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The Patent Rules, 2002

S.R.O_________, Dated__________ In exercise of the powers conferred by section 105 of the patients ordinances, 2000 (Ordinance No.LXI of 2000) the Federal Government

Is pleased the following Patents Rules, 2002, they will come into effect immediately: -

THE PATENTS RULES, 2002

CHAPTER 1

PRELIMINARY

1.       Short title and commencement
 

(1)               These Rules may be called the Patents Rules, 2002.

(2)               They shall come into force at once.

(3)               They shall extend to the whole of Pakistan.

   2.       Definition: - 

In these rules, unless there is anything repugnant in the subject or context,

(a)               “Agent” means a person duly appointed as an agent under these rules;

(b)               “Controller” mean the controller of patents appointed under section 3.

(c)               “Conventional application” shall have the meaning attributed, to it under clause © of section 2;

(d)               “Form” means a form set forth in the second schedule to these rules;

(e)               “Ordinance” means of the patents Ordinance, 2000;

(f)                 “Register” means the Register of patents kept under section 54 of the Ordinance, 2000;

(g)               “Section” means a section of the Ordinance;

(h)               “Chemical product” means a chemical compound or an entity having a distinct formula, produced through specified process;

(i)                  ‘Claims” means claims made in the patent application and shall relate to a single invention.

(j)                  “Date of patent” means the date on which the application for patent is field;

(k)               “Infringement” means the unauthorized making, marketing, offering to sell or selling any patented invention, through channels of trade in Pakistan;

(l)                  “Research” means as effort to create or improve products or services, especially by discovering new technology or advancing existing technology;

(m)             “Exclusive marketing right,” means the rights conferred for exclusive marketing, setting or distribution of a patented product. 

3.       Fees: -

(1)               The fees to be paid in respect of any application, registration or any other matter under the Ordinance and these rules shall be those specified under the first schedule, here in after referred to as the prescribed fees.

(2)               Fees may be paid in cash at the patent Office or may be sent by money order or postal order or cheques or bank drafts on a scheduled bank, payable to the Controller of patents at Karachi, and if sent through the post shall be deemed to have been paid at the time when the money order, or the properly addressed and prepaid letter containing the cheques or the bank draft or the postal order, would be delivered in the ordinary course of post or courier.

(3)               Cheques or bank drafts not carrying the correct addition for commission, and other cheques on which the full value cannot be collected in cash within the time allowed for payment of the fees shall be accepted only at the discretion of the Controller.

(4)               Stamps shall not be received in payment of fees.

 

4.       Forms: -

The forms set forth in the second schedule with such variation as the circumstances of each case require, shall be used for the respective purpose therein mentioned, and if used, shall be sufficient.

5.       Size, etc. of documents: -

(1)               All documents (including drawings) making up an application for a patent or replacing such documents shall be in the English language.

Provided, however, a translation of the complete specification, claims and abstract “as accepted by the patent office shall be field in the Urdu language pursuant to paragraph (1) of rule 19.

Provided further that while translation test in the Urdu language, technical terms or formulas which cannot be translated in the Urdu language may be raised in the English language.

(2)               All documents referred to in paragraph (1) above shall be so presented as to permit of direct reproduction by photography, electrostatic processes, photo offset and micro filling in an unlimited number of copies, all sheet shall be free from each, creases and folds. Only one side of the sheets shall be used, excepted in the case of a request for the grant of patents.

(3)               All documents referred to in paragraph (1) above shall be on A4 paper (29.7cm X 21cm) which shall be pliable, strong, white, smooth, matt and durable. Each sheet (other than drawing) shall be used with is short sides at the top and bottom (upright position).

(4)               The request for the grant of a patent and the description, claims, drawing and abstract The shall each commerce on a new sheet. The sheet shall be connected in such a way that they can easily be turned over, separated and joined together again.

(5)               Subject to rules 11 (1), the minimum margins shall be as follows:

Top 2.0cm

Left side 2.5cm

Right side 2.0cm

Bottom 2.0cm

(6)                 The margins of the documents making up the of any replacement documents must be completely blank.

(7)               In the application, except in the drawing.

(a)               all sheets in the request shall be numbered consecutively; and

(b)               all other sheets shall be numbered consecutively as a separate series, and all such numbering shall be in Arabic numerals placed and at the top of the sheet, in the middle, but not in the top margin.

(8)               All sheets of drawings contained in the application, shall be numbered consecutively as a separate series, such numbering shall be in Arabic numerals place at the top of the sheet, in the middle, but not in the top margin.

(9)               Every documents (other than drawing) referred to in paragraph (1) above shall be typed or printed in a dark, indelible color in at least 1 ½ line spacing and in characters of which the capital letter are not less then 0.21cm high:

Provided that any forms may be filled in writing, and that graphic symbols and characters and chemical and mathematical formulae may be written or drawn, in a dark indelible colour.

(10)          The request for the grant of a patent, the description, the claims and the abstract shall not contain drawings. The description, the claims and the abstract may contain chemical or mathematical formulae. The description and the abstract may contain tablets. The claim may contain tables only if their subject matter makes the use of tablet desirable.

(11)          In all documents referred to in paragraph (1) above unites of weight and measures shall be expressed in terms of the metric system. If a different system is used they shall be expressed in terms of metric system. Temperatures shall be expressed in degrees Celsius. For the other physical value, the units recognized in International practice shall be used, for mathematical formulae the symbol, atomic weight and molecular formulae in general use shall employed. In general, use should be made of technical terms, Signs and symbols generally accepted in the field in question.

(12)          It a formula or symbol is used in the specification a copy thereof, prepared in the same manner, as drawings shall be furnished if the controller so directs.

(13)          The terminology and the signs shall be consistent throughout the application.

(14)          Leaving and serving documents: -

(1)               Any application, notice on other documents authorized or required to be left, made or given at the patent office, or to the controller or to any other person under the ordinance or these rules, may be sent by hand, or by a prepaid letter through the post, and if send by a prepaid letter shall be deemed to have been left, made or given at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.

(2)               Any written communication addressed to a right holder at his address at it appears on the register or at his address for service, or to any applicant or other person in any proceeding under the ordinances or these rules, at the addressed appearing on the application or notice, or given for service, shall be deemed to be properly addressed.

