Increasing competition and global commerce have changed the way patents are approached and managed. Today, it is essential to have an intellectual property strategy that includes maximizing the potential value of a company’s patents as well as reducing unnecessary costs and risks. The Pakistan law of patents is enshrined in the Patents Ordinance, 2000. The Act seeks to provide for legal protection for inventions. The rights granted under the Act, are operative in the whole of Pakistan.
ZAHID L&A-LLP is one of the largest among all IP firms in Pakistan in the number of patents filed. The firm has filed patents with the Patent and Trademark Office in a wide range of disciplines including Information technology, Biotechnology / Life sciences, Chemicals, Manufacturing and Electronics. Clients of ZAHID L&A-LLP benefit from constant reviews of patent use, competitor actions and market trends.
The firm establishes and manages portfolios of Pakistani and foreign patents for large corporations and large enterprises as well.
What is a patent?
A patent is a monopoly granted by the Government to an inventor over his invention for a limited period of time. An invention, as defined under the Act, is a new product or process involving an inventive step and capable of industrial application.
What rights does a patent owner have?
Patent provides the inventor with the right to exclude others from making, using or selling the invention during a period of 20 years. During that period, the patent owner has the right to decide who may or may not use the patented invention.
It gives the possibility to the patent owner to permit, through licenses, other parties to use the invention. The owner can also sell the right to the invention to someone else, who will then become the new owner of the patent.
On the expiry of the patent, the protection ends and the owner no longer holds exclusive rights to the invention which enters the public domain and becomes available to commercial exploitation by others.
Is there a worldwide patent?
There is no worldwide patent. Patents are obtained on a country-by-country basis. It means that inventors have to file an application in each country they want their invention to be protected. Some Regional Treaties exist to facilitate the procedure to seek protection, like the European Patent Convention. The Patent Cooperation Treaty also exists, however this only applies for a short time during the application stage and national patens still ultimately result.
What can be patented?
There are, in Pakistan, some conditions for an invention to be patentable: the invention must be new, involve an inventive step, be capable of industrial application and not be contrary to any law or morality. The advance doesnâ€™t need to be a major breakthrough â€“ a small improvement or variation may be patentable.
Should all inventions be patented?
It is at the complete discretion of the inventor to decide to patent an invention or not. On one hand, secret-working enables the inventor to enjoy the exclusive right for the use of his invention without the publicity constraint needed for patents. On the other hand, secrets easily leak out, and in this case, the inventor is not able to prevent others from using his invention. Experience shows that under modern conditions, it is extremely difficult to work useful inventions in secrecy, as the inventors are obliged to face competition within a short period of working their inventions.
What is the procedure to obtain a patent?
A resident of Pakistan can file application for patent at the appropriate Patent Office under whose jurisdiction he resides or has his principal place of business.
For a non-resident, the address for service in Pakistan or principal place of business of his agent determines the appropriate patent office for filing the patent application.
A provisional specification is often the first step in filing an application, and usually contains only a brief description of the invention. Compared with the provisional specification, the complete specification contains the full description of the invention, and the best method of making the invention work. The complete specification includes a title, the field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract. The complete specification must be filed within 12 months from the date of filing of the provisional specification.
Claims are the most important component in the patent specification as it will define and determine the legal protection sought for. The description and appended drawings may be used to interpret the claims.
The proper procedure leading to the grant of a patent starts with the filing of the patent application along with the prescribed fees, followed by the filing of request for examination in the prescribed format. The application is examined substantively and a first examination report stating the objections is communicated to the applicant. Applicant may amend the application in order to meet the objections.
Normally all the objections must be met within 12 months from the date of first examination report. In case of non-compliance with the objections, the application is abandoned. If, on the contrary, the applicant complies with the requirements, the application is published in the Official Journal. At that time, opposition can be filed on limited grounds, but hearing is not mandatory. Patent will be granted if the application is found to be in order. Then, the application and other related documents will be open for public inspection, in order to give the possibility to oppose the application on substantive grounds (before the expiry of one year from the date of publication). The whole process generally takes at least two years.
What is the role of a patent attorney?
Patent attorneys provide the expertise required in order to obtain and protect IP rights. This involves managing the processes by which patent rights are granted, and advising on the issues surrounding their validity and infringement. Patent attorney must have a degree in engineering or since.