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  "text": "Page 1 of 52 \r\n \r\n \r\n \r\n THE PATENTS ORDINANCE, 2000  \r\n \r\n \r\n \r\n \r\n \r\n \r\n \r\nCONTENTS \r\n___________ \r\n \r\nCHAPTER I  \r\nPRELIMINARY \r\n \r\n1. Short title, extent and commencement. \r\n2. Definitions. \r\nCHAPTER II  \r\nADMINISTRATION \r\n \r\n3. Appointment of Controller and other officers. \r\n4. Patent Office. \r\n5. Officers and employees incapable of an interest in a patent. \r\n6. Officers and employees not to divulge certain information or advise in certain  matters. \r\n \r\nCHAPTER III  \r\nPATENTABILITY \r\n \r\n \r\n7. Patentable inventions. \r\n8. Novelty. \r\n9. Inventive step. \r\n10. Industrial application. \r\n \r\n \r\n \r\nUpdated Till 22.8.2022\r\nPage 2 of 52 \r\n \r\n \r\nCHAPTER IV  \r\nAPPLICATIONS \r\n \r\n11. Persons entitled to make an application for patent. \r\n12. Right to patent for invention made by employee. \r\n13. Application for patent. \r\n14. Complete and provisional application. \r\n15. Contents of specification. \r\n \r\nCHAPTER V  \r\nEXAMINATION OF APPLICATIONS \r\n \r\n16. Examination of application. \r\n17. Reference to other patent. \r\n18. Substitution of applicants, etc. \r\n19. Time for putting application in order of acceptance. [Omitted] \r\n20. Power of Controller to require certain information and documents relating to foreign \r\napplication. \r\n21. Acceptance of complete Specification. \r\n22. Effect of acceptance of complete Specification. \r\n \r\nCHAPTER VI  \r\nOPPOSITION TO GRANT OF PATENT \r\n \r\n23. Opposition to the grant of patent. \r\n24. Third Party Observations on Patentability. \r\n \r\nCHAPTER VII \r\nPROVISIONS FOR SECRECY OF CERTAIN INVENTIONS \r\n \r\n25. Information prejudicial to defence of Pakistan or safety of public. \r\n26. Residents not to apply outside Pakistan without permission. \r\n \r\n \r\nPage 3 of 52 \r\n \r\n \r\n \r\nCHAPTER VIII \r\nGRANT AND SEALING OF PATENT \r\n27. Grant and sealing of patent. \r\n28. Amendment of patent granted to a deceased person. \r\n29. Date of patent. \r\n30. Rights conferred by patent. \r\n31. Term of patent. \r\n32. Grant of patents to be subjected to certain conditions. \r\n \r\nCHAPTER IX \r\nMISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS \r\n33. Priority date in case of invention obtained from other person. \r\n34. Grant of patent to two or more persons. \r\n35. Power of Controller to give directions to co­owners. \r\n36. Power of Controller or Court to determine the matter in dispute between employer  and \r\nemployee. \r\n37. Avoidance of restrictive condition in contracts. \r\n38. Determination of certain contracts. \r\n \r\nCHAPTER X  \r\nPATENTS OF ADDITION \r\n39. Patents of addition. \r\n40. Term of patents of addition. \r\n41. Patent of addition not to be refused, etc. \r\n \r\nCHAPTER XI  \r\nAMENDMENT OF SPECIFICATION \r\n42. Amendment of specification with leave of Controller. \r\n43. Amendment of specification with leave of High Court. \r\n44. Supplementary provisions as to amendment of specification. \r\n \r\n  \r\nPage 4 of 52 \r\n \r\n \r\nCHAPTER XII  \r\nRESTORATION OF LAPSED PATENTS \r\n45. Restoration of lapsed patents. \r\n \r\nCHAPTER XIII \r\nREVOCATION AND SURRENDER OF PATENTS \r\n46. Revocation of patent by High Court. \r\n47. Revocation of patent by Controller. \r\n48. Revocation of patent by the Federal Government. \r\n49. Revocation of surrendered patent by Controller. \r\n \r\nCHAPTER XIV  \r\nPOWERS OF CONTROLLER \r\n50. Controller to have certain powers of a civil court. \r\n51. Power of Controller to correct clerical errors. \r\n52. Evidence before Controller. \r\n53. Exercise of discretionary powers by Controller. \r\n \r\nCHAPTER XV  \r\nREGISTER OF PATENTS \r\n54. Register of Patents. \r\n55. Registration of assignments, transmissions, etc. \r\n56. Power of High Court regarding rectification of the Register. \r\n57. Inspection of, and extracts from, the Register, etc. \r\n \r\nCHAPTER XVI \r\nCOMPULSORY LICENCES, LICENCES OF RIGHT, EXPLOITING OF   \r\nPATENTS AND REVOCATION \r\n58. Exploitation by a Government agency or third person. \r\n59. Powers of Controller in granting compulsory licenses. \r\n \r\n \r\n \r\nPage 5 of 52 \r\n \r\n \r\nCHAPTER XVII \r\nPROCEEDINGS FOR INFRINGEMENT OF PATENTS \r\n60. Suit for infringement of a patent. \r\n61. Reliefs in suits for infringement. \r\n62. Damages not to be awarded against defendant in certain cases. \r\n63. Relief for infringement of partially valid specification. \r\n64. Proceedings for infringement by exclusive licensee. \r\n65. Certificate of contested validity of specification. \r\n66. Remedy for groundless threats of infringement proceedings. \r\n67. Power of Court to make declaration as to non infringement. \r\n68. Power of Court to appoint scientific advisers. \r\n \r\nCHAPTER XVIII   \r\nAPPEALS \r\n69. Appeals. \r\n70. Procedure for hearing appeals. \r\n \r\n \r\nCHAPTER XIX  \r\nPENALTIES \r\n71. Penalty for contravention of secrecy provisions relating to certain inventions. \r\n72. Penalty for false entry in any register, etc. \r\n73. Penalty for false representation. \r\n74. Penalty for wrongful use of Words “patent office”. \r\n75. Penalty for refusal or failure to supply information. \r\n76. Penalty for contravention of section 20. \r\n77. Penalty for practice by non­registered patent agents. \r\n78. Offences by companies etc. \r\nCHAPTER XX \r\nPATENT AGENTS \r\n79. Register of patent agents. \r\n80. Registration as patent agent. \r\n  \r\nPage 6 of 52 \r\n \r\n \r\n81. Subscription and verification of certain documents by patent agents. \r\n82. Restrictions on practice as patent agent. \r\n83. Removal from register of patent agents and restoration. \r\n84. Power of controller to refuse to recognize as agent. \r\n85. Saving in respect of other persons authorize to act as agents. \r\nCHAPTER XXI \r\nINTERNATIONAL ARRANGEMENTS \r\n86. Power of the Federal Government to declare a country as Convention country. \r\n87. Supplementary provisions as to Convention application. \r\n88. Documents to be filed with a Convention application. \r\nCHAPTER XXII  \r\nMISCELLANEOUS \r\n89. Fees. \r\n90. Restrictions upon publication of specifications, etc. \r\n91. Reports of examiners to be confidential. \r\n92. Publication of Patented Inventions. \r\n93. Power of Controller to call for information from patentees. \r\n94. Evidence of entries, documents, etc. \r\n95. Declaration by infants, lunatics, etc. \r\n96. Service of notice, etc., by post. \r\n97. Security for cost. \r\n98. Transmission of orders of High Court or Court to the Controller. \r\n99. Transmission of copies of specifications, etc. and inspection thereof. \r\n100. Information relating to patents. \r\n101. Loss or destruction of patents. \r\n102. Patent to bind the Government. [Omitted] \r\n103. Right of the Government to sell or use forfeited articles. \r\n104. Power of High Court to make rules. \r\n105. Power of the Federal Government to make rules. \r\n106. Repeal and savings. \r\n107. Acts done in good faith. \r\n108. Removal of difficulties. \r\nPage 7 of 52 \r\n \r\n \r\nTHE PATENTS ORDINANCE, 2000 \r\n ORDINANCE NO. LXI of 2000 \r\n[2nd December, 2000] \r\n1\r\n[An Ordinance to amend and consolidate the law relating to patents in order to give effect in  \r\nPakistan to the provisions of the International Convention on Trade Related Intellectual Property \r\nRights, 1994, in accordance with its objectives and principles. \r\nWHEREAS it is expedient to amend and consolidate the law relating to patents;] \r\n \r\nAND WHEREAS the National Assembly and the Senate stand suspended in pursuance of the \r\nProclamation of Emergency of the fourteenth day of October, 1999, and the Provisional Constitution  \r\nOrder No. 1 of 1999; \r\nAND WHEREAS the  President is satisfied that  circumstances exist  which render it  \r\nnecessary to take immediate action; \r\nNOW, THEREFORE, in pursuance of the Proclamation of Emergency of the fourteenth day \r\nof October, 1999, and the Provisional Constitution Order No. 1 of 1999, read with the Provisional \r\nConstitution (Amendment) Order No. 9 of 1999, and in exercise of all powers enabling him in \r\nthat behalf, the President of the Islamic Republic of Pakistan is pleased to make and promulgate the \r\nfollowing Ordinance:__ \r\n \r\nCHAPTER I  \r\nPRELIMINARY \r\n1. Short title, extent and commencement.