Patent Law in Pakistan

The Pakistan Patents and Designs Act, 1911 used to govern the registration and protection of patents and designs in Pakistan till October 2000. In order to bring Patent Law in conformity with the GATT/ TRIPS agreements, on October 26, 2000 it was repealed and substituted by the Patents Ordinance, 2000, relating to the registration and protection of Patents. The rules for carrying out the purposes of the Patents Ordinance, were introduced on 31 December 2003, namely The Patents Rules, 2003.

Patent Application in Pakistan

An application for a patent must be filed only by the true and first inventor or his assignee or successor -in -interest. In the latter case, the inventor or inventors in the presence of two witnesses must endorse the application. The Application must be accompanied with a Specification (compete specification where conventional priority is claimed). The specification must be on a A4 sized paper with margin of at least 2cm on top, right and bottom and 2.5cm on the left side of the paper. Drawings must be filed on smooth/ durable white A4 paper size having a margin of at least 2.5cm on the top and left side, 1.5cm on the right side and 1 cm at the bottom of the paper. In respect of conventional Patent Application priority claim is allowed in respect of Patent Application filed in Paris Convention member countries or in any of the member country of the WTO. The conventional Application must be filed in Pakistan within twelve months of the priority application. A certified copy of the application, on which the priority is based, is required to be filed at the time of filing the Pakistan application or within three months thereafter. Where the priority application is in language other than English a certified verification of English translation of the priority document must be supplied along with English Translation.

Conventional Patent Application in Pakistan

A conventional Patent Application can be filed in Pakistan claiming priority from basic application filed in Paris Convention member countries or in any of the member country of the WTO. The conventional Application must be filed in Pakistan within twelve months of the priority/ basic application. A certified copy of the priority application, on which the priority is based, is required to be filed at the time of filing the Pakistan application or within three months thereafter with monthly extension fee. Where the priority application is in language other than English, a certified verification of English translation of the priority document must be supplied along with certified copy of priority Application. The application for a patent must be filed only by the true and first inventor or his assignee. In the latter case, the inventor or inventors in the presence of two witnesses must endorse the application. The Applicant must be accompanied with a complete Specification on a A4 sized paper with margin of at least 2cm on top, right and bottom and 2.5cm on the left side of the paper. Drawings must be filed on smooth/ durable white A4 paper size having a margin of at least 2.5cm on the top and left side, 1.5cm on the right side and 1 cm at the bottom of the paper. A duly notarised Form P2A is required to be submitted.

PCT National phase Patent Application in Pakistan

Pakistan is not a contracting country of PCT and therefore PCT national phase patent application cannot be filed in Pakistan.

Patent filing requirements in Pakistan

The requirement for Patent filing in Pakistan is as follows:

1. Name, nationality and full address of the Applicant;
2. Name, nationality and full address of the Inventors;
3. Specification in English on a A4 sized paper with margin of at least 2cm on top, right and bottom and 2.5cm on the left side of the paper;
4. Drawings, if any on a smooth/ durable white A4 paper size having a margin of at least 2.5cm on the top and left side, 1.5cm on the right side and 1 cm at the bottom of the paper;
5. Power of Authority in favour of Attorney (Duly notarised)
6. Certified copy of priority application (where priority is claimed) to be filed at the time of filing the Pakistan application or within three months thereafter; and
7. A certified verification of English translation of the priority document, where the priority application is in language other than English.

Official fee for patent filing in Pakistan

The basic filing fee for Patents in Pakistan is PKR 2250 for up to 40 pages of specification and up to 20 claims. Beyond 40 pages of specification, additional fee of PKR 30 per page is payable and beyond 20 claims, additional fee of PKR 75 per claim is payable. Where any amendment is made to meet the objections of the Examiner, amendment fee of PKR 250 is payable, whereas for voluntary amendment fee of PKR 750 is payable. For recording an assignment fee of PKR 750 is payable. If no opposition is filed after publication of Patent in Patent Journal, a sealing fee of PKR 2250 is payable for issuance of Patent Grant. The renewal fee is payable in respect of 5th year from the accorded filing date.

