Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

According to section 60 of Patents Ordinance 2000, a patentee may institute a suit in a district court with the required jurisdiction, against any person who makes, sells or uses the patented invention without acquiring the required licence or permission or tries to imitate or counterfeit the patented invention. However, the federal government, under section 16 of the IPO Act 2012, has established IP tribunals that are now fully functional in every province, and all IP cases including patents are to be filed with the tribunal possessing the necessary jurisdiction.

A tribunal has the powers equivalent to that of the District Court and thus has the requisite authority to order provisional measures, inaudita altera parte where appropriate; this relief is available where delay might cause irreparable harm to the rightful holder, or where there is demonstrable risk of evidence being destroyed.

Furthermore, there are administrative measures available to give redress to the aggrieved party such as one provided in the Customs Act 1969 section 15, which mentions that goods involving infringement within the meaning of Patents Ordinance 2000, shall not be imported into or exported out of Pakistan, and if there is such an attempt, they shall be seized, confiscated or detained by the Assistant Collector of Customs. Moreover, the Directorate for IPR Enforcement has been established at the Customs and recently, under SRO 170(I) 2017, the powers of the Directorate have been enhanced, whereby it actively informs brand owners when a consignment bearing infringing goods has been identified by the customs authorities, who may then choose to take action against the owner of the counterfeit goods. Another administrative measure available to the parties in patent infringement suits is arbitration, where in case of differences, the parties may seek to resolve the dispute by arbitration under the Arbitration Act of 1940.

Trial format and timing

What is the format of a patent infringement trial?

Patent infringement trials are civil proceedings, hence, according to the Civil Procedure Code (CPC) 1908 section 26, the suit shall be instituted by the presentation of a plaint, which shall be accepted by the presiding officer. Thereafter a summons may be issued to the defendant to appear and answer the claim. The court may make an order as necessary or reasonable for answering or interrogation of the admission of documents and facts, production and return of documents or any other material as producible evidence. Moreover, the court may order any fact to be proved by affidavit and award an interim relief as claimed by the plaintiff. After the case has been heard, the court shall pronounce judgment, and on such judgment, decree shall follow. Juries are not a part of the civil suit. A typical suit may last for two to five years.

Furthermore, according to section 68 of the Patents Ordinance 2000, the court has the power to appoint an independent scientific adviser to assist the court or to inquire and report upon any question of fact or opinion, who shall make a conclusive report upon the matter at hand.

Moreover, according to section 104 of the Patents Ordinance 2000, the High Court has the power to make rules consistent with the ordinance as to the conduct and procedure in respect of all the proceedings before it.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

According to Qanun-e-Shahadat Order 1984, section 117, the burden of proof with regard to infringement, invalidity and unenforceability lies with the plaintiff.

According to section 61(2)(c) of the Patents Ordinance 2000, the court shall have the authority to require the applicant to provide any reasonably available evidence to satisfy it with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide assurance sufficient to prevent the defendant. Moreover, the court may require the applicant to supply other information necessary for identification of the goods concerned.

Furthermore, the defendant or accused infringer will have to provide sufficient evidence when challenging patentability of the patent. The burden of proof for establishing infringement, invalidity and unenforceability is a civil standard of proof, which is on balance of probability.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Any natural or judicial person, including an association or body of individuals, whether incorporated or not, can sue for patent infringement provided that person is a valid patent holder, whose patent has been sealed or granted. Such a person shall be referred to as a patentee, which term in relation to a patent may include one who has been entered on the Register as the grantee or proprietor of the patent, and it also includes any subsequent assignee or successor-in-interest or a patent recordal of whose name on the Register is pending with the Controller.

The accused infringer has the legal right and remedy to bring a law suit and obtaining a judicial ruling in his favour. If a person who is entitled or interested in patent threatens any person for infringing a patent, a person who is innocent and aggrieved by the said act may bring a proceeding for groundless threat of infringement according to section 66 of the Patents Ordinance 2000.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

A person can be liable for contributory infringement of a patent if he or she offers to sell or import a component of a patented invention or a combination or a composition of the material which belongs to a patented process or which constitutes a significant or material part of the patented invention. Therefore, civil liability for contributory infringement exists whereby an injunction or interlocutory injunction may be directed towards a person contributing to an infringement.

Moreover, it is possible for multiple parties to be liable for infringement of a patent if each of them practise some or single steps or elements of a patented invention, but together they practise all the elements. Furthermore, parties may also be liable for infringement of a patent if they infringe some steps of the patented invention but not the patent as a whole.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

According to the CPC 1908 Order 1 section 3, persons or parties may be joined as defendants to a single suit if any right to relief or in respect of or acts arising out of the same cause of action or series of acts or transactions is alleged to exist against someone, whether jointly severally, or in the alternative, where if separate suits were brought against such person, common question of law or fact would arise. Moreover, it is essential that all the defendants must be infringers of the same patent in question for them to be a joint party.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Patents are a territorial right, that is, they are exclusive rights that are only applicable in the country or the region in which the patent has been filed and granted. Infringement activities that happen outside the region or jurisdiction cannot be penalised, however, the patentee can make an effort to stop others from making or selling it overseas. This can be achieved if the patent coverage is provided in the foreign country by filing a patent application in each of the countries separately, which shall be subsequently examined and issued. However, if the infringed product enters the territories where the product is patented, a valid legal action can be brought against it.