(7) Address for service

(1)               Every applicant or opponent in any proceeding under the ordinance or these rules and every person who shall here after become a patentee shall give an address for service in Pakistan as such address may be treated for all purposes connected with the patent as the actual address of such applicant, opponent or registered proprietor, Unless such an address is given the controller shall be under no obligation either to proceed with the application or the opposition, or to send any notice that may be required by the Ordinance or these rules

(2)               For al matters falling under the provision of section 81, any person may, unless otherwise directed by the controller, authorize, under his personal signature, a legal practitioner or a patent agent to act as his agent and to receive all notice, requisitions and communications. The authority may be given on form PT-31.

CHAPTER II

APPLICATION FOR GRANT OF PATENT

8.       Application for the grant of patents: -

(1)               An application for grant of a patent, other than a Conventional application, by the true and first inventors shall be made on form PT-I, provided, if the true and first inventor is not a party to the application, the applicant shall produce the original deed of assignment or other document from such true and first inventor, under which he is enabled, to apply for a patent, unless such application made on form PT-I A itself endorsed by the true and first inventor in the presence of two witness with a statement that the application shall be made without his name as an applicant for a patent.

(2)               A Conventional application by the true and first inventor not party to the from PT-2 provided, if the true and first in ventor’s not party to the application, the applicant shall produce the original deed of assignment or other documents from such true and first inter, under hi is enable to apply for a patent, unless such application made on form PT-2A itself is endorsed by the true and first inventor in the presence of two witness with a statement that the application shall be made without his name as an applicant for a patent.

(3)               In the case of application, other a convention application, by the personal representative of a deceased person who, immediately before his death, was entitled to make such an application, the probate of the will of the deceased, or the letter of administration, shall be produced at the patent office in proof of the applicant’s title to act as personal representative.

(4)               Where in pursuance of sub-section (3) of section 14, the Controller allow a single complete specification to be proceeded with in respect of two or more applications in respect of which two or more complete specifications has been field the single complete specification may include any matter disclosed in any of the said single complete specification shall be deemed to have been field on such date, not earlier than the earliest date on which all the matter disclosed in the said single complete specification has been disclosed to the patent office in or in connection with the applications, as the controller may direct.

(5)               Where an applicant has made an application for patent and, before the acceptance of the complete specification, make a fresh application for a patent for matter included in the first mentioned application or in any specification field in pursuance thereof, the controller may direct that the fresh application or any specification field in pursuance thereof shall be ante dated of a date not earlier than the date of filing of the first mentioned application or specification in the applicant includes in the fresh application a request to that effect.

Provided that the controller may require such amendment of the complete specification field in pursuance of either of the said applications as maybe necessary to ensure that neither of the said complete specification includes a claim for matter claimed in the other.

(6)               Where a complete specification has been field pursuant to two or more applications accompanied provisional specifications for inventions which the applicant believe to be cognate or modifications one of another and the controller is of opinion that such inventions are not cognate or modifications one of another, the controller may allow the complete specification to be divided into such number of complete specification as may necessary to enable that applications to be proceeded with as two or more separate applications for patents.

(7)               Where a single Convention application has been made in respect of all or part of the inventions in respect of which two or more applications for protection have been made in one or more convention countries, and the Examiner reports that the claims of the specifications filed the said convention application relate to more than invention, the controller may allow one or more further applications to be filed and the specification to be divided into such number of specifications asmay be necessary to enable to or more separate convention applications to be proceeded with any may direct that the said application be deemed to have been filed on the date of filing of the original application.

(8)               Where in the pursuance of sub-section (1) of section 88 the controller allows more than three month to file a copy or copies of the specification or specifications, and drawings or documents filed or deposited by the applicant or his predecessor in title, as the case may be, in respect of the conventional applications, a request for such extension of time shall be made on Form PT-o1 provided, however, such extension shall not exceed nine months form the date of filing of the conventional application.

(9)               Save as aforesaid, all proceeding in connection with a convention application shall be taken within  the time in the manner required by the ordinances or prescribed by these rules for ordinary applications.

(10)           Application shall, on receipt by the controller, be numbered and the dated in the order of their receipt.

 

 

CHAPTER III

SPECIFICATIONS, ABSTRACT AND DRAWINGS

 

9.   Specifications:-

(1)               Every Specification, whether provisional or complete, shall be signed and dated at the end by the applicant or his agent.

(2)               A specification in respect of a patent of addition shall contain a specific reference to the number of the main patent and a definite statement that the invention companies an improvement in, or a modification of, the invention claimed in he specification of the main patent.

(3)               Where the invention is capable of representation by drawings, shall drawing shall be prepared in accordance with rule 11 and shall be supplied with, and referred to in detail in, the specification:

Provided that the in case of a complete specification if the applicant desires to adopt the drawing lodged with is provisional Specification as the drawing a part of the drawing for the complete specification as those left with the provisional specification.

Inelevant or other matter, not necessary, in the opinion of the controller, for elucidations of the invention, shall be excluded from the title, description, abstract, claims and drawing.

The third schedule shall have effect in relation to certain applications for patents, and patents for inventions, which involve the use of or concern biotical material.

10.     Abstract: -

(1)               The abstract shall commence with a title for the invention.

(2)               The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate the technical field to which the invention belongs and be drafted in way which allows a clear understanding of the technical problem to which the invention relates the gist of the solution to that problem through the invention and the principal use or use of the invention. Where appropriate, the abstract shall also contain the chemical formula that, among those contained in the specifications, best characterize the invention. It shall not contain statement on the alleged merits or value of the invention or on its speculative application.

(3)               The abstract shall normally not contain more then 150 words.

(4)               If the specification contains any drawings, the applicant shall indicate on the abstract the figure or, exceptionally, the figures of the drawings that he suggests should accompany the abstract when published. The Controller may decide to publish one or more other figure if he considers that they better characterize the invention. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing.

(5)               The abstract shall be so drafted that it constitutes an efficient instrument for the purpose of searching in the particular technical field, in particular field, in particular by making it possible to assess whether there is a need to consult the specification itself.

