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Enforcement through the courts

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. 

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