Intellectual Property Rights in Pakistan

This presentation is a valuable resource for businesses, legal professionals, and anyone interested in understanding and safeguarding their intellectual assets in Pakistan. Download now to enhance your knowledge and stay informed about the legal frameworks governing intellectual property in Pakistan.

1. Introduction to Intellectual Property Rights (IPR) in Pakistan Trainer: Javaria Qadir LLM (UK), Foreign Qualified Lawyer (England and Wales) Partner, Qadir Chambers

2. Introduction to Intellectual Property Rights Session Agenda: Intellectual Property Rights Workshop Types of Intellectual Property Patent Protection Patent Basics Patent Application Process Case Study Design Protection Introduction to Industrial Designs Design Registration Process Design Infringement and Legal Remedies Trademark Protection Trademark Explanation Registration Process Enforcement Infringement Copyright Protection Overview of Copyrights Registration and Ownership Copyright Infringement Remedies

3. Understanding Intellectual Property Rights (IPR) Intellectual Property Rights (IPR) refer to legal rights protecting creations of the mind, such as inventions , literary and artistic works , symbols , names , and images used in commerce. Relevant Laws in Pakistan: Patents: Governed by the Patents Ordinance, 2000. Trademarks: Regulated by the Trademarks Ordinance, 2001. Copyrights: Governed by the Copyright Ordinance, 1962. Industrial Designs: Regulated by the Designs Ordinance, 2000.

4. Types of Intellectual Property Rights (IPR) in Pakistan Patents: Protection for inventions, granting exclusive rights to the inventor for a limited period. Trademarks: Protection for brand names, logos, and symbols used to distinguish goods or services in the market. Copyrights: Protection for literary, artistic, and musical works, granting exclusive rights to the creator. Industrial Designs: Protection for the visual design of objects, enhancing their aesthetic appeal and commercial value.

5. TRADEMARK

6. What is a Trademark? A trademark is a distinctive sign or symbol used to identify and distinguish the goods or services of one business from those of others. It can take various forms, including words, logos, slogans, symbols , and combination thereof. In Pakistan a trademark application can be filed in 45 different classes . Classes 1 to 34 for goods and classes 35 to 45 for service marks Functions of Trademarks: Identification: Trademarks help consumers identify and distinguish the source of goods or services. Quality Assurance: Trademarks signify the quality and reliability of goods or services associated with the mark. Brand Recognition: Trademarks build brand recognition and loyalty, enhancing the market value of products or services. Marketing Tool: Trademarks serve as a marketing tool, helping businesses differentiate their products or services from competitors.

7. STEPS FORM Details TM Search TM 55 Application Form TM 1 or TM 2 8 copies of clear TM, a list of goods and services , Payment Acknowledgment report Receive within 15 days Examination Report Within 3 months of application submission Show cause Notice In case of any objection or similar marks Must respond within 2 months or request will be cancelled Publication TM Journal if no objection at this stage or all objections has been resolved Opposition & Counter statement TM 5 TM 6 Raise objections against the TM publication within 2 Months Demand Notice TM 11 If no objection raised within 2 months then TM will consider accepted with subject to deposit of TM registration fee Registration Certificate / Renewal TM 6 TM 12 Once fees paid registration certificate is issued for 10 years.

8. Types of Cases for Trademark Infringement Civil Cases Trademark Infringement : Filed by the trademark owner against any unauthorized use of their registered trademark. Passing Off : Filed when someone uses a mark similar to the registered trademark to deceive consumers, causing confusion or misconception about the source of goods or services. Criminal Cases FIR Counterfeiting : Filed against individuals or entities involved in manufacturing, distributing, or selling counterfeit goods bearing the registered trademark. Trademark Piracy: Filed when someone knowingly uses a trademark identical or deceptively similar to a registered trademark without authorization, with intent to deceive or defraud consumers. Customs Cases Customs Application : Filed with customs authorities to prevent the importation of counterfeit goods bearing the registered trademark. Seizure Proceedings: Initiated by customs authorities to detain and seize suspected counterfeit goods at ports of entry. Remedies Sought Injunctions: Court orders to stop further infringement or prevent the importation of counterfeit goods. Damages: Monetary compensation for losses suffered due to trademark infringement. Account of Profits: Recovery of profits made by the infringer from the unauthorized use of the trademark. Seizure or Destruction: Orders for the seizure or destruction of counterfeit goods. Section 482 PPC offense of counterfeiting trademarks . I mprisonment 1 y or fine or both .