However, the Customs Act empowers customs officers in Pakistan to take action against the import and export of goods violating the patents rights by seizing or confiscating the goods. SRO 170(I) 2017 lays down the procedure to file complaints with the customs authorities, who shall then initiate appropriate action.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

‘Equivalents’ in the patent system allow the court to hold a party liable for patent infringement even when the infringing device or the process does not fall within the literal scope of the patented claim, but it is equivalent to the claimed invention. There is no statutory provision or a judicial ruling that governs the scope of infringement by equivalents. However, the courts are welcoming to new terminologies and doctrines as they come in the Patent Law of Pakistan as it is in the developmental stages.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

To obtain evidence in a patent infringement suit, once the suit has been filed in the court at the first hearing the court shall ascertain from each party whether they admit or deny the allegations of the plaint. The court may, with the consent of parties, conduct examination of the witnesses and admit documents. According to CPC 1908, the court may order the production of documents in the parties’ possession relating to the matter in the suit henceforth; documentary evidence of every description in the possession of the parties that they intend to rely on should be provided to the court. Apart from the documentary evidence, the court may order the parties to the suit to give evidence or produce documents in their possession. Moreover, the court may at any stage of the suit inspect any property or thing concerning which any question may arise.

In instances where the party resides outside the country, the court may issue a commission or a letter of request for examination for the party who is unable to attend the court for given reasons. Therefore, the report of the commission and the evidence taken by him or her shall form an integral part of the evidential record.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

There is no fixed time frame for an infringement or dilution or related actions for cases being dealt with at the trial court level as much depends on a case-by-case basis. A preliminary injunction takes approximately two to six months, whereas the finality of the lawsuit is attained within two to five years. The time frame for an appeal against an order against the preliminary or permanent injunction is not fixed but may take around two to three years.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical range of costs of a patent infringement lawsuit before trial, during trial or for an appeal depends on the nature of the case and may range from US$7,000 to US$25,000 or more. Technically, a successful plaintiff may be able to recover reasonable costs depending on the court’s assessment of the matter and the losses suffered by the successful plaintiff. However, Pakistani courts are extremely reticent in granting costs or pecuniary relief in intellectual property (IP) matters; in rare cases where damages or costs have been granted, they are limited to a small fraction of the cost.

There is no express bar on contingency fees in Pakistan. However, under the Canons of Professional Conduct and Etiquettes of Advocates as given in Chapter XII of the Pakistan Legal Practitioners and Bar Council Rules 1976, various factors are stipulated that are deemed proper to consider in determining the advocate’s fee.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

As per the Intellectual Property Act 2012, a suit for infringement of a patent is to be instituted in the tribunal exercising jurisdiction. As aforesaid, if the tribunal is not operative then the suit may be instituted at the court exercising original jurisdiction.

Any judgment, decree or order passed by the tribunal is appealable before the High Court exercising jurisdiction over the tribunal. If the appeal is filed against an order, the appeal will be heard by a single judge but if the appeal challenges the judgment or decree passed by the tribunal, it shall be heard by a division bench of the High Court.

Subject to the provisions of the Constitution of Pakistan, any judgment, decree or order passed by the High Court can be appealed before the Supreme Court of Pakistan, provided special leave to appeal is granted by the Supreme Court and any decision on such appeal by the Supreme Court is final.

An important exception to the above is the unique jurisdiction of the High Court of Sindh at Karachi, owing to the status of Karachi as the country’s commercial hub. Civil suits valued at over US$150,000, including patent infringement proceedings, can be filed directly before the single judge of the High Court of Sindh exercising original jurisdiction. Any order, judgment or decree passed by a single judge shall be appealable before a division bench of the High Court of Sindh comprising two judges. Any order, judgment or decree passed by the division bench of the High Court shall be appealable before the Supreme Court of Pakistan in the same manner as described earlier.

Admissibility of new evidence at an appellate stage is generally disallowed; however, there are exceptions to the rule. Under Order 41, Rule 27 CPC 1908, new evidence may be admitted at the appellate stage for one of two reasons: first, if it is evidence that ought to have been admitted at the lower court but was not; or second, if the new evidence is required by the appellate court in order to deliver a judgment. Wherever additional evidence is allowed, the court must record the reason for its admission.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Patent rights are considered valid exclusive rights and the enforcement of these rights and the subsequent exclusion of all other parties from using a valid invention would not give rise to competition violation, unless the patent owner has obtained the patent through unlawful means. The unlawful measures may include the employment of patenting strategies, the sole purpose of which is to unjustly extend the term of a patent or threaten others with litigation. It may be noted that this issue has thus far not been tackled by the courts or by the Competition Commission of Pakistan, which is the country’s regulatory body for competition matters.

In addition to the above, there are certain limitations contained within patent law that permit the federal government to disentitle a patent owner from exercising exclusivity. These include fair use provisions (use for research, use by government, etc), as well as provisions on compulsory licensing that compel a patent owner to license the patent to third parties.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution (ADR) techniques such as mediation and arbitration are available in Pakistan. Although not commonly used by parties, in some cases it is cheaper and a relatively quicker way than using court proceedings and is therefore encouraged. The decisions for settlements are binding upon the parties and cannot be challenged. However, enforcement of the settlement is, on some occasions, problematic, if one of the parties refuses to accept the decision of the mediator or the arbitrator for settlement. The court would then have to be approached to enforce the decision of the arbitrator, which can sometimes be a lengthy process.

There is no compulsion on the parties to enter into mediation. However, if a pre-existing agreement between the parties in a dispute stipulates that the matter is to be referred to arbitration, then the courts are expected to refer the matter to arbitration rather than allowing civil proceedings to be entertained in the court.

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The information provided was verified between January and February 2019.