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Updated Till 22.8.2022
THE PATENTS ORDINANCE, 2000
CONTENTS
___________
CHAPTER I
PRELIMINARY
1. Short title, extent and commencement.
2. Definitions.
CHAPTER II
ADMINISTRATION
3. Appointment of Controller and other officers.
4. Patent Office.
5. Officers and employees incapable of an interest in a patent.
6. Officers and employees not to divulge certain information or advise in certain matters.
CHAPTER III
PATENTABILITY
7. Patentable inventions.
8. Novelty.
9. Inventive step.
10. Industrial application.
Page 1 of 52
CHAPTER IV
APPLICATIONS
11. Persons entitled to make an application for patent.
12. Right to patent for invention made by employee.
13. Application for patent.
14. Complete and provisional application.
15. Contents of specification.
CHAPTER V
EXAMINATION OF APPLICATIONS
16. Examination of application.
17. Reference to other patent.
18. Substitution of applicants, etc.
19. Time for putting application in order of acceptance. [Omitted]
20. Power of Controller to require certain information and documents relating to foreign
application.
21. Acceptance of complete Specification.
22. Effect of acceptance of complete Specification.
CHAPTER VI
OPPOSITION TO GRANT OF PATENT
23. Opposition to the grant of patent.
24. Third Party Observations on Patentability.
CHAPTER VII
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS
25. Information prejudicial to defence of Pakistan or safety of public.
26. Residents not to apply outside Pakistan without permission.
Page 2 of 52
CHAPTER VIII
GRANT AND SEALING OF PATENT
27. Grant and sealing of patent.
28. Amendment of patent granted to a deceased person.
29. Date of patent.
30. Rights conferred by patent.
31. Term of patent.
32. Grant of patents to be subjected to certain conditions.
CHAPTER IX
MISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS
33. Priority date in case of invention obtained from other person.
34. Grant of patent to two or more persons.
35. Power of Controller to give directions to co-owners.
36. Power of Controller or Court to determine the matter in dispute between employer and
employee.
37. Avoidance of restrictive condition in contracts.
38. Determination of certain contracts.
CHAPTER X
PATENTS OF ADDITION
39. Patents of addition.
40. Term of patents of addition.
41. Patent of addition not to be refused, etc.
CHAPTER XI
AMENDMENT OF SPECIFICATION
42. Amendment of specification with leave of Controller.
43. Amendment of specification with leave of High Court.
44. Supplementary provisions as to amendment of specification.
Page 3 of 52
CHAPTER XII
RESTORATION OF LAPSED PATENTS
45. Restoration of lapsed patents.
CHAPTER XIII
REVOCATION AND SURRENDER OF PATENTS
46. Revocation of patent by High Court.
47. Revocation of patent by Controller.
48. Revocation of patent by the Federal Government.
49. Revocation of surrendered patent by Controller.
CHAPTER XIV
POWERS OF CONTROLLER
50. Controller to have certain powers of a civil court.
51. Power of Controller to correct clerical errors.
52. Evidence before Controller.
53. Exercise of discretionary powers by Controller.
CHAPTER XV
REGISTER OF PATENTS
54. Register of Patents.
55. Registration of assignments, transmissions, etc.
56. Power of High Court regarding rectification of the Register.
57. Inspection of, and extracts from, the Register, etc.
CHAPTER XVI
COMPULSORY LICENCES, LICENCES OF RIGHT, EXPLOITING OF
PATENTS AND REVOCATION
58. Exploitation by a Government agency or third person.
59. Powers of Controller in granting compulsory licenses.
Page 4 of 52
CHAPTER XVII
PROCEEDINGS FOR INFRINGEMENT OF PATENTS
60. Suit for infringement of a patent.
61. Reliefs in suits for infringement.
62. Damages not to be awarded against defendant in certain cases.
63. Relief for infringement of partially valid specification.
64. Proceedings for infringement by exclusive licensee.
65. Certificate of contested validity of specification.
66. Remedy for groundless threats of infringement proceedings.
67. Power of Court to make declaration as to non infringement.
68. Power of Court to appoint scientific advisers.
CHAPTER XVIII
APPEALS
69. Appeals.
70. Procedure for hearing appeals.
CHAPTER XIX
PENALTIES
71. Penalty for contravention of secrecy provisions relating to certain inventions.
72. Penalty for false entry in any register, etc.
73. Penalty for false representation.
74. Penalty for wrongful use of Words “patent office”.
75. Penalty for refusal or failure to supply information.
76. Penalty for contravention of section 20.
77. Penalty for practice by non-registered patent agents.
78. Offences by companies etc.
CHAPTER XX
PATENT AGENTS
79. Register of patent agents.
80. Registration as patent agent.
Page 5 of 52
81. Subscription and verification of certain documents by patent agents.
82. Restrictions on practice as patent agent.
83. Removal from register of patent agents and restoration.
84. Power of controller to refuse to recognize as agent.
85. Saving in respect of other persons authorize to act as agents.
CHAPTER XXI
INTERNATIONAL ARRANGEMENTS
86. Power of the Federal Government to declare a country as Convention country.
87. Supplementary provisions as to Convention application.
88. Documents to be filed with a Convention application.
CHAPTER XXII
MISCELLANEOUS
89. Fees.
90. Restrictions upon publication of specifications, etc.
91. Reports of examiners to be confidential.
92. Publication of Patented Inventions.
93. Power of Controller to call for information from patentees.
94. Evidence of entries, documents, etc.
95. Declaration by infants, lunatics, etc.
96. Service of notice, etc., by post.
97. Security for cost.
98. Transmission of orders of High Court or Court to the Controller.
99. Transmission of copies of specifications, etc. and inspection thereof.
100. Information relating to patents.
101. Loss or destruction of patents.
102. Patent to bind the Government. [Omitted]
103. Right of the Government to sell or use forfeited articles.
104. Power of High Court to make rules.
105. Power of the Federal Government to make rules.
106. Repeal and savings.
107. Acts done in good faith.
108. Removal of difficulties.
Page 6 of 52
THE PATENTS ORDINANCE, 2000
ORDINANCE NO. LXI of 2000
[2nd December, 2000]
1
[An Ordinance to amend and consolidate the law relating to patents in order to give effect in
Pakistan to the provisions of the International Convention on Trade Related Intellectual Property
Rights, 1994, in accordance with its objectives and principles.
WHEREAS it is expedient to amend and consolidate the law relating to patents;]
AND WHEREAS the National Assembly and the Senate stand suspended in pursuance of the
Proclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution
Order No. 1 of 1999;
AND WHEREAS the President is satisfied that circumstances exist which render it
necessary to take immediate action;
NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day
of October, 1999, and the Provisional Constitution Order No. 1 of 1999, read with the Provisional
Constitution (Amendment) Order No. 9 of 1999, and in exercise of all powers enabling him in
that behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the
following Ordinance:__
CHAPTER I
PRELIMINARY
1. Short title, extent and commencement.-(1) This Ordinance may be called the Patents
Ordinance, 2000.
(2) It extends to the whole of Pakistan.
(3) It shall come into force at once except the provisions relating to examination, sealing,
grant and post-grant matters of the patents relating to chemical products intended for use in
agriculture and medicines, but excluding the grant of exclusive marketing rights therefore and mail
box filings which shall come into force on and from the first day of January, 2005.
2. Definitions. In this Ordinance, unless there is anything repugnant in the subject or
context,__
(a) “assignee” includes the legal representative of deceased assignee and
references to the assignee of any person includes references to the assignee of
the legal representative or assignee of that person;
1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 2, for “long title and preamble.”
Page 7 of 52
(b) “Controller” means the Controller of Patents appointed under section 3;
(c) “Convention application” means an application made in Pakistan within
twelve months after the date of an application made in a Convention country,
whether claiming single or multiple priorities from such application;
(d) “Convention country” means a member country of the World Trade
Organization or a country declared as such under section 86;
1
[(e) “date of advertisement”, wherever appearing in this Ordinance, shall be the
date on which the patents’ journal is published or uploaded on website of the
Intellectual Property Organization of Pakistan or printed in hard form in
relevant part of the official Gazette, whichever is earlier:]
(f) “date of filing”, in relation to an application for a patent, means-
(i) in case of an application which is post-dated or ante-dated under
this Ordinance, the date to which it is so post-dated or antedated; and
2
[(ii) the date on which it is filed at the Patent Office or its branch office;]
(g) “District Court” has the meaning assigned to that expression by the Code of
Civil Procedure, 1908 (Act V of 1908);
(h) “exclusive licence” means a licence from a proprietor of, or an applicant of, a
patent which confers on the licensee, or on the licensee and persons authorized
by him, to the exclusion of all other persons, including the proprietor or
applicant, any right in respect of the invention, to which the patent or
application relates, and “exclusive licensee” and “non-exclusive licensee”
shall be construed accordingly;
3
[(i) “invention” means any new and useful product or process, in any field of
technology and includes any new and useful improvement of either of them;]
(j) “inventor” means the actual devisor of an invention, and joint inventor shall be
construed accordingly;
(k) “legal representative” means a person who in law represents the estate of a
deceased person;
4
[(ka) “mail box” means the mailbox facility provided under sub-section (9) of
section 13;]
_________________________________________________________________________________
1
Subs by Act XXIV of 2016, s.2.
2
Subs by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 3, for sub-clause (ii).
3
Subs ibid., for clause (i).
4
New clause (ka) ins. ibid.,
Page 8 of 52
(l) “patent agent” means an advocate or a person for the time being registered
under this Ordinance as a patent agent;
(m) “patentee” in relation to a patent, means the person or persons for the time
being entered on the Register as the grantee or proprietor of the patent and
includes any subsequent assignee or successor-in-interest of a patent recordal
of whose name on the Register is pending with the Controller;
(n) “patent of addition” means a patent of addition granted in accordance with
section 39;
(o) “Patent Office” means the Patent Office established, or deemed to have been
established, under section 4;
1
[(p) “person” means any natural or juridical person and includes any
association or body of individuals, whether incorporated or not;]
(q) “person interested” includes a person engaged in, or in promoting, research in
the same field as that to which the invention relates;
(r) “prescribed” means prescribed by rules made under this Ordinance;
2
[(s) “process” means any art, process or method or manner of new manufacture of
a product;]
3
[(t) “product” means any substance, article, apparatus or machine;]
(u) “published” means made available to the public whether in Pakistan or
elsewhere and a document shall be taken to be published under any provision
of this Ordinance, if it can be inspected as of right at any place in Pakistan by
members of public, whether on payment or free of cost;
(v) “Register” means the Register of Patents maintained under section 54; and
(w) “rules” means rules made under this Ordinance.
CHAPTER II
ADMINISTRATION
3. Appointment of Controller and other officers.—(1) For the purposes of this Ordinance,
the Federal Government shall, by notification in the official Gazette, appoint an officer who shall be
called the Controller of Patents.
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 3 for clause (p).
2
Subs. ibid., for clause (s).
3
Subs. ibid., for clause (t).
Page 9 of 52
(2) The Federal Government shall appoint such other officers with such designations as it
deems fit.
4. Patent Office.—(1) For the purposes of this Ordinance, there shall be established a Patent
Office:
Provided that until such time the Patent Office is established, the Patent Office
established under the Patents and Designs Act, 1911, (Act II of 1911) shall be the Patent office for
the purposes of this Ordinance.
(2) The Patent office shall be under the immediate control of the Controller who shall act
under the superintendence and direction of the Federal Government.
(3) The Patent Office shall be entrusted with all the functions relating to the procedure for
the grant of patents and for the administration of granted patents as specified in this Ordinance and
rules.
(4) There shall be a seal of the Patent Office and impression of the seal shall be judicially
noticed.
5. Officers and employees incapable of an interest in a patent. Any officer or a person
employed in the Patent Office shall be incapable during the period of his appointment and for one
year thereafter of applying for a patent or of acquiring, directly or indirectly, except by inheritance
or bequest, any patent issued or to be issued by the Patent Office.
6. Officers and employees not to divulge certain information or advise in certain
matters. An officer or a person employed in the Patent Office shall not, except when required or
authorized by this Ordinance or under a direction in writing of the Controller or by order of the
Court:—
(a) divulge any information available to him by virtue of his office in respect of
any application for a patent or a patent granted in Pakistan; or
(b) advise in a matter which is under consideration or is likely to come under
consideration of the Patent Office in pursuance of this Ordinance.
