TerraLex Cross Border Patent Guide

The main sources of patent law in Pakistan include the following:

The Patents Ordinance, 2000 (the “Patents Ordinance”): The Patents Ordinance serves as the primary legal framework governing the protection of intellectual property rights related to patents in Pakistan. It outlines the requirements for obtaining patents and establishes procedures for patent applications, examinations, and opposition. The Patents Ordinance also sets forth mechanisms for enforcing patent rights, as well as provisions for the revocation, surrender, and compulsory licensing of patents. Additionally, it includes enabling provisions for the enforcement of international conventions and treaties ratified by the government.

The Patent Rules, 2003 (the “Patent Rules”): The Patent Rules, framed by the government under the authority of the Patents Ordinance, contain detailed procedural instructions for the filing, examination, and granting of patents in Pakistan. The Patent Rules regulate key aspects such as the format for patent applications, the process for substantive examination, opposition, and publication of patents, as well as renewal and maintenance requirements. They also outline procedures for compulsory licensing, revocation, and amendments. The Patent Rules also address applications under the international conventions to which Pakistan is a party.

The Intellectual Property Organization of Pakistan Act, 2012 (the “IPOP Act”): The IPOP Act provides for the establishment of a dedicated federal agency, the Intellectual Property Organization of Pakistan (the “IPO-Pakistan”), exclusively responsible for administering and implementing laws related to intellectual property rights. It also provides for the creation of specialized intellectual property tribunals, granting them exclusive jurisdiction to resolve all civil disputes concerning the infringement of intellectual property rights, as well as offenses related to the violation of intellectual property laws.

Customs Act, 1969 (the “Customs Act”): The Customs Act prohibits the import into or export from Pakistan of goods that infringe on patents granted under the Patents Ordinance. Such infringing goods are subject to confiscation and destruction. A detailed procedure is laid down for submitting and processing complaints related to the import or export of these infringing products. A dedicated agency has been established under the Customs Act to handle these complaints.

Competition Act, 2010 (the “Competition Act”): Section 4 of the Competition Act prohibits undertakings from entering into agreements, and associations of undertakings from making decisions, regarding the production, supply, distribution, acquisition, or control of goods, or the provision of services that prevent, restrict, or reduce competition within the relevant market. Exceptions may be granted by the Competition Commission of Pakistan (the “CCOP”) under Section 5 of the Act. If a patent-related agreement contains anti-competitive covenants, it may require an exemption from the CCOP. Additionally, Section 10 of the Competition Act prohibits deceptive marketing practices, including the dissemination of false or misleading information to consumers. This includes any information lacking a reasonable basis related to the price, character, method, or place of production, as well as the properties, suitability for use, or quality of goods. Depending on the specifics of each case, the CCOP may initiate action against any infringing products.

Judicial Precedents: The judgments of Pakistan's superior courts, including the Supreme Court and provincial high courts, have a significant impact on the interpretation of patent law in the country. These judgments are binding on subordinate courts and all administrative agencies of the state, playing a crucial role in shaping the development of patent law.

International Agreements and Treaties: Pakistan is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”) and is expected to soon become a party to the Patent Cooperation Treaty (the “PCT”). Under Pakistani law, international treaties do not automatically become enforceable upon ratification; they require enabling domestic legislation for implementation. Accordingly, the Patents Ordinance includes specific provisions to implement the TRIPS Agreement in Pakistan. Further amendments to the Patents Ordinance are anticipated following Pakistan’s ratification of the PCT. Thus, these international treaties play a crucial role in shaping patent law in Pakistan.

Yes, the Patents Ordinance addresses the ownership of employee inventions.

Generally, the right to a patent for an invention created by an employee during their employment belongs to the employee. However, if the employer can prove that the invention was made using the employer’s facilities, equipment, or other essential resources, the patent rights will belong to the employer. In such cases, the employee is entitled to equitable remuneration if the invention has exceptional economic value. Additionally, depending on the facts, both the employer and employee may be held jointly entitled to the patent.

The above rules are subject to any contractual agreements between the parties.

Protection under the Patents Ordinance is available for any invention, meaning a new and useful product or process in any field of technology, or a new and useful improvement thereof, that meets the following criteria:

• it is novel;
• it involves an inventive step;
• it is capable of industrial application; and
• it is not explicitly excluded from protection under the Patents Ordinance.

