The Patents Ordinance 2000 in Pakistan: Registration, Patentability Requirements, Compulsory Licensing, and Enforcement
Pakistan's patent regime is governed by the Patents Ordinance 2000 (Ordinance LXI of 2000), which replaced the colonial-era Patents and Designs Act 1911. The Ordinance brought Pakistan's patent law into closer alignment with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which Pakistan is bound as a member of the World Trade Organisation. Patent administration falls under the Intellectual Property Organisation of Pakistan (IPO Pakistan), established under the Intellectual Property Organisation of Pakistan Act 2012, which serves as the national patent office and handles all applications, examinations, and oppositions.
This article sets out the key provisions of the Patents Ordinance 2000, including what can be patented, how the registration process works, when the government may grant compulsory licences, and the remedies available for infringement.
What Can Be Patented
Section 7 of the Ordinance defines a patentable invention as one that is new, involves an inventive step, and is capable of industrial application. Novelty is assessed against the state of the art, which includes everything made available to the public anywhere in the world by written or oral description, by use, or in any other way before the filing date or, where applicable, the priority date. An inventive step exists where the invention is not obvious to a person skilled in the relevant art, having regard to the state of the art. Industrial applicability requires that the invention can be made or used in any kind of industry, including agriculture.
Section 8 lists several categories of subject matter that are excluded from patentability. These include discoveries, scientific theories, and mathematical methods; schemes, rules, or methods for doing business or performing mental acts; methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (though products used in such methods, such as pharmaceuticals or surgical instruments, remain patentable); inventions the commercial exploitation of which would be contrary to public order or morality; and plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.
The exclusion of plant varieties reflects Pakistan's obligations under the TRIPS Agreement, which permits members to exclude plants and animals from patent protection provided they offer an alternative system of protection, such as plant breeders' rights. Pakistan enacted the Plant Breeders' Rights Act 2016 to fulfil this requirement.
The Application and Examination Process
Patent applications are filed with IPO Pakistan. An application must include a request for the grant of a patent, a description of the invention that discloses it in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, one or more claims defining the matter for which protection is sought, any drawings referred to in the description or claims, and an abstract. The description must disclose the best mode known to the applicant for carrying out the invention at the filing date.
Under Section 24, once an application is filed and has received a filing date, it undergoes a formalities check. If the formalities are in order, the application is published in the Official Gazette after 18 months from the filing date or the priority date, whichever is earlier. The applicant may request early publication. After publication, any person may file observations on the patentability of the invention, though the observations do not make the person a party to the proceedings.
Substantive examination is conducted on request. The applicant must file a request for examination within the prescribed period, failing which the application is treated as withdrawn. During examination, the examiner assesses whether the invention meets the criteria of novelty, inventive step, and industrial applicability, and whether the application complies with the formal and disclosure requirements. The examiner may issue objections, and the applicant has an opportunity to respond by amending the claims or providing arguments.
If the examiner is satisfied, the patent is granted and published in the Official Gazette. If the examiner refuses the application, the applicant may appeal to the Federal Government.
Term of Protection and Rights Conferred
Section 34 provides that a patent is granted for a term of 20 years from the filing date, subject to the payment of annual renewal fees. This term is consistent with the minimum required under Article 33 of the TRIPS Agreement. If renewal fees are not paid within the prescribed period (or the grace period allowed under the rules), the patent lapses.
The rights conferred by a patent are set out in Section 30. Where the patent is for a product, the patent holder has the exclusive right to prevent third parties from making, using, offering for sale, selling, or importing the product without consent. Where the patent is for a process, the patent holder has the exclusive right to prevent third parties from using the process and from using, offering for sale, selling, or importing the product obtained directly by the process. These rights are subject to certain exceptions, including acts done privately and for non-commercial purposes, acts done for experimental purposes relating to the subject matter of the invention, and the preparation of medicines for individual cases in a pharmacy.
Compulsory Licensing
Sections 58 to 62 of the Ordinance provide for the grant of compulsory licences. A compulsory licence allows a third party to work a patented invention without the patent holder's consent, subject to adequate remuneration to the patent holder. The provisions implement the flexibility permitted under Articles 30 and 31 of the TRIPS Agreement and the Doha Declaration on the TRIPS Agreement and Public Health (2001).
