Patent Legislation Of Pakistan

PATENTS TRIPS AND PAKISTAN LEGISLATION

BY

NAZIR A. SALEEMI [email protected] Mobil: 0300 5320517

WHAT IS A PATENT? • An exclusive right granted for an invention (product and process) that provides a new way of doing something or offers a new technical solution to a problem. • It provides protection to the owner of patent for an invention for a minimum period of 20 years. • It is applicable to all fields of technology, for example, industrial products/processes, agro-chemicals, pharmaceuticals, food and food products etc.)

Background History Fairly old history in ancient England. • Elizabethan Monopoly Grants. • Statute of Monopolies in England 1624. Continental Europe: • Inventors Statues of Venice, 1474. • Patent for Galileo innovative machine meant for Irrigation purposes, 1594. • Similar Patent provision in Germany, France and Netherlands.

Background History – USA The US Legislative system also draws from: • • • •

Provision in US Constitution. Patent Laws 1790 – 1870. US Supreme Court decisions an guideline. Patent Laws 1952 – 1995.

Patent Legislation of Pakistan • Prior to TRIPS Agreement, Pakistan followed Patent and Design Act 1911 that fell short of current economic environment in terms of coverage and efficacy. • TRIPs became effective w.e.f. 1.1.1995 under the WTO framework of “Single Understanding”. • Pakistan as such obliged to upgrade its legislation to meet TRIPS provisions. • Transition period of 5 years was allowed to developing countries. • Pakistan drew its Patents Ordinance in year 2000 that repaeled the Act of 1911.

TRIPS - Pakistan VS USA • As required under TRIPS provisions Member countries were obliged to set up MAILBOX system during transitional period to receive patent applications in the area of pharmaceutical and Agro-chemicals to be opened on 1st January 2005 (Article 64.5). • Pakistan non-compliance for MAILBOX was challenged by USA in April 1996. • EU subsequently joined USA in May 1996. • A compromise was reached as Pakistan assured to set– up the MAILBOX. • MAILBOX set-up under Ordinance XXVI of 1997.

Patent Ordinance of Pakistan • Patent and Design Act 1911 was split and two separate TRIPS compliant Ordinances viz. the Patent Ordinance and Design Ordinance, 2000. • Relevant ministries were asked to draw draft legislations that were discussed in inter-ministerial committee meetings involving major stake-holders including PIPRA. • Major thrust/input was by Ministry of Commerce in collaboration with the Ministry of Law. • The draft Patent legislation, inter alia, was got vetted from WIPO. • Patent Ordinance was issued in year 2000 and notified to WTO.

Patent Ordinance of Pakistan • Pakistan legislation was reviewed by WTO TRIPS Committee in the end 2000. • Some 246 questions were raised by different members on Pakistan IPR legislations. • For many questions the practicing IPR lawyers were consulted and responses were submitted to TRIPS committee. • Rules were drawn to implement Patent Ordinance • Certain issues were felt by stake-holders to be reviewed that was undertaken in consultation with the stakeholders in 2002.

Salient Features of Patent Ordinance of Pakistan • Short Title: The Patents Ordinance 2000. • Section 1(2): It extends to the whole of Pakistan. • Section 1(3): It shall come into force at once except for the provisions relating examination, sealing, grant and post-grant matters of patents relating to the chemicals products intended for use in agriculture and medicines, but excluding the grant of exclusive marketing rights therefore and mailbox filing that shall come into force on and from the first day of 2005.

What is Invention? • Section 2(1): “invention” means any new and useful product or process, in any field of technology and includes any new and useful improvement of either of them; (existing). • “any new and useful product, including chemical products, art, process, method or manner of manufacture, machine, apparatus, or other article; substance or article or product produced by manufacturer and includes any new and useful improvement of any of them and an alleged invention (prior art)

Process Patent • Section 2(s): “process” means any art, process or method or manner of new manufacture of a new product; (existing) • “any art, process or method of manufacture of a product and includes a new use of a known process or a product”. (old)

Product Patent • Section 2(t): “product” means any substance, article, apparatus, or machine; (existing) • “any substance, article, apparatus, machine or a chemical product” (old)

Patentable Inventions • Section 7(1): Any invention is patentable, if its is new, involves an inventive step and is capable of industrial application. • Following shall not be regarded as invention: *a discovery, scientific theory or mathematical method; *a literary, dramatic, musical or artistic work or any other creation of purely aesthetic character whatsoever; * a scheme, rule or method for performing a mental act, playing a game or doing business; * the presentation of information; and substances that exist in nature or if isolated therefrom.