9. COPYRIGHTS

10. Copyrights Copyright is a form of intellectual property that grants the creator of an original work exclusive rights to its use and distribution. It enables creators to receive compensation for their intellectual effort and encourages innovation and creativity. Key Elements Originality : Works must display the author's intellectual creativity. Fixed Form : Works must be fixed in a tangible form, such as writing, recording, or digital format. Copyright Notice : Displaying a copyright notice (©) along with the creator's name and year of creation helps establish ownership. Duration : Copyright protection typically lasts for the author's lifetime plus a certain number of years after their death. Exclusive Rights : Copyright holders have exclusive rights to reproduce, distribute, perform, display, and adapt their works.

11. Steps for Copyright Registration Filing of Application: Submit application form with required documents to copyright office. Examination: Copyright office examines the application for compliance with legal requirements. Publication in Newspaper (Artistic Work only): If the work is artistic, publication in a newspaper may be required. Opposition, if any : Allows for objections or opposition from third parties. Issuance of Certificate by Registrar (Registration): Upon successful examination and resolution of any opposition, the registrar issues a copyright certificate. Kinds of Copyrights Literary Works: Books, Magazines, Journals Lectures, Dramas, Novels Compilation of Data, etc. Artistic Works: Paintings, Maps, Photographs Computer Programmes /Software Drawings, Charts, Calligraphies Sculptures, Architectural Works Label Designs, Logos, Monograms, etc. Cinematographic Works: Movies, Audio-Visual Works Documentaries, etc. Record Works: Sound Recordings, Musical Works, etc.

12. Duration of Copyright Protection Copyright protection begins at the moment a work is created and fixed in tangible form. Generally, copyright lasts for the author's life plus 50 years after their death. For joint works, the term extends for 50 years after the death of the last surviving author. Works made for hire, anonymous, or pseudonymous have a copyright duration of 50 years from publication.

13. Civil Proceedings : Copyright holders can initiate civil proceedings to seek remedies for infringement. Remedies include claiming damages, injunctions, accounts of profits, and delivery up of infringing articles . Section 59 of the Ordinance allows the original owner or exclusive licensee to bring an action against infringement. Jurisdiction : Amended Section 65 mandates that civil proceedings should be instituted and tried in the Court of the District Judge . . Criminal Proceedings : Section 74(3) of the Ordinance specifies that all offenses are cognizable and non- bailable FIA Jurisdiction Remedies Offenses and Penalties : Section 66 of the Ordinance stipulates penalties for copyright infringement, including imprisonment up to 3 years or a fine up to one hundred thousand rupees. Section 70B allows fines up to two hundred thousand rupees for repeat offenders. Additional Powers and Offenses by Companies Seizure of Infringing Copies : Section 74(1) empowers police officers to seize infringing copies of works without a warrant. Offenses by Companies: Section 71 holds individuals in charge or responsible for the conduct of a company's business liable for copyright offenses. Exceptions exist if the accused proves lack of knowledge or demonstrates due diligence to prevent the offense.

14. PATENT

15. Primary Legislation Patents (Amendment) Act, 2010 Patent Rules, 2003 Historical Evolution 1911: Patent and Design Act of 1911 (First patent law in Pakistan) 2000: Introduction of the Patents Ordinance of 2000 2002, 2007, 2010: Subsequent amendments to the Patents Ordinance

16. The Power of Patent Protection A patent grants exclusive rights to an inventor, providing the legal authority to prevent others from making, using, or selling their invention for a set period, typically 20 years . Purpose Encourages innovation by rewarding inventors with exclusive rights, fostering creativity, and advancing technology. Key Characteristics : The invention should be novel , involve an inventive step , capable of industrial application, and fall within the scope of patentable subject matter.