­ (1) This Ordinance may be called the Patents \r\nOrdinance, 2000. \r\n(2) It extends to the whole of Pakistan. \r\n(3) It shall come into force at once except the provisions relating to examination, sealing, \r\ngrant and  post­grant matters of the patents relating to  chemical products  intended for use in \r\nagriculture and medicines, but excluding the grant of exclusive marketing rights therefore and mail \r\nbox filings which shall come into force on and from the first day of January, 2005. \r\n \r\n2. Definitions. In this Ordinance, unless there is anything repugnant in the subject or \r\ncontext,__ \r\n \r\n(a) “assignee” includes the legal representative of deceased assignee and \r\nreferences to the assignee of any person includes references to the assignee of \r\nthe legal representative or assignee of that person; \r\n \r\n \r\n \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 2, for “long title and preamble.” \r\nPage 8 of 52 \r\n \r\n \r\n(b) “Controller” means the Controller of Patents appointed under section 3; \r\n(c) “Convention application ” means an application made in Pakistan within \r\ntwelve months after the date of an application made in a Convention country, \r\nwhether claiming single or multiple priorities from such application; \r\n(d) “Convention country” means a member country of the World Trade \r\nOrganization or a  country declared as such under section 86; \r\n \r\n1\r\n[(e)  “date of advertisement ”, wherever appearing in this Ordinance, shall be the \r\ndate on which  the patents’ journal is published or uploaded on website of the \r\nIntellectual Property Organization of Pakistan or printed in hard form in \r\nrelevant part of the official Gazette, whichever is earlier:] \r\n \r\n(f) “date of filing”, in relation to an application for a patent, means­ \r\n \r\n(i) in case of an application which is post­dated or ante­dated under \r\nthis Ordinance, the  date to which it is so post­dated or ante­dated; and \r\n \r\n2\r\n[(ii)  the date on which it is filed at the Patent Office or its branch office;] \r\n \r\n(g) “District Court” has the meaning assigned to that expression by the Code of \r\nCivil Procedure, 1908 (Act V of 1908); \r\n \r\n(h)  “exclusive licence” means a licence from a proprietor of, or an applicant of, a \r\npatent which confers on the licensee, or on the licensee and persons authorized \r\nby him, to the exclusion of  all other persons, including the proprietor or \r\napplicant, any right in respect of the invention, to which the patent or \r\napplication relates, and “exclusive licensee” and “non­exclusive licensee” \r\nshall be construed accordingly; \r\n \r\n3[(i)  “invention” means any new and useful product or process, in any field of \r\ntechnology and includes any new and useful improvement of either of them;] \r\n \r\n(j) “inventor” means the actual devisor of an invention, and joint inventor shall be \r\nconstrued accordingly; \r\n \r\n(k) “legal representative” means a person who in law represents the estate of a \r\ndeceased person; \r\n \r\n4\r\n[(ka)  “mail box” means the  mailbox facility provided under sub­section (9) of \r\nsection 13;] \r\n_________________________________________________________________________________ \r\n \r\n1\r\nSubs by Act XXIV of 2016, s.2. \r\n2\r\nSubs by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 3, for sub­clause (ii). \r\n3\r\nSubs ibid., for clause (i). \r\n4\r\nNew clause (ka) ins. ibid., \r\nPage 9 of 52 \r\n \r\n \r\n(l) “patent agent” means an advocate or a person for the time being registered  \r\nunder this Ordinance as a patent agent; \r\n \r\n(m) “patentee” in relation to a patent, means the person or persons for the time \r\nbeing entered on  the Register as the grantee or proprietor of the patent and \r\nincludes any subsequent assignee  or successor­in­interest of a patent recordal \r\nof whose name on the Register is pending with    the Controller; \r\n \r\n(n) “patent of addition” means a patent of addition granted in accordance with \r\nsection 39; \r\n \r\n(o) “Patent Office” means the Patent Office established, or deemed to have been \r\nestablished, under section 4; \r\n \r\n1[(p)  “person” means any natural or juridical person and includes any \r\nassociation or body of individuals, whether incorporated or not;] \r\n \r\n(q) “person interested” includes a person engaged in, or in promoting, research in \r\nthe same field as that to which the invention relates; \r\n \r\n(r) “prescribed” means prescribed by rules made under this Ordinance; \r\n \r\n2[(s)  “process” means any art, process or method or manner of new manufacture of \r\na product;] \r\n \r\n3[(t)  “product” means any substance, article, apparatus or machine;] \r\n \r\n(u) “published” means made available to the public whether in Pakistan or \r\nelsewhere and a document shall be taken to be published under any provision \r\nof this Ordinance, if it can be  inspected as of right at any place in Pakistan by \r\nmembers of public, whether on payment or free of cost; \r\n \r\n(v) “Register” means the Register of Patents maintained under section 54; and \r\n \r\n(w) “rules” means rules made under this Ordinance. \r\n \r\nCHAPTER II  \r\nADMINISTRATION \r\n \r\n3. Appointment of Controller and other officers .—(1) For the purposes of this Ordinance, \r\nthe Federal Government shall, by notification in the official Gazette, appoint an officer who shall be \r\ncalled the Controller of Patents. \r\n \r\n_________________________________________________________________________________ \r\n1\r\nSubs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 3 for clause (p). \r\n2\r\nSubs. ibid., for clause (s). \r\n3Subs. ibid., for clause (t). \r\nPage 10 of 52 \r\n \r\n \r\n(2) The Federal Government shall appoint such other officers with  such designations as it  \r\ndeems fit. \r\n \r\n4. Patent Office.—(1) For the purposes of this Ordinance, there shall be established a Patent \r\nOffice: \r\n \r\nProvided that until such time the Patent Office is established, the Patent Office \r\nestablished under the Patents and Designs Act, 1911, ( Act II of 19 11) shall be the Patent office for \r\nthe purposes of this Ordinance. \r\n \r\n(2) The Patent office shall be under the immediate control of the Controller who shall act \r\nunder the superintendence and direction of the Federal Government. \r\n \r\n(3) The Patent Office shall be entrusted with all the functions relating to the procedure for \r\nthe grant  of patents and for the administration of granted patents as specified in this Ordinance and \r\nrules. \r\n \r\n(4) There shall be a seal of the Patent Office and impression of the seal shall be judicially \r\nnoticed. \r\n \r\n5. Officers and employees incapable of an interest in a patent . Any officer or a person \r\nemployed in the Patent Office shall be incapable during the period of his appointment and for one \r\nyear thereafter  of applying for a  patent or of acquiring, directly or indirectly, except  by inheritance \r\nor bequest, any patent issued or to be issued by the Patent Office. \r\n \r\n6. Officers and employees not to divulge certain information or advise in certain \r\nmatters. An officer or a person employed in the Patent Office shall not, except when required or \r\nauthorized by this  Ordinance or under a direction in writing of the Controller or by order of the \r\nCourt:— \r\n \r\n(a)  divulge any information available to him by virtue of his office in respect of \r\nany application  for a patent or a patent granted in Pakistan; or \r\n \r\n(b)  advise in a matter which is under consideration or is likely to come under \r\nconsideration of  the Patent Office in pursuance of this Ordinance. \r\n \r\n \r\n_____________ \r\n \r\n  CHAPTER III  \r\nPATENTABILITY \r\n \r\n7. Patentable inventions.