_____________
CHAPTER III
PATENTABILITY
7. Patentable inventions.—(1) Any invention is patentable, if it is new, involves an
inventive step and is capable of industrial application.
(2) Subject to sub-section (3), the following shall not be regarded as invention within the
meaning of sub-section (1), namely:—
(a) a discovery, scientific theory or mathematical method;
Page 10 of 52
(b) a literary, dramatic, musical or artistic work or any other creation of purely
aesthetic character whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game of doing
business 1*.
(d) the presentation of information 2[;and]
3
[(e) substances that exist in nature or if isolated therefrom.]
(3) The provisions of sub-section (2) shall prevent anything from being treated as an
invention for the purposes of this Ordinance only to the extent that a patent or an application for
a patent relates to that thing as such.
(4) A patent shall not be granted:
4
[(a) for invention the prevention of commercial exploitation of which would be
necessary to protect the “ordre public” or morality, including to protect
human, animal or plant life or health or to avoid serious prejudice to the
environment, provided that such exclusion is not made merely because the
exploitation is prohibited by any law for the time being in force;]
5
[(b) for plants and animals other than micro-organisms, and essentially biological
processes for the production of plants or animals other than non-biological and
microbiological processes;]
(c) for 6[diagnostic,] therapeutic and surgical methods for the treatment of humans
or animals;
7
[(d) for a new or subsequent use of a known product or process; and
(e) for a mere change in physical appearance of a chemical product where the
chemical formula or process of manufacture remains the same provided that
this clause shall not apply to an invention fulfilling the criteria of
patentability.]
_________________________________________________________________________________
1
The word “and” omitted by the Patents (Amdt.) Ordinance 2002 (95 of 2002), s. 4.
2
Subs.and added ibid., for full stop.
3
New clause (e) added ibid.,
4
Subs. ibid; for clause (a).
5
Subs. Ibid.
6
Subs. ibid., for “diagnostic”.
7
New clauses (d) and (e) added ibid.,
Page 11 of 52
8. Novelty.-(1) An invention shall be considered to be new if it does not form part of the
state of the art.
(2) The state of the art shall comprise—
(a) everything disclosed to the public anywhere in the world, by publication in
tangible form or by oral disclosure, by use or in any other way, prior to the
filing or, where appropriate, the priority date, of the application claiming the
invention; 1[or]
(b) contents of the complete specification and priority documents published under
section 21 of an application filed in Pakistan.
2
[(c) traditionally developed or existing knowledge available or in possession of a
local or indigenous community.]
3
[(3) Notwithstanding the provisions of sub-section (2), disclosure of a patentable invention
in respect of goods shall not constitute, ‘state of the art’ if an article is exhibited at any official or
officially recognized international exhibition within twelve months preceding the date of filing of an
application for grant of patent. If later on, the right of priority is invoked, then the period shall start
from the date of introduction of the article into the exhibition. The Controller may require proof, with
such documentary evidence as considered necessary, of the identity of the article exhibited and the
date of its introduction into the exhibition.]
(4) In this section references to the inventor include references to any proprietor of the
invention for the time being.
9. Inventive step. An invention shall be considered as involving an inventive step if it has not
been obvious to a person, prior to the date of application for a patent, skilled in the art having regard
to any matter which forms part of the state of art by virtue of 4* * * section 8.
10. Industrial application. —5[(1) An invention shall be considered to be capable of
industrial application if it is capable of being manufactured or otherwise industrially used.].
6
* * * * * * *
1
Subs. by the Patent (Amdt.) Ordinance 2002 (95 of 2002), s.5 for “and”.
2
New clause (c) added ibid.,
3
Subs. Ibid for sub-section (3).
4
The certain words omitted ibid., s. 6.
5
Subs. ibid., s. 7 for sub-section (1).
6
Sub-section (2) omitted ibid.,
Page 12 of 52
CHAPTER IV
APPLICATIONS
11. Persons entitled to make an application for patent.—(1) Any of the following persons,
whether alone or jointly with any other person, may make an application for a patent, namely:—
(a) the true and the first inventors or inventors of the invention or his or, as
the case may be, their assignee or successor in interest; and
(b) the legal representative of any deceased person who immediately before his
death was entitled to make such application.
12. Right to patent for invention made by employee. The right to the patent for an
invention made by an employee during the course of his employment in the area of activity of the
employer shall, in the absence of contractual obligation to the contrary belong to the inventor unless
the employer proves that the invention could not have been made without the use of employer’s
facilities, equipment and the like necessary for the invention:
Provided that an invention of exceptional economic value shall entitle the inventor to an
equitable remuneration taking into account the nature of his duties, his salary and the benefits
derived by the employer.
13. Application for patent.—(1) Every application for the patent shall be made in the
prescribed form and shall be filed at the Patent Office in the prescribed manner and shall contain a
declaration to the effect that the applicant is in possession of an invention of which he, or in the case
of the joint application, at least one of the applicants, claims to be the true and the first inventor of or
the legal representative or assignee of such inventor or, as the case may be, inventors, provided that
where the inventor is not the applicant, he shall be entitled to be mentioned as such in the
application and if he is not so mentioned the Controller may, upon an application made in the
prescribed manner and after hearing any interested person, insert the name of such person as an
inventor or co-inventor, as the case may be, if he is satisfied that he be named as an inventor of the
invention for which the applicant desires, to obtain a patent.
(2) Where applications for protection have been made in one or more Convention countries
in respect of two or more invention which are cognate or of which one is modification of another, a
single Convention application may, subject to the provisions of section 15, be made in respect of
those inventions at any time within twelve months from the date of the earliest of the said
applications for protection.
(3) Each application shall relate to one invention only 1* * *.
(4) The applicant may, before the acceptance of the application, divide it into two or more
applications, hereinafter referred to as divisional applications, provided that each divisional
application shall not go beyond the disclosure in the first application.
1
The certain words omitted by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 8.
Page 13 of 52
(5) Each divisional application shall be entitled to the filing date and, where applicable, the
priority date of the first application.
(6) The fact that a patent has been granted on an application that did not comply with the
requirement of unity of invention shall not be a ground for the invalidation of the patent.
(7) The applicant may at anytime withdraw the application by making a request to the
Controller 1[:]
1
[Provided that where the application has been withdrawn before the advertisement of its
acceptance in the official Gazette or publication in the patents journal, the application and the
specification, claims and drawings, if any, shall not be open to public inspection.]
2
[(8) An application for an invention relating to genetically modified organisms shall require
clearance from the Federal Government and shall comply with such requirement as may be
prescribed.
(9) An application for availing exclusive marketing rights for a patentable invention relating
to pharmaceutical or agricultural chemical product shall be filed in the mailbox provided for this
purpose by the Controller who may require the form and manner for submitting such application as
may be prescribed] 1[.]
1
[* * *]
14. Complete and provisional application.—(1) Every application for a patent, other than a
Convention application, shall be accompanied by either a complete specification or a provisional
specification, and every Convention application shall be accompanied by a complete specification.
(2) Where an application for a patent is accompanied by a provisional specification, a
complete specification shall be filed within twelve months from the date of filing of the application,
and if the complete specification is not so filed the application shall be deemed to be abandoned.
(3) Where two or more applications in the name of the same applicant are accompanied by
provisional specification in respect of invention which are cognate or of which one is a modification
of another, and the Controller is of the opinion that the whole of such inventions or such as to
constitute a single invention and properly be included in one patent, he may allow one complete
specification to be filed in respect of all such provisional specifications.
(4) Where an application for a patent, not being a Convention application, is accompanied by
a specification purporting to be a complete specification, the Controller may, if the applicant so
requests at any time before the acceptance of the specification, direct that it shall be treated for the
purposes of this Ordinance as a provisional specification, and proceed with the application
accordingly.
1
Subs, Added and Omitted by Act XXIV of 2016, s.3.
2
New sub-sections (8) and (9) of s. 13 added by s. 8 of Ord.no XCV of 2002.
Page 14 of 52
(5) Where a complete specification has been filed in pursuance of an application for a patent
accompanied by a provisional specification or by a specification treated by virtue of a direction
under sub-section (4) as a provisional specification the Controller may, if the applicant so requests at
any time before the acceptance of the complete specification, cancel the provisional specification
and post-date the application to the date of filing of the complete specification.
15. Contents of specification.—1[(1) Every specification, whether complete or provisional,
shall describe in the form and manner as may be prescribed.]
(2) Subject to any rules made in this behalf, drawings may, and shall if the Controller so
requires, be supplied for the purposes of any specification, whether complete or provisional, and any
drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the
specification, and reference in this Ordinance to a specification shall be construed accordingly.
2
[(2A) For a chemical product intended for use in medicine or agriculture, the specification
shall be specific to one chemical product only describing the physical, chemical, pharmacological
and pharmaceutical properties or, as the case may be, the properties related to its use in agriculture
and its impact on environment.
(2B) Where a biological material is used, the specification shall disclose the place of origin
and source of such biological material and shall also exhibit compliance with the relevant applicable
rules on access, export and use of that material and where such a material is obtained from Pakistan
for use outside Pakistan, the permission of the Federal Government shall be necessary as may be
prescribed.]
(3) Every complete specification shall—
(a) fully and particularly describe the invention and the method by which it is to
be performed;
(b) disclose the invention which is known to the applicant and for which he is
entitled to claim protection; and
3
[(c) end with a claim or claims concisely defining the scope of the invention for
which protection is claimed.]
(4) The claim or claims of a complete specification shall relate to a single invention, shall
be clear and succinct and shall be fairly based on the matter disclosed in the specification.
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 9, for sub-section (1).
2
New sub-sections (2A) and (2B) ins. Ibid s.9.
3
Subs. ibid., for clause (c)
Page 15 of 52
(5) Subject to the foregoing provisions of this section, a complete specification filed after a
provisional specification, or filed with a Convention application, may include claims in respect of
developments of, or additions to, the invention which was described in the provisional specification
or, as the case may be, the invention in respect of which the application for protection was made in a
Convention country, being developments or additions in respect of which the applicant would be
entitled under the provisions of section 11 to make a separate application for a patent.
(6) Every complete specification shall be accompanied by an abstract for the purposes of
giving technical information and the Controller shall determine whether the abstract fulfills its
purpose and, if it does not, shall instruct the applicant to make modifications to the satisfaction of the
Controller.
(7) The abstract shall merely serve the purpose of technical information, in particular, it shall
not be taken into account for the purpose of interpreting the scope of protection.
1
[(8) Claim or claims in respect of a complete specification of a chemical product intended
for use in agriculture or medicine shall be structurally defined and shall relate to a single chemical
product only, excluding its derivates and salts, each of which, with a material or a noval
improvement in its claim from the main product, shall be filed as a separate invention or where
applicable, as a divisional application, Where structural description is not possible, as in the case of
biological products, the “product by process” claim shall be made and protection shall be limited to
the product obtained with the claimed process only:
Provided that a claim which is based on a mere admixture resulting only in aggregation of the
properties of the component substances thereof, or a processing of producing such substance, shall
not be allowed].
CHAPTER V
EXAMINATION OF APPLICATIONS
16. Examination of application.—(1) The Controller shall refer to an examiner every
application in respect of which a complete specification has been filed, for making a report to
the Controller after detail scrutiny of the application, specification, claims and drawing, if any, to
the effect whether the invention is new and involves an inventive step, and to also determine
whether other requirements of this Ordinance and rules have been complied with.
(2) The examiner shall make the report to the Controller as soon as is reasonably possible.
2
[* * *]
(3) If the examiner reports that any of the requirements of this Ordinance and rules are not
complied with, the Controller shall give the applicant an opportunity, or more than one opportunity,
to comply with such requirements as may be mentioned in the said report and to amend the
application, if necessary, within such time as may be prescribed, failing which the Controller may
refuse to proceed with the application.
1
New sub-section (8) added by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s.9.
2
Omitted and shall be deemed always to have been so omitted by Act IX of 2010, s.2.
Page 16 of 52
(4) If the Controller considers, at any time, before the acceptance of the application, that the
invention claimed therein has been wholly or in part claimed in a specification published on or after
the date which the patent applied for would bear, if granted appertaining to an application for grant
of a patent which, if granted, will be prior date to the patent applied for, he may require that the
applicant’s specification be amended by the insertion of a reference to such other specification by
way of notice to the public.
(5) The investigation required under this section shall not be held in any way to guarantee the
validity of any patent, and no liability shall be incurred by the Federal Government or any officer by
reason of, or in connection with, any such investigation or any proceeding consequent thereon.