11.   Drawing: -

(1)               Drawing shall be on sheets the usable area of which shall not exceed 26.2 cm by 17 cm. The sheets shall not contain frames round the usable or used surface. The minimum margins shall be as follow.

Top 2.5 cm

Left side .5 cm

Right side 1.5cm

Bottom 1.0 cm

(2)               Draw shall be executed as follows

(a)               Without colouring in durable, black, sufficiently dense and dark, uniformly thick and well-defined lines and strokes to permit satisfactory reproduction.

(b)               Cross-sections shall be indicated by hatching which does not impede the clear reading of the reference signs and leading lines.

(c)               the scale of the drawings and the distinctness of their graphical execution, shall be such that a photograph reproduction with a liners reduction in size to two-thirds would enable all details to be distinguished without diffculty. If, as an exception, the sale is given on drawing, it shall be represented graphically.

(d)               All members, letters, and reference signs, appearing on the drawing shall be simple and clear and bracket, circles and inverted commas shall not be used in association with numbers and letters.

(e)               Element of the same figure shall be in proportion to each other unless a difference in proportion is indispensable for the clarity of the figure.

(f)                 The height of the numbers and letter shall not be less than 0.32 cm and for the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.

(g)               The same sheet of drawings may contain several figures. Where figures drawn on to or more sheets are intended to form one whole figure, the figures on the several sheet shall be so arranged that the whole figure can be assembled without concealing any part of the partial figure.  The different figures shall be arranged without wasting space, clearly separated from one another. The different figures shall be numbered consecutively in Arabic numerals, independently of the numbering of the sheet.

(h)               References sign not mentioned in the description or claim shall not appear in the drawings, and vice versa. The same features, when denoted by reference sign, shall, throughout the application, be denoted by the same sign.

(i)                 The drawing shall not contain textual matter, except, when required for the under standing of the drawings, a single word or words such as “water”, “Steam”, “open”, “closed”, section on AA”, and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords; and

(j)                  The sheets of the drawings shall be numbered in accordance with rule 5 (9)

 

(3)               Flow sheets and diagrams shall be considered to be drawing for the purpose of these Rules.

(4)               Drawings shall bear: -

(a)               in the left-hand top corner the name of applicant and, in the case of drawings filed with a complete specification after one or more provisional specifications, the numbers and years of the applications.

(b)               In the right hand top corner the number of sheets or drawings sent and the consecutive number of each sheet, and the words ‘Original’ or ‘true copy’ as the case may require.

(c)               In the right-hand bottom corner the signature of the applicant or his agent.

(5)               The title of the invention shall not appear on the drawings.

(6)               No descriptive matter shall appear on constructional drawings, but drawing in the nature of flow sheet may bear descriptive matter to show the material used and the chemical or other reactions or treatments effected in carrying out the invention.

(7)               Drawing showing a number of instruments or unit of apparatus and their interconnections, either mechanical or electrical, where each such instrument or unit is shown only symbolically, may bear such descriptive matter as in necessary to identify the instruments or units or their interconnection.

(8)               No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol or equation, shall appear in the verbal part of the specification and if such a formula, symbol or equation is used therein in a copy thereof, prepared in the same manner as original drawings, shall furnished if the controller so directs.

(9)               Drawing shall be delivered at the patent office free from folds, breaks or creases, which would render them unsuitable for reproduction.

(10)          If an applicant desires to adopt the drawing filed with his provisional specification, he shall refer to them in the complete specification as those filed with the provisional specification.

 

12. Manner of Making amendments: - 

(1)               When a specification, or any drawing accompanying it, is defective and requires amendment, one copy shall be returned to the applicant or his agent and all alteration shall be made thereon as far as possible, Additional matter may be interpolated, if necessary, by

Rewriting such page as are required to form a continuous documents. Amendments shall not be made by slips paste, or as footnotes, or by writing in the margin.

(2)               The amended documents shall be returned to the controller together with the superseded page or drawings, if any, duly marked, cancelled and initialed by the applicant or his agent, and with a duplicate of any pages that have been added or substantially amended. The applicant or his agent shall initial amendments, alterations or additions in the margin.

 

12.   Application under section 101

(1)               Application under section 101 shall be made on form PT-30.

 

CHAPTER IV

EXAMINATION OF APPLICATIONS, PUBLICATION,

OPPOSITION, SEALING OF PATENT & RENEWALS

 

 

14.       Procedure under section 16: -

(1)   When the examiner, in pursuance of the requirements of sub-section (1) of section 16, reports that the invention so far as claimed in any claim of the complete specification has been published in any specification or other documents falling, or otherwise cannot be accepted for a reasons specified in his report, the applicant shall be so informed in writing and shall be alluded an opportunity of amending his specification.

(2)   If the applicant re-file his specification and the Examiner is not satisfied with the amendments, the applicant shall be given an opportunity to be heard in the matter if hi so requests.

(3)   Whether or not the applicant has re-filed his specification, the controller may appoint a hearing if he considers it desirable to do so, having regard to the time remaining for putting the application in order or other circumstance of the case.

(4)   When a hearing is appointed, the applicant shall be given at least ten days’ notice of the appointment or such shorter notice as appears to the Controller to be reasonable in the circumstances and shall as soon as possible notify the controller form PT-7 whether he will attend the hearing.

(5)   After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he dose not desire to be heard, the controller may prescribe or permit such amendment as will be to his satisfaction and may refuse to accept the complete specification unless the amendment is made within such period as he may fix, not exceeding the total period prescribe under sub-section (6) of section 16.

(6)   An application for extension of time under the first proviso of sub-section (6) of section 16 shall be made on form PT-4.

(7)   An application for extension of time under the second proviso of sub-section (6) of section 16 shall be made on form PT-4.

15.       Reference to other patents: -

(1)   When, pursuant to the requirements of sub-section (1) of section 17, the controller directs that reference to a patent shall be inserted in the applicant’s complete specification, the reference shall be inserted after the claims and shall be in the following form.

“Reference has been directed in pursuance of sub-section (1) of section 17 of the patents Ordinance 2000, to Patent No.________.”

(2)   An application under sub-section (1) of section 17 for the deletion of a reference inserted pursuant to a direction under sub-section (1) of section 17 shall be made on form PT-5, and shall state fully the facts relied upon in support of the application.