—(1) Any invention is patentable, if it is new, involves an \r\ninventive step and is capable of industrial application. \r\n \r\n(2) Subject to sub­section (3), the following shall not be regarded as invention within the \r\nmeaning of sub­section (1), namely:— \r\n \r\n(a) a discovery, scientific theory or mathematical method; \r\nPage 11 of 52 \r\n \r\n \r\n \r\n \r\n(b) a literary, dramatic, musical or artistic work or any other creation of purely \r\naesthetic character whatsoever; \r\n \r\n(c) a scheme, rule or method for performing a mental act, playing a game of doing \r\nbusiness 1*. \r\n(d) the presentation of information 2[;and] \r\n \r\n3[(e)  substances that exist in nature or if isolated therefrom.] \r\n \r\n(3) The provisions of sub­section (2) shall prevent  anything from being treated as an \r\ninvention for the purposes of this Ordinance only to the extent that a patent or an application for \r\na patent relates to  that thing as such. \r\n \r\n(4) A patent shall not be granted: \r\n \r\n4[(a)  for invention the   prevention   of commercial exploitation of which would be \r\nnecessary to protect the “ordre public ” or morality, including to protect \r\nhuman, animal or plant life or  health or to avoid serious prejudice to the \r\nenvironment, provided that such exclusion is not  made merely because the \r\nexploitation is prohibited by any law for the time being in force;] \r\n \r\n5[(b)  for plants and animals other than micro­organisms, and essentially biological \r\nprocesses for the production of plants or animals other than non­biological and \r\nmicrobiological processes;] \r\n \r\n(c)  for 6[diagnostic,] therapeutic and surgical methods for the treatment of humans \r\nor animals; \r\n \r\n7[(d)  for a new or subsequent use of a known product or process; and \r\n \r\n(e)  for a mere change in physical appearance of a chemical product where the \r\nchemical formula or process of manufacture remains the same provided that \r\nthis clause shall not apply to an  invention fulfilling the criteria of \r\npatentability.] \r\n \r\n \r\n \r\n \r\n \r\n_________________________________________________________________________________ \r\n1The word “and” omitted by the Patents (Amdt.) Ordinance 2002 (95 of 2002), s. 4. \r\n2Subs.and added ibid., for full stop.  \r\n3New clause (e) added ibid.,  \r\n4Subs. ibid; for clause (a). \r\n5Subs. Ibid. \r\n6Subs. ibid., for “diagnostic”. \r\n7New clauses (d) and (e) added ibid., \r\n \r\n  \r\nPage 12 of 52 \r\n \r\n \r\n \r\n8. Novelty.­(1) An invention shall be considered to be new if it does not form part of the \r\nstate of the art. \r\n \r\n(2) The state of the art shall comprise— \r\n \r\n(a)  everything disclosed to the public anywhere in the world, by publication in \r\ntangible form or by oral disclosure, by use or in any other way, prior to the \r\nfiling or, where appropriate, the priority date, of the application claiming the \r\ninvention; 1[or] \r\n \r\n(b)  contents of the complete specification and priority documents published under \r\nsection 21 of an application filed in Pakistan. \r\n \r\n2[(c)  traditionally developed or existing knowledge available or in possession of a \r\nlocal or indigenous community.] \r\n \r\n3[(3) Notwithstanding the provisions of sub­section (2), disclosure of a patentable invention \r\nin respect of goods shall not constitute, ‘state of the art ’ if an article is exhibited at any official or \r\nofficially recognized international exhibition within twelve  months preceding the date of filing of an \r\napplication for grant of patent. If later on, the  right of priority is invoked, then the period shall start \r\nfrom the date of introduction of the article into the exhibition. The Controller may require proof, with \r\nsuch documentary evidence as considered necessary, of the identity of the article exhibited and the \r\ndate of its introduction into the exhibition.] \r\n \r\n(4) In this section references to the inventor include references to any proprietor of the \r\ninvention for the time being. \r\n \r\n9. Inventive step. An invention shall be considered as involving an inventive step if it has not \r\nbeen obvious to a person, prior to the date of application for a patent, skilled in the art having regard \r\nto any matter which forms part of the state of art by virtue of 4* * * section 8. \r\n \r\n10. Industrial application. —5[(1) An invention shall be considered to be capable of \r\nindustrial application if it is capable of being manufactured or otherwise industrially used.]. \r\n \r\n6* * * * * *          * \r\n \r\n \r\n \r\n \r\n1Subs. by the Patent (Amdt.) Ordinance 2002 (95 of 2002), s.5 for “and”. \r\n2New clause (c) added ibid., \r\n3Subs. Ibid for sub­section (3). \r\n4The certain words omitted ibid., s. 6.  \r\n5Subs. ibid., s. 7 for sub­section (1).  \r\n6Sub­section (2) omitted ibid., \r\n \r\nPage 13 of 52  \r\nCHAPTER IV  \r\nAPPLICATIONS \r\n \r\n11. Persons entitled to make an application for patent.—(1) Any of the following persons, \r\nwhether alone or jointly with any other person, may make an application for a patent, namely:— \r\n(a) the true and the first inventors or inventors of the invention or his or, as \r\nthe case may be, their assignee or successor in interest; and \r\n(b) the legal representative of any deceased person who immediately before his \r\ndeath was entitled to make such application. \r\n12. Right to patent for invention made by employee. The right to the patent for an \r\ninvention made by an employee during the course of his employment in the area of activity of the \r\nemployer shall, in the absence of contractual obligation to the contrary belong to the inventor unless \r\nthe employer proves that  the invention could not have been made without the use of employer ’s \r\nfacilities, equipment and the like necessary for the invention: \r\n \r\nProvided that an invention of exceptional economic value shall enti tle the inventor to an \r\nequitable remuneration taking into account the nature of his duties, his salary and the benefits \r\nderived by the employer. \r\n13. Application for patent. —(1) Every application for the patent shall be made in the \r\nprescribed form and shall be filed at the Patent Office in the prescribed manner and shall contain a  \r\ndeclaration to the effect that the applicant is in possession of an invention of which he, or in the case \r\nof the joint application, at least one of the applicants, claims to be the true and the first inventor of or \r\nthe legal representative or assignee of such inventor or, as the case may be, inventors, provided that \r\nwhere the  inventor is not the applicant, he shall be entitled to be mentioned as such in the \r\napplication and if he is not so mentioned the Controller may, upon an application made in the \r\nprescribed manner and after  hearing any interested person, insert the name of such person as an \r\ninventor or co­inventor, as the case  may be, if he  is satisfied that he  be named as an inventor of the  \r\ninvention for which the applicant desires, to obtain a patent. \r\n(2) Where applications for protection have been made in one or more Convention countries \r\nin respect of two or more invention which are cognate or of which one is modification  of another, a \r\nsingle Convention application may, subject to the provisions of section 15, be made in respect of \r\nthose inventions at any time within twelve months from the date of the earliest of the said \r\napplications for protection. \r\n(3) Each application shall relate to one invention only 1* * *. \r\n(4) The applicant may, before the acceptance of the application, divide it into two or more \r\napplications, hereinafter referred to as divisional applications, provided that each divisional \r\napplication shall not go beyond the disclosure in the first application. \r\n \r\n \r\n1The certain words omitted by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 8. \r\n \r\nPage 14 of 52  \r\n(5) Each divisional application shall be entitled to the filing date and, where applicable, the \r\npriority date of the first application. \r\n(6) The fact that a patent has been granted on an application that did not comply with the \r\nrequirement of unity of invention shall not be a ground for the invalidation of the patent. \r\n(7) The applicant may at anytime withdraw the application by making a request to the \r\nController 1[:] \r\n \r\n1[Provided that where the application has been withdrawn before the advertisement of its \r\nacceptance in the official Gazette or publication in the patents journal, the application and the \r\nspecification, claims and drawings, if any, shall not be open to public inspection.] \r\n \r\n2[(8) An application for an invention relating to genetically modified organisms shall require \r\nclearance from the Federal Government and shall comply with such requirement as may be \r\nprescribed. \r\n \r\n(9) An application for availing exclusive marketing rights for a patentable invention relating \r\nto pharmaceutical or agricultural chemical product shall be filed in the mailbox provided for this \r\npurpose by the Controller who may require the form and manner for submitting such application as \r\nmay be prescribed] 1[.]  \r\n   \r\n1[* * *] \r\n \r\n14. Complete and provisional application.—(1) Every application for a patent, other than a \r\nConvention application, shall be accompanied by either a complete specification or a provisional \r\nspecification, and every Convention application shall be accompanied by a complete specification. \r\n \r\n(2) Where an application for a patent is accompanied by a provisional specification, a \r\ncomplete specification shall be filed within twelve months from the date of filing of the application, \r\nand if the complete specification is not so filed the application shall be deemed to be abandoned. \r\n \r\n(3) Where two or more applications in the name of the same applicant are accompanied by \r\nprovisional specification in respect of invention which are cognate or of which one is a modification \r\nof another, and the Controller is of the opinion that the whole of such inventions or such as to \r\nconstitute a  single invention and properly be included in one patent, he may allow one complete \r\nspecification to be filed in respect of all such provisional specifications. \r\n \r\n(4) Where an application for a patent, not being a Convention application, is accompanied by \r\na specification purporting to be a complete specification, the Controller may, if the applicant so \r\nrequests at any time before the acceptance of the specification, direct that it shall be treated for the \r\npurposes of this  Ordinance as a provisional specification, and  proceed with  the application \r\naccordingly. \r\n \r\n \r\n \r\n1Subs, Added and Omitted by Act XXIV of 2016, s.3. \r\n2New sub­sections (8) and (9) of s. 13 added by s. 8 of Ord.no XCV of 2002. \r\n \r\nPage 15 of 52  \r\n \r\n(5) Where a complete specification has been filed in pursuance of an application for a patent \r\naccompanied by a provisional specification or by a specification treated by virtue of a direction \r\nunder sub­section (4) as a provisional specification the Controller may, if the applicant so requests at \r\nany time before the acceptance of the complete specification, cancel the  provisional specification \r\nand post­date the application to the date of filing of the complete specification. \r\n \r\n15. Contents of specification. —1[(1) Every specification, whether complete or provisional, \r\nshall describe in the form and manner as may be prescribed.] \r\n \r\n(2) Subject to any rules made in this behalf, drawings may, and shall if the Controller so \r\nrequires, be supplied for the purposes of any specification, whether complete or provisional, and any \r\ndrawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the \r\nspecification, and reference in this Ordinance to a specification shall be construed accordingly. \r\n \r\n2[(2A) For a chemical product intended for use in medicine or agriculture, the specification \r\nshall be specific to one chemical product only describing the physical, chemical, pharmacological \r\nand pharmaceutical properties or, as the case may be, the properties related to its use in agriculture \r\nand its impact on environment. \r\n \r\n(2B) Where a biological material is used, the  specification shall disclose  the place of origin \r\nand source of such biological material and shall also exhibit compliance with the relevant applicable \r\nrules on access, export and use of that material and where such a material is obtained from Pakistan \r\nfor use outside Pakistan, the permission of the Federal Government shall be necessary as may be \r\nprescribed.] \r\n \r\n(3) Every complete specification shall— \r\n \r\n(a) fully and particularly describe the invention and the method by which it is to \r\nbe performed; \r\n \r\n(b) disclose the invention which is known to the  applicant and for which he  is \r\nentitled to claim protection; and \r\n \r\n3[(c)  end with a claim or claims concisely defining the scope of the invention for \r\nwhich protection is claimed.] \r\n \r\n(4) The claim or claims of a complete specification shall relate to a single invention, shall \r\nbe clear and succinct and shall be fairly based on the matter disclosed in the specification. \r\n \r\n \r\n \r\n \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 9, for sub­section (1). \r\n2New sub­sections (2A) and (2B) ins. Ibid s.9. \r\n3Subs. ibid., for clause (c) \r\n \r\nPage 16 of 52  \r\n(5) Subject to the foregoing provisions of this section, a complete specification filed after a \r\nprovisional specification, or filed with a Convention application, may include claims in respect of \r\ndevelopments of, or additions to, the invention which was described in the provisional specification \r\nor, as the case may be, the invention in respect of which the application for protection was made in a  \r\nConvention country, being developments or additions in respect of which the applicant would be \r\nentitled under the provisions of section 11 to make a separate application for a patent. \r\n \r\n(6) Every complete specification shall be accompanied by an abstract for the purposes of \r\ngiving technical information and the Controller shall determine whether the abstract fulfills its \r\npurpose and, if it does not, shall instruct the applicant to make modifications to the satisfaction of the \r\nController. \r\n \r\n(7) The abstract shall merely serve the purpose of technical information, in particular, it shall \r\nnot be taken into account for the purpose of interpreting the scope of protection. \r\n \r\n1[(8) Claim or claims in respect of a complete specification of a chemical product intended \r\nfor use in  agriculture or medicine shall be structurally defined and shall relate to a single chemical \r\nproduct only,  excluding its derivates and salts, each of which, with a material or a noval \r\nimprovement in its claim from  the main produc t, shall be filed as a separate invention or where \r\napplicable, as a divisional application,  Where structural description is not  possible, as in the  case of \r\nbiological products, the “product by process” claim shall be made and protection shall be limited to \r\nthe product obtained with the claimed process only: \r\n \r\nProvided that a claim which is based on a mere admixture resulting only in aggregation of the  \r\nproperties of the component substances thereof, or a  processing of producing such substance, shall \r\nnot be allowed]. \r\n \r\nCHAPTER V  \r\nEXAMINATION OF APPLICATIONS \r\n \r\n16. Examination of application .—(1) The Controller shall refer to an examiner every \r\napplication in respect of which a complete specification has been filed, for making a report to \r\nthe Controller after  detail scrutiny of the application, specification, claims and drawing, if any, to \r\nthe effect whether the  invention is new and involves an inventive step, and to also determine \r\nwhether other requirements of  this Ordinance and rules have been complied with. \r\n \r\n(2) The examiner shall make the report to the Controller as soon as is reasonably possible. \r\n2[* *       *] \r\n \r\n(3) If the examiner reports that any of the requirements of this Ordinance and rules are not \r\ncomplied with, the Controller shall give the applica nt an opportunity, or more than one opportunity, \r\nto comply  with such requirements as may be mentioned in the said report and to amend the \r\napplication, if necessary, within such time  as may be  prescribed, failing which the  Controller may \r\nrefuse to proceed with the application. \r\n \r\n \r\n1New sub­section (8) added by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s.9.  \r\n2Omitted and shall be deemed always to have been so omitted by Act IX of 2010, s.2. \r\n \r\nPage 17 of 52  \r\n(4) If the Controller considers, at any time, before the acceptance of the application, that the \r\ninvention claimed therein has been wholly or in part claimed in a specification published on or after \r\nthe date which the patent applied for would bear, if granted appertaining to an application for grant  \r\nof a patent which, if granted, will be prior date to the patent applied for, he may require that the \r\napplicant’s specification be amended by the insertion of a reference to such other specification by \r\nway of notice to the public. \r\n(5) The investigation required under this section shall not be held in any way to guarantee the  \r\nvalidity of any patent, and no liability shall be incurred by the Federal Government or any officer by  \r\nreason of, or in connection with, any such investigation or any proceeding consequent thereon.  \r\n1* * * * * * *  \r\n \r\n(6) Notwithstanding anything in the preceding sub-sections, all applications claiming \r\nprotection for chemical products intended for use in medicine or agriculture filed after the first day of \r\nJanuary, 1995, in  accordance with Article 70 (8) and 70 (9) of the World Trade Organization \r\nAgreement on Trade Related  Aspects of Intellectual Property Rights (TRIPs), shall be dealt with in \r\naccordance with sub­section (3) of section 1. \r\n17. Reference to other patent.—(1) If, in consequence of the investigation under section 16, \r\nit appears to the Controller that an invention in respect of which application for a patent has been \r\nmade cannot be performed without substantial risk of infringement of a claim of any other patent, he \r\nmay direct that a reference to that other patent shall be inserted in the applicant ’s compl ete \r\nspecification by way of notice to the public unless, within such time as may be prescribed, either— \r\n(a)  the applicant shows to the satisfaction of the Controller that there are \r\nreasonable grounds for contesting the validity of the said claim of the  other \r\npatent; or \r\n(b)  the complete specification is amended to the satisfaction of the Controller. \r\n \r\n(2) Where, after a reference to another patent has been inserted in a complete specification in \r\npursuance of a direction under sub­section (1)— \r\n(a) that other patent is revoked or otherwise ceases to be in force; \r\n \r\n(b)  the specification of that other patent is amended by the deletion of the \r\nrelevant claim; or \r\n(c)  it is found, in proceedings before the court or the Controller, that the relevant \r\nclaim of that other patent is invalid or is not infringed by any working of the \r\napplicant’s invention, \r\n \r\n \r\n1Omitted by Act IX of 2010, s.2. \r\n \r\nPage 18 of 52  \r\n \r\nthe Controller may, on the application of the applicant, delete the reference to that other patent. \r\n \r\n18. Substitution of applicants, etc .—(1) If the Controller is satisfied, on an application \r\nmade in the  prescribed manner at any time before a patent has been granted, that by virtue of any \r\nassignment or agreement in writing made by the applicant or one of the applicants for the patent, or \r\nby operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the \r\ninterest of the  applicant therein, or to an undivided share of the patent or of that interest, the \r\nController may, subject to the provisions of this section, direct that the application shall proceed in \r\nthe name of the claimant or in the names of the claimants and the applicant or the other joint \r\napplicant or applicants, as the case may require. \r\n(2) No such direction under sub­section (1) shall be given by virtue of any assignment or \r\nagreement made by one of two or more joint applicants for a patent except with the consent of the \r\nother joint applicant or applicants. \r\n(3) No such direction under sub­section (1)  shall be given by virtue of any assignment or \r\nagreement for the assignment of the benefit of an invention unless— \r\n(a) the invention is identified therein by reference  to the  number of the  \r\napplication for the patent; \r\n(b) there is produced to the Controller an acknowledgement by the person by \r\nwhom the assignment or agreement was made that the assignment or \r\nagreement relates to the invention in respect of which that application is \r\nmade; \r\n(c) the rights of the claimant in respect of the invention have been finally \r\nestablished by a decision of a court; or \r\n(d)  the Controller gives directions for enabling the application to proceed or for \r\nregulating the manner in which it should be proceeded with under sub­section \r\n(5). \r\n \r\n (4) Where one of two or more joint applicants for patent dies at any time before the patent \r\nhas been  granted, the  Controller may, upon a  request in that  behalf made  by the  survivor or \r\nsurvivors, and with  the consent of the legal representative of the deceased, direct that the application \r\nshall proceed in the name of the survivor or survivors alone. \r\n \r\n(5) If any dispute arises between joint applicants for a patent whether or in what manner the \r\napplication should be proceeded with, the Controller may, upon application made to him in the \r\nprescribed manner by any of the parties, and after giving to all parties concerned an opportunity of \r\nbeing heard, give such directions as he thinks fit for enabli ng the application to proceed in the name \r\nof one or more of the parties alone or for regulating the manner in which it should be proceeded with, \r\nor for both those purposes, as the case may require. \r\n \r\n  \r\n \r\nPage 19 of 52  \r\n1[19. *     * *] \r\n \r\n20. Power of Controller  to require certain information and documents relating  to \r\nforeign application.—(1) The applicant shall, when required by the Controller, furnish him with the \r\ndate and number of any application for a patent filed by him abroad, hereinafter referred to as foreign \r\napplication, relating to the same or essentially the same invention as that claimed in the application \r\nfiled in Pakistan. \r\n \r\n(2) The applicant shall, when required by the Controller, furnish him with the following \r\ndocuments relating to one of the foreign applications referred to in sub­section (1), namely:— \r\n \r\n(i)  a copy of any communication received by the  applicant concerning the  \r\nresults of any search  or examination  carried out  in respect  of the  foreign \r\napplication; \r\n \r\n(ii)  a copy of the patent granted on the basis of the foreign application; and \r\n \r\n(iii)  a copy of any final decision rejecting the foreign application. \r\n(3) The applicant shall, when required by the Controller, furnish him with a copy of any final  \r\ndecision invalidating the patent granted on the basis of foreign application referred to in sub­section \r\n(1). \r\n21. Acceptance of complete specification. On the  acceptance of a complete specification, \r\nthe Controller shall give notice thereof to the applicant and shall advertise in the official Gazette \r\n2[and publish in the patent’s journal] the fact that specification has been accepted and thereupon the \r\napplication and the specification, and the priority documents, if any, filed in pursuance thereof shall \r\nbe open to public inspection. \r\n \r\n3[22. Effect of acceptance of complete Specification . After the acceptance of an application \r\nand until the date of sealing a patent in respect thereof, or the expir ation of the time for sealing, the \r\napplicant shall have the like privileges and rights as if a patent for the invention had been sealed on \r\nthe date of the acceptance of the application: \r\n \r\nProvided that the applicant shall not be entitled to institute any proceedings for infringement \r\nuntil  the patent has been sealed.] \r\n \r\nCHAPTER VI  \r\nOPPOSITION TO GRANT OF PATENT \r\n \r\n23. Opposition to the grant of patent.—(1) At any time within four months from the date of \r\nadvertisement of the acceptance of a complete specification under this Ordinance, any person may \r\ngive notice to the Controller of opposition to the grant of patent on any of the following grounds, \r\nnamely:— \r\n \r\n \r\n1Omitted by Act IX of 2010,s.3. \r\n2Ins by Act XXIV of 2016, s.4. \r\n3Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 10. for the original section (22). \r\n \r\nPage 20 of 52  \r\n \r\n (a) that the applicant for the patent obtained the invention or any part thereof from \r\nhim or from  the person of whom the opponent is the legal representative, \r\nassignee, agent or attorney; \r\n(b) that the invention is not  a patentable invention within the meaning of this \r\nOrdinance; \r\n(c) that the specification does not disclose the invention in a manner clear and \r\ncomplete enough for it to be carried out by a person skilled in the art; \r\n(d) that the claims are not clear or extend beyond the scope of the disclosures in \r\nthe complete specification as originally filed; and \r\n(e) that the complete specification describes or claims an invention other th an that \r\ndescribed in the provisional specification and that such other invention either \r\nforms the subject of an application made by the opponent for a patent which if \r\ngranted would bear a date in the  interval between the date of the application \r\nand the leaving of the complete specification, or  has been made available to \r\nthe public by publication in any document in that interval. \r\n \r\n(2) Where a notice is given under sub­section (2), the Controller shall give notice of the \r\nopposition to the applicant, and shall, before deciding the case, give to the applicant and the \r\nopponent an opportunity of being heard. \r\n24. Third party observations on patentability.