Patent Law of Pakistan
Patents Ordinance, 2000 in force in Pakistan.
The procedure for registration of a patent in Pakistan is as follows:
(a) After filing a patent application, the Patent Office issues application number (official receipt) and advertises it in Official Patent Gazette of Pakistan Part-V as newly filed patent application.
(b) The patent application is examined and an examination report consisting of objections, if any, is issued.
(c) Reply to the objections is filed and if the Examiner of Patent agrees then the order of acceptance is advertised in Official Gazette of Pakistan Part-V for opposition.
(d) If there is no opposition by any interested party then the Patent Office will seal the patent on payment of sealing fee.
* Note: Pakistan is not a member of the PCT yet, therefore, PCT applications are not allowed in Pakistan. However, priority can be claimed within 12 months on the basis of application filed in convention country (member of WTO).
Please note previously a patent application was required to be completed within 18 months but this limit has been abolished vide a recent amendment in the law and there is no specific time frame from filing to granting and it depends upon the backlog of work in the Patent office or number of examination reports/objections issued by the patent office.
For filing a priority patent application we require the following information, documents in Pakistan:
1. Complete particular of applicant i.e. name, address and nationality.
2. List of inventors with complete particulars i.e. name, address and nationality.
3. Assignment simply signed. The names and complete addresses of the witnesses should be mentioned.
4. Final versions of complete specification of patent, abstract and claims (in MS word format).
5. For claiming priority, Certified copy of the priority documents (basic specification) are required to be filed either along with the application in Pakistan within twelve months from the date of the earliest application for the grant of patent in the convention country or within three months from the filing date of priority application in Pakistan. If priority documents are in a language other than English, a translation thereof in English language verified by the translator on his letter pad and notarization is required on the translator's certificate.
6. Power of attorney (POA) duly signed by the applicant, the same requires no notarization and legalization. However, please affix company seal (rubber stamp) below the signatures.
A patent is registered for a term of 20 years in Pakistan.
First annuity is payable before the end of 4th year for 5th year and thereafter are continuously payable up to 20 years.
Trademark Law in Pakistan
Legal basis is the new Trademark Law “Trade Marks Ordinance No. XIX” of 2001, in force since April 12th, 2004.
Trademark protection is obtained by registration or use.
Nice classification; although law is yet to be amended, the Trade Marks Registry accepts applications as per 10th edition. A separate application has to be filed for each class.
The procedure for registration of a trademark in Pakistan is as follows:
* After filing an application, the Trademarks Registry issues application number (official receipt).
* The trademark office examines the application (two to three months) to make sure that it complies with the administrative requirements and an examination report (show cause notice) consisting of objections, if any, is issued.
* Reply to the objections (show cause) is filed, A hearing ideally should be fixed when the Registrar is not fully convinced with the response and wants to hear arguments, in person. the matter is argued before the Registrar of Trademarks, if he agrees then mark is advertised in the Trademark journal before acceptance for opposition.
* If there is no opposition filed by any interested party then the mark is accepted for registration.
* Thereafter, demand note is issued by the Registry and on payment of prescribed fee along with prescribed form; the registration certificate is issued by the Registry.
National Opposition Period
The opposition period is 2 months from publication date of the application, however, two extensions of 1 month each can be obtained.
The total time consumed in the whole procedure of a straight forward trademark is around a (1) year from filing of application to issuance of certificate, but in case of a notice of opposition, the time consumed may go up to three years or even more.
Remarks about the Trademark Registration Process in Pakistan
The application is filed at the Trademarks Registry.
* The application process includes a formal examination, an examination of distinctiveness and a search for any conflicts with prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The first office action is taken within approx. 3 months of filing of the application.
Prior to registration, the trademark application is published in the monthly “Trademarks Journal” for inviting third party oppositions.
* It is possible to file other similar trademarks as series trademarks in the same application.
* It is possible to file an application in Pakistan claiming priority rights in a corresponding Convection country. Provided that the certified copy of the priority application is filed within 3 months of the date of filing of the application in Pakistan.
For filing a trademark application we require the following information, documents in Pakistan:
* Complete details such as full name, business address and nationality of the applicant(s).
* Specimen of the mark in jpg.
* Specification of goods or services in respect of which registration is sought for. (Only goods and services included in one and the same class should be specified according to International classification (1 to 45) of goods and services). Please not the Registry uses the 10th Edition of NICE Classification, however, the Registry also admits specification of goods and services from the 11th Edition of the same.
* Trading style (company/corporation/firm/individual etc) and Color(s) claimed (if any).
* If the application is made for the registration of a series of marks, then mention the number of marks in the series, but it must be more than two.
* The exact first date of use of mark in Pakistan (if any), or statement that "mark is proposed to be used" in future.
* Original (Notarized) Power of Attorney (POA) duly signed by the applicant.
* To claim a convention priority, these documents are required:
(a) Application Number and filing date in first convention country.
(b) Certified copy of priority documents.
* Translation and Transliteration: Where a trademark contains a word or words in language other than English, Urdu language, its exact English translation and transliteration.
A trademark registration is valid for 10 years as of the date of filing the application renewable for similar periods. The renewal fees of a trademark registration can be paid during the final year of the protection period.
* The initial registration of a trademark application filed prior to April 12, 2004, is valid for a period of 7 years. Renewals prior to April 12, 2004 were made for a period of 15 years from the expiration date of the original registration or from the last renewal of registration, renewals after April 12, 2004 will be done for a period of 10 years.