Patent Registration in Pakistan

Patent Registration Service

Patents are invaluable assets for enterprises, acting as a litmus test for their innovative prowess and capacity to safeguard proprietary rights. The patent acquisition entails a meticulous journey characterized by rigorous assessments of the invention’s uniqueness, non-obviousness concerning prior art, and industrial applicability. This discourse elucidates the step-by-step procedure for registering a patent in Pakistan.

When conferred by the Patent Office, a patent bestows upon the inventor the exclusive prerogative to conceive, utilize, and commercialize their invention. This exclusive privilege remains enforceable for 20 years from the filing date, aimed at nurturing inventiveness and catalyzing further advancements.

The protocol for patent registration in Pakistan is delineated within the Patents Ordinance 2000 (“Ordinance”) and the Patents Rules 2003 (“Rules”). Before delineating the intricacies of the patent registration process, it is imperative to scrutinize whether an invention meets the criteria for patentability as stipulated under the aforementioned patent legislation.

Patent Registration:

Within the realm of patent law, the concept of patentability is contingent upon three fundamental criteria: novelty, inventive step, and industrial application.

Novelty:

In the context of patent law, the novelty requirement mandates that an invention must be entirely novel, devoid of any association with the state-of-the-art or prior art. This encompasses all forms of public disclosure worldwide, where any prior knowledge or utilization of the invention can compromise its eligibility for patent protection.

Inventive Step:

The notion of an inventive step delves into the requirement for an invention to exhibit a non-obviousness, posing a challenge even to an expert skilled in prior art. Crucially, a mere repurposing of a known device without introducing additional innovation falls short of meeting the criteria for a patentable invention.

Industrial Application:

Another pivotal criterion is industrial application, which necessitates that an invention demonstrate its potential for practical implementation and utility in industrial settings. This ensures that patents are exclusively granted for inventions that can contribute tangibly to industrial progress and development.

In summary, for an invention to be deemed patentable, it must successfully meet the stringent standards of novelty, inventive step, and industrial application stipulated under patent law.

Patent Registration and Patentability Procedure in Pakistan

In the domain of patent law in Pakistan, individuals who invent can personally initiate a patent application, provided they meet certain prerequisites. Nonetheless, patent rights may vest with an employer if the invention emerges during employment, stipulated either by a contractual agreement affirming the employer’s entitlement to patent rights or by demonstrating the indispensability of the employer’s resources in the invention’s development.

Two principal categories of patent applications are recognized, each distinguished by its documentation and procedural requirements:

(i) Ordinary Patent Application: This category adheres to the standard procedure outlined in Pakistan’s patent registration law.

(ii) Convention Patent Application: Within Pakistan, a convention patent application can be filed within twelve months of a filing made in a Convention country under pertinent patent legislation. Convention countries typically encompass members of the World Trade Organization (WTO). Submission of a Convention application entitles the applicant to priority status, with the official application date aligning with the corresponding application filed in the Convention country.

Undertaking a Patent Search

Before commencing the patent application process, it is prudent to conduct a thorough patent search utilizing the databases provided by the Patent Office. This entails the submission of Form P-27 (patent search application) along with the requisite fee. The objective is to identify existing patents that may conflict with the invention in question and assess its novelty vis-à-vis prior art. A comprehensive patent search facilitates an evaluation of the invention’s patentability. By unearthing pertinent prior art, a comprehensive patentability report can be compiled, aiding in determining whether the invention meets the criteria for patent registration. Conducting a meticulous patent search before embarking on the patent registration process is strongly advocated.

Patent Registration: Submission of Patent Application

Progressing with patent registration, the subsequent phase entails the submission of a patent application to the Patent Office, comprising specific forms and fees tailored to the nature of the application.

For an ordinary patent application, two copies of the requisite forms, accompanied by the applicable fees, are to be lodged with the Patent Office:

(i) Completed application Form P-1 (for sole or joint inventors) or Form P-1A (if inventors are not an assignee or organization files applicants and the application).

(ii) Completed Form P-3A (for complete specification) or Form P-3 (for provisional/incomplete specification).

(iii) Form P-28 for authorization of a patent attorney/agent, if applicable.

Similarly, for a convention patent application, two copies of the following forms, along with relevant fees, are to be submitted to the Patent Office:

(i) Completed application Form P-2 (for sole or joint inventors) or Form P-2A (if inventors are not applicants).

(ii) Completed Form P-3A (for complete specification).

(iii) Form P-28 for authorization of a patent attorney/agent.

(iv) Convention priority documents, accompanied by English translations verified by affidavit if in another language.

Examination of the Patent Application

Subsequent to the submission of a patent application with a complete specification, the Controller of Patents forwards the application to an examiner for review. The examiner prepares a report for the Controller, assessing compliance with patent law requirements concerning invention patentability vis-à-vis prior art. In case of any non-compliance, the Controller grants the applicant an opportunity to rectify and amend the application if necessary. Should the applicant resubmit the specification and the examiner remains dissatisfied with the amendments, a hearing may be arranged at the applicant’s request.

The Controller may opt to schedule a hearing if deemed necessary. Post-hearing or in the absence of a hearing due to the applicant’s non-participation or notification of disinterest, the Controller may approve or permit amendments to the applicant’s satisfaction. Failure to effect such amendments within the stipulated timeframe may result in the Controller’s refusal to accept the specification.

Patent Registration: Acceptance and Publication

Upon the Controller’s acceptance of a complete specification, the applicant receives notice of acceptance, and the acceptance is advertised in the official Gazette and published in the patent journal. This process renders the application, specification, and priority documents, if any, open to public inspection. Within thirty days of receiving the acceptance notice, the applicant must dispatch a copy of the accepted abstract to specified institutions per the Fourth Schedule of the Rules.

Responding to Opposition(s) Against the Patent Application

Within four months of the complete specification’s acceptance advertisement, any individual can oppose the patent grant by notifying the Controller using Form P-7 and paying the stipulated fee, citing grounds listed in section 23 of the Ordinance. Upon receipt of such notice, the Controller informs the applicant, who can then submit a counterstatement and provide a copy to the opponent. Within two months of receiving the counterstatement, the opponent can submit evidence supporting the opposition. In response, the applicant must present evidence supporting the counterstatement and provide a copy to the opponent within two months.

The Controller schedules a hearing following the evidence submission, notifying both parties. If either party wishes to be heard, they must inform the Controller using Form P-8 and pay the fee within ten days. After the hearing or in the absence of a request for a hearing, the Controller decides, notifying the parties accordingly.

Grant and Sealing of a Patent

Within six months of the specification’s publication or, if opposition proceedings are underway, within three months after the final determination, the applicant must submit a request using Form P-10 and pay the fee for the patent grant. The request should include evidence of dispatching the abstract to specified institutions. Subsequently, the Patent Office grants a patent sealed with its seal, with the sealing date recorded in the patent register.

Post-patent grant, the applicant enjoys patent rights per section 30 of the Ordinance, encompassing the prevention of third parties from making, using, and selling the patented invention.