—(1) At any time after the publication of the \r\nspecification under section 21, any person may make observations in writing to the Controller on the  \r\nnovelty of the invention giving evidence in support of his observations and the Controller shall \r\nconsider the observations in the light of the evidence made available to him before the grant of \r\npatent. \r\n \r\n(2) The person who makes observations under sub­section (1) shall not  become a party to the \r\nproceedings under this Ordinance before the Controller by reason only that he has made the \r\nobservations, failing which the observations shall be rejected as if not filed at all. \r\n \r\n \r\n \r\nCHAPTER VII \r\nPROVISIONS FOR SECRECY OF CERTAIN INVENTIONS \r\n25. Information prejudicial to defence of Pakistan or safety of public.—(1) Where an \r\napplication for a patent in respect of an invention is filed in the patent Office and it appears to the \r\nController that the invention is one of the class notified to him by the Federal Government as being \r\none the publication of which might be prejudicial to the defence of Pakistan, or if he himself thinks \r\nso, then he may give directions prohibiting or restricting the publication of the invention or its \r\ncommunication to any specified person or class of persons. \r\n(2) If it appears to the Controller that the specification of any application so filed contains \r\ninformation the publication of which might be prejudicial to the safety of the public, he may give \r\n \r\nPage 21 of 52  \r\ndirections prohibiting or restricting the publication of that information or its communication to any \r\nperson until the end of a period not exceeding three months from the date of the acceptance. \r\n(3) While directions are in force under this section, the application may proceed to the stage \r\nwhere it is in order for acceptance, but specification shall not be published. \r\n(4) Where the Controller gives directions under this section with respect to any application, \r\nhe shall give notice of the application and of the directions to the Federal Government and the \r\nfollowing provisions shall then have effect, namely:— \r\n(a)  the Federal Government shall, on receipt of the notice, consider whether the \r\npublication of the invention or the publication or communication of the \r\ninformation in question would be prejudicial to the defence of Pakistan or the \r\nsafety of the public; \r\n(b) if the Federal Government determine under clause (a) that the publication of \r\nthe specification or the publication or communication of that information \r\nwould be prejudicial to the safety of the public, it shall given notice to the \r\nController who shall continue his directions under sub­section (2) until they \r\nare revoked under clause (e); \r\n(c)  if the Federal Government determine under clause (a) that the publication of \r\nthe specification or the publication or communication of that information \r\nwould be prejudicial to the defence of Pakistan or the safety of the public, it \r\nshall, unless a notice under clause (d) has previously been given to the  \r\nController, reconsider that question during the period of nine months from the \r\ndate of filing the application and at least once in every subsequent  period of \r\ntwelve months; \r\n(d)  if on consideration of an application at any time it appears to the Federal \r\nGovernment that the publication of the specification or the publication or \r\ncommunication of the information  contained in it  would not, or would no \r\nlonger, be prejudicial to the defence of Pakistan or the safety of the public, it \r\nshall give notice to the Controller to that effect; and \r\n(e) on receipt of a notice under clause (d), the Controller shall revoke the \r\ndirections and may, subject to such conditions, if any, as he  thinks fit, extend \r\nthe time for doing any thing required or authorized to be done by or under this \r\nOrdinance in connection with the application, whether  or n ot that time has \r\npreviously expired.  \r\n(5) Where a complete specification filed in pursuance of an application for a patent for an \r\ninvention in respect of which directions have been given under this section is accepted before the \r\ndirections are revoked, then__ \r\n(a) if any use of the invention is made by or on behalf or to the order of the \r\nFederal Government, the provisions of section 58 shall apply in relation to that \r\nuse as if the patent has been granted for the invention; and \r\n(b) if it appears to the Federal Government that the applicant for the patent has \r\nsuffered hardship by reason of the  continuance in force of the directions, the \r\n \r\nPage 22 of 52  \r\nFederal Government may make such payment, if any, by way of compensation \r\nto the applicant as appears to the Federal Government to be reasonable having \r\nregard to the inventive merit and utility of the invention, the purpose for which \r\nit is designed and any other relevant circumstances. \r\n(6) Where a patent is granted in pursuance  of an application in respect of which directions \r\nhave been given under this section, no renewal fees shall be payable in respect of any period during \r\nwhich those directions were in force. \r\n26. Residents not to apply outside  Pakistan without permission .—(1) No person resident \r\nin Pakistan shall, without written authority granted by the Controller, file or cause to be filed outside  \r\nPakistan an application for the grant of a patent for an invention unless— \r\n(a) an application for patent for the same invention has been filed in the Patent \r\nOffice not less than six weeks before the application outside Pakistan; and \r\n(b) either no directions have  been given under section 25 in relation to the \r\napplication in Pakistan or all such directions have been revoked. \r\n \r\n \r\n \r\n(2) The provisions of sub­section (1) shall not apply in Pakistan to an invention in respect of \r\nwhich an application for a patent has first been filed in a country outside Pakistan by a person \r\nresident outside Pakistan. \r\n \r\n______________ \r\n \r\nCHAPTER VIII \r\n \r\nGRANT AND SEALING OF PATENT \r\n \r\n27. Grant and sealing of Patent .—(1) Subject to the provisions of this Ordinance with \r\nrespect to opposition and to any power of the Controller to refuse the grant, a patent sealed with the \r\nseal of the  Patent Office shall, if the request is made within the time allowed under this section, be \r\ngranted to the applicant or applicants within that time or as soon as may be thereafter, and the date on \r\nwhich the patent is sealed shall be entered in the Register. \r\n \r\n(2) Subject to the provisions of this Ordinance with respect to patents of addition, a request \r\nunder this section for the sealing of a patent shall be made not later than the expiration of six months \r\nfrom the date of the publication of the complete specification: \r\n \r\nProvided that— \r\n \r\n(a) where at the expiration of the said six months any proceedings in relation to \r\nthe application  for the patent is pending in any court  or before the Controller, \r\nthe request may be made within three months after the final determination of \r\nthat proceedings; and \r\n \r\n(b) where the applicant or one of the applicants has died before the expiration of \r\nthe time within  which under the provisions of this sub­section the request \r\n \r\nPage 23 of 52  \r\ncould otherwise be made, the said  request may be made at a ny time within \r\ntwelve months after the date of the death or at such  later time as the Controller \r\nmay allow. \r\n \r\nExplanation.