The following are not considered inventions under the Patents Ordinance, and are therefore not protectable thereunder:

• A discovery, scientific theory, or mathematical method.
• A literary, dramatic, musical, or artistic work, or any other creation of a purely aesthetic nature.
• A scheme, rule, or method for performing a mental act, playing a game, or conducting business.
• The presentation of information.
• Substances that exist in nature or are isolated therefrom.

Additionally, patents are not granted under the Patents Ordinance for the following:

• Inventions whose commercial exploitation would be necessary to protect public order or morality, including the protection of human, animal, or plant life or health, or to prevent serious harm to the environment, provided that this exclusion is not solely based on legal prohibitions in force.
• Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals, excluding nonbiological and microbiological processes.
• Diagnostic, therapeutic, and surgical methods for treating humans or animals.
• A new or subsequent use of a known product or process.
• A mere change in the physical appearance of a chemical product where the chemical formula or manufacturing process remains the same, except in cases where the invention meets the criteria for patentability.

In Pakistan, software is typically granted copyright protection under the Copyright Ordinance, 1962. However, the Patents Ordinance does not explicitly prohibit the granting of patents for software. Therefore, patent protection may also be sought for software that fulfills the criteria for patentability:

• It constitutes an invention and possesses a technical character, meaning it provides a technical solution to a technical problem or achieves a technical effect.
• It is novel.
• It involves an inventive step.
• It is capable of industrial application.
• It is not explicitly excluded from protection under the Patents Ordinance.

There is currently no formal adjudication or official guidance on this issue. Under the Patents Ordinance, a patent application can only be filed by a natural person, legal entity, or an association of individuals. Additionally, the application must be made by the first and true inventor—i.e., the actual creator of the invention—or their assignee or successor in interest. AI, by itself, does not satisfy any of these requirements. However, a patent may be granted for an AI-generated invention if the application is filed by a natural or legal person who has made a significant contribution to the claimed invention and can be deemed as an inventor.

The patent application should be made on the prescribed form, including the applicant(s) or inventor(s) name, nationality, and address, along with a declaration of the accuracy of the information provided. Specific forms are required depending on whether the applicant is the inventor or another person. Additionally, specific forms must be used when claiming priority based on a previous patent application filed in a convention country, i.e., a member state of the World Trade Organization. The application must be accompanied by the following documents:

• Patent Specification: A complete specification should be submitted either with the patent application or, if the applicant initially files a provisional specification, within twelve months of filing. The specification should include the following sections: Title (indicating the subject matter); Abstract (summarizing key technical features, as per rule 10 of the Patent Rules); Background (providing an overview of the field, prior art, and its shortcomings); Detailed Description of the invention; Claims (defining the scope of protection sought); and Drawings (if applicable) as per rule 11 of the Patent Rules. The specification must be submitted along with a duly completed Form P-3 or Form P-3A.
• Power of Attorney: A Power of Attorney (Form P-28) must be submitted if a patent attorney is authorized to act on behalf of the applicant.
• Proof of Payment: Evidence of the application fee payment in the form of a pay order or demand draft from a local bank, must be included.
• Proof of Entitlement: If the applicant is not the inventor, a document establishing the applicant’s right to file the application must be provided.
• Priority Document (for convention applications): If priority is claimed based on a previously filed patent application in a convention country, a certified copy of the priority document must be submitted. If the document is in a language other than English, a verified English translation, supported by an affidavit, should also be provided.

Upon submission of the patent application, the patent office issues a written acknowledgment. If the complete specification is included, the application is assigned to a patent examiner for compliance review and a novelty search. The initial examination is typically completed within 18 to 24 months, and the examiner issues a report outlining any deficiencies. The applicant can respond to this report by amending the application to address the objections. If objections remain unresolved, a further report may be issued. Failure to comply with office actions within the stipulated time frame may result in the application lapsing.

Once the application is free from objections, the examiner accepts it, after which the patent is published in the e-journal/Official Gazette to invite opposition. If no opposition is received within four months of publication, a "sealing is due" notice is issued. Upon submission of a sealing request on the prescribed form, along with proof of fee payment, the patent registration certificate is issued. The entire process, from submission to sealing, typically takes between three to four years.

The first patent examination is typically completed within 18 to 24 months. The entire process, from the date of submission of the application with a complete specification to the issuance of the patent, usually takes between three to four years, assuming no opposition is filed.

No.