17. Product or Process Invention encompasses any new and useful product or process in any field of technology, including improvements thereof. Product vs. Process : A product refers to any substance, article, apparatus, or machine, while a process encompasses any art, method, or manner of manufacturing a product. Novelty Requirement An invention is considered novel if it does not form part of the state of the art, which comprises publicly disclosed information prior to the patent application's filing date. Preventing Public Disclosure : Public use or knowledge of the invention before the application filing date can jeopardize its novelty and patentability. Exceptions : Disclosure at recognized international exhibitions within twelve months preceding the patent application filing date does not constitute prior art. Inventive Step An inventive step involves a substantive change or improvement over existing technology that is not obvious to a person skilled in the art. Industrial Application An invention must be capable of industrial application, meaning it can be manufactured or industrially utilized. Commercial Viability Industrial application ensures that the invention has practical utility and economic value beyond theoretical concepts.

18. CASE STUDY Earthfactor (Private) Limited v. Patent Office, IPO-Pakistan Citation: 2014 CLD 897 KARACHI-HIGH-COURT-SINDH Issue: Validity of patent for "double-number SIM" granted by IPO. Contention: Appellant argued patent did not meet criteria of invention under Patents Ordinance, 2000. They contended that the "double-number SIM" technology was not novel and did not involve an inventive step . Decision: The court ruled in favor of the appellant, setting aside the patent granted to the respondent. It held that the "double-number SIM" technology was not new, as it was already in use in many countries, including Pakistan. Therefore, it did not meet the legal and literary definitions of "invention" and "novelty" under the Patents Ordinance, 2000. As per the ordinance, no patent could be granted for a new or subsequent use of a known product or process. Thus, the court concluded that the acceptance of the patent application violated the principles of law outlined in the ordinance .

19. Exceptions and Non-Patentable Inventions Exclusions : Certain types of inventions are not eligible for patent protection under the Patent Ordinance, 2000. Examples : Discoveries, scientific theories, literary or artistic works, mental acts, games, computer software, and naturally occurring phenomena are among the non-patentable subject matters. Restrictions on Patent Grants Limitations : Patent grants are subject to specific restrictions to safeguard public interest and prevent abuse. Examples : Inventions contrary to public order or morality, biological processes for plant or animal production, and diagnostic or therapeutic methods are ineligible for patents.

20. Coca-Cola's Trade Secret Coca-Cola protects its original formula as a trade secret instead of patenting it . Advantages Trade secrets offer indefinite protection without disclosure . Maintaining secrecy gives Coca-Cola a competitive edge and enhances brand mystique. Protection Measures: Strict internal controls and legal safeguards prevent unauthorized disclosure.

21. Important Points to Consider Patent Search p-27 Before applying for a patent, conduct a thorough search in patent databases and non-patent literature. Ensure that your invention is unique and not already patented by someone else . No online data base File First, Publish Later: Do not disclose your invention in any way before filing the patent application. Patent protection is granted only to inventions that have not been disclosed to the public, either in writing or orally. It is advisable to file the patent application first and then publish any details about your invention. Maintain Novelty: Novelty is a key requirement for obtaining a patent, so keep your invention confidential until the application is filed.

22. Format Requirements : Begin with a title and end with the signature and date of the applicant or their Patent agent. Use only one side of the sheet for writing the specification. Write the specification in English language, with at least 1.5 line spacing Utilize white A4 size paper with minimum margins: 2cm from top and bottom, 2.5cm from the left side, and 2cm from the right side. Content Structure: Structure the patent specification with the following contents: Title Abstract Field of the Invention Background of the Invention Brief Description of Drawings Detailed Description Claims Drawings

23. Specifications for Chemical Products in Medicine or Agriculture: For a chemical product intended for use in medicine or agriculture, the specification must be specific to one chemical product only, excluding derivatives and salts . In cases where structural description is not possible, such as with biological products , a " product by process " claim should be made. Protection is limited to the product obtained with the claimed process only . Product by process is a patent claim that defines a product based on the method used to make it . The specification should describe the physical , chemical , pharmacological , and pharmaceutical properties for medicinal products or properties related to agricultural use and their impact on the environment . According to the Patents Ordinance 2000, if biological material is used, the specification must disclose its place of origin and source . Compliance with relevant rules on access, export , and use of biological material is necessary , and permission from the Federal Government may be required for material obtained from Pakistan for use outside the country . An application for an invention involving genetically modified organisms (GMOs) needs clearance from the Federal Government