16.       Substitution of applications, etc. under section 18: -

(1)   A claim under sub-section (1) of section 18 that an application for a patent shall proceed in the names of the claimant and the applicant or the other joint applicant or applicants shall be made on From PT-6 and shall be accompanied by a certified copy of any assignment or agreement upon which the claim is based.

(2)   The original assignment or agreement shall also be produced for the Controller’s inspection, and the controller may call for such other proof of title or written consent as he may require.

17.       Advertisement of application:-

(1)   The Controller shall advertise the acceptance of every application in the Official Gazette.

(2)   Within 30 days from the date of publication of the acceptance of the application in the Official Gazette, ‘the applicant shall be send copies of as accepted’ complete specification, claims and abstract to the institutions at the address mentioned in the fourth schedule.

18.Opposition to grant of patent: -

(1) A notice of opposition to the grant of a patent,

(a)   shall be given on form PT-7;

(b)   shall state the ground or grounds on which the opponent intends to oppose grant, and

(c)   shall be accompanied by a statement (in duplicate) setting out fully the nature of he relief which the seeks.   

(2) A copy of the notice and of the statement shall be sent by the controller to the applicant.

(3)   If the applicant desires to proceed with his application, he shall, within two months of the receipt of such copies, file a counterstatement setting out fully the grounds upon which the opposition is contested and deliver to the opponent a copy thereof.

(4)   The opponents may within two months from the receipt of the copy of the counterstatement file evidence in support of his case and shall deliver to the applicant a copy of the evidence.

(5)   Within two months from the receipt of the copy of the opponent’s evidence or, if the opponent does not file any evidence, within two months from the expiration of the time within which the opponent’s evidence might have been field, the applicant may file evidence; and within two months forms the receipt of the copy of the applicant’s evidence the opponents may file evidence confined to matters strictly in reply and shall deliver to the applicant a copy of the evidence.

(6)   No further evidence shall be filed by the either party except by leave or direction of the Controller.

(7)   Copies all documents referred to in the notice of opposition or in any statement or evidence filed connection with the opposition, shall be furnished (in duplicate) for the Controller’ use unless he otherwise directs. Such copies shall accompany the notice, statement or evidence in which they are referred to.

(8)   Where specification or other documents in a foreign language is referred to, a translation thereof, verified by statutory declaration or otherwise to the satisfaction of the Controller, and two copies of the translation, shall also be furnished.

(9)   On completion of the evidence (if any), or at such other time as he may see fit, the Controller shall appoint a time for the hearing of the case, and shall give the parties at least thirty days’ notice of the appointment.

(10)                  If either party desires to be heard he shall within ten days of receipt of the notice under paragraph (9) above notify the Controller on From PT-8 and the Controller may refuse to hear either party who has not filed the said form prior to the date of hearing

(11)                  If either party attends to refer at the hearing to any publication not already mentioned in the proceedings, he shall give to the Controller at least ten days ‘notice of his intention, together with details of each publication to which he intend to refer.

(12)                  After hearing the party or the parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Controller shall be decide the case and notify his decision of parties.

(13)                  If in consequence of the proceedings the Controller directs that a reference to another patent shall be inserted in the applicant’s specification under sub-section (1) of section 17, the reference shall be as prescribed by rule 15.

(14)                  If the applicant notifies the Controller that he does not desire to proceed with the application, the Controller in deciding whether cost should be awarded to the opponent shall consider whether proceedings might have been avoided if the opponent had given reasonable notice to the applicant before the opposition was filed.

19.       Observations under section 24: -

 

(1)   Observation under section 24: -

(a)   shall be given on Form PT-9

(b)   shall be accompanied by a statement (in duplicate) setting out fully.

(2) Subject to paragraph (2) below, the Controller shall send to the applicant a copy of

(a)   any document containing observations which he receives under paragraph (1); and

(b)   any document referred to in any such observation being a document which he receive from the person making them.

(3)   Nothing in paragraph (2) above shall impose any duty on the controller in relation to any documents:-

a.      a copy of which is appears to the Controller id readily available for retention by the applicant.

b.      Which in his opinion is not suitable for photocopying, whether on account of size or for any other reason.

(4)   The Controller shall refer the observations to the Examiner and the Examiner shall consider a comment upon them as he thinks fit.

(5)   The Controller shall send a copy of the Examiner’s comments (if any) to the applicant.

(6)   A person does not become a party to any proceedings under the Ordinance before the controller by reason only that he makes observation under section 24.

20.       Sealing and form of patent:-

(1)   A request for a sealing of patent on an application shall be made on Form PT-10 and shall accompany a copy of the urdu translation of ‘as accepted’ complete specification, claims and abstract and evidence of dispatch under paragraph (2) of rule 17.

(2)   An application under sub-section (3) of section 27 for the extension of the period for making a request for sealing of a patent shall be made on Form PT-4

21.       Form of patents: -

 

The patent shall be in the form given in the fifth schedule of these rules, with modifications as the circumstances of each case may require and shall bear a number according to the application, after acceptance.

Provide however patents granted to applications filed under sub-section

(7)   of section 16, shall be in the form given in the six Schedule.

22.       Procedure under section 28 :-

An application under section 28 for the amendment of a patent granted to deceased person shall be made on form PT-11 and shall be accompanied by evidence verifying the statements therein.

23.       Renewals:-

(1)   if it is desired, at the expiration of the fourth year from the date of a patent, or of any succeeding year during the term of the patent, to keep the patent in force, the prescribe renewal fees shall be paid by filing From PT-12 before the expiration of that year.

(2)   All or any of the prescribed annual renewal fees may be paid in advance.

(3)   A request for extension of the period for payment of any renewal fee under sub-section (2) of section 32 shall be made on From PT-4.

(4)   On compliance with the term of paragraph (1) above, the Controller shall issue a certificate on form given in the Seventh schedule.

(5)   For the patent filed or granted under the patents and Designs Act, 1911, no renewals shall be admitted after the expiry of the term of sixteen years.

 

 

CHAPTER V

 

 

RESTORATION, REVOCATION & SURRENDER OF PATENTS

(1)   An application under sub-section (1) of section 45 for restoration of a patent shall be made on form PT-13 and shall be accompanied by evidence in support of the statements made in the application.