A Patent shall not be granted • Section 7(4): …necessary to protect the “ordre public” or public morality, including human, animal or plant life or health or to avoid serious prejudice to environment; • Plants and animals other than micro-organisms, essentially biological processes for the production of plants or animals other than non- biological and micro-biological processes; • Diagnostic, therapeutic and surgical methods for the treatment of humans or animals; • For a new or subsequent use of a known product or process; • A mere change in physical appearance of a chemical product where chemical formula or process of mfg. remains same . This shall not apply to an invention fulfilling the criteria of patentability.

Industrial Application A product can be patented if it involves: • An innovative step; • It is non-obvious; • An invention shall be considered capable of patenting if it is capable commercial exploitation or otherwise industrial use. • Usefulness approach

Contents of Specification • For a chemical product intended for use in medicine or agriculture, the specification shall be specific to one chemical product only describing physical, pharmacological and pharmaceutical properties, or as the case may be, the properties related to its use in agriculture and its impact on environment.

Contents of Specification • Section 15(3)– every complete specification shall a. Describe the invention and the method by is to be performed; b. Disclose invention which is known to applicant which he is entitled to claim protection; and c. End with a claim or claims defining the scope invention for which protection is claimed.

which it for of the

Rights Conferred by Patent

(Section 30)

• Exploitation of patent invention by a person other than owner is subject to owner’s agreement. • Exploitation of a patented invention it relates to product means (Sec 30.2.a): i) making, importing, offering for sale, selling or using; or ii) Stocking for purpose of offering for sale, selling or using

• Exploitation of a patented invention it relates to process means: i) using the process; or ii) doing any of the acts under section 30.2.a for a product obtained by means of patented process.

directly

Rights Conferred by Patent (Section 30.5) • Right under the patent shall not extend to: (a) Acts in r/o articles put on the market anywhere in the world by owner of patent or with his consent; or by an authorized person or in any other legitimate manner such as compulsory license; (b) the use of articles on an aircraft, land vehicles, or vessels of other countries which temporarily or accidentally enter Pakistan; (c) acts done only for experimental purposes relating to a patented invention; or (d) Acts performed by any person in good faith e.g. for education and research purposes.

Exploitation by a Government Agency or Third Person: (Section 58.1-3) • Fed. Govt. may, w/o prior consent of the owner of patent decide where: i) Public interest, national security, nutrition, health or development of other sectors of economy so requires; ii) Fed. Government determines that manner of exploitation by owner or his licensee is anti-competitive; and the Govt. intends to remedy such practices.

• Prior to Fed. Govt. decision the patent owner or any interested person shall be provided an opportunity to be heard; • Exploitation to be limited for specific objective only; •Patent owner to be compensated adequately.

Exploitation by a Government Agency or Third Person (Section 58.4) • When the patent owner refuses to grant license to a third person on reasonable commercial terms and conditions and within a reasonable time. This shall not, however, apply in case of:(i) National emergency or other urgency where owner of patent shall be informed of Fed. Govt. decision as soon as possible; (ii) Public non-commercial use; and (iii) Anti-competitive practices as determined by judicial or administrative body (Section 58.1.ii).

• For semi-conductor technology authorization for non-commercial public use or where judicial or administrative body so decides to curb anticompetitive behavior.

only

Compulsory Licensing (Section 59) • Under the powers vested in Controller Patents under Patent Ordinance, 2000, he ca grant a non-voluntary compulsory license specified time, if he is satisfied that patent invention is not exploited or insufficiently exploited; • Voluntary license shall not be issued if patent owner satisfies Controller Patent justifying reasons for non- exploitation or underexploitation of invention.

Infringement of Patents (Section 59) •

Suit for infringement of a patent – to be lodged with District Court by patentee; • In case counter-claim for revocation of patent is made by defendant, the suit along with counter claim shall be transferred to High Court for decision;

• Relief for infringement includes: Court to order to desist from infringement; infringer to compensate the patent owner; his attorney’s fee; prevent the infringed goods to enter channels of commerce; confiscate goods and material/machinery used in manufacture of infringed goods. • Infringer to face fine and/or imprisonment or both to serve as a deterrence from future activity of infringement.

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