1
* * * * * * *
(6) Notwithstanding anything in the preceding sub-sections, all applications claiming
protection for chemical products intended for use in medicine or agriculture filed after the first day of
January, 1995, in accordance with Article 70 (8) and 70 (9) of the World Trade Organization
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), shall be dealt with in
accordance with sub-section (3) of section 1.
17. Reference to other patent.—(1) If, in consequence of the investigation under section 16,
it appears to the Controller that an invention in respect of which application for a patent has been
made cannot be performed without substantial risk of infringement of a claim of any other patent, he
may direct that a reference to that other patent shall be inserted in the applicant’s complete
specification by way of notice to the public unless, within such time as may be prescribed, either—
(a) the applicant shows to the satisfaction of the Controller that there are
reasonable grounds for contesting the validity of the said claim of the other
patent; or
(b) the complete specification is amended to the satisfaction of the Controller.
(2) Where, after a reference to another patent has been inserted in a complete specification in
pursuance of a direction under sub-section (1)—
(a) that other patent is revoked or otherwise ceases to be in force;
(b) the specification of that other patent is amended by the deletion of the
relevant claim; or
(c) it is found, in proceedings before the court or the Controller, that the relevant
claim of that other patent is invalid or is not infringed by any working of the
applicant’s invention,
1
Omitted by Act IX of 2010, s.2.
Page 17 of 52
the Controller may, on the application of the applicant, delete the reference to that other patent.
18. Substitution of applicants, etc.—(1) If the Controller is satisfied, on an application
made in the prescribed manner at any time before a patent has been granted, that by virtue of any
assignment or agreement in writing made by the applicant or one of the applicants for the patent, or
by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the
interest of the applicant therein, or to an undivided share of the patent or of that interest, the
Controller may, subject to the provisions of this section, direct that the application shall proceed in
the name of the claimant or in the names of the claimants and the applicant or the other joint
applicant or applicants, as the case may require.
(2) No such direction under sub-section (1) shall be given by virtue of any assignment or
agreement made by one of two or more joint applicants for a patent except with the consent of the
other joint applicant or applicants.
(3) No such direction under sub-section (1) shall be given by virtue of any assignment or
agreement for the assignment of the benefit of an invention unless—
(a) the invention is identified therein by reference to the number of the
application for the patent;
(b) there is produced to the Controller an acknowledgement by the person by
whom the assignment or agreement was made that the assignment or
agreement relates to the invention in respect of which that application is
made;
(c) the rights of the claimant in respect of the invention have been finally
established by a decision of a court; or
(d) the Controller gives directions for enabling the application to proceed or for
regulating the manner in which it should be proceeded with under sub-section
(5).
(4) Where one of two or more joint applicants for patent dies at any time before the patent
has been granted, the Controller may, upon a request in that behalf made by the survivor or
survivors, and with the consent of the legal representative of the deceased, direct that the application
shall proceed in the name of the survivor or survivors alone.
(5) If any dispute arises between joint applicants for a patent whether or in what manner the
application should be proceeded with, the Controller may, upon application made to him in the
prescribed manner by any of the parties, and after giving to all parties concerned an opportunity of
being heard, give such directions as he thinks fit for enabling the application to proceed in the name
of one or more of the parties alone or for regulating the manner in which it should be proceeded with,
or for both those purposes, as the case may require.
Page 18 of 52
1
[19. * * *]
20. Power of Controller to require certain information and documents relating to
foreign application.—(1) The applicant shall, when required by the Controller, furnish him with the
date and number of any application for a patent filed by him abroad, hereinafter referred to as foreign
application, relating to the same or essentially the same invention as that claimed in the application
filed in Pakistan.
(2) The applicant shall, when required by the Controller, furnish him with the following
documents relating to one of the foreign applications referred to in sub-section (1), namely:—
(i) a copy of any communication received by the applicant concerning the
results of any search or examination carried out in respect of the foreign
application;
(ii) a copy of the patent granted on the basis of the foreign application; and
(iii) a copy of any final decision rejecting the foreign application.
(3) The applicant shall, when required by the Controller, furnish him with a copy of any final
decision invalidating the patent granted on the basis of foreign application referred to in sub-section
(1).
21. Acceptance of complete specification. On the acceptance of a complete specification,
the Controller shall give notice thereof to the applicant and shall advertise in the official Gazette
2
[and publish in the patent’s journal] the fact that specification has been accepted and thereupon the
application and the specification, and the priority documents, if any, filed in pursuance thereof shall
be open to public inspection.
3[22. Effect of acceptance of complete Specification. After the acceptance of an application
and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the
applicant shall have the like privileges and rights as if a patent for the invention had been sealed on
the date of the acceptance of the application:
Provided that the applicant shall not be entitled to institute any proceedings for infringement
until the patent has been sealed.]
CHAPTER VI
OPPOSITION TO GRANT OF PATENT
23. Opposition to the grant of patent.—(1) At any time within four months from the date of
advertisement of the acceptance of a complete specification under this Ordinance, any person may
give notice to the Controller of opposition to the grant of patent on any of the following grounds,
namely:—
1
Omitted by Act IX of 2010,s.3.
2
Ins by Act XXIV of 2016, s.4.
3
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 10. for the original section (22).
Page 19 of 52
(a) that the applicant for the patent obtained the invention or any part thereof from
him or from the person of whom the opponent is the legal representative,
assignee, agent or attorney;
(b) that the invention is not a patentable invention within the meaning of this
Ordinance;
(c) that the specification does not disclose the invention in a manner clear and
complete enough for it to be carried out by a person skilled in the art;
(d) that the claims are not clear or extend beyond the scope of the disclosures in
the complete specification as originally filed; and
(e) that the complete specification describes or claims an invention other than that
described in the provisional specification and that such other invention either
forms the subject of an application made by the opponent for a patent which if
granted would bear a date in the interval between the date of the application
and the leaving of the complete specification, or has been made available to
the public by publication in any document in that interval.
(2) Where a notice is given under sub-section (2), the Controller shall give notice of the
opposition to the applicant, and shall, before deciding the case, give to the applicant and the
opponent an opportunity of being heard.
24. Third party observations on patentability.—(1) At any time after the publication of the
specification under section 21, any person may make observations in writing to the Controller on the
novelty of the invention giving evidence in support of his observations and the Controller shall
consider the observations in the light of the evidence made available to him before the grant of
patent.
(2) The person who makes observations under sub-section (1) shall not become a party to the
proceedings under this Ordinance before the Controller by reason only that he has made the
observations, failing which the observations shall be rejected as if not filed at all.
CHAPTER VII
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS
25. Information prejudicial to defence of Pakistan or safety of public.—(1) Where an
application for a patent in respect of an invention is filed in the patent Office and it appears to the
Controller that the invention is one of the class notified to him by the Federal Government as being
one the publication of which might be prejudicial to the defence of Pakistan, or if he himself thinks
so, then he may give directions prohibiting or restricting the publication of the invention or its
communication to any specified person or class of persons.
(2) If it appears to the Controller that the specification of any application so filed contains
information the publication of which might be prejudicial to the safety of the public, he may give
Page 20 of 52
directions prohibiting or restricting the publication of that information or its communication to any
person until the end of a period not exceeding three months from the date of the acceptance.
(3) While directions are in force under this section, the application may proceed to the stage
where it is in order for acceptance, but specification shall not be published.
(4) Where the Controller gives directions under this section with respect to any application,
he shall give notice of the application and of the directions to the Federal Government and the
following provisions shall then have effect, namely:—
(a) the Federal Government shall, on receipt of the notice, consider whether the
publication of the invention or the publication or communication of the
information in question would be prejudicial to the defence of Pakistan or the
safety of the public;
(b) if the Federal Government determine under clause (a) that the publication of
the specification or the publication or communication of that information
would be prejudicial to the safety of the public, it shall given notice to the
Controller who shall continue his directions under sub-section (2) until they
are revoked under clause (e);
(c) if the Federal Government determine under clause (a) that the publication of
the specification or the publication or communication of that information
would be prejudicial to the defence of Pakistan or the safety of the public, it
shall, unless a notice under clause (d) has previously been given to the
Controller, reconsider that question during the period of nine months from the
date of filing the application and at least once in every subsequent period of
twelve months;
(d) if on consideration of an application at any time it appears to the Federal
Government that the publication of the specification or the publication or
communication of the information contained in it would not, or would no
longer, be prejudicial to the defence of Pakistan or the safety of the public, it
shall give notice to the Controller to that effect; and
(e) on receipt of a notice under clause (d), the Controller shall revoke the
directions and may, subject to such conditions, if any, as he thinks fit, extend
the time for doing any thing required or authorized to be done by or under this
Ordinance in connection with the application, whether or not that time has
previously expired.
(5) Where a complete specification filed in pursuance of an application for a patent for an
invention in respect of which directions have been given under this section is accepted before the
directions are revoked, then__
(a) if any use of the invention is made by or on behalf or to the order of the
Federal Government, the provisions of section 58 shall apply in relation to that
use as if the patent has been granted for the invention; and
(b) if it appears to the Federal Government that the applicant for the patent has
suffered hardship by reason of the continuance in force of the directions, the
Page 21 of 52
Federal Government may make such payment, if any, by way of compensation
to the applicant as appears to the Federal Government to be reasonable having
regard to the inventive merit and utility of the invention, the purpose for which
it is designed and any other relevant circumstances.
(6) Where a patent is granted in pursuance of an application in respect of which directions
have been given under this section, no renewal fees shall be payable in respect of any period during
which those directions were in force.
26. Residents not to apply outside Pakistan without permission.—(1) No person resident
in Pakistan shall, without written authority granted by the Controller, file or cause to be filed outside
Pakistan an application for the grant of a patent for an invention unless—
(a) an application for patent for the same invention has been filed in the Patent
Office not less than six weeks before the application outside Pakistan; and
(b) either no directions have been given under section 25 in relation to the
application in Pakistan or all such directions have been revoked.
(2) The provisions of sub-section (1) shall not apply in Pakistan to an invention in respect of
which an application for a patent has first been filed in a country outside Pakistan by a person
resident outside Pakistan.
______________
CHAPTER VIII
GRANT AND SEALING OF PATENT
27. Grant and sealing of Patent.—(1) Subject to the provisions of this Ordinance with
respect to opposition and to any power of the Controller to refuse the grant, a patent sealed with the
seal of the Patent Office shall, if the request is made within the time allowed under this section, be
granted to the applicant or applicants within that time or as soon as may be thereafter, and the date on
which the patent is sealed shall be entered in the Register.
(2) Subject to the provisions of this Ordinance with respect to patents of addition, a request
under this section for the sealing of a patent shall be made not later than the expiration of six months
from the date of the publication of the complete specification:
Provided that—
(a) where at the expiration of the said six months any proceedings in relation to
the application for the patent is pending in any court or before the Controller,
the request may be made within three months after the final determination of
that proceedings; and
(b) where the applicant or one of the applicants has died before the expiration of
the time within which under the provisions of this sub-section the request
Page 22 of 52
could otherwise be made, the said request may be made at any time within
twelve months after the date of the death or at such later time as the Controller
may allow.
Explanation.—Any proceedings shall be deemed to be pending so long as the time for any
appeal therein has not expired, and any proceedings shall be deemed to be finally determined when
the time for any appeal therein has expired without the appeal being brought.
(3) The period for making the request under sub-section (2) for the sealing of a patent may be
extended by the Controller by six months if the application is made and the prescribed fee paid
within the extended period.
28. Amendment of patent granted to a deceased person. Where, at any time after a patent
has been sealed in pursuance of an application under this Ordinance, the Controller is satisfied that
the person to whom the patent was granted had died, or, in the case of a body corporate, had
ceased to exist, before the patent was sealed, he may amend the patent by substituting for the name
of that person the name of the person to whom the patent ought to have been granted, and the patent
shall have effect, and shall be deemed always to have had effect, accordingly.
29. Date of patent.—(1) Subject to the other provisions of this Ordinance, every patent shall
be dated as of the filing date of the application and in case of a Convention application the date of
such earliest application filed in the Convention country from which priority has been claimed.
(2) The date of every patent shall be entered in the Register.
30. Rights conferred by patent. —1[(1) Subject to other provisions of this Ordinance, the
holder of a valid patent in Pakistan shall have the following rights, namely:-
(a) Where the subject matter of patent is a product, the holder of valid patent may
prevent third parties not having the owner’s consent from the acts of making,
using, offering for sale, selling, or importing for these purposes that product;
and
(b) where the subject matter of a patent is a process, the holder of a valid
patent may prevent third parties not having the owner’s consent from the act
of using the process, and from the act of using, offering for sale, selling, or
importing for these purposes at least the product obtained directly by that
process.]