The patent maintenance/renewal fee is payable annually, commencing at the end of the fourth year from the date of the patent grant. The renewal fee varies depending on the year of renewal, ranging from US$ 45 to US$ 115 (US$ 1= PKR 280).

To qualify for patent protection under the Patents Ordinance, the invention must constitute a new and useful product or process (or any new and useful improvement of either) in any field of technology. Additionally, it must meet the following criteria:

• Novelty: It must be new and not form part of the state of the art.
• Inventive Step: It must involve a non-obvious improvement over existing knowledge that forms part of the state of the art.
• Industrial Applicability: It must be capable of industrial application.
• Patentable Subject Matter: It should not fall under excluded categories (e.g., scientific theories, business methods).

The Patents Ordinance grants the following rights to the patent owner:

• If the patent covers a product, the owner may prevent third parties, without their consent, from making, using, offering for sale, selling, or importing the product for these purposes.
• If the patent covers a process, the owner may prevent third parties, without their consent, from using the process and from using, offering for sale, selling, or importing at least the product directly obtained by that process.
• The patent owner has the right to assign or transfer the patent by succession and to enter into licensing agreements.
• The patent owner can initiate court proceedings against any person who infringes the patent by performing any of the above acts without consent or engages in actions likely to lead to infringement.

The rights of the patent owner are, however, subject to certain limitations, as discussed elsewhere in this guide.

In the absence of an agreement to the contrary, the inventor—the actual creator or a co-creator of an invention—has the right to apply for a patent for that invention. The inventor may also sell, assign, or partially dispose of their rights to the invention. If the inventor is not entitled to a patent for an invention made during an employment relationship, they may still be entitled to equitable remuneration in certain situations.

The term of a patent under the Patents Ordinance is twenty years from the filing date.

No.

Under the Patents Ordinance, the inventor is generally recognized as the first owner of an invention. If there are multiple inventors, each is considered a co-owner of the patent. However, the ownership of an invention created by an employee may differ, as discussed elsewhere in this guide.

Yes, a patent can be jointly owned by multiple persons. In the absence of a contractual agreement among co-owners, each co-owner has the following rights:

• Each co-owner is entitled to an equal undivided share in the patent.
• Each co-owner may independently exploit, use, or sell the patented invention for their own benefit without needing to account to the other co-owners.
• A license under the patent cannot be granted, nor can a share in the patent be assigned by one co-owner without the consent of the others.
• When a patented article is sold by one of the co-owners, the purchaser and any person claiming through them may treat the article as if it had been sold by a sole patentee.

All other matters among co-owners concerning the patent are generally governed by the provisions of law applicable to the ownership and devolution of movable property.

Any creation of interest in a patent—whether through transfer, assignment, licensing, or otherwise— should be documented in a written instrument that specifies the terms and conditions. Additionally, the transaction should be reported to the Controller of Patents using the prescribed form, accompanied by a copy of the written instrument and proof of payment of the official fee.

Direct infringement of patent rights occurs when a third party, without the owner’s consent, makes, uses, offers for sale, sells, or imports a patented product in Pakistan for these purposes. If the patent covers a process, direct infringement occurs when a third party uses the patented process without consent or uses, offers for sale, sells, or imports in Pakistan a product directly obtained through that patented process.

The Patents Ordinance does not explicitly define the acts that constitute indirect infringement of patent rights. However, it allows the patent owner to initiate legal proceedings not only against those engaged in direct infringement but also against individuals whose actions are likely to result in infringement. Although no reported judgments have addressed this issue to date, it is evident that this provision pertains to indirect infringement and is sufficiently broad to encompass both ‘contributory infringement,’ where a person makes, uses, or supplies a substantial component or material of a patented invention without the owner’s authorization, and ‘infringement by inducement,’ where a person actively and knowingly aids and abets another in infringing patent rights.

The Patents Ordinance does not explicitly address the concept of equivalent infringement of patent rights. Additionally, there are no reported judgments in which a Pakistani court has either applied or declined to apply the doctrine of equivalent infringement to patent rights.

