In brief: patent prosecution in Pakistan

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patent under the Ordinance covers any new and useful product or process, in any field of technology, and includes any new and useful improvement of either of them but software, business methods and methods of medical treatment are excluded from patentable subject matter. Non-patentable subject matter is given in sections 7(2) and 7(4) of the Ordinance, which includes the following categories:

• discovery, scientific theory or mathematical method;
• literary, dramatic, musical and artistic works;
• scheme, rule, method of performing mental act, game or doing business;
• presentation of information;
• inventions contrary to law or morality or prejudicial to health and environment;
• substances that exist in nature or are isolated therefrom;
• plants and animals and essentially biological processes for the production of plants or animals;
• methods of medical treatment including diagnostic, therapeutic and surgical methods for humans or animals;
• new or subsequent use of a known product or process; and
• mere change in physical appearance of a chemical product if it does not meet the criteria of patentability.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The right to the patent for an invention made by an employee during the course of his or her employment in the area of activity of the employer belongs to the inventor in the absence of any contractual obligation to the contrary except when the employer proves that the invention could not have been made without the use of the employer’s facilities, equipment and the like necessary for the invention.

In the case of multiple inventors or a joint venture, unless an agreement to the contrary is in force, each of the persons is entitled to an equal undivided share in the patent.

The right to a patent is recorded in the Register of Patents maintained in the Patent Office and this right may be assigned to any person or legal entity during the pendency of application or after the patent is granted.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

Once the application is filed, it is examined and usually an examination report is issued within the year and prosecution takes two to three years depending on the complexity of the subject matter. Once the invention meets patentability criteria, the application gets accepted. After acceptance of the application by the Controller of Patents, the application is published in the Patents Journal for opposition purposes. If no opposition is filed within four months, a sealing fee is paid and a Letters Patent Document is issued. The official fee from filing to grant with two official actions would be US$100 approximately; however, the attorney fee may vary from case to case.

Are there any procedures to expedite patent prosecution?

There is no procedure to expedite the prosecution in law at the moment.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The guidelines for contents of the specification are given in section 15(3) of the Ordinance, which requires every complete specification shall fully and particularly describe the invention and the method by which it is to be performed with sufficient disclosure of invention and end with a claim of concisely defining the scope of the invention for which protection is claimed.

However, according to section 15(4) of the Ordinance, the claims of invention shall relate to a single invention, must be clear, succinct and shall be fairly based on the matter disclosed in the specification.

The Patent Office has provided the guidelines to draft a specification in a manner that meets the standard required by the Patent Office and it can be viewed on the official website of the IPO Pakistan www.ipo.gov.pk.

Must an inventor disclose prior art to the patent office examiner?

It is not an obligation on the applicant or inventor to disclose prior art. However, as per section 17 of the Ordinance, during the examination of an application the Controller may ask for a reference to other patents to avoid substantial risk of infringement of other patents. Furthermore, to have a speedy prosecution it is important to include prior art in the specification to distinguish novel features of the invention and its non-obviousness over prior art in the international context and technological developments in that area of technology whereas failure to mention the same may result in the issuance of multiple examination reports and delay in the acceptance of the application.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Since unity of an invention is a strict condition, divisional application may be filed at any time before acceptance of the application, which is examined and accepted together with the parent application. A patent of addition can also be filed for improvement or modification of an invention for which a patent has already been applied for or granted.

Is it possible to appeal an adverse decision by the patent office in a court of law?

According to section 69(3) of the Ordinance, an appeal shall lie with High Court against any decision, order or direction of the Controller or, as the case may be, the federal government under any of the provisions of the Ordinance and it shall be made within three months from the date of the decision, order or direction of the Controller.

Does the patent office provide any mechanism for opposing the grant of a patent?

After acceptance, a patent application is advertised in the Patents Journal and within four months of advertisement any person may give notice of opposition against the grant of the patent to the Controller of Patents. Notice of opposition comprises grounds and a statement setting out fully the nature of the opponent’s interests and facts along with prescribed form and fees under Rule 18 of the Patents Rules 2003.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

There is no mechanism given in the Ordinance except that the Patent Office follows the first to file rule unless there is a priority claim in an application.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Improvement or modification of an invention for which application for patent is being filed or has already been filed or a patent has been granted and upon a request by the applicant the Controller may grant a patent of addition by virtue of section 39 of the Ordinance. This patent of addition application is examined in the same manner as its basic application. However, under the provision of section 41 of the Ordinance, patent of addition is not to be refused on the ground of inventive step.

Further, in the case of an invention being an improvement in or modification of another invention is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, under section 39(2) of the Ordinance the Controller may upon request of the patentee revoke the patent for the improvement or the modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.

According to section 43 of the Ordinance, in any proceeding for revocation of a patent before the High Court, the High Court may allow the patentee to amend his complete specification and if in any such proceedings for revocation the High Court decides that the patent is invalid, it may allow the specification to be amended instead of revoking the patent.

How is the duration of patent protection determined?

The total term of a patent in Pakistan is 20 years from the filing date of the application and in the case of a convention application the date of such earliest application filed in the convention country from which priority has been claimed. The duration of patent protection is not extendable.

Law stated date

Give the date on which the information above is accurate.

20 March 2021.