2
[(2) The holder of a valid patent shall also have the right to assign, or transfer by succession,
the patent and to conclude licensing contracts.]
(3) The owner of the patent shall, in addition to any other rights, remedies or actions available
to him have the right, subject to sub-section (4) and section 59, to institute court proceedings
against any person who infringes the patent by performing, without his agreement, any of the acts
referred to in sub-section (2) or who performs acts which make it likely that infringement will occur.
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 11, for sub-section (1).
2
Subs.Ibid s. 11, for sub-section (2).
Page 23 of 52
1
[(4) Where a person has filed an application in the mailbox, in accordance with sub-section
(9) of section 13, for protection of an invention relating to a pharmaceutical or agriculture chemical
product, exclusive marketing rights shall be granted for a period of five years after obtaining
marketing approved or until a product patent is granted or rejected whichever period is shorter,
provided that, subsequent to the first January, 1995, a patent application has been filed and a patent
granted for that product in any Convention country and marketing approval obtained in such
country;]
2
[(4A) Where a person has made an invention in Pakistan in respect of a process of
manufacture of any of the products referred to in sub-section (4) and has obtained a patent for the
same and has filed an application in the mailbox for protection of the invention, and has been granted
marketing approval thereof, then he shall have the exclusive marketing rights for that product for a
period of five years after obtaining marketing approval or until a product patent is granted or rejected
whichever period is shorter.]
(5) The rights under the patent shall not extend to—
3
[(a) acts in respect of articles which have been put on the market anywhere in the
world by the owner of the patent or with his consent or by an authorized
person or in any other legitimate manner such as compulsory licenses;]
(b) the use of articles on an aircraft, land vehicles or vessels of other countries
which temporarily or accidentally enter the airspace, territory or waters of
Pakistan;
(c) acts done only for experimental purposes relating to a patented invention;4*
(d) acts performed by any person who in good faith, before the filling or, where
priority is claimed, the priority date of the application on which the patent is
granted in Pakistan, was using the invention or was making effective and
serious preparations for such use 5[;or]
3
[(f) acts done for teaching purposes in educational or research institutions.]
(6) The right of prior user referred to in clause (d) of subsection (5), may be transferred or
devolve only together with the enterprise or business, or with that part of the enterprise or business,
in which the use of preparations for use have been made.
31. Term of patent. The term of a patent under this Ordinance shall be twenty years from the
filing date.
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 11, for sub-section (4).
2
New sub-section (4A) ins. ibid.,
3
Subs.Ibid for clause (a).”
4
The word “or” omitted ibid.,
5
Subs. ibid., for full stop.
6
New clause (f) inserted, ibid.
Page 24 of 52
32. Grant of patents to be subjected to certain conditions.—(1) Notwithstanding anything
in section 31, a patent shall cease to have effect on the expiration of a period for the payment of any
renewal fee if that fee is not paid within the prescribed period or within the period as extended
under this section.
(2) The period prescribed for the payment of any renewal fee shall be extended to such period
not being more than six months if the request is made to the Controller and the renewal fee and the
prescribed additional fee is paid before the expiration of the extended period.
___________
CHAPTER IX
MISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS
33. Priority date in case of invention obtained from other person.—(1) Where an
application is made for a patent for an invention which has been claimed in a complete specification
filed in pursuance of any other such application, then if—
(a) the Controller has refused to grant a patent in pursuance of that other
application on the ground specified in clause (a) of sub-section (1) of section
23;
(b) a patent granted in pursuance of that other application has been revoked by the
High Court under section 46 or by the Controller under section 47 on the
ground specified in clause (a) of sub-section (1) of section 23; or
(c) the complete specification filed in pursuance of the said other application has
been amended by the exclusion of the claim relating to the said invention in
consequence of a finding by the Controller that the invention was obtained
by the applicant or patentee from any other person,
the Controller may direct that the first-mentioned application and any specification filed in
pursuance thereof shall be deemed, for the purposes of the provisions of this Ordinance relating to
the priority date of claims of complete specification, to have been filed on the date on which the
corresponding document was or was deemed to have been filed in the proceedings upon the said
other application.
34. Grant of patent to two or more persons.—(1) Where a patent is granted to two or more
persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an
equal undivided share in the patent.
(2) Subject to the provisions of this section and section 35, where two or more persons are
registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force,
each of those persons shall be entitled, by himself or his agents, to exploit, use, exercise and sell the
patented invention for his own benefit without accounting to the other person or persons.
(3) Subject to the provisions of this section and section 35 and to any agreement for the time
being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a
licence under a patent shall not be granted, and a share in a patent shall not be assigned, by one of
Page 25 of 52
such persons, except with the consent of the other person or persons.
(4) Where a patented article is sold by one of two or more persons registered as grantee or
proprietor of the patent relating to that article, the purchaser and any person claiming through him
shall be entitled to deal with it in the same manner as if the article had been sold by a sole patentee.
(5) Subject to the provisions of this section, the provisions of law applicable to the ownership
and devolution of movable property generally shall apply in relation to patents, and nothing
contained in sub-section (1) or sub-section (2) shall affect the mutual rights or obligations of trustees
or of the legal representatives of a deceased person or their rights or obligations as such.
35. Power of Controller to give directions to co-owners.—(1) Where two or more persons
are registered as grantee or proprietor of a patent, the Controller may, upon application made to him
in the prescribed manner by any of those persons, give such directions in accordance with the
application as to the sale or lease of the patent or any interest therein, the grant of licences
under the patent, or the exercise of any right under section 39 in relation thereto, as he thinks fit.
(2) If any person registered as grantee or proprietor of the patent fails to execute any
instrument or to do any other thing required for the carrying out of any direction given under this
section within fourteen days after being requested in writing so to do by any of the other persons so
registered, the Controller may, upon application made to him in the prescribed manner by any such
other person, give directions empowering any person to execute that instrument or to do that thing in
the name and on behalf of the person in default.
(3) Before giving directions in pursuance of an application under this section, the Controller
shall give an opportunity of being heard—
(a) in the case of an application under sub-section (1), to the other person or
persons registered as grantee or proprietor of the patent; and
(b) in the case of an application under sub-section (2), to the person in default.
(4) No direction shall be given under this section so as to affect the mutual rights or
obligations of trustee or of the legal representatives of a deceased person, or their rights or
obligations as such.
36. Power of Controller or Court to determine the matter in dispute between employer
and employee. —(1) Where a dispute arises between an employer and a person who is or was at the
material time his employee as to the rights of the parties in respect of an invention made by the
employee either alone or jointly with other employees or in respect of any patent granted or to be
granted in respect thereof, the Controller may, upon application made to him in the prescribed
manner by either of the parties and after giving to each of them an opportunity of being heard,
determine the matter in dispute, and may make such orders for giving effect to his decision as he
considers expedient:
Provided that, if it appears to the Controller upon an application under this section that the
matter in dispute involves questions which should be determined by the Court, he may decline to
deal therewith.
(2) In proceedings before the Court between an employer and a person who is or was at the
Page 26 of 52
material time his employee, or upon an application made to the Controller under sub-section (1), the
Court or, as the case may be, the Controller may, if satisfied that both the parties are entitled to the
benefit of an invention made by the employee, by order provide for the apportionment between them
of the benefit of the invention, and of any patent granted or to be granted in respect thereof, in such
manner as the Court or, as the case may be, the Controller considers just.
(3) A decision of the Controller under this section shall have the same effect as between the
parties and persons claiming under them as a decision of the Court.
37. Avoidance of restrictive condition in contracts.—(1) Subject to the provisions of this
section, any condition of a contract for the sale or lease of a patented article or of an article made by
a patented process or for license to exploit a patented article or process, or relating to any such sale,
lease or license, shall be void so far as it purports—
(a) to require the purchaser, lessee or licensee to acquire from the vendor, lessor
or licensor, or his nominees, or prohibit him from acquiring from any specified
person, or from acquiring except from the vendor, lessor or licensor, or his
nominees, any article other than the patented article or an article made by the
patented process; or
(b) to prohibit the purchaser, lessee or licensee from using articles, whether
patented or not, which are not supplied by, or any patented process which does
not belong to, the vendor, lessor or licensor, or his nominees, or to restrict the
right of the purchaser, lessee or licensee to use any such article or process.
(2) In proceedings against any person for infringement of a patent, it shall be a defence to
prove that at the time of the infringement there was in force a contract relating to the patent made by
or with the consent of the plaintiff and containing a condition void by virtue of this section.
(3) A condition of a contract shall not be void by virtue of this section if—
(a) at the time of the making of the contract the vendor, lessor or licensor was
willing to sell or lease the article, or grant a license to use or exploit the article
or process, as the case may be, to the purchaser, lessee or licensee, on
reasonable terms specified in the contract and without any such condition as is
mentioned in subsection (1); and
(b) the purchaser, lessee or licensee is entitled under the contract to relieve
himself of his liability to observe the condition upon giving to the other party
three months notice in writing and subject to payment to him of a just
compensation.
38. Determination of certain contracts. Any contract for the sale or lease of a patented
article or for license to manufacture, exploit a patented article or process, or relating to any such
sale, lease or license, whether made before or after the commencement of this Ordinance, may at any
time after the patent or all the patents by which the article or process was protected at the time of the
making of the contract has or have ceased to be in force, and notwithstanding anything to the
contrary in the contract or in any other contract, be determined by either party on giving three
months notice in writing to the other party.
Page 27 of 52
CHAPTER X
PATENTS OF ADDITION
39. Patents of addition.—(1) Where an application is made for a patent in respect of any
improvement in or modification of an invention, hereinafter referred to as the “main invention” and
the applicant also applies or has applied for a patent for that invention or is the patentee in respect
thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or
modification as a patent of addition.
(2) Where an invention, being an improvement in or modification of another invention, is the
subject of an independent patent and the patentee in respect of that patent is also the patentee in
respect of the patent for the main invention, the Controller may, if the patentee so requests, by order
revoke the patent for the improvement of the modification and grant to the patentee a patent of
addition in respect thereof, bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless the date of filing of the
complete specification was the same as or later than the date of filing of the complete
specification in respect of the main invention.
(4) A patent of addition shall not be sealed before the sealing of the patent for the main
invention, and if the period within which, but for this provision, a request for the sealing of a patent
of addition could be made expires before the period within which a request for the sealing of the
patent for the main invention may be so made, the request for the sealing of the patent of addition
may be made at any time within the last-mentioned period.
40. Term of patents of addition.—(1) A patent of addition shall be granted for a term
equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall
remain in force during that term or until the previous cesser of the patent for the main invention and
no longer:
Provided that:
(a) if the term of the patent for the main invention is extended under the foregoing
provisions of this Ordinance, the term of the patent of addition may also be
extended accordingly; and
(b) if the patent for the main invention is revoked under this Ordinance, the court
or, as the case may be, Controller may order that the patent of addition shall
become an independent patent for the remainder of the term of the patent for
the main invention, and thereupon the patent shall continue in force as an
independent patent accordingly.
(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent
becomes an independent patent by virtue of an order under sub-section (1), the same fees shall
thereafter be payable, upon the same dates, as if the patent had been originally granted as an
independent patent.
41. Patent of addition not to be refused, etc. The grant of a patent of addition shall not be
refused, and a patent granted as a patent of addition shall not be revoked or invalidated on the
Page 28 of 52
ground only that the invention claimed in the complete specification does not involve any inventive
step having regard to any publication or use of__
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the
complete specification of a patent of addition to the patent for the main
invention or of an application for such a patent of addition, and the validity of
a patent of addition shall not be questioned on the ground that the invention
ought to have been the subject of an independent patent.
_________
CHAPTER XI
AMENDMENT OF SPECIFICATION
42. Amendment of specification with leave of Controller.—(1) Subject to the provisions
of section 44, the Controller may, upon an application made under this section by an applicant for a
patent or a patentee, allow the application for the patent or the complete specification to be amended
subject to such conditions, if any, as the Controller thinks fit:
Provided that the Controller shall not allow a specification to be amended under this section
upon an application made while any action before the Court for infringement of the patent or any
proceeding before the court for the revocation of the patent is pending.
(2) Every application for leave to amend and application for a patent or a specification under
this section shall state the nature of the proposed amendment and give full particulars of the reasons
for which the application is made.