24. Part of Specifications Description Title of Invention The title should effectively convey the subject matter of the invention without being overly narrow or broad. It provides a concise overview of what the invention pertains to. Abstract It summarizes the important technical aspects of the invention. It should be concise and comprehensive, covering all essential details. The abstract usually spans not more than 2 pages and should reflect the technical features disclosed in the detailed description part of the specification. It is recommended to cross-check the information in the abstract with the detailed description to ensure accuracy. Field of the Invention This section outlines the specific area or field to which the invention relates. For instance, if the invention is a new accessory for motor cars, the field of the invention would be described as pertaining to motor cars, specifically focusing on an accessory for a motor car. Background of the Invention It explains the usefulness of the invention. It may highlight prior art and existing patents related to the invention. This section should briefly discuss any shortcomings in the prior art without revealing the solution provided by the invention. The aim is to present the problem in a way that makes it seem challenging to solve.

25. Claims Claims are precise legal statements that define the scope of the invention. They should be presented on a new sheet and numbered sequentially. At least one independent claim and other dependent claims are required. Claims should begin with phrases like "I or We claim," and should be ordered from broadest to narrowest. It is advisable to prepare the claims before drafting other parts of the specification to identify the terms that need to be described. The preamble or opening statement of the claim(s) should indicate whether a process or product feature of the invention is claimed. Drawings They should be executed without coloring, with durable, black, uniformly thick lines. Drawings should begin on separate sheets and adhere to specific margin requirements. The applicant's name and the number of sheets or drawings should be written in the top left corner, and the signature of the applicant or agent should be in the bottom right corner. Drawings should not include the title of the invention or any descriptive matter, only numeral references may indicate different parts of the diagram. Detailed Description It provides a detailed explanation of how the invention works, including its components, systems, and methods. The description should enable someone skilled in the relevant field to reproduce the invention using the provided instructions. Avoid using phrases like "the invention is..." and instead use phrases like "in an embodiment of the invention" to ensure broad interpretation of patent claims. An embodiment refers to a manner in which the invention can be made, used, practiced, or expressed.

26. For Non-Convention Applications: Form P-1 or P-1A Duly filled for sole or joint applicants (P-1) or when inventors are not applicants (P-1A). Form P-3A or P-3 Complete specification (P-3A) or provisional/incomplete specification (P-3). Form P-28 Authorization of patent attorney/agent, if applicable. NOC For applicants from universities, research institutes, etc. For Convention Applications Form P-2 or P-2A Sole or joint applicants (P-2) or when inventors are not applicants (P-2A ) Form P-3A Complete specification. Form P-28 Authorization of patent attorney/agent. Priority Document Required for convention applications. Forms

27. Filing Fee Complete specification: PKR. 6750/- Provisional specification: PKR. 2025/- For each additional page of specification beyond 40 pages PKR. 90/- For each additional claim beyond 20 claims PKR. 225/- Filing fee is nonrefundable. Where to File the Patent Application Mail or hand delivery to specified addresses in Lahore, Islamabad, or Karachi . Checklist Form P-1 or Form P-1A application without priority …………. ……………………… 02 copies Form P-2 or Form P-2A application with priority ………......................................................02 copies Form P-3 for provisional or Form P-3A for complete specification) ……………………02 copies Patent Specification …………………………………………………………………… 02 copies Drawing(s ), if any…………………………………………………………………… 02 copies Pay order or demand draft …………………………………………………………… 01 original + 01copy Form P-28 (power of Attorney) if any ………………………………………………… 01 original+ 01copy Priority document (for convention application )………………………….......................…01 copy NOC……………………………………………………………………………………01 copy

28. Stage 1 : Patent Application Filing Stage 2 : Patent Publication - Application not open to the public for 18 months. - Controller advertises the application, specification, and priority documents in the Official Gazette. - Applicant gains privileges akin to a granted patent upon acceptance, but cannot pursue infringement proceedings until sealing. Stage 3 : Patent Examination - Examination is automatic . No formal request is needed. - Controller refers the application to an examiner for a report on patentability and compliance. - First examination report issued within 14-18 months. Stage 4 : Office Action Response - Objections must be addressed within 12 months. Stage 5: Pre-grant Opposition - Notice of opposition can be filed within four months from the advertisement of acceptance. Stage 6 : Grant of Patent - Granted upon acceptance of the complete specification and no opposition. - Published in the Office Gazette. - Term: 20 years from filing. Post-grant Opposition Can be filed within one year after grant, requesting revocation, maintenance, or amendment.