(2)   If upon consideration of the evidence the controller is not satisfied that a prima face case for an order under sub-section (3) of section 45 has been made out he shall notify the applicant accordingly and unless within two month the applicants request to be heard in the matter the controller shall refuse the application.

(3)   If the applicant request a hearing within the time allowed the controller after giving the applicant an opportunity of being heard shall determine whether the application may proceed to advertisement in the official Gazette or whether it shall be refused.

(4)   At any time within two month of the advertisement of the application under paragraph (3) any person may give notice of opposition thereto on form PT-7.

(5)   Such notice shall be accompanied by a copy there of together with a statement (in duplicate) setting out fully the nature of the opponents interest and the facts upon which he relies.

(6)   A copy of the notice and of the statement shall be sent by the controller to the applicant.

(7)   Upon notice of opposition being given provisions of paragraph (3) to (12) of rule 18 shall apply.

(8)   If the controller decides in favor of the applicant he shall notify him accordingly and require him to file form PT-12 in respect the unpaid renewal fees.

(9)   In every order of the controller restoring a patent the following provision shall be interested for the protection of persons who have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application

(1)   No action or order proceeding shall be commenced or prosecuted nor any damage recovered in respect of any manufacture use or sale of the invention of the subject of the patent in the interim period as herein after defined by any person to have effect the _____________ who after such date and before the ___________ the date of the application has made used exercised or sold the invention the subject of the patent or has manufactured or installed nay plant, machinery or apparatus claimed in the specification of the patent or for carrying out a method or process so claimed. Any such person shall be deemed to have so acted with the license of the patentee and shall there after the entitled to continued to make use exercise or shall the invention without infringement of the patent to the extent hereinafter specified that is to say: -

(a)   In so far as the complete specification of the patent claims a product, compound or formula (other than plant, machinery or apparatus or part thereof as specified under head (b) thereof) an any product so claimed has been manufactured by him during the said interim period that particular product may at all times be used or sold.

(b)   In so for as the complete specification claims any plant, machinery or apparatus or part thereof for the production of a product then any particular plant, machinery or apparatus or part thereof so claimed, which has been manufactured or installed by him during the said interim period and the products thereof may at all times be used of sold and so that in the event of any such plant, machinery apparatus or part thereof being impaired by wear or tear or accidentally destroyed a like license shall extend to any replacement thereof and to the products of such replacement.

(c)   In so for as the complete specification claims any process of the making or treating of any product or any method or process of testing, any particular plant, machinery or apparatus which during the said interim period has been manufactured or installed by him or exclusively or mainly used by him for carrying on such method or process may at all times be so used or continue to be so used and the products thereof may at all times be used or sold and so that in the event of any such plant, machinery or apparatus being impaired by wear or tear or accidentally destroyed a like license shall extent  to such method or process when carried on in any replacement of such plant, machinery or apparatus and to the products of the process so carried on.

(11)                       In the foregoing paragraph product has the same meaning as in clause (1) of section (2) of The patents                          Ordinance, 2000 and the interim period means the period between the date when the patent ceased to have effect and the date of this Order.

 

25. Revocation of patents under section 47, -

(1)   An application for the revocation of a patent under section 47 shall-

(a)   –Be made on Form PT-14,

(b)   State the grounds for the application and

(c)   Be accompanied by a copy thereof, and a statement (in duplicate) setting out fully the nature of the applicants interests the facts upon which he relies and the relief which he seeks.

(2)   A copy of the application and of the statement shall be sent by the controller to the patentee.

(3)   Upon such application being made an a copy thereof sent to the patentee the provisions of paragraphs (3) to (12) of rule 18 shall apply with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.

(4)   If the patentee offers under section 49 to surrender his patent the controller in deciding whether costs should be awarded to the applicant for revocation, shall consider whether proceedings might have been avoided if the applicant had given reasonable notice to the patentee before the application was filed.

 

26.Surrender of patents under section 49.

(1)   A notice of an offer by a patentee under section 49 to surrender his patent shall be given on Form PT-15 and shall be advertised by the controller in the Official Gazette.

(2)   Any time within two month from the advertisement any person may give notice of opposition to the Controller on Form PT-7, which shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.

(3)   A coy of the notice and of the statement shall be sent by the Controller to the patentee.

(4)   Upon such notice of opposition being given and a copy thereof sent to the patentee the provisions of paragraphs (3) to (12) of rule 18 shall apply with the substitution of references to the patentee for references to the applicant.

 

CHAPTER VI

AMENDMENT OF SPECIFICATION

 

27. Amendment of specification:-

(1)   An application to the controller for leave to amend an accepted complete specification under sub-section (3) of section 42 shall be made on From PT-16, and shall be advertised by publication of the application and the nature of the proposed amendment in the Official Gazette.

(2)   Unless the Controller otherwise direct, an application or proposal for amendment of an accepted complete specification shall be accompanied by a copy of the specification and drawings clearly showing in red ink the amendment sought.

(3)   Any person wishing to oppose the application shall, within two month from the date of the advertisement in the Official Gazette give notice to the Controller on From PT-7.

(4)   Such notice hall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the fact on which he relies and the relief which seeks.

(5)   A copy of the notice and of the statement shall be sent by the Controller to the applicant.

(6)   Upon a notice of opposition being given and a copy thereof sent the applicant the provisions of paragraphs (3) to (12) of rule 18 shall apply.

(7)   An application for leave to amend a complete specification, which has not been accepted, except when the amendment is made to meet an objection contained in an examiner’s report, shall be made on From PT-17.

(8)   Where leave to amend a specification is given the applicant shall, if the Controller so require, and within a time to be fixed by him, file a new specification and drawings as amended, which shall be prepared in accordance with these rules.

CHAPTER VII

POWERS OF THE CONTROLLER

 

28. Power of the Controller under section 3: -

(1)   An application for direction under sub-section (1) of section 35 by a co grantee or co-proprietor of a patent shall be made on From PT-18 and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

(2)   A copy of the application and the statement shall be sent by the Controller to each other person registered as grantee or proprietor of the patent and the applicant shall supply a sufficient numbers of copies for that purpose.