Procedure for Patent Prosecution in Pakistan

1. Filing of Patent Application accompanied by Specification (provisional or complete);
2. Filing of Complete Specification where the earlier Specification filed was provisional one;
3. Completion of procedural requirements i.e. POA, Certified copy of priority document, Certified Verification of English Translation, where applicable;
4. Examination and issuance of Examination report;
5. Responding to Office action;
6. Acceptance of Patent Application;
7. Publication in Official Gazette;
8. Sealing if no opposition within 4 months of publication and on payment of sealing fee;
9. Grant of Patent; and
10. Annuity Payment to keep Patent  in force

Sealing of Patent Application

After acceptance the application is advertised in the Official Gazette for the purposes of inviting opposition to the grant of Letters Patent. If no opposition is filed within four months from the date of publication of the acceptance, the application is sealed on payment of the sealing fee.

Renewal/ Annuity Payment

Under the Patents Ordinance, 2000, the term of a registered patent has been extended from 16 years to 20 years. The renewal fee is payable in respect of 5th year from the accorded filing date. A grace period of 6 months is available with payment of surcharge/ penalty. The Patents (Amendment) Ordinance 2006 allows due annuities/ renewal fee to be paid if the application is accepted and sealed after the due date of the 5th annuity from accorded filing date.

Trademarks in Pakistan:

Trademarks Ordinance of 2001 that was promulgated on April 12, 2004 has come into effect and as of now, Pakistan is following both the Trademarks Act of 1940 in respect of cases filed prior to April 12, 2004, as well as the new Trademarks Ordinance of 2001 for Trademark Application filed on and after April 12, 2004. Pakistan follows the International Classification of Goods and Services under the Nice Agreement (Ninth Edition) and it is possible to Register Service marks in Pakistan. Pakistan is member of Paris Convention therefore filing conventional Trademark Application is possible in Pakistan but Pakistan is not a member to Madrid, therefore for securing a Trademark in Pakistan it is necessary to file an Application locally before Pakistani Trademark Registry.  Multi class filing system is not allowed in Pakistan.

Trademark filing requirements in Pakistan:

(i) Trademark
(ii) Full Name, Address, Status and Nationality of the applicant(s)

(iii) International Class

(iv) Description of goods or service for which the mark is to be registered.
(v) The date of use of the Trademark in Pakistan (if any)

(vi) Description of Applicant whether Trader, Manufacturer, Merchant or Service Provider

(vii) Translation/ Transliteration of mark, if in language other than English

(viii) Priority details (if any) including Application no.; country and date of filing, certified copy of priority document to be filed within 3 months

(viii) Duly executed Power of Attorney (Duly notarised)

Trademark Registration in Pakistan

Following stages are encountered while registering a Trademark in Pakistan:

1. Filing of Application
2. Examination of Application
3. Issuance of Examination report, if there are any preliminary objections
4. Reply to examination report
5. Hearing (if Registrar is not satisfied with response)
6. Acceptance of Application (if reply is found satisfactory or if Registrar is convinced during hearing)
7. Publication of Trademark Application in the monthly Trade Marks Journal
8. Opposition within 2 months of publication
9. Issuance of Registration Certificate, where no opposition is preferred or after opposition is favourably decided

Term of Registration:

Under the Trademarks Act of 1940 the initial registration of the trademark in respect of Trademark applications filed prior to April 12, 2004 was valid for a period of 7 years which was further renewable for successive period of 15 years thereafter.  But under new Trademarks Ordinance of 2001 The trademarks registration in respect of Applications filed after April 12, 2004 is valid for 10 years and  can be successively registered for each term of ten (10) years thereafter.

INDUSTRIAL DESIGN IN PAKISTAN:

It is possible to claim conventional priority in Pakistan for Industrial design Applications. The Application must be made within six months of first making application in conventional country. The Design must be absolute novel and original and must not have been published anywhere in the world before its priority date/ filing date (whichever earlier)

Design filing requirements in Pakistan:

(a)   Name, address and Nationality of the Applicant (s)
(b)  Title of the Article

(c)   Various views of the Article (front, back top, side, bottom, including perspective views); In case of photograph 6 sets to be provided, drawing/sketch could be provided vide email)

(d)  Priority details (i.e. Application no.; date of filing, Country) where priority is claimed (Application must be within 6 months of priority application); Certified copy of priority document must be supplied within 3 months of filing of Application   
(e)   Power of Attorney (Duly notarised)

Term of Industrial Design:

The copyright in design is valid for 10 years and can be further renewed for one term of 10 years. Thereby making total term of valid registration to be 20 years in Pakistan.