29. Industrial Design

30. Design Filing in Pakistan The Design right is granted in Pakistan under the "Registered Designs Ordinance, 2000. Design encompasses features of shape , configuration , pattern , or ornament applied to an article by industrial process or means, judged solely by the eye . Designs must be new , not disclosed to the public , and not contrary to public order or morality . Filing Design Application Ordinary application submitted with prescribed form and fee to the Patent Office. Convention application made within six months of a prior application in a convention country.

31. Design Registration Procedure Stage 1 : Design Application Filing Submit application and fee to the Patent Office. Stage 2 : Design Examination Application checked for compliance with registration conditions and requirements. Stage 3 : Registration Successful applications registered, granting proprietor's rights. Stage 4 : Publication Registered design published in the official Gazette after certificate issuance. Term of Registered Design Registered design in Pakistan is valid for 10 years from registration. Extension possible for two additional 10-year periods (Total: 30 years).

32. International Intellectual Property Rights Frameworks Madrid System for the International Registration of Marks Facilitates the registration and management of trademarks worldwide. Allows trademark owners to file a single international application to protect their marks in multiple countries . Administered by the World Intellectual Property Organization (WIPO ). TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) Part of the World Trade Organization (WTO) agreements. Sets minimum standards for intellectual property protection in member countries. Covers patents, trademarks, copyrights, geographical indications, industrial designs, and trade secrets. WIPO (World Intellectual Property Organization ) Specialized agency of the United Nations (UN) dedicated to promoting intellectual property rights worldwide. Administers various international treaties related to intellectual property, including the Madrid System, Patent Cooperation Treaty (PCT), and Berne Convention. Provides services such as arbitration, mediation, capacity-building, and policy advice to member states.

33. WTO (World Trade Organization) International organization that deals with the rules of trade between nations. Administers trade agreements, including the TRIPS Agreement, aimed at promoting international trade and economic cooperation. Ensures member countries comply with their obligations under the TRIPS Agreement and other trade agreements. Berne Convention for the Protection of Literary and Artistic Works One of the oldest international treaties on copyright protection. Establishes minimum standards for the protection of literary and artistic works among member countries. Administered by WIPO and sets principles such as national treatment and automatic protection. Paris Convention for the Protection of Industrial Property International treaty that harmonizes intellectual property protection, especially patents, trademarks, and industrial designs. Provides for the right of priority and mutual recognition of patents and trademarks among member countries. Administered by WIPO and aims to facilitate international cooperation in the field of industrial property. Marrakesh Treaty T o Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled Aims to increase access to published works for persons with print disabilities by facilitating the creation and exchange of accessible format copies across borders. Administered by WIPO and addresses the "book famine" experienced by persons with print disabilities.

34. Incentives for Patent Filing Higher Education Commission (HEC), Islamabad - Free evaluation of invention to determine patentability. - Payment of patent application and attorney’s fees. Pakistan Council of Scientific and Industrial Research (PCSIR ) - Free technical facilitation for patent search and legal consultancy. - Full payment of fees for 100 local and 5 foreign applications. Pakistan Science Foundation (PSF)/Pakistan Scientific & Technological Information Center (PASTIC), Islamabad - Awards for inventions and innovations. - Patent search services and supply of patent copies. - Facilitation in filing patent applications . Center for Innovation and Entrepreneurship (CIE) NUST - Technical advice on patent, trademark, and copyright filing. - Promotion of research and development. - Patent help-lines for researcher guidance. Intellectual Property Organization of Pakistan (IPO-Pakistan ) - Outreach Program for internal and external linkages. - Patent help-lines for researchers, inventors, and innovators. Small & Medium Enterprise Development Authority (SMEDA), Lahore - Free services at Patent Help-Line.

35. Filing Patents Outside Pakistan Residents in Pakistan need permission from the Controller to file a patent abroad. They must file in Pakistan at least six weeks before filing abroad. No conflicting directions should exist for the Pakistan application. Exception : If the first patent application was filed abroad by a non-resident.