(3)   There after the Controller may give such directions as he may think fit with regard to the subsequent procedure.

(4)   An application for directions under sub-section (2) of section 35 by o grantee or co proprietor of a patent shall be made on From PT-198, and shall be accompanied by an unstamped copy thereof, and the statement (in duplicate) setting out fully the fats upon which the applicant relies, and the directions which the seeks.

(5)   A copy of the application and the statement shall be sent by the Controller the person in default.

(6)   There after the Controller may give such directions as he may think fit with regard to the subsequent procedure.

 

29.       Power of the Controller under section 346: -

(1)   An application under sub-section (1) of section 36 to determine a dispute as to right in an invention shall be made on From PT-20, and shall be accompanied by an unstamped coy thereof together with a statement (in duplicate) setting out fully the facts of the dispute and the relief which is sought.

(2)   A copy of the application and of the statement shall be sent by the Controller to the other party to the dispute, who within three months after receipt thereof shall file a counter statement (in duplicate) setting out fully the ground on which he disputes the right of the applicant the relief sought.

(3)   The Controller shall send a copy of this counter statement to the applicant and there after, subject to such directions as Controller may think fit to give, the Provisions or paragraph (3) to (12) of rule 18 shall apply with the substitution of reference to the applicant for reference to the opponent and reference to the other party for reference to the applicant.

 

30.       Power of the controller under section 51:-

(1)   A request for the correction of a clerical error in an application for a patent or any document file in pursuance of such an application or in any patent or in register, shall be made on From PT-21.

(2)   Where the Controller require notice of the nature of the proposed correction to be advertised under sub-section (4) of section 51, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Official Gazette.

(3)   Any person may, at any time within two month from the date of the advertisement in the Official Gazette, give notice to the Controller of opposition to the proposed correction on From PT-7.

(4)   Such notice shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts on which he relies, and the relief which he seeks

(5)   A copy of the notice and the statement shall be sent by the Controller to the person making the request, and there after the provision of paragraphs (3) to (12) of rules 18 shall apply.

(6)   Where, in accordance with sub-section (3) of section 51, a hearing, is appointed, at least fourteen days’ notice of the appointment shall be given the patentee or the applicant and to any other person to whom notice of the proposed correction has been given by the Controller.

 

31.       Procedure under section 59: -

(1)   An application under sub-section (1) of section 59 shall be made on from PT-22 and shall be accompanied by statement in duplicate of the facts upon which the applicant relies and evidence in duplicate verifying the statement.

(2)   If upon consideration of the evidence submitted under above paragraph, the Controller is not satisfied that a prima facie case is made out for the grant of a non-voluntary license he shall notify the applicant accordingly, and unless, within to months of making such notification, the applicants request to be heard in the matter, the Controller shall refuse the application.

(3)   Where the applicant request a hearing within the time allowed, the Controller, after giving the applicant the opportunity of being heard, shall determine whether the application may proceed or whether it shall be refused.

(4)   If upon consideration of the evidence the Controller is satisfied that a prima facie case has been made out for the non-voluntary license, or if, after hearing the applicant, he so determines, he shall direct that the application to be advertised in the Official Gazette, and shall send a copy of the application, the statement and the evidence filed in support thereof to the proprietor of the patent any to any other person shown on the register as having any right in or under the patent. 

 

CHAPTER VIII

REGISTER OF PATENTS

32.       Entry of grant:-

              

Upon the sealing of a patent the controller shall cause to be entered in the register the name, address, and the nationality of the patentee as the grantee thereof, the title of the invention, the date of the patent, and the date of the sealing thereof, together with the address for service.

33.       Entry in respect of Convention application: -

            

The patent grantee or any convention application shall be entered in the register as dated of the official date of the first conventional application in a convention country is respect of which the convention application was made, and the payment of renewal fees and the expiration of the patent shall be reckoned as form that date. The date of the convention application filed in the convention country shall also be entered in the register.

34.       Entry of renewal fees: -

 

Upon the issue of a certificate of payment under rule 23, the controller shall enter in the register the fact that the fee has been paid, and the date of payment as stated on the certificate.

35.       Alteration of address:-

           

(1)   A request by a patentee for the alternation of a name, nationality or address or address for service entered in the register in respect of his patent shall be made on form PT-23

(2)   If the Controller is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.

 

36.       Record able of assignment, transmission etc.,

   

An application for the registration of the title of any person becoming entitled by assignment, transmission or operation of law to a patent or to a share in a patent, or becoming entitled by virtue of a mortgage, license or other instrument to any other interest in a patent, shall be made.

(a)   In the case of an application under sub-section (1) of section 55 by the person becoming so entitled, on From PT-24 and

(b)   In the case of application under sub-section (2) of section 55 by the assignor, mortgagor, licensor, or other party conferring the interest, on From PT-25

 

 

37.       Production of documents of title and other proof: -

Every assignment, and every other documents containing giving effect to or being, evidence of the transmission of a patent or effecting the proprietorship thereof as claimed by such application shall, unless the Controller otherwise directs, be presented to him together with application and he may cal for such other proof of title or written consent as he may require for his satisfaction:

Provided the case of a document, which is a public, document, an official or certified copy thereof, may be presented.

38.       Form of entry:-

The entry to be made in the register on a request under rule 36 shall be in the following form:-

39.       Entry of notification of documents.

 

An application for entry in the register of the notification of any documents (not already provided), purporting to effect the proprietorship by an attested copy of the document, the accuracy of such copy being certified as the Controller may direct, and the original document shall at the same time be produced and left at the office if required for further verification.

40.       Inspection of the register: -

      

The register shall be open the inspections of the public at all times on which the patent Office is open to the public, except at time when they are required for actual official use.

41.       Inspection of, and extracts from, the Register, etc

        

(1)   Certified copies of any entry in the register, or certified copies of, or extracts from, patents, specification, and other public documents in the Patent Office, or of or from register and other records kept there, may be furnished by the Controller on making of application of Form PT-26

(2)   A request under section 57 for information relating to any patent or application for a patent may be made.

 

(a)   as to when a complete specification following provisional specification has been filed.

(b)   As to given an application for patent has been accepted or deemed to have been abandoned, or deemed to have been refused.