(3) Every application for leave to amend an application for a patent or a specification under
this section made after the acceptance of the complete specification and the nature of the proposed
amendment shall be advertised in the prescribed manner.
(4) Within the prescribed period after the advertisement of an application under sub-section
(3), any person may give notice to the Controller of opposition thereto, and where such a notice is
given within the period aforesaid, the Controller shall give notice to the person by whom the
application is made and shall give to that person and to the opponent an opportunity of being heard
before he decides the case.
(5) This section shall not apply in relation to any amendment of a specification effected in
proceedings in opposition to the grant of a patent or effected in pursuance of any provision of this
Ordinance authorizing the Controller to direct a reference to another specification or patent to be
inserted, or to refuse to grant a patent, or to revoke a patent, unless the specification is amended to
his satisfaction.
43. Amendment of specification with leave of High Court.—(1) In any proceeding before
the High Court for the revocation of a patent, the High Court may, subject to the provisions of
section 44, by order allow the patentee to amend his complete specification in such manner, and
subject to such terms as to costs, advertisements or otherwise, as the High Court may think fit, and if
Page 29 of 52
in any such proceedings for revocation the High Court decides that the patent is invalid, the High
Court may allow the specification to be amended under this section instead of revoking the patent.
(2) Where an application for an order under this section is made to the High Court the
applicant shall give notice of the application to the Controller, and the Controller shall be entitled to
appear and be heard, and shall appear if so directed by the High Court.
44. Supplementary provisions as to amendment of specification.—(1) No amendment of
specification shall be allowed, except for the purpose of correcting an obvious mistake, the effect of
which would be that the specification as amended would claim or describe matter not in substance
disclosed in the specification before the amendment.
(2) Where, after the date of the publication of a complete specification, any amendment of the
specification is allowed or approved by the Controller or the High Court under this Ordinance, the
right of the patentee or applicant to make the amendment shall not be called in question except on the
ground of fraud, and the amendment shall for all purposes be deemed to form part of the
specification:
Provided that in construing the specification as amended reference may be made to the
specification as originally published.
(3) Where, after the date of the publication of a complete specification, any amendment of the
specification is allowed or approved under this section, the fact that the specification has been
amended shall be advertised in the official Gazette 1[and published in the Patents’ journal].
_____________
CHAPTER XII
RESTORATION OF LAPSED PATENTS
45. Restoration of lapsed patents.—(1) Where a patent has ceased to have effect by reason
of a failure to pay any renewal fee within the prescribed period, an application for the restoration of
the patent may be made to the Controller under this section within eighteen months from the date on
which the patent ceased to have effect.
(2) An application under this section may be made by the person she was the proprietor of the
patent or by any other person who would have been entitled to the patent if it had not ceased to
have effect, and where the patent was held by two or more persons jointly, the application may, with
the leave of the Controller, be made by one or more of them without joining the others.
(3) If the Controller is satisfied that__
(a)
the proprietor of the patent took reasonable care to see that any renewal fee
was paid within the prescribed period or that the fee and any prescribed
additional fee were paid within six months immediately following the end of
that period; and
_________________________________________________________________________________
1
Ins. by Act of XXIV of 2016,s.5.
Page 30 of 52
(b) those fees were not so paid because of circumstances beyond his control,
the Controller shall by order restore the patent on payment of any unpaid renewal fee and
any prescribed additional fee.
(4) An order under this section may be made subject to such conditions as the Controller
thinks fit and if the proprietor of the patent does not comply with any condition of such an order, the
Controller may revoke the order and give such directions consequential on the revocation as he
thinks fit.
(5) Where an order is made under this section and, between the end of the period of six
months beginning with the date when the patent concerned ceased to have effect and the date of the
application under this section, any person has begun in good faith to use the patented invention has
made effective and serious preparations to make use of the invention, he shall, after the order
comes into force, have the right to make use of the invention and the said use shall not amount to an
infringement of the patent concerned.
(6) Where a patented product is disposed of by any person to another in exercise of a right
conferred by sub-section (5), that other and any other person claiming through him shall be entitled
to deal with the product in the same way as if it had been disposed of by a sole registered
proprietor.
_________
CHAPTER XIII
REVOCATION AND SURRENDER OF PATENTS
46. Revocation of patent by High Court.—(1) Subject to the provisions of this Ordinance, a
patent may, on the petition of any person interested or of the Federal Government or on a
counter-claim in a suit for infringement of the patent, be revoked in part or in whole by the High
Court on any one or more of the grounds upon which grant of patent may be refused.
(2) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked
by the High Court on the petition of the Federal Government, if the High Court is satisfied that the
patentee has without reasonable cause failed to comply with the request of the Federal Government
to make, use or exercise the patented invention for the services of the Government upon reasonable
terms.
(3) A notice of any petition for revocation of a patent under this section shall be served on all
persons appearing from the Register to be proprietor of that patent or to have shares or interests
therein, and it shall not be necessary to serve a notice on any other person.
47. Revocation of patent by Controller.—(1) At any time within twelve months after the
sealing of a patent, any person interested who did not oppose the grant of the patent may apply to
the Controller for an order revoking the patent on any one or more of the grounds upon which the
grant of the patent could have been opposed:
Provided that when an action for infringement, or proceedings for the revocation, of a patent
are pending in any court, an application to the Controller under this section shall not be made except
with the leave of the court.
Page 31 of 52
(2) Where an application is made under this section, the Controller shall give notice to the
patentee and shall give to the applicant and the patentee an opportunity of being heard before
deciding the case.
(3) If, on an application under this section, the Controller is satisfied that any of the grounds
specified in sub-section (1) are established, he may by order direct that the patent shall be revoked
either unconditionally or unless within such time as may be specified in the order the complete
specification is amended to his satisfaction:
Provided that the Controller shall not make an order for the unconditional revocation of
a patent under this section unless the circumstances are such as would have justified him in refusing
to grant the patent.
1[48.— Revocation of patent by the Federal Government. Where the Federal Government
is of the opinion that:—
(a) a patent or the made in which it is exercised is mischievous to the State or
generally prejudicial to the public; or
(b) a patent has been obtained through concealment or misrepresentation in the
application; or
(c) where the compulsory licence granted to prevent the abuse which might result
from the exercise of the exclusive rights conferred by the patent, for example,
failure to work or in relation to anti-competitive practices, has not been
sufficient, it may, after giving the patentee an opportunity of being heard,
make a declaration to that effect in the official Gazette, 2[and in the Patents’
jounal] and thereupon the patent shall be deemed to have been revoked:
Provided that proceedings upon clause (c) and shall not begin before
the expiration of two years from the grant of first compulsory licence.]
49. Revocation of surrendered patent by Controller.—(1) A patentee may, at any time by
giving notice in the prescribed manner to the Controller, offer to surrender his patent.
(2) Where an offer under sub-section (1) is made, the Controller shall advertise the offer in
the prescribed manner, and also give notice to every person other than patentee whose name appears
in the Register as having an interest in the patent.
(3) Any person interested may, within the prescribed period after such advertisement, give
notice to the Controller of opposition to the surrender, and where any such notice is given, the
Controller shall give notice to the patentee.
(4) If the Controller is satisfied, after hearing the patentee and any opponent, if desirous of
being heard, that the patent may properly be surrendered, he may accept the offer and, by order,
revoke the patent.
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 12, for the original section 48.
2
Ins. by Act XXIV of 2016,s.6.
CHAPTER XIV
Page 32 of 52
POWERS OF CONTROLLER
50. Controller to have certain powers of a civil court.__(l) Subject to any rules made in this
behalf, the Controller in any proceedings before him under this Ordinance shall have the powers of a
civil court while trying a suit under the Code of Civil Procedure, 1908 (Act V of 1908) in respect of
the following matters, namely:—
(a) summoning and enforcing the attendance of any person and examining him on
oath;
(b) requiring the discovery and production of any document;
(c) receiving evidence on affidavits;
(d) issuing commissions for the examination of witnesses or documents; and
(e) awarding costs.
51. Power of Controller to correct clerical errors.—(1) The Controller may, in accordance
with the provisions of this section, correct any clerical error in any patent or in any specification or
other document filed in pursuance of such application or in any application for a patent or any
clerical error in any matter which is entered in the Register.
(2) A correction may be made in pursuance of this section either upon a request in writing
made by any person interested and accompanied by the prescribed fee, or without such a request.
(3) Where the Controller proposes to make any such correction as referred to in sub-section
(1), otherwise than in pursuance of a request made under this section, he shall give notice of the
proposal to the patentee or the applicant for the patent, as the case may be, and to any other person
who appears to him to be concerned, and shall give them an opportunity of being heard before
making the correction.
(4) Where a request is made under sub-section (2), for the correction of any clerical error in a
patent or application for a patent or any document filed in pursuance of such an application, and it
appears to the Controller that the correction would materially alter the meaning or scope of the
document to which the request relates and ought not to be made without notice to persons affected
thereby, he shall require notice of the nature of the proposed correction to be advertised in the
prescribed manner.
(5) Within the prescribed time after any such advertisements as referred to in sub-section (4),
any person interested may give notice to the Controller of opposition to the request, and, where
such notice of opposition is given, the Controller shall give notice thereof to the person by whom the
request was made, and shall give to him and to the opponent as opportunity of being heard
before he decides the case.
52. Evidence before Controller. Subject to any rules made in this behalf, in any proceedings
under this Ordinance before the Controller, evidence shall be given by affidavit in the absence of
directions by the Controller to the contrary, but in any case in which the Controller thinks it right so
to do he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any
party to be cross-examined on the contents of his affidavit.
Page 33 of 52
53. Exercise of discretionary powers by Controller. Without prejudice to any provision of
this Ordinance requiring the Controller to hear any party to the proceedings thereunder or to give any
such party an opportunity of being heard, the Controller shall give to any applicant for a patent or for
amendment of a specification, if within the prescribed time the applicant so requires, an opportunity
of being heard before exercising adversely to the applicant any discretion vested in the Controller by
or under this Ordinance.
___________
CHAPTER XV
REGISTER OF PATENTS
54. Register of Patents.—(1) There shall be kept at the Patent Office a Register of Patents,
wherein shall be entered the names and addresses of grantees of patents, notifications of assignments
and of transmissions of patents, of licenses under patents, and of amendments, extensions, and
revocations of patents and particulars of such other matters affecting the validity or proprietorship of
patents as may be prescribed.
(2) The Register of Patents kept under the Patents and Designs Act, 1911 (Act II of 1911)
shall be incorporated in, and form part of, the Register to be kept under this Ordinance.
(3) No notice of any trust, whether express, implied or constructive, shall be entered in the
Register, and the Controller shall not be affected by any such notice.
(4) Subject to the superintendence and direction of the Federal Government, the Register
shall be kept under the control and management of the Controller.
55. Registration of assignments, transmissions, etc.—(1) Where any person becomes
entitled by assignment, transmission or operation of law to a patent or to a share in a patent or
becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall
apply in writing in the prescribed manner to the Controller for the registration of his title or, as the
case may be, of notice of his interest in the Register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration
of the title of any person becoming entitled by assignment to a patent or a share in a patent or
becoming entitled by virtue of a mortgage, license or other instrument to any other interest in a
patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to
that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any
person, the Controller shall, upon proof of title to his satisfaction.
(a) where that person is entitled to a patent or a share in a patent, register him in the Register
as proprietor or co-proprietor of the patent, and enter in the Register particulars of the instrument or
event by which he derives title; or
(b) where that person is entitled to any other interest in patent, enter in the Register notice of
his interest, with particulars of the instrument, if any, creating it.
(4) Subject to the provisions of this Ordinance relating to co-ownership of patents and subject
Page 34 of 52
also to any rights vested in any other person of which notice is entered in the Register, the person or
persons registered as grantee or proprietor of a patent shall have power to assign, grant licenses
under, or otherwise deal with, the patent and to give effectual receipts for any consideration for any
such assignment, license or dealing:
Provided that any equities in respect of the patent may be enforced in like manner as in
respect of any other movable property.
56. Power of High Court regarding rectification of the Register.—(1) The High Court
may, on the application of any person aggrieved:—
(a) by the absence or omission from the Register of any entry;
(b) by any entry made in the Register without sufficient cause;
(c) by any entry wrongly remaining on the Register; or
(d) by any error or defect in any entry in the Register, make such order for the
making, variation or deletion, of any entry therein as it may think fit.
