Proposed amendments to Patents Ordinance

Introduction
Proposed amendments
Comment


Introduction

In order to integrate and upgrade Pakistan's IP infrastructure, improve its services, public awareness and IP enforcement, the Intellectual Property Office recently proposed draft amendments to the Patents Ordinance 2000 on its website. The amendments aim to:

• align the ordinance with the Intellectual Property Organisation of Pakistan Act 2012;
• standardise office practices; and
• streamline procedures.

Proposed amendments

The proposed amendments include the following:

• Section 23, which concerns filing oppositions against a patent, will be deleted. Accordingly, Section 21 will be amended with regard to the publication of patent applications and registrations, which would allow the controller to publish the complete specification along with additional information regarding:
  • the registration number;
  • the registration date;
  • the assigned international patent classification; and
  • the accepted priorities without inviting public opposition.
• A new clause (f) will be added to Section 7(4) of the ordinance concerning 'patentable inventions'. Section 7(4) deals with the granting of patents and clause (f) specifies that a patent will not be granted for drugs and medicines where:

the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property.

Moreover, under clause (f):

salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, solvates, pro-drugs, hydrates, N-oxides, analogs and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

• A new Section 46A concerning the formation of a board of appeal has been proposed consisting of a chair and legal and technical members appointed by the Intellectual Property Office.
• A new Section 46B concerning the board's powers and procedures has been proposed. The board will have full powers to hear, confirm or set aside the controller's decisions, including rejecting or granting patent applications and imposing penalties for patent applications. The board will be deemed a civil court under Sections 480 and 482 of the Code of Criminal Procedure 1898 and all proceedings before it will be deemed to be judicial proceedings within the meaning of Sections 193 and 228 of the Penal Code (Act XLV of 1860).
• A new Clause (1a) of Section 16 concerning patent applications has been proposed. Under Section 16(1a), the controller would be able to consult agencies or firms notified by the Intellectual Property Office to process patent applications for one or more acts, including examinations for patentability, novelty searches or the digitisation of patent applications.

Comment

The proposed amendments have been published on the Intellectual Property Office's website for public comment but have yet to be finalised.

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.