Under the Patents Ordinance, the following actions are permitted concerning patent rights:

• Exhaustion of Patent Rights: Activities involving articles that have been placed on the market globally by the patent owner, with their consent, or through legitimate means (such as compulsory licenses) do not constitute infringement of patent rights.
• Use on Foreign Vessels: The use of articles on aircraft, land vehicles, or vessels from other countries that temporarily or accidentally enter the airspace, territory, or waters of Pakistan does not infringe on the patent holder’s rights.
• Experimental Use: Activities conducted solely for experimental purposes relating to a patented invention are not considered infringement of the patent holder’s rights.
• Prior Use: Person who, in good faith, was using the invention in Pakistan or making substantial and genuine preparations for such use prior to the filing date (priority date) of the patent is not infringing the patent rights. such person may continue to use the invention without violating the patent holder's exclusive rights.
• Use in Teaching or Education: Actions performed in educational or research institutions for teaching purposes do not infringe on the patent holder’s rights.
• Use of Lapsed Patent: If a patent lapses due to non-payment of the renewal fee, and more than six months have elapsed since the patent ceased to be effective, any person who, in good faith, has either begun using the patented invention or made substantial preparations to do so during that period retains the right to continue using the invention. This right persists even after the patent is restored, and such use will not be considered infringement of the restored patent.
• Government Use: In the public interest or based on specific grounds outlined in the Patents Ordinance, a government agency or designated third party may be authorized to exploit a patented invention without the patent owner’s consent. Such authorization is granted after providing the patent owner with an opportunity to be heard and upon payment of adequate remuneration. This authorization primarily pertains to using the patent for supplying the market in Pakistan.
• Compulsory Licensing: The Controller of Patents is empowered under the Patents Ordinance to issue non-voluntary licenses to prevent potential abuses arising from the exercise of patent rights. A non-voluntary license may also be issued based on dependent patents. However, these licenses are granted subject to adequate remuneration to the patent owner and after offering the patent owner an opportunity to be heard.

The primary remedy available to the patent owner under Pakistani law in the event of patent infringement is to file a civil lawsuit seeking compensatory damages, injunctive relief, and/or an account of profits made by the infringer.

Another effective remedy against the import or export of infringing products in Pakistan is the ability to seek the seizure, confiscation, and destruction of such goods by Customs authorities under the Customs Act. This provision prohibits the import or export of products that infringe patents under the Patents Ordinance, enabling swift enforcement through border control measures.

A sealed or registered patent that does not meet the statutory requirements for patentability—such as novelty, inventive step, or industrial applicability—may be revoked in whole or in part by the High Court upon a petition under Section 46 of the Patents Ordinance, or through a counterclaim in an infringement suit, based on any grounds that could have initially led to the refusal of the patent. Additionally, an interested party who did not oppose the grant of the patent may apply to the Controller of Patents under Section 47 for an order revoking the patent on similar grounds. This application must be filed within twelve months of the patent's sealing.

Infringement and patent invalidity can be addressed in the same or separate proceedings. Patent infringement cases are initiated before intellectual property tribunals. However, if the defendant files a counterclaim for patent revocation during infringement proceedings, the matter is transferred to the High Court for resolution.

Yes, a plaintiff in an infringement suit may request the court to order prompt and effective provisional measures to prevent further infringement or to secure evidence related to the alleged infringement. These measures may include blocking the infringing goods from entering commercial channels.

The request for provisional measures must be supported by prima facie evidence, demonstrating with sufficient certainty that the applicant is the rightful holder of the patent and that their rights are being infringed or are at risk of imminent infringement. The applicant should also provide any necessary information to identify the goods in question. Additionally, the court may require the applicant to provide a security or equivalent assurance to protect the defendant and prevent misuse of the legal process.

Provisional measures may be granted inaudita altera parte (without notifying the defendant), particularly if a delay could cause irreparable harm to the rights holder or if there is a risk of evidence being destroyed. However, the defendant must be promptly notified of such measures and given an opportunity to be heard. The court must review, within a reasonable period, whether these measures should be modified, revoked, or confirmed.

Patent infringement is treated as a civil wrong under the Patents Ordinance, and it generally does not attract criminal penalties. However, the Patents Ordinance does impose financial penalties in certain situations. These include instances where a person falsely represents that an article sold by them is patented in Pakistan or is the subject of a patent application in Pakistan. Penalties may also be applied if an individual refuses or fails to provide information required by the Controller of Patents, or knowingly provides false or misleading information.

Damages for patent infringement are awarded at the discretion of the court, based on principles similar to those used in contract law for calculating compensatory damages. The court will take into account both the direct losses suffered by the patent holder or exclusive licensee, as applicable, and the profits made by the infringer as a result of the infringement. The objective is to restore the injured party to the position they would have been in had the infringement not occurred. In some cases, the court may also award exemplary or punitive damages to penalize egregious conduct by the infringer.