(c)    As to when a complete specification is or will be published,

(d)   As to when a patent has been sealed or when the time for requesting sealing has expired,

(e)   As to when a renewal fee has been paid,

(f)      As to when a patent has expired,

(g)   As to when an entry has been made in the register or application has been made for the making of such entry, or

(h)    As to when any application is made or action taken involving an entry in the register or advertisement in the Official Gazette.

 

(3) Any such request shall be made on From PT-27 and a separate from shall be used in respect of each of the said matters.

 

42.       Grant of Exclusive Marketing Rights.

(1)    Where an invention has been made whether in Pakistan or outside Pakistan, by a multinational company and before filing a black box application, an application has been filed for the same invention claming identical chemical product or a process in a convention country on or after first day, of January 1995, patent and the approval to sell or distribute the chemical product in the country have been granted and have receive approval to sell or distribute chemical product from Ministry of Industries and Production, Government of Pakistan, then, he shall exclusive marketing right by himself, his agent(s) or licensee(s) to sell or distribute in Pakistan, the chemical product on and from the date of approval for 5 years or till the date of grant of patent or date of rejection of application, as the case may be, which ever is earlier.

(2)    When an invention has been made in Pakistan by a national company and black box application for the process of manufacturer other chemical product has been foiled and approval of marketing granted by Ministry of Industries and Production, in respect of that invention, then he shall have the exclusive marketing rights by himself, his agent(s) or licensee(s) to sell and distribute in Pakistan the chemical product on and from the date of approval for 5 years or till the date of grant of patent or date of rejection of application, as the case may be, whichever is earlier.

 

 

43.       Compulsory licenses.

(1)    For the purpose of this ordinance the patentee shall be entitled to be payment of 3% remuneration by the licensee, on the basis of total sales of that chemical product taking into consideration its trade price, under subsection (3) (iii) of section 59.

(2)    Subject to the subsection (1) of section 59, non or insufficient exploitation of a patent in case of a chemical product intended for use in agriculture or medicine, shall be determined on the basis of health care requirement of Pakistan and monopolization of the market against the public interest.

Provided, that the patent holder does not make available the subject patent product, in sufficient qualities, so as to meet the requirement of the licensee(s). The Licensee(s) shall be at liberty to import or procure the said chemical product from anywhere.

 

CHAPTER IX

PATENT AGENTS

44.       Definition: -

In this chapter, unless there is anything repugnant in the subject of context: -

(a)      “agent” means a legal practitioner, or a person registered as an agent whose name is on the register of patent agents kept under section 79 rules 45;

(b)      “Graduate” means a graduate of a university established by law in Pakistan, any foreign University recognized by the Federal Government.

45.       Register of patent agents: -

(1)    The patent office shall maintain the register of patent agents wherein shall be entered the name the addressed, the business address, the qualifications and the date of registration of every patent agent.

(2)    Legal practitioners shall not be required to be on the register of patent agents to act as patent agent otherwise than by way of drafting any specification.

 

 

46.       Eligibility for registration: -

(1)    No person shall be eligible for registration as a patent agent unless he is resident in Pakistan.

(2)    A person shall not be qualified for registration as patent agent unless he is a citizen of Pakistan and.

(a)   Is at least a graduate in basic sciences (i.e. Physics, Chemistry, Mathematics, Pharmacy, Computer Sciences, and Genetics) or in engineering from a recognized University with a least one year experience of working with a patent agent or a legal practitioner practicing before the Patent office and has passed a written and oral examination about law and procedure of patents, designs and integrated circuits with more than 50% score; or

(b)   Has passed an examination in patent drafting from an institution or organization listed in the eight schedules.

(c)    Has been a officer of grade 17 or above in the Patent Office for a period of not less than ten years;

Provided than no such person shall be entitled to registration for a period of three years from the date of retirement or termination of service.

Provided that so such person shall be entitled to registration if he has been dismissed or removed from service.

47.       Persons debarred from registration or remaining on the register of patent agents: -

  

A person shall not be eligible for registration as a patent agent or continue to remain on the register of patent agents of the.

(a)   Is barred by the provisions of section 84.

(b)   Has been adjudged by a competent court to be of unsound mind.

(c)    Is an undercharged insolvent;

(d)   Being a discharged insolvent has not obtained from the court a certificate to the effect that his insolvency was chastised by misfortune without any misconduct on his part.

(e)   Has been convicted by a competent court, whether within or without or Pakistan of an offence punishable with transportation or imprisonment, unless the offence of which he has been or imprisonment, unless the pardoned or unless on an application made by him, the Federal Government has, by order in this behalf, removed the disability; or

(f)      Is considered by the Federal Government not to be a fit and proper person by reason of any act of negligence, misconduct or dishonesty committed in his professional capacity.

 

48.       Manner of making application

       

All application for registration of patent agent shall be made on From PTA-1

49.       Procedure of making application: -

         

(1)    On receipt of an application for he registration of a person as patent agent, the Controller shall grant him an opportunity of appearing in a written and oral examination that will be conduct once in a year.

(2)    If the applicant has passed the written and oral examination and qualities requirements of clause (a) of sub-paragraphs (2) of rules 46 or has proved to the satisfaction of the Controller the he is

(1)    The affidavits required by the ordinance and these Rules, or used in any proceedings there under, shall be headed in the matter on matter to which they relate, shall be drawn up in the first person and shall be divided into paragraphs consecutively numbered; and each paragraph shall as far as possible, be confined to one subject. Every affidavit shall state the same, shall bear the name and address of the person leaving its and shall state on whose behalf it is left.

(2)    Affidavits shall be confined to such facts as the deponent is able of his own knowledge to prove, except on interlocutory applications on which statement of his belief may be admitted provided that the grounds thereof are started.

(3)    The affidavits referred to in paragraph (1) shall be made and subscribed, as follows: -

(a)   In Pakistan before any court or person having by law authority to receive evidence, or before the commanding officer of any military, naval or air force station or ship occupied by troops in the service of Pakistan.

(b)   In any other part of the world before any court, Judge, justice of the peace or any officer authorized by law to administer an oath therefore the purpose of a legal proceeding, and be legalized by the Embassy of Pakistan in the country or region.