(2) In any proceeding under this section, the High Court may decide any question that may be
necessary or expedient to decide in connection with the rectification of the Register.
(3) Notice of any application to the High Court under this section shall be given in the
prescribed manner to the Controller who shall be entitled to appear and be heard on the application,
and shall appear if so directed by the High Court.
(4) Any order of the High Court under this section rectifying the Register shall direct that
notice of the rectification shall be served in the prescribed manner upon the Controller, who shall
upon receipt of such notice rectify the Register accordingly.
57. Inspection of, and extracts from, the Register, etc.—(1) Subject to the provisions of
this Ordinance and rules, the Register shall at all convenient times be open to inspection by the
public, and certified copies, sealed with the seal of the Patent Office, of any entry in the Register
shall be given to any person requiring them on payment of the prescribed fee.
(2) The Register shall be prima facie evidence of any matters required or authorized by or
under this Ordinance to be entered therein.
(3) Except in the case of an application made under section 55, a document in respect of
which no entry has been made in the Register under sub-section (3) of section 54 shall not be
admitted in any Court as evidence of title of any person to a patent or share of or interest in the
patent unless the Court otherwise directs.
CHAPTER XVI
COMPULSORY LICENCES, LICENCES OF RIGHT, EXPLOITING OF PATENTS AND
REVOCATION
58. Exploitation by a Government agency or third person.—(1) Subject to sub-section
(2), where—
Page 35 of 52
(i) the public interest, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy so requires; or
(ii) the Federal Government has determined that the manner of exploitation, by the
owner of the patent or his licensee, is anti-competitive, and the Federal
Government is satisfied that the exploitation of the invention in accordance
with this sub-section would remedy such practices 1[; or]
2
[(iii) the patent holder refuses to grant a licence to a third party on reasonable
commercial terms and conditions; or
(iv)
where patent has not been exploited in a manner which contributes to the
promotion of technological innovation and to the transfer and dissemination of
technology.]
the Federal Government may, even without the consent of the owner of the patent, decide that a
Government agency or a third person designated by the Federal Government may exploit a patented
invention.
(2) The Federal Government shall, before taking any decision under sub-section (2), give
the owner of the patent and any interested person an opportunity of being heard if he wishes to be
heard.
(3) The exploitation of the patented invention shall be limited to the purpose for which it was
authorized and shall be subject to the payment to the said owner of an adequate remuneration
therefore, taking into account the economic value of the Federal Government authorizations, as
determined in the said decision, and where a decision has been taken under sub-section (1), the need
to correct anti-competitive practices.
(4) A request for the Federal Government authorization shall be accompanied by evidence
that the owner of the patent has received, from the person seeking the authorization, a request for a
contractual license, but that person has been unable to obtain such a license on reasonable
commercial terms and conditions and within a reasonable time:
Provided that this sub-section shall not apply in cases of—
(i) national emergency or other circumstantial urgency provided that in such
cases the owner of the patent shall be informed of the decision of the Federal
Government as soon as reasonably practicable;
(ii) public non-commercial use; and
(iii) anti-competitive practices determined as such by a judicial or administrative
body in accordance with clause (ii) of sub-section (1).
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 13, for “Comma”.
2
New sub-clauses (iii) and (iv) ins. ibid.,
Page 36 of 52
(5) The exploitation of a patented invention in the field of semi-conductor technology shall
only be authorized either for public non-commercial use or where a judicial or administrative body
has determined that the manner of exploitation of the patented invention, by the owner of the patent
or his licensee, is anti-competitive and if the Federal Government is satisfied that the issuance of the
non- voluntary license would remedy such practices.
(6) 1[The authorization shall be considered on its individual merits and shall not prohibit.]
(i) the conclusion of license contracts by the owner of the patent;
(ii) the continued exercise, by the owner of the patent, of his rights under section
30; or
(iii) the issuance of a non-voluntary license under section 59.
(7) Where a third person has been designated by the Federal Government, the authorization
may only be transferred with the enterprise or business of the person or with the part of the enterprise
or business within which the patented invention is being exploited.
(8) Where the exploitation of the invention by the Government agency or third person
designated by the Federal Government is authorized under clause (i) of sub-section (1), it shall be
predominantly for the supply of the market in Pakistan.
(9) Upon request of the owner of the patent, or of the Government agency or of the third
person authorised to exploit the patented invention, the Federal Government may, after hearing the
parties, if either or both wish to be heard, vary the terms of the decision authorizing the
exploitation of the patented invention to the extent that changed circumstances justify such variation.
(10) Upon the request of the owner of the patent, the Federal Government shall 2[subject to
adequate protection of the legitimate interest of the persons so authorized,] be inserted; and shall
terminatean authorization if it is satisfied, after hearing the parties, if either or both wish to be heard,
that the circumstances which led to 3[the] decision have ceased to exist and are unlikely to recur or
that the Government agency or third person designated by it has failed to comply with the terms of
the decision.
(11) Notwithstanding the provisions of sub-section (10), the Federal Government shall not
terminate an authorization if it is satisfied that the need for adequate protection of the legitimate
interests of the Government agency or third person designated by it justifies the maintenance of the
decision.
(12) Any appeal shall lie to the High Court against the decisions of the Federal Government
under sub-sections (1) to (9).
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 13, for “the authorization shall both exclude.”
2
Ins.Ibid s. 13.
3
Subs. ibid., for “his”.
Page 37 of 52
59. Powers of Controller in granting compulsory licenses.__1[(1) On request, made to the
Controller after the expiration of a period of four years from the date of filing of the patent
application or three years from the date of the grant of the patent, whichever period expires last, the
Controller may issue a non-voluntary licence to prevent the abuses which might result from the
exercise of the rights conferred by the patent, for example, failure to work.]
(2) Notwithstanding the provisions of sub-section (1), a non-voluntary license shall not be
issued if the owner of the patent satisfies the Controller that circumstances exist which justify the
non-exploitation or insufficient exploitation of the patented invention in Pakistan.
(3) The decision issuing the non-voluntary license shall fix__
(i) the scope and function of the license;
(ii) the time limit within which the licensee must begin to exploit the patented
invention; and
(iii) the amount of the adequate remuneration to be paid to the owner of the
patent and the conditions of payment.
(4) The beneficiary of the non-voluntary license shall have the right to exploit the patented
invention in Pakistan according to the terms set out in the decision issuing the license, shall
commence the exploitation of the patented invention within the time limit fixed in the said decision
and, thereafter, shall exploit the patented invention sufficiently.
(5) If the invention claimed in a patent, hereinafter referred to as “later patent”, cannot be
exploited in Pakistan without infringing a patent granted on the basis of an application benefiting
from an earlier filing or, where appropriate, priority date, hereinafter referred to as “earlier patent”,
and provided that the invention claimed in the later patent involves an important technical advance of
considerable economic importance in relation to the invention claimed in the earlier patent, the
Controller, upon the request of the owner of the later patent, may issue a non-voluntary license to the
extent necessary to avoid infringement of the earlier patent.
(6) Where a non-voluntary license is issued under sub-section 2[(5)] the Controller upon the
request of the owner of the earlier patent shall issue a non-voluntary license in respect of the later
patent.
(7) In the case of a request for the issuance of a non-voluntary license under sub-sections
3
[(5)] and 3[(6)] sub-section 3[(3)] shall apply mutatis mutandis with the provision that no time limit
needs to be fixed.
(8) In the case of a non-voluntary license issued under sub-section 4[(5)] the transfer may be
made only with the later patent, or, in the case of a non-voluntary license issued under sub-section
4
[(6)] only with the earlier patent.
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 14, for sub-section (1).
2
Subs. Ibid, for “the brackets and figure (4)”.
3
Subs. ibid., for the brackets and figures (3), (4) and (2).
4
Subs. ibid., for the brackets and figures (3) and (4).
Page 38 of 52
(9) The request for the issuance of a non-voluntary license shall be subject to payment of the
prescribed fee.
(10) The provisions of sub-sections (2) to (10) of section 58 shall apply mutatis mutandis for
issuance of a non-voluntary license under this section.
CHAPTER XVII
PROCEEDINGS FOR INFRINGEMENT OF PATENTS
60. Suit for infringement of a patent.—(1) A patentee may institute a suit in a District
Court having jurisdiction to try the suit against any person who, during the continuance of a patent
acquired by him under this Ordinance in respect of an invention, makes, sells or uses the invention
without his license, or counterfeits it, or imitates it:
Provided that, where a counter-claim for revocation of the patent is made by the defendant,
the suit, along with the counter-claim, shall be transferred to the High Court for decision.
(2) Every ground on which a patent may be revoked under the provisions of this Ordinance
shall be available by way of defence to a suit for infringement.
61. Reliefs in suits for infringement.—1[(1) In any suit for infringement the Court shall
have the power,—
(a) to grant relief by way of damages, injunctions or accounts provided that,
where permitted, effective provisional measure may also be ordered by the
Court;
(b) to order, if the subject matter of a patent is a process for obtaining a product,
the defendant to prove that the process to obtain an identical product is
different from the patented process and that the identical product in question
shall, in the absence of proof to the contrary, be deemed to have been obtained
by the patented process provided that the product obtained by patented process
is new if it has not been put into the market for more than one year before the
date of the initiation of the judicial action by the patentee:
Provided that this provision shall apply subject to the prior proof by the
plaintiff that the allegedly infringing product is identical to the product
directly produced by the patented process:
Provided further that in the adduction of proof to the contrary, the
legitimate interests of defendants in protecting their manufacturing and
business secrets shall be taken into account.]
(2) In any suit for infringement-
_________________________________________________________________________________
1
Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 15, for sub section (1).
Page 39 of 52
(a) the Court shall have the authority to order prompt and effective provisional
measures—
(i) to prevent an infringement, and in particular, to prevent the entry into
the channels of commerce of goods, including imported goods after
custom clearance, and
(ii) to preserve relevant evidence in regard to the alleged infringement;
(b) the Court shall have the authority to order provisional measures, inaudita
altera parte where appropriate, in particular, where any delay is likely to cause
irreparable harm to the right holder, or where there is a demonstrable risk of
evidence being destroyed;
(c) the Court shall have the authority to require the applicant to provide any
reasonably available evidence to satisfy it with a sufficient degree of certainty
that the applicant is the right holder and that the applicant’s right is being
infringed or that such infringement is imminent, and to order the applicant to
provide a security or equivalent assurance sufficient to protect the defendant
and to prevent abuse;
(d) where provisional measures have been adopted inaudita altera parte, the
parties affected shall be given notice, without delay after the execution of the
measures at the latest, and a review, including a right to be heard, shall take
place upon request of the defendant with a view to deciding within a
reasonable period after the notice of the measures, whether these measures
shall be modified, revoked or confirmed;
(e) the Court may require the applicant to supply other information necessary for
identification of the goods concerned;
(f) without prejudice to the provisions of clause (d), provisional measures taken
on the basis of clauses (a) and (b) shall upon the request of the defendant, be
revoked or otherwise cease to have affect if proceedings leading to a decision
on the merit of the case are not initiated within a reasonable period not to
exceed twenty working days or thirty-one calendar days, and
(g) where the provisional measures are revoked or where they lapse due to any act
or omission by the applicant, or where it is subsequently found that there has
been no infringement or threat of infringement, the Court shall have the
authority to order the applicant, upon request of the defendant, to provide the
defendant appropriate compensation for an injury caused by these measures.
62. Damages not to be awarded against defendant in certain cases. —(1) In proceedings
for the infringement of a patent, damages shall not be awarded against a defendant who proves that at
the date of the infringement he was not aware, and had not reasonable ground for supposing, that the
patent existed, and a person shall not be deemed to have been aware or to have had reasonable
grounds for supposing as aforesaid by reason only of the application to an article of the word
“patent”, “patented”, or any word or words expressing or implying that a patent has been obtained
Page 40 of 52
for the article, unless the number of the patent accompanied the word or words in question.
(2) Nothing in this section shall affect the power of the Court to grant an injunction in any
proceedings for infringement of patent.
63. Relief for infringement of partially valid specification.—(1) If in any proceedings for
infringement of a patent it is found that any claim of the specification, being a claim in respect of
which infringement is alleged, is valid, but that any other claim is invalid, the Court may grant relief
in respect of any valid claim which is infringed:
Provided that the Court shall not grant relief by way of damages or costs except in the
circumstances mentioned in sub-section (2).