Under Section 58, any person may apply to the Federal Government for a compulsory licence on several grounds: that the reasonable requirements of the public with respect to the patented invention have not been satisfied; that the patented invention is not available to the public at a reasonably affordable price; or that the patented invention is not worked in the territory of Pakistan. The applicant must show that they made efforts to obtain a voluntary licence from the patent holder on reasonable commercial terms and conditions, and that such efforts were not successful within a reasonable period of time. This requirement of prior negotiation can be waived in cases of national emergency, circumstances of extreme urgency, or public non-commercial use.
Section 59 sets out the conditions under which a compulsory licence may be granted. The scope and duration of the licence must be limited to the purpose for which it was authorised. The licence must be non-exclusive and non-assignable. The patent holder must be paid adequate remuneration, taking into account the economic value of the authorisation. The authorisation is subject to judicial review.
In practice, compulsory licensing has been most relevant in the pharmaceutical sector. Pakistan's domestic pharmaceutical industry has relied on the compulsory licensing provisions as a safeguard against the monopoly pricing of essential medicines, though formal applications have been relatively rare.
Opposition Proceedings
The Ordinance provides for pre-grant opposition under Section 27. After publication of the application but before the grant of the patent, any person may file a notice of opposition with IPO Pakistan. The grounds for opposition include that the invention is not patentable, that the application does not disclose the invention sufficiently, that the applicant is not entitled to the patent, or that the claims are not supported by the description. The Controller hears both parties and decides whether to grant or refuse the patent.
Post-grant revocation is available under Section 48. Any person interested, or the Federal Government, may apply for the revocation of a patent on grounds similar to those available for opposition, as well as additional grounds such as that the patent was obtained by fraud or misrepresentation, or that the invention is not useful.
Enforcement and Infringement
Patent infringement proceedings are brought before the civil courts. Under Section 36, the patent holder or an exclusive licensee may institute a suit for infringement. The remedies available include an injunction to restrain further infringement, damages or an account of profits, and an order for the delivery up or destruction of infringing products. The court may also grant interim injunctions where the patent holder demonstrates a prima facie case, the balance of convenience favours the grant of relief, and irreparable harm would result from refusal.
Section 39 provides defences to infringement. A defendant may argue that the patent is invalid on any of the grounds available for revocation. The defendant may also invoke the exceptions to patent rights, such as experimental use or the preparation of medicines in individual cases. The burden of proving infringement lies on the patent holder, except in the case of process patents: Section 37 provides that where a patent is granted for a process for obtaining a product, the court may order the defendant to prove that the process used to obtain an identical product is different from the patented process.
Criminal penalties are also available under the Ordinance. Section 43 makes it an offence to falsely represent that a product is patented, punishable by a fine. Section 44 creates an offence for the unauthorised use of the word "patent office" in connection with a business, punishable by imprisonment of up to six months, a fine, or both.
International Filing and Priority
Pakistan is a member of the Paris Convention for the Protection of Industrial Property, which allows applicants to claim priority from an earlier filing in another Convention country within 12 months. Pakistan is also a party to the Patent Cooperation Treaty (PCT), which allows applicants to file a single international application designating Pakistan among other countries. PCT national phase entry in Pakistan must be completed within 31 months from the priority date.
These international agreements mean that inventors and companies based abroad can protect their inventions in Pakistan through established multilateral channels, while Pakistani applicants can use the same routes to seek patent protection internationally.
Practical Considerations
The processing time for patent applications in Pakistan has historically been lengthy, with examination backlogs at IPO Pakistan sometimes extending to several years. IPO Pakistan has taken steps to address this, including recruiting additional examiners and digitising the filing process. The online filing system, PatentEasy, allows applicants to submit applications electronically, though the system's reliability has varied.
For applicants in technology-intensive sectors, the disclosure requirements deserve careful attention. The specification must enable a person skilled in the art to reproduce the invention, and insufficient disclosure is a common ground for objection during examination and for opposition after publication. In software-related inventions, the boundary between patentable technical contributions and excluded subject matter (such as mathematical methods or business methods) can be uncertain, and applicants should frame claims carefully to emphasise the technical effect of the invention rather than the abstract algorithm.
For advice on patent registration, IP portfolio management, or intellectual property disputes in Pakistan, contact LexForm.