(4)    Every statutory declaration or affidavit shall state the description and true place of abode of the person making the same, and shall be written, typed, lithographed or printed.

 

58.       Action consequent upon court order: -

    

Where an order has been made by the High Court in any case under the Ordinance, the person in whose favour the order has been made shall forth with lodge an application on From PT-29, accompanied by a sealed duplicate of the order or a certified copy of the order, and there upon the register shall, if necessary, be corrected or rectified by the making of any entry therein or the variation or deletion of any entry therein.

59.       Controller may require statement: -

          

Whether an applicant or an agent desires to be heard or not, the controller may at any time require him to submit a statement in writing within a time to be notified by the controller, or to attend before him and make explanations with respect to such matters as the controller may required exempt from appearing in such examination under the exemptions granted in clause (b) and (c) of sub- paragraph (2) of rule 56; the Registrar shall send an intimation may pay the prescribed fees for his registration as a patent agent. On receipt of the prescribed fees the Controller, shall cause the applicant’s name to entered in the registered of patent agents, and shall issue to him a certificate on the from given in the Ninth Schedule

50.       Continence of a name in the register of patent agents:-

 

Subject to the requirements of rules47, the continuances of a person’s

Name in the register of patent agents shall be subject to his payment of the fee prescribed in that behalf.

 

51.       Removal of agent’s name from the register of patent agent: -

(1)    The Federal Government may remove permanently or temporarily from the register of patent agents the name of any patent agent.

 

(a)   from whom a request has been received to that effect, or

(b)   from whom the annual fee has not been received on the expiry of three months from the date on which it became due; or

(c)    who is found to have been subject at the time of his registration or thereafter has become subject, to any of the disabilities stated in clause (a) to (e) of rule 47 ; or

(d)   whom the federal Government has declared not to be a fit and proper person to remain on the register of patent agents under sub-section (1) of section 83;

Provided that before making such declaration, the Federal Government shall call upon the person concerned to show cause why is registration should not be cancelled and shall make such further enquiry, if any, as it may consider necessary.

(2)    The Federal Government shall remove from the register of patent agents in the name of any patent agent who is dead;

(3)    The removal of the name of any person from the register of patent agents shall be notified in the Official Gazette and small, wherever possible, be communicated to the person concerned.

 

 

52.       Restoration of removed names: -

      

(1)    The Federal Government may, subject to the provisions of sub-section (2) of section 83, on an application on From PTA-2 from a person whose name has been temporarily removed under paragraph (1) of rule 51, restore his name to the register of patent agents.

 

 

(2)    The restoration of a name of the register of patent agents shall be notified in the Official Gazette, and shall whenever possible be communicated in the person concerned.

 

53.       Alteration in the register of patent agent: -

         

(1)    A patent agent may apply on From PTA-3 for alteration of his name, address, business address or qualifications entered in the register of patent agents. On receipt of such application and to fee prescribed in that behalf, the Controller shall cause the necessary alteration to be made in the register of patent agents.

(2)    Every alteration made in the register of patents agents shall be notified in the Official Gazette.

 

54.       Publication of the register of patent agents: -

     

The register of patent agents shall be published from time to time as the controller or the Federal Government may deem fit, the entries being arranged in the alphabetical order of the surnames of the registered agents and copies thereof shall be placed on sale.

 

55.       Agency: -

        

For all matters falling under the provisions of section 81, any person may, unless otherwise directed by the Controller, authorize under his personal signature, any person who is either a legal practitioners or a registered patent agent and to receive all notice, requisition and communication. The authority may be given on From PT –28.

 

CHAPTER X

MISCELLANEOUS PROVISION

 

 

56.       Procedure for evidence before the Controller: -

      

(1)    Where under these rules evidence is required to be filed it shall be statutory declaration or affidavit unless otherwise expressly provided in these rules.

(2)    The statutory declarations and affidavits required by these rules, or used in any proceedings there under, shall be headed in the mater or matters to which these relate, and shall be divided into paragraph consecutively numbered, and each paragraph shall so far as possible be confined to one subject.

 

 

57.       From, etc., of affidavit: -

  

 

60.       General power of amendment: -

        

Any documents for the amending of which no special provision in made by the ordinance may be amended, and any irregularly in procedure which, in the opinion of the controller, may be obviated without detriment to the interests of any person may be corrected if the controller thinks fit, and upon such terms as he may direct.

 

61.       Exercise of discretionary power & removal or difficulties: -

  

(1)    except as the otherwise provided in these rules, before exercising any discretionary power given to him by the ordinance or these rules adversely to any applicant for a patent or for amendment of a specification, the controller shall be give at least ten days’ notice to the applicant of the time when the may be heard.

(2)    Where, under the rules, any person required to do any act or thing, or any document or evidence is required to be produced or filed, and it is shown to the satisfaction of the Controller that from any reasonable cause that person is unable to do that act or thing, or that document or evidence cant not be produced or filed, the controller may, upon the production of such evidences and subject to such terms as he thinks fit, dispense with the doing of any such act or thing, or the production or filing or such document or evidence.

(3)    Where the hearing before the Controller of any dispute between two or more parties relating to any matter in connection with a patent or an application for patent takes place a after the date of the publication of the complete specification, the hearing of the dispute shall be in public unless the Controller, after consultation with those parties to the dispute who are represented at the hearing, otherwise directs.

62.       General power to enlarge time: - 

The time prescribe by these rules of doing nay act or taking any proceeding there under may be enlarged by the controller if he thinks fit and upon such terms as he may direct. Provided that no such engagement of time granted under this rules shall exceed a period of more than one month at a time, provided that total period prescribed. Every application for enlargement of time under this rule shall be made on From PT-I

63.       Publication of the Patent Office: -

(1)    The Controller may publish from time to time reports of such cases relating to patents, registered designs and integrated circuits as he made deem to be generally useful or important.

(2)    The Controller may arrange for publication and sale of copies of specifications. Drawing and other documents in the Patent Office, and of indexes to and abridgements of such documents.

64.       Repeat: -

The Patent & Designs Rules 1933 are hereby superseded, provided that any application or other matter pending under those rules shall be disposed of under those rules.



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