforcement of foreign judgments in the sense contemplated by the EU Brussels Regulation is not applicable in Pakistan. However, where the question of law and the issues to be tried are similar, the courts will consider decisions from other jurisdictions, especially judgments delivered by the UK, US and EU courts.

Damages and remedies
Can the successful party obtain costs from the losing party?

Although not common practice, the successful party may claim damages and expenses, including attorney’s fees, from the losing party.

What are the typical remedies granted to a successful plaintiff?

Typical remedies include:

  • a final or permanent injunction;
  • the delivery up or destruction of infringing goods;
  • damages or costs;
  • accounts of profits; and
  • a declaration of validity.

How are damages awards calculated? Are punitive damages available?

Although an amount of damages principally depends on the circumstances of each case, the following factors may be considered when assessing an award for damages:

  • Lost profits – where the patentee exploits the invention, the profit which the plaintiff has lost as a result of the competing sales of the infringing goods by the defendant.
  • Lost opportunities – opportunities which would have been generated but were lost due to the infringer’s activity.
  • Market damage – injury to the reputation and loss of goodwill of the patented rights due to a low-quality product put on the market.
  • Royalties – where the patentee exploits the invention through a licence, an award based on the royalties that would have been received.

Punitive damages are not generally available in patent infringement proceedings.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Few patent cases have gone to full trial; therefore, it is hard to assess the likelihood of obtaining a permanent injunction. However, based on the ratio of interim injunctions sharing the same threshold as required for permanent injunctions, the courts or IP tribunals may grant permanent injunctions to plaintiffs which successfully demonstrate that their rights have been infringed. Injunctions are a discretionary remedy and may be refused where:

  • the infringement is of a trivial nature;
  • the plaintiff’s loss can be estimated in financial terms;
  • it would be oppressive to the defendant;
  • the plaintiff’s interest is limited to monetary gains;
  • the plaintiff’s action is vexatious;
  • the infringement is old and there are no future threats; or
  • a licence is available as of right to the defendant.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Depending on the nature of the case, the complexity of the issues involved and the interests of the parties, the court may issue a decision within three to five years. It is possible to expedite proceedings by filing such a request with the same or a superior court. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

Depending on the complexity of the issues, whether infringement and revocation issues are united in a single suit, the number of miscellaneous petitions filed and the hearings conducted, the cost of litigation can fluctuate dramatically. However, a litigant should be prepared to pay at least $12,000 to $15,000 in legal fees. If successful, this sum may be recovered from the losing party, but the risk of it being doubled to compensate the other party if the case is unsuccessful should not be ignored. 

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Both parties have the right to appeal in all cases. Appeals are heard as expeditiously as possible and the appeal court endeavours to issue a ruling within 12 months. 

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

In general, the parties are free to choose negotiation, mediation or arbitration as an alternative means of dispute resolution. Even at the early stages of infringement proceedings, the parties are invited to settle the issue amicably. However, given the substantive nature of issues involved in patent infringement proceedings, civil proceedings are recommended.