—Any proceedings shall be deemed to be pending so long as the time for any \r\nappeal therein has not expired, and any proceedings shall be deemed to be finally determined when \r\nthe time for any appeal therein has expired without the appeal being brought. \r\n(3) The period for making the request under sub­section (2) for the sealing of a patent may be  \r\nextended by the  Controller by six months if the  application is made  and the  prescribed fee  paid \r\nwithin the extended period. \r\n28. Amendment of patent granted to a deceased person . Where, at any time after a patent \r\nhas been sealed in pursuance  of an application under this Ordinance, the Controller is satisfied that  \r\nthe person to whom the  patent was granted had died, or, in the  case of a  body corporate, had \r\nceased to exist, before the patent was sealed, he may amend the patent by substituting for the name \r\nof that person the name of the person to whom the patent ought to have been granted, and the patent \r\nshall have effect, and shall be deemed always to have had effect, accordingly. \r\n \r\n29. Date of patent.—(1) Subject to the other provisions of this Ordinance, every patent shall \r\nbe dated as of the filing date of the application and in case of a Convention application the date of \r\nsuch earliest application filed in the Convention country from which priority has been claimed. \r\n(2) The date of every patent shall be entered in the Register. \r\n30. Rights conferred by patent. —1[(1) Subject to other provisions of this Ordinance, the \r\nholder of a valid patent in Pakistan shall have the following rights, namely:­ \r\n(a)  Where the subject matter of patent is a product, the holder of valid patent may \r\nprevent third parties not having the owner’s consent from the acts of making, \r\nusing, offering for sale,  selling, or importing  for these purposes that product; \r\nand \r\n(b)  where the subject matter of a patent is a process, the holder of a valid \r\npatent may prevent third parties not having the owner’s consent from the act \r\nof using the process, and from the act of using, offering for sale, selling, or \r\nimporting for these purposes at least the product  obtained directly by  that \r\nprocess.] \r\n \r\n2[(2) The holder of a valid patent shall also have the right to assign, or transfer by succession, \r\nthe patent and to conclude licensing contracts.] \r\n(3) The owner of the patent shall, in addition to any other rights, remedies or actions available \r\nto him  have the right, subject  to sub­section (4) and section 59, to institute  court proceedings \r\nagainst any person who infringes the patent by performing, without his agreement, any of the acts \r\nreferred to in sub­section (2) or who performs acts which make it likely that infringement will occur. \r\n \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 11, for sub­section (1). \r\n2Subs.Ibid s. 11, for sub­section (2). \r\n \r\n \r\nPage 24 of 52  \r\n \r\n1[(4) Where a person has filed an application in the mailbox, in accordance with sub­section \r\n(9) of section 13, for protection of an invention relating to a pharmaceutical or agriculture chemical \r\nproduct, exclusive marketing rights shall be granted for a period of five years after obtaining \r\nmarketing approve d or until a product patent is granted or rejected whichever period is shorter, \r\nprovided that, subsequent to  the first January, 1995, a patent application has been filed and a patent \r\ngranted for that product in any  Convention country and marketing approval obtained in such \r\ncountry;] \r\n \r\n2[(4A) Where a person has made an invention in Pakistan in respect of a process of \r\nmanufacture of any of the products referred to in sub­section (4) and has obtained a patent for the \r\nsame and has filed an application in the mailbox for protection of the invention, and has been granted \r\nmarketing approval thereof, then he shall have the exclusive marketing rights for that product for a \r\nperiod of five years after obtaining marketing approval or until a product patent is granted or rejected \r\nwhichever period is shorter.] \r\n \r\n(5) The rights under the patent shall not extend to— \r\n \r\n3[(a)  acts in respect of articles which have been put on the market anywhere in the \r\nworld by the  owner of the patent or with his consent or by an authorized \r\nperson or in any other legitimate manner such as compulsory licenses;] \r\n(b) the use of articles on an aircraft, land vehicles or vessels of other countries \r\nwhich temporarily or accidentally enter the airspace, territory or waters of \r\nPakistan; \r\n(c) acts done only for experimental purposes relating to a patented invention;4* \r\n(d)  acts performed by any person who in good faith, before the filling or, where \r\npriority is claimed, the priority date of the application on which the patent is \r\ngranted in Pakistan , was using the invention or was making effective and \r\nserious preparations for such use 5[;or] \r\n3[(f) acts done for teaching purposes in educational or research institutions.] \r\n(6) The right of prior user referred to in clause (d) of subsection (5), may be transferred or \r\ndevolve only together with the enterprise or business, or with that part of the enterprise or business, \r\nin which the use of preparations for use have been made. \r\n31. Term of patent. The term of a patent under this Ordinance shall be twenty years from the \r\nfiling date. \r\n \r\n \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 11, for sub­section (4). \r\n2New sub­section (4A) ins. ibid., \r\n3Subs.Ibid for clause (a).” \r\n4The word “or” omitted ibid., \r\n5Subs. ibid., for full stop. \r\n6New clause (f) inserted, ibid.\r\n \r\nPage 25 of 52  \r\n32. Grant of patents to be subjected to certain conditions .—(1) Notwithstanding anything \r\nin section 31, a patent shall cease to have effect on the expiration of a period for the payment of any \r\nrenewal fee if that  fee is not  paid within the  prescribed period or within the  period as extended \r\nunder this section. \r\n \r\n(2) The period prescribed for the payment of any renewal fee shall be extended to such period \r\nnot being more than six months if the request is made to the Controller and the renewal fee and the \r\nprescribed additional fee is paid before the expiration of the extended period. \r\n \r\n___________ \r\n \r\nCHAPTER IX \r\nMISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS \r\n \r\n33. Priority date in case of invention obtained from other person .—(1) Where an \r\napplication is made for a patent for an invention which has been claimed in a complete specification \r\nfiled in pursuance of any other such application, then if— \r\n \r\n(a) the Controller has refused to grant a patent in pursuance of that other \r\napplication on the  ground specified in  clause (a) of sub­section (1) of  section \r\n23; \r\n \r\n (b) a patent granted in pursuance of that other application has been revoked by the \r\nHigh Court  under section 46 or by the Controller under section 47 on the \r\nground specified in clause (a) of sub­section (1) of section 23; or \r\n(c) the complete specification filed in pursuance of the said other application has \r\nbeen amended by the exclusion of the  claim relating to the  said invention in \r\nconsequence of a finding by the Controller that the invention was obtained \r\nby the applicant or patentee from any other person, \r\n \r\nthe Controller may direct that the first­mentioned application and any specification filed in \r\npursuance thereof shall be deemed, for the purposes of the provisions of this Ordinance relating to \r\nthe priority date of claims of complete specification, to have been filed on the date on which the \r\ncorresponding document was or was deemed to have been filed in the proceedings upon the said \r\nother application. \r\n34. Grant of patent to two or more persons. —(1) Where a patent is granted to two or more  \r\npersons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an \r\nequal undivided share in the patent. \r\n(2) Subject to the provisions of this section and section 35, where two or more persons are \r\nregistered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, \r\neach of those