Patent owners' rights under Patents Ordinance 2000

Introduction
Patentee rights
Patent right terms
Rights enforcement
Rights limitation

Introduction

The Patents Ordinance 2000 is a consolidated amended law relating to the protection of inventions and patents in Pakistan. Section 2(m) of the ordinance defines a 'patentee' (inventor) as the registered proprietor of a patent and may include any subsequent assignee or successor.

As a registered patent owner, a patentee can authorise or prevent third parties from using its patent or manufacturing a product or offering to sell a product or service that uses its patented invention, subject to certain limitations.

Patentee rights

Under Section 30 of the Patents Ordinance, patents can be granted for novel or improved products and processes in any technological field that have not already been placed on the market. The ordinance guarantees the following rights to patent holders:

• Third parties cannot make, use, import, sell or offer to sell a patented product without the patent owner's consent.
• Third parties cannot use a patented process or use, import, sell or offer to sell products directly obtained from such processes without the patent owner's consent.
• Third parties cannot assign, transfer by succession or conclude patent licensing contracts.

Patent right terms

Under Section 31 of the Patents Ordinance, patent terms are 20 years from either the date of filing the application in Pakistan or the date of the earliest international application to which priority is claimed.

Rights enforcement

Under Section 22 of the Patents Ordinance, after an application is accepted and until the date of sealing or the expiration of the sealing, a patent applicant will have the same privileges and rights as a sealed patent owner. However, an applicant will not be entitled to institute infringement proceedings until a patent for the invention had been sealed on the application approval date.

Under Sections 60 and 61 of the Patents Ordinance, a patent owner may file a suit for infringement against a third party that makes, sells or uses the invention, or a counterfeit or imitation thereof, without authorisation or a licence. The court may grant relief by way of damages, injunctions or accounts, with provisional measures where appropriate, to prevent infringement, preserve evidence and or prevent delay.

Regarding suits which involve a patented process for obtaining a product, the patentee must show prior proof that the infringing product is identical to that produced by the patented process. Further, the alleged infringer must rebut the claim by proving that the process to obtain the identical product is different. Without such proof, the identical product is deemed to have been obtained by the patented process, provided that the patented process is new (ie, marketed for less than a year). Nevertheless, the courts will consider the alleged infringer's legitimate interest in protecting their manufacturing and business secrets when adducing evidence to the contrary.

The courts can order prompt and effective provisional measures where appropriate to prevent infringement to preserve relevant evidence and prevent delays.

Rights limitation

Under Section 30(5) of the Patents Ordinance, patent rights extend only to acts performed for industrial or commercial purposes. Therefore, acts not covered by patent rights include:

• those performed for scientific research or experimental purposes;
• those relating to products which have been put on the market anywhere in the world by the patentee or their assignee;
• those relating to the use of products on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter Pakistani airspace, territory or waters;
• those performed by any person who, in good faith, tests for the approval of a product; and
• those performed for teaching purposes.

Notably, patent rights may be limited under compulsory licences if the state exploits a patented inventions for reasons of public interest (eg, national security, nutrition or health or the development of other vital sectors of the Pakistan economy).

For further information on this topic please contact Seema S Mansoor or Erum Rasheed at Vellani & Vellani by telephone (+92 21 3580 1000) or email (seema.mansoor@vellani.com or erum.rasheed@vellani.com). The Vellani & Vellani website can be accessed at www.vellani.com.