However, damages will not be awarded for indirect or remote losses stemming from the infringement. Additionally, no damages will be granted if the defendant proves they were unaware of the patent and had no reasonable grounds to believe that the patent existed at the time of the infringement.

Personal liability may apply in cases of direct or indirect infringement by individuals. The court may also "pierce the corporate veil" to hold officers or employees of a corporate entity personally liable for the corporation's infringement, though there is no reported case in Pakistan where this approach has been adopted.

Under the Pakistan Limitation Act of 1908, a suit for compensation resulting from patent infringement must be filed within three years from the date of the infringement.

The legal costs of patent infringement proceedings in Pakistan depend on several factors, including the technology involved, the duration of the litigation, the court and jurisdiction where the case is pending, and the choice of legal counsel. Due to the complexity of such cases, these costs are often substantial and can reach millions of rupees. Typical legal expenses may include court fees, filing and administrative charges, counsel fees, and expert witness fees, among others.

The court has discretion in awarding legal costs, and in most cases, parties bear their own expenses. When costs are awarded, the amounts are generally modest. However, in the Federal Capital Territory, recent amendments to the Code of Civil Procedure, 1908, require courts to award the actual costs of litigation, along with interest, to the successful party. These actual costs include court fees, stamp duties, counsel fees, and any related or incidental expenses including expert witness fees.

Patent infringment proceedings in Pakistan are generally slow, with trial durations varying significantly depending on several factors, such as the complexity of the dispute, early termination grounds (e.g., non-disclosure of a cause of action), any admissions made, whether the case settles or proceeds to trial, and the conduct of the parties and their counsels. Delays may also occur if an appellate court grants a stay on trial proceedings.

Decisions made by intellectual property tribunals can be appealed to the High Courts, and further appeals to the Supreme Court are possible on specific grounds. The trial of a patent infringement claim before the intellectual property tribunal can easily take 3 to 5 years to conclude. Appeal proceedings can also take an additional 3 to 5 years.

Yes. Section 15 of the Customs Act prohibits the import or export of products that infringe patents under the Patents Ordinance. A separate Directorate for IPR Enforcement has been established under the Customs Act to enforce these prohibitions. Upon receiving information or a written complaint from the patent holder regarding the arrival of infringing goods at a customs station, the Directorate is required to seize and detain the infringing goods. If, after an inquiry, it is established that the seized goods infringe the rights of the patent owner, the goods will be destroyed. Such infringing goods are not allowed to be re-exported.

Recently, the IPO-Pakistan announced that Pakistan’s accession to the PCT would be completed within two years. This accession will grant patent owners access to a streamlined international patent application process, extended filing periods, and broader market opportunities. It is expected to simplify global patent protection for inventors, boost investor confidence, and attract foreign investment in the technology sector. Additionally, IPO-Pakistan issued a draft of proposed amendments to the Patents Ordinance to align local patent processes with international best practices and implement the PCT. The draft was published on its website for public consultation, which has since concluded, and it is anticipated that the amendments will soon be presented in Parliament for voting.

Another significant development was Pakistan's accession to the Hague Apostille Convention, along with the enactment of domestic legislation to implement it. This ratification is expected to simplify and expedite the patent registration process, particularly for international filings. By replacing the need for multiple legalizations with a single apostille certificate, it will reduce costs, lessen administrative burdens, and facilitate the cross-border handling of patent-related documents for both Pakistani and foreign applicants.

The most significant patent law developments in the next year will likely be Pakistan's accession to the PCT and the anticipated amendments to the Patents Ordinance, aimed at implementing the PCT and aligning local patent processes with international best practices. These changes are expected to significantly enhance the efficiency of patent registration and enforcement in Pakistan, benefiting both inventors and businesses. These developments are particularly important given the government's commitment to investing in research and the development of new technologies, such as AI.

Additionally, the government has recently issued a consultation draft of the National Artificial Intelligence (AI) Policy, which aims to harness the benefits of AI while mitigating risks, fostering innovation, and ensuring these technologies serve the public interest. The draft policy pledges to boost Pakistan’s global standing in research and development, while providing fiscal, legal, and technical support for patenting AI and related technologies. A surge in patent filings is anticipated following the implementation of this policy.