(2) Where the plaintiff proves that the invalid claim was framed in good faith and with
reasonable skill and knowledge, the Court shall grant relief in respect of any valid claim which is
infringed subject to the discretion of the Court as to costs and as to the date from which damages
should be reckoned.
64. Proceedings for infringement by exclusive licensee. The holder of an exclusive license
under a patent shall have the like right as the patentee to take proceedings in respect of any
infringement of the patent committed after the date of the license, and in awarding damages or
granting any other relief in any such proceedings the Court shall take into consideration any loss
suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits
earned by means of the infringement so far as it constitutes an infringement of the rights of the
exclusive licensee as such.
65. Certificate of contested validity of specification.—(1) If in any proceedings before the
Court the validity of any claim of a specification is contested, and that claim is found by the Court to
be valid, the Court may certify that the validity of that claim was contested in those proceedings.
(2) Where any such certificates has been granted, then, if in any subsequent proceedings
before the Court for infringement of the patent or for revocation of the patent, a final order or
judgement is made or given in favour of the party relying on the validity of the patent, that party
shall, unless the Court otherwise directs, be entitled to the full costs so far as they concern the claim
in respect of which the certificate was granted:
Provided that this sub-section shall not apply to the costs of any appeal in any such
proceedings as aforesaid.
66. Remedy for groundless threats of infringement proceedings.—(1) Where any person,
whether entitled to or interested in a patent or an application for a patent or not, threatens any other
person by circulars, advertisements or otherwise with proceedings for infringement of a patent, any
person aggrieved thereby may bring suit against him for any such relief as is specified in sub-section
(2).
(2) Unless in any suit under sub-section (1) the defendant proves that the acts in respect of
which proceedings were threatened constitute or, if done, would constitute, an infringement of a
patent or of rights arising from the publication of a complete specification in respect of a claim of
the specification not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the
following reliefs, namely:__
Page 41 of 52
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(3) For the avoidance of doubt, it is hereby declared that a mere notice of the existence of a
patent does not constitute a threat of proceedings within the meaning of sub-section (1).
67. Power of Court to make declaration as to non-infringement.—(1) A declaration that
the use by any person of any process, or the making or use or sale by any person of any article,
does not or would not constitute an infringement of a claim of a patent may be made by the Court in
proceedings between that person and the patentee or the holder of an exclusive license under the
patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if
it is shown—
(a) that the plaintiff has applied in writing to the patentee or licensee for a written
acknowledgement to the effect of the declaration claimed, and has furnished
him with full particulars in writing of the process or article in question; and
(b) that the patentee or licensee has refused or neglected to give such an
acknowledgement.
(2) The costs of all parties in proceedings for a declaration brought by virtue of this section
shall, unless for special reasons the Court thinks fit to order otherwise, be paid by the plaintiff.
(3) The validity of a claim of the specification of a patent shall not be called in question in
proceedings for a declaration brought by virtue of this section, and accordingly the making or refusal
of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.
(4) Proceedings for a declaration may be brought by virtue of this section at any time after
the date of the publication of the complete specification in pursuance of an application for a patent,
and references in this section to the patentee shall be construed accordingly.
68. Power of Court to appoint scientific advisers.—(1) In any suit for infringement or in
any proceedings before a Court under this Ordinance, the Court may at any time, and whether or not
an application has been made by any party for that purpose, appoint an independent scientific adviser
to assist the Court or to inquire and report upon any such question of fact or of opinion, not involving
a question of interpretation of law, as it may formulate for the purpose.
(2) The remuneration of the scientific adviser appointed under sub-section (1) shall be fixed
by the Court and shall include the costs of making a report and a proper daily fee for any day on
which the scientific adviser may be required to attend before the Court, and such remuneration shall
be defrayed out of moneys provided by the Federal Government for the purpose.
Page 42 of 52
CHAPTER XVIII
APPEALS
69. Appeals.—(1) No appeal shall lie from any decision, order or direction made or issued
under this Ordinance by the Federal Government, or from any act or order of the Controller for the
purpose of giving effect to any such decisions, order or direction.
(2) The public authorities and officials shall be exempted from liability to appropriate
remedial measures where actions are taken or intended in good faith in course of administration of
this Ordinance.
(3) Subject to sub-section (1), an appeal shall lie to the High Court from any decision, order
or direction of the Controller or, as the case may be, the Federal Government under any of the
provisions of this Ordinance.
(4) Every appeal under this section shall be in writing and shall be made within three months
from the date of the decision, order or direction of the Controller, as the case may be, of the Federal
Government, or within such further time as the High Court may allow.
70. Procedure for hearing appeals.—(1) Every appeal before the High Court shall be by
petition and shall be in such form and shall contain such particulars as may be provided by rules
made by the High Court.
(2) Every appeal under this section shall be heard by a single Judge of the High Court:
Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the
proceedings to a larger Bench of the High Court.
(3) Every appeal under this section shall be heard as expeditiously as possible and endeavor
shall be made to decide the appeal within a period of twelve months from the date on which it is
filed.
CHAPTER XIX
PENALTIES
71. Penalty for contravention of secrecy provisions relating to certain inventions. If any
person fails to comply with any direction given under section 25 or makes or causes to be made an
application for the grant of a patent in contravention of section 26, he shall be punishable with
imprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand
rupees, or with both.
72. Penalty for false entry in any register, etc. If any person makes, or causes to be made, a
false entry in any register kept under this Ordinance, or a writing falsely purporting to be a copy of
an entry in such a register, or produces or tenders, or causes to be produced or tendered, in evidence
any such writing knowing the entry or writing to be false, he shall be punishable with imprisonment
for a term which may extend to two years, or with fine not exceeding twenty thousand rupees, or
with both.
Page 43 of 52
73. Penalty for false representation. If any person falsely represents that any article sold by
him is patented in Pakistan or is the subject of an application for a patent in Pakistan, he shall be
punishable with fine which may extend to five thousand rupees.
Explanation 1.—For the purposes of this section, a person shall be deemed to represent—
(a) that an article is patented in Pakistan if there is stamped, engraved or
impressed on, or otherwise applied to, the article the word “patent” or
“patented” or some other word expressing or implying that a patent for the
article has been obtained in Pakistan; or
(b) that an article is the subject of an application for a patent in Pakistan, if there
are stamped, engraved or impressed on, or otherwise applied to, the article the
words “patent applied for”, “patent pending”, or some other words
implying that an application for a patent for the article has been made in
Pakistan.
Explanation 2.—The use of words “patent”, “patented”, “patent applied for”, “pending” or
other words expressing or implying that an article is patented or that a patent has been applied for
shall be deemed to refer to a patent in force in Pakistan, or to a pending application for a patent in
Pakistan, as the case may be, unless there is an accompanying indication that the patent has been
obtained or applied for in any country outside Pakistan.
74. Penalty for wrongful use of Words “patent office”. If any person uses on his place of
business or any document issued by him or otherwise the words “patent office” or any other words
which would reasonably lead to the belief that his place of business is, or is officially connected
with, the patent Office, he shall be 1[punishable with imprisonment for a term which may extend to
two years, and with fine which may extend to one million rupees].
75. Penalty for refusal or failure to supply information. —(1) If any person refuses or fails
to furnish to the Controller any information or statement which he is required to furnish by or under
this Ordinance, he shall be punishable with fine which may extend to 2[five thousand rupees].
(2) If any person, being required to furnish any such information as is referred to in
sub-section (1), furnishes information or a statement which is false, and which he either knows or has
reasons to believe to be false or does not believe to be true, he shall be punishable with fine which
may extend to 3[fifty thousand rupees].
76. Penalty for contravention of section 20. If the applicant fails to file the statement
required under section 20 or has furnished information which in any material particular is false to
his knowledge or if he fails to comply with the Controller’s request within the specified time, he
shall be punishable with fine which may extend to 4[five thousand rupees].
_________________________________________________________________________________
1
Subs, by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 16 for certain words.
2
Subs. ibid., s. 17 for “two thousand rupees”.
3
Subs.ibid, for “ten thousand rupees”.
4
Subs. Ibid., s.18,for “two thousand rupees”.
Page 44 of 52
77. Penalty for practice by non-registered patent agents. If any person contravenes the
provisions of section 82, he shall be punishable with fine which may extend to 1[twenty five
thousand rupees] in the case of a first offence and 2[one hundred thousand rupees] in the case of a
second or subsequent offence.
3
[78. Offences by companies etc. Where the person guilty of an offence under this
Ordinance is a company, corporation, firm or institution, every owner, director, and employee of the
company, firm, institution, or corporation, having knowledge of the offence and consented to the
commission of the offence shall be guilty of the offence].
_____________
CHAPTER XX
PATENT AGENTS
79. Register of patent agents. There shall be kept at the Patent Office a register of patent
agents wherein shall be entered the names and addresses of all person qualified to practice before the
Patent Office as patent agents.
80. Registration as patent agent. The Controller may, on an application made in the
prescribed manner, register as a patent agent any person who is a citizen of Pakistan, has completed
the age of twenty-one years, possesses the prescribed qualifications and has paid the prescribed fee.
81. Subscription and verification of certain documents by patent agents.—(1) Subject to
sub-section (2) and rules, all applications and communications to the Controller under this Ordinance
may be signed by a patent agent authorized in writing in this behalf by the person concerned.
(2) The following documents, namely,—
(i) applications for patents;
(ii) applications for the restoration of lapsed patents;
(iii) notices of opposition;
(iv) applications for leave to amend;
(v) applications for compulsory licences or for revocation; and
(vi) notices of surrender of patents,
shall be signed and verified in the prescribed manner by the person making such applications or
giving such notices:
_________________________________________________________________________________
1
Subs. Ibid., s.19, for “five thousand rupees”.
2
Subs. Ibid., for “one thousand rupees”.
3
Subs. Ibid., s.20,for original section 78.
Page 45 of 52
Provided that, if such person is absent from Pakistan, they may be signed and verified by
a patent agent authorized by him in writing in that behalf.
82. Restrictions on practice as patent agent.___ (1) No person, either alone or in
partnership with any other person, shall practice or describe or hold himself out as a patent agent, or
permit himself to be so described or held out, unless he is registered as a patent agent or, as the case
may be, unless he and all his partners are so registered.
(2) No company or other body corporate shall practice or describe or hold itself out as a
patent agent or permit itself to be so described or held out.
Explanation.—For the purposes of this section, practice as a patent agent includes any of
the following acts, namely:—
(a) applying for or obtaining patents in Pakistan or elsewhere;
(b) preparing specifications or other documents for the purposes of this Ordinance
or of the patent law of any other country; and
(c) giving advice, other than advice of a scientific or technical nature, as to the
validity of patents or their infringement.
83. Removal from register of patent agents and restoration.—(1) The Federal
Government may remove the name of any person from the register of patent agents when it is
satisfied, after giving that person a reasonable opportunity of being heard and after such further
inquiry, if any, as it thinks fit to make—
(i) that his name has been entered in the register of patent agents by error or on
account of misrepresentation or suppression of material facts; or
(ii) that he has been convicted of any offence and sentenced to a term of
imprisonment or has been guilty of misconduct in his professional capacity
which in the opinion of the Federal Government renders him unfit to be kept
in the register of patent agents.
(2) The Federal Government may, on application and on sufficient cause being shown restore
to the register of patent agents the name of any person removed therefrom.
84. Power of controller to refuse to recognize as agent.__(1) Subject to any rules made in
this behalf, the Controller may refuse to recognize as agent in respect of any business under this
Ordinance—
(a) any person whose name has been removed from and not restored to, the
register of patent agents;
(b) any person who has been convicted of an offence under section 77;
(c) any person, not being registered as patent agent, who in the opinion of the
Controller is engaged wholly or mainly in acting as agent in applying for
Page 46 of 52
patents in Pakistan or elsewhere in the name or for the benefit of the person by
whom he is employed; or
(d) any company or firm, if any person whom the Controller could refuse to
recognize as patent agent in respect of any business under this Ordinance, is a
director or manager of the company or is a partner in the firm.
(2) The Controller shall refuse to recognize as agent in respect of any business under this
Ordinance any person who neither resides nor has a place of business in Pakistan.
85. Saving in respect of other persons authorize to act as agents. Nothing in this Chapter
shall be deemed to prohibit.
(a) the applicant for a patent or any person, not being a patent agent, who is duly
authorized by the applicant from drafting any specification or appearing or
acting before Controller; or
(b) an advocate, not being a patent agent, from taking part in any proceedings
under this Ordinance otherwise than by way of drafting any specification.
