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?

The patent right holder of a product or process patent can enforce his or her right against making, using, offering for sale, selling or importing the product or the product obtained from the patented process, as the case may be, if such act is done without his or her consent.

The holder of a patent can bring a suit for infringement before the Intellectual Property Tribunal (IP Tribunal) of the relevant jurisdiction under section 60 of the Patents Ordinance 2000 (the Ordinance), which has exclusive power to entertain and decide such cases pertaining to infringement of intellectual property laws. Subject to the provisions of Intellectual Property Organization Act 2012 (the Act) the IP Tribunal has all the powers vested in a civil court under the Code of Civil Procedure 1908 (Act V of 1908) and in a Court of Session under the Code of Criminal Procedure 1898 (Act of 1898) respectively.

In relation to the import or export of infringing patented goods, the patentee can take action through the customs authorities under section 15 of the Customs Act 1969 and the Custom Rules 2001.

Trial format and timing

What is the format of a patent infringement trial?

The format of patent infringement trial is that pleadings are drafted on the basis of law, facts and evidence and filed along with interlocutory injunction application together with affidavits. After the preliminary hearing, either an interim injunction application is granted restraining the infringer to use the patent or notice is issued to the defendant for appearing in a court or tribunal. After the decision on the injunction application, the main suit proceeds and issues are framed and then parties record their evidence relying upon the evidence submitted at the time of filing of pleadings and defence. The plaintiff and defendant appear themselves along with their witnesses, if any, they are cross-examined by the respective counsel. Thereafter, the case is fixed for final arguments and a court or tribunal passes the decision. However, if the interlocutory application seeking an injunction is allowed or refused by the court or tribunal, then the aggrieved party may prefer an appeal.

The court has the power to appoint an independent expert to assist it or to investigate any question relating to some scientific matter or fact and produce a report before the court or tribunal.

Since there is no jury in Pakistan, the disputed issues are decided by a judge. 

The trial of a single patent typically takes around two to five years in Pakistan.

Proof requirements

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

According to Qanun-e-Shahadat 1984 (Evidence Act), the burden of proof rests on the person pursuing the relevant cause of action (ie, infringement must be proven by the right holder and invalidity must be proven by the party seeking revocation).

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?

Under section 60, a patentee or under section 64 of the Ordinance an exclusive licensee can sue for infringement of a patent and may prevent third parties not having the owner’s consent from the acts of making, using, offering for sale, selling or importing an invention.

An accused infringer may bring a lawsuit on the basis of groundless threat under section 66 of the Ordinance for declaration under section 66 of the Ordinance that the threats have been unjustifiable or obtain an injunction in the case of continuance of threats or damages sustained by him or her.  

A person may bring a lawsuit to obtain a declaration of non-infringement under section 67(1) of the Ordinance, to show that the plaintiff had applied in writing to the patentee or licensee together with the process or article and that the patentee or licensee refused or neglected to give an acknowledgement.

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?

According to section 60 of the Patents Ordinance 2000, to prove infringement, the product or process against which infringement action is taken needs to satisfy all of the essential features of a patented invention.

However, even if the infringed product or process in question does not satisfy all of the essential features of a patented invention but it manifests a part of the patent that is not claimed in claims but is a part of the disclosure of invention, it would amount to contributory or indirect infringement pursuant to section 60 of the Ordinance. Hence, any person can be found liable for contributory infringement if he or she offers to import or put on sale any of the components protected under the patent. Multiple parties can, therefore, be liable for contributory infringement.

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?

The Civil Procedure Code 1908 (CPC) allows multiple parties to be joined as defendants in the same lawsuit. Order 1, Rule 3 thereof provides that all persons may be joined as defendants against any right to relief in respect of, or arising from, the same act or transaction or series of acts or transactions whether jointly, severally or in the alternative and if separate suits were brought against such persons any common question of law or fact would arise. In this regard all the defendants must be alleged for infringement of the same patent in question as joined parties; either they are alleged for using, making or selling a whole patented product or a product obtained from a patented process or liable for partial or contributory infringement.

Infringement by foreign activities

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

A patent right granted in Pakistan can be extended within the territorial boundaries of Pakistan.

Infringement by equivalents

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

There is neither any statuary provision in the Ordinance nor any judicial rulings from superior courts that govern the scope of infringement by applying the doctrine of equivalent in Pakistan.

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?

There is no mechanism by which a party can obtain relevant information and evidence from another party or third parties or from any opponent outside the country.

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 a patent infringement lawsuit in the trial and appellate court, whereas a preliminary injunction takes approximately two to six months but final order takes around two to five years or more.

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 on various factors, including amounts involved and complexity of the patent invention. The range varies from case to case and attorney to attorney, ranging from US$7,000–US$30,000. A contingency fee is not allowed.

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 section 19 of the Act, any person aggrieved by the final judgment and order of the Tribunal may, within 30 days of the final judgment or order of the Tribunal, refer an appeal to the High Court with jurisdiction over the Tribunal. If an appeal is filed against any order passed by the Tribunal it will be heard by a single judge and if the appeal is filed against any judgment or decree it shall be heard by a division bench of the High Court.

Any judgment, decree or order passed by the High Court can be challenged in the Supreme Court of Pakistan.

Admissibility of new evidence may be allowed according to Order 41 Rule 27 of CPC on the basis that either the lower court refused to admit evidence that is required to be admitted, or if the appellate court requires any document or any witness examined to enable it to pronounce judgment, or for any other substantial cause.

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?

If the federal government determines and is satisfied that the patentee or his or her licensee is anticompetitive and that the exploitation of the invention would remedy such practices, then the federal government under section 58 of the Ordinance, even without the consent of the owner of the patent, may allow a government agency or a third person designated by the federal government to exploit a patented invention.

Moreover, if the licence agreement or any other contract between the patent owner and any third party contains any anticompetitive clause, permission from the Competition Commission of Pakistan is required under section 5 of the Competition Act 2010.

Alternative dispute resolution

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

An alternative dispute resolution mechanism is available in Pakistan.

Section 89(A) of CPC provides for alternative dispute resolution and, if the court considers it necessary with regard to the facts and circumstances of the case, with the consent of the partiesit may adopt an alternative dispute resolution method such as mediation or conciliation. This provision, together with Rule 1A (iii) Order X, gives that the court may adopt any lawful procedure within the provisions of CPC, and with the consent of parties may opt for an alternative method of dispute resolution, including mediation, conciliation or any such other means. After the said mediation, if any issue arises for the enforcement of settlement the court will play its role to enforce the decision of the mediator.

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20 March 2021.