__________
CHAPTER XXI
INTERNATIONAL ARRANGEMENTS
86. Power of the Federal Government to declare a country as Convention country. —(1)
With a view to the fulfillment of a treaty, convention or arrangement between Pakistan and any
other country, the Federal Government may, by notification in the official Gazette, declare such
country to be the Convention country for the purposes of this Ordinance, in addition to the members
of the World Trade Organization.
(2) A declaration under sub-section (1) may be made for the purposes either for all or for
some only of the provisions of this Ordinance, and a country in the case of which a declaration made
for the purposes of some only of the provisions of the Ordinance is in force shall be deemed to be a
Convention country for the purposes of those provisions only.
87. Supplementary provisions as to Convention application. For the purposes of this
Ordinance, any matter shall be deemed to have been disclosed in an application for protection in a
Convention country if it was claimed or disclosed, otherwise than by way of disclaimer or
acknowledgement of prior art, in that application or in any document submitted by the applicant for
protection in support of and at the same time as that application, but no account shall be taken of
any disclosure effected by any such document unless a copy of the document is filed in the Patent
Office with the Convention application in accordance with the provisions of section 88.
88. Documents to be filed with a Convention application.—(1) Where a Convention
application is made under this Ordinance, the applicant shall furnish, in addition to the complete
specifications, copies of the specifications or corresponding documents filed or deposited by the
applicant in the patent office of the Convention country in which the relevant application was made,
certified by the official chief or head of the patent office of the Convention country, or otherwise
verified to the satisfaction of the Controller, along with the application or within three months
Page 47 of 52
thereafter, or with in such further period as the Controller may on good cause allow.
(2) If any such specification or other document referred to in sub-section (1) is in a foreign
language, a translation into English of the specification or document, verified by affidavit or
otherwise to the satisfaction of the Controller, shall be annexed to the specification or document.
(3) For the purposes of this Ordinance, the date on which an application was made in a
Convention country is such date as the Controller is satisfied, by certificate of the official chief or
head of the patent office of the Convention country or otherwise, is the date on which the application
was made in that Convention country.
_________
CHAPTER XXII
MISCELLANEOUS
89. Fees.—(1) There shall be paid in respect of the grant of patents and applications therefor,
and in respect of other matters in relation to patents under this Ordinance, such fees, to the Patent
Office, as may be prescribed by the Federal Government.
(2) Any proceedings in respect of which a fee is payable under this Ordinance or the rules
shall be of no effect unless the fee has been paid.
90. Restrictions upon publication of specifications, etc. Subject to the provisions of
Chapter VII, an application for a patent, and any specification filed in pursuance thereof, shall not,
except with the consent of the applicant, be published by the Controller or be open to public
inspection at any time before the date of advertisement of acceptance of the application in the
official Gazette 1[or in the Patents’ jounal].
91. Reports of examiners to be confidential. The reports of examiners to the Controller
under this Ordinance shall not be open to public inspection or be published by the Controller, and
such reports shall not be liable to production or inspection in any legal proceedings unless the Court
certifies that the production or inspection is desirable in the interests of justice, and ought to be
allowed.
92. Publication of Patented Inventions. The Controller shall issue periodically a publication
containing such information relating to patented inventions as the Federal Government may direct.
93. Power of Controller to call for information from patentees.—(1) The Controller may,
at any time during the continuance of the patent, by notice in writing, require a patentee or a
licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or
within such further time as the Controller may allow, such information or such periodical
statements as to the extent to which the patented invention has been commercially worked in
Pakistan as may be specified in the notice.
_________________________________________________________________________________
1
Ins. by Act No. XXIV of 2016,s.7
Page 48 of 52
(2) Without prejudice to the provisions of sub-section (1), every patentee and every
licensee, whether exclusive or otherwise, shall furnish in such manner and form and at such intervals,
not being less than six months, as may be prescribed, statement as to the extent to which the
patented invention has been worked on a commercial scale in Pakistan.
(3) The Controller may publish the information received by him under sub-section (1) or
sub-section (2) in such manner as may be prescribed.
94. Evidence of entries, documents, etc.—(1) A certificate purporting to be signed by the
Controller as to any entry, matter or thing which he is authoritized by this Ordinance or any rule to
make or do, shall be prima facie evidence of the entry having been made and of the contents
thereof and of the matter or thing having been done or omitted to be done.
(2) A copy of any entry in any Register or of any document kept in the Patent Office or of
any patent, or an extracts from any such Register or document, purporting to be certified by the
Controller and sealed with the seal of the Patent Office shall be admitted in evidence in all courts,
and in all proceedings, without further proof or production of the original.
(3) The Controller or any other officer of the Patent Office shall not, in any legal proceedings
to which he is not a party, be compellable to produce the Register or any other document in his
custody, the contents of which can be proved by the production of a certified copy issued under this
Ordinance or to appear as a witness to prove the matters therein recorded unless by order of the
Court made for special causes.
95. Declaration by infants, lunatics, etc.—(1) If any person is, by reason of minority,
lunacy or other disability, incapable of making any statement or doing anything required or permitted
by or under this Ordinance, the lawful guardian, committee or manager, if any, of the person subject
to the disability, or if there be none, any person appointed by any Court having jurisdiction in
respect of his property, may make such statement or a statement as nearly corresponding thereto as
circumstances permit, and do such thing in the name and on behalf of the person subject to the
disability.
(2) An appointment may be made by the Court for the purposes of this section upon the
petition of any person active on behalf of the person subject to the disability or of any other person
interest in the making of the statement or the doing of the thing.
96. Service of notice, etc., by post. Any notice required or authorized to be given by or
under this Ordinance, and any application or other document so authorized or required to be made or
filed, may be given, made or filed by post.
97. Security for cost. If any party by whom notice of any opposition is given under this
Ordinance or by whom application is made to the Controller for the grant of a licence under a patent
neither resides nor carries on business in Pakistan, the Controller may require him to give security
for the costs of the proceedings, and in default of such security being given may treat the opposition
or application abandoned.
Page 49 of 52
98. Transmission of orders of High Court or Court to the Controller.—(1) Every order of
the High Court on a petition for revocation, including an order granting certificate of validity of any
claim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and
reference thereto to be made in the Register.
(2) Where in any suit for infringement of a patent or in any suit under section 60 the validity
of any claim or a specification is contested and that claim is found by the Court to be valid or not
valid, as the case may be, the Court shall transmit a copy of its judgement and decree to the
Controller who shall on receipt thereof cause an entry in relation to such proceedings to be made in
the prescribed manner in a supplemental record.
(3) The provisions of sub-sections (1) and (2) shall also apply to the Court to which appeals
are referred against decisions of the Court referred to in those sub-sections.
99. Transmission of copies of specifications, etc. and inspection thereof. Copies of all
such specifications drawings and amendments left at the Patent Office as become open to public
inspection under the provisions of the Ordinance shall be transmitted, as soon as may be, after the
printed copies thereof are available, to such authorities as the Federal Government may appoint in
this behalf, and shall be open to the inspection of any person at all reasonable times at places to be
specified by those authorities with the approval of the Federal Government.
100. Information relating to patents. Any person making a request to the Controller in the
prescribed manner for information relating to any such matter, as may be prescribed, as respects any
patent specified in the request or as respects any application for a patent so specified shall be entitled,
subject to the payment of the prescribed fee, to have information supplied to him accordingly.
101. Loss or destruction of patents. If a patent is lost or destroyed, or its non-production is
accounted for to the satisfaction of the Controller, the Controller may at any time, on application
made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be
sealed and delivered to the applicant.
1
[* * * * * * *]
103. Right of the Government to sell or use forfeited articles. Nothing in this Ordinance
shall affect the power of the Government or of any person deriving title directly or indirectly from
the Government to sell or use any articles forfeited under any law for the time being in force.
104. Power of High Court to make rules. The High Court may make rules consistent with
this Ordinance as to the conduct and procedure in respect of all proceedings before it under this
Ordinance.
105. Power of the Federal Government to make rules.—(1) The Federal Government
may, by notification in the official Gazette, make rules for carrying out the purposes of this
Ordinance.
_________________________________________________________________________________
1
Section 102 Omitted by the Patent (Amdt.) Ordinance, 2002 (95 of 2002), s.21.
Page 50 of 52
(2) In particular and without prejudice to the generality of the foregoing power, such rules
may provide for all or any of the following matters, namely:—
(i) the form and manner in which any application for a patent, any specifications
or drawings, and any other application or document may be filed in the Patent
Office;
(ii) the time within which any act or thing may be done under this Ordinance,
including the manner in which and the time within which any matter may be
advertised under this Ordinance;
(iii) the fees which may be payable under this Ordinance and the manner of
payment of such fees;
(iv) the matters in respect of which an examiner may make a report to the
Controller;
(v) the form of request for sealing of patent;
(vi) the form and manner in which and the time within which any notice may be
given under this Ordinance;
(vii) the provisions which may be inserted in an order for restoration of a patent for
the protection of the person who may have availed themselves of the
subject-matter of the patent after the patent had ceased;
(viii) the maintenance of the Register and the matters to be entered therein;
(ix) the time when and the manner in which the Register and any other document
open to inspection may be inspected under this Ordinance;
(x) the qualifications of and the preparation of a role of scientific advisers for the
purpose of section 68;
(xi) the manner in which any compensation for acquisition by the Government of
an invention may be paid;
(xii) the manner in which the register of patent agents may be maintained, and
matters connected with the practice and conduct of the patent agents; 1*
(xiii) the regulation of the making, printing, publishing and selling of indexes to,
and abridgements of, specifications and other documents in the Patent Office,
and inspection of indexes and abridgements and other documents 2[;].
3
[(xiv) the manner to establish the regime for exhaustion of intellectual property
rights;
_____________________________________________________________________________
1
The word “and” omitted by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 22.
2
Subs. ibid., for the full stop.
3
New clauses (xiv), (xv), (xvi), (xvii) and (xviii) added ibid.
Page 51 of 52
(xv) the details in respect of inventions referred to in sub-section (4) of section 7;
(xvi) the manner in which an invention shall be disclosed including the best mode
known for the execution of the invention, the forms and limits of allowable
claims and, in the case of inventions relating to microorganisms, the
requirement and the manner of submission of a culture for experimental
purposes in relation to the scope of the claim and the procedure for grant of
such patents;
(xvii) the procedure and the criteria for determining the remuneration for a
compulsory licence and the terms and conditions for licensing agreements
including, in particular, those which do not adversely affect competition or
cause impediment to the research and development in the country or to bind
the licensee to transfer the improvements made by him to the licensor or to
force the licensee to acquire technologies or inputs not needed or desired by
him; and
(xviii) the form of filing application and manner of grant of exclusive marketing
rights].
(3) The power to make rules under this section shall be subject to the condition of the rules
being made after previous publication.
106. Repeal and savings._(1) The Patents and Designs Act, 1911 (Act II of 1911) is hereby
repealed.
(2) Notwithstanding the repeal of the Patents and Designs Act, 1911 (Act II of 1911) the
renewal fee in respect of a patent granted under that Act shall be as fixed thereunder.
(3) Save as otherwise provided in sub-section (2), the provisions of this Ordinance shall apply
to any application for a patent pending on the commencement of this Ordinance and to any
proceedings consequent thereon, and to any patent granted in pursuance thereof.
(4) Notwithstanding anything contained in this Ordinance, any suit for infringement of a
patent, or any proceedings for revocation of a patent, pending in any Court on the commencement of
this Ordinance, may be continued and disposed of under the Patents and Designs Act, 1911 (Act II
of 1911)as if this Ordinance had not come into force, 1* * *.
2
[107. Acts done in good faith. No suit, prosecution, or any other legal proceedings shall lie
against any government employee or any person exercising any powers or performing any functions
under this Ordinance or the rules made thereunder for any act or thing which has been done in good
faith.
108. Removal of difficulties. If any difficulty arises in giving effect to any of the provisions
of this Ordinance, the Federal Government may, by notification in the official Gazette, make such
provisions as it deems fit for removing that difficulty].
_________________________________________________________________________________
1
The certain words omitted by the Patents (Admt.) Ordinance, 2002 (95 of 2002), s.23.
2
New sections 107 and 108 added ibid., s.24
Page 52 of 52
Source: Pakistan Code, Ministry of Law and Justice (pakistancode.gov.pk). Text on this page is reproduced verbatim from the official PDF and is provided for reference only. For the authoritative version, always consult the source document or a current reported edition.
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