persons shall be entitled, by himself or his agents, to exploit, use, exercise and sell the \r\npatented invention for his own benefit without accounting to the other person or persons. \r\n(3) Subject to the provisions of this section and sec tion 35 and to any agreement  for the time \r\nbeing in force, where two or more persons are registered as grantee or proprietor of a patent, then, a \r\nlicence under a patent shall not be granted, and a share in a patent shall not be assigned, by one of \r\n \r\nPage 26 of 52  \r\nsuch persons, except with the consent of the other person or persons. \r\n(4) Where a patented article is sold by one of two or more persons registered as grantee or \r\nproprietor of the patent relating to that article, the purchaser and any person claiming through him \r\nshall be entitled to deal with it in the same manner as if the article had been sold by a sole patentee. \r\n(5) Subject to the provisions of this section, the provisions of law applicable to the ownership \r\nand devolution of movable property generally shall apply in relation to patents, and nothing \r\ncontained in sub­section (1) or sub­section (2) shall affect the mutual rights or obligations of trustee s \r\nor of the legal representatives of a deceased person or their rights or obligations as such. \r\n35. Power of Controller to give directions to co­owners. —(1) Where two or more persons \r\nare registered as grantee or proprietor of a patent, the Controller may, upon application made to him \r\nin the  prescribed manner by any of those persons, give such directions in accordance with the \r\napplication as to  the sale or lease of the patent or any interest therein, the grant of licences \r\nunder the patent, or the exercise of any right under section 39 in relation thereto, as he thinks fit. \r\n \r\n(2) If any person registered as grantee  or proprietor of the  patent fails to execute  any \r\ninstrument or  to do any other thing required for the carrying out of any direction given under this \r\nsection within fourteen days after being requested in writing so to do by any of the other persons so \r\nregistered, the Controller may, upon application made to him in the prescribed manner by any such \r\nother person, give directions empowering any person to execute that instrument or to do that thing in \r\nthe name and on behalf of the person in default. \r\n(3) Before giving directions in pursuance of an application under this section, the Controller \r\nshall give an opportunity of being heard— \r\n(a) in the case of an application under sub­section (1), to the other person or \r\npersons registered as grantee or proprietor of the patent; and \r\n(b) in the case of an application under sub­section (2), to the person in default. \r\n \r\n(4) No direction shall be give n under this section so as to affect the mutual rights or \r\nobligations of  trustee or of the legal representatives of a deceased person, or their rights or \r\nobligations as such. \r\n36. Power of Controller or Court to deter mine the matter in dispute between employer \r\nand employee. —(1) Where a dispute arises between an employer and a person who is or was at the \r\nmaterial time his employee as to the rights of the parties in respect of an invention made by the \r\nemployee either alone or jointly with other employees or in respect of any patent granted or to be \r\ngranted in respect  thereof, the Controller may, upon application made to him in the prescribed \r\nmanner by either of the  parties and after giving to each of them an opp ortunity of being heard, \r\ndetermine the matter in dispute,  and may make such orders for giving effect to his decision as he \r\nconsiders expedient: \r\n \r\nProvided that, if it appears to the Controller upon an application under this section that the \r\nmatter in dispute involves questions which should be determined by the Court, he may decline to \r\ndeal therewith. \r\n(2) In proceedings before the Court between an employer and a person who is or was at the \r\n \r\nPage 27 of 52  \r\nmaterial time his employee, or upon an application made to the Controller under sub­section (1), the \r\nCourt or, as  the case may be, the Controller may, if satisfied that b oth the parties are entitled to the \r\nbenefit of an invention made by the employee, by order provide for the apportionment between them \r\nof the benefit of  the invention, and of any patent granted or to be granted in respect thereof, in such \r\nmanner as the Court or, as the case may be, the Controller considers just. \r\n(3) A decision of the Controller under this section shall have the same effect as between the \r\nparties and persons claiming under them as a decision of the Court. \r\n37. Avoidance of restrictive condition in contracts .—(1) Subject to the provisions of this \r\nsection, any condition of a contract for the sale or lease of a patented article or of an article made by \r\na patented process or for license  to exploit a patented article or process, or relating to any such sale, \r\nlease or license, shall be void so far as it purports— \r\n(a)  to require the purchaser, lessee or licensee to acquire from the vendor, lessor \r\nor licensor, or his nominees, or prohibit him from acquiring from any specified \r\nperson, or from acquiring  except from the  vendor, lessor or licensor, or his \r\nnominees, any article other than the patented article or an article made by the \r\npatented process; or \r\n(b)  to prohibit the purchaser, lessee or licensee from using articl es, whether \r\npatented or not, which are not supplied by, or any patented process which does \r\nnot belong to, the vendor,  lessor or licensor, or his nominees, or to restrict the \r\nright of the purchaser, lessee or licensee to use any such article or process. \r\n(2) In proceedings against any person for infringement of a patent, it shall be a defence to \r\nprove that at the time of the infringement there was in force a contract relating to the patent made by \r\nor with the consent of the plaintiff and containing a condition void by virtue of this section. \r\n(3) A condition of a contract shall not be void by virtue of this section if— \r\n(a) at the time of the making of the contract the vendor, lessor or licensor was \r\nwilling to sell or lease the article, or grant a license to use or exploit the article \r\nor process, as the case may be,  to the purchaser, lessee or licensee, on \r\nreasonable terms specified in the contract and without any such condition as is \r\nmentioned in subsection (1); and \r\n(b) the purchaser, lessee  or lic ensee is entitled under the  contract to relieve  \r\nhimself of his liability to observe the condition upon giving to the  other party \r\nthree months notice in writing and subject  to payment to him  of a  just \r\ncompensation. \r\n38. Determination of certain contracts. Any contract  for the  sale or lease  of a  patented \r\narticle or for license to manufacture, exploit a patented article or process, or relating to any such \r\nsale, lease or license, whether made before or after the commencement of this Ordinance, may at any \r\ntime after the patent or all the patents by which the article or process was protected at the time of the \r\nmaking of the  contract has or have ceased to be in force, and notwithstanding anything to the \r\ncontrary in the contract or in any other contract, be determined by either party on giving three \r\nmonths notice in writing to the other party. \r\n \r\n \r\n \r\nPage 28 of 52  \r\n \r\nCHAPTER X  \r\nPATENTS OF ADDITION \r\n39. Patents of addition.—(1) Where an application is made for a patent in respect of any \r\nimprovement in or modification of an invention, hereinafter referred to as the “main invention” and \r\nthe applicant also applies or has applied for a patent for that invention or is the patentee in respect \r\nthereof, the Controller may, if the applicant so requests, grant the patent for the improvement or \r\nmodification as  a patent of addition. \r\n(2) Where an invention, being an improvement in or modification of another invention, is the  \r\nsubject of an independent patent and the patentee in respect of that patent is also the patentee in \r\nrespect  of the patent for the main invention, the Controller may, if the patentee so requests, by order \r\nrevoke the  patent for the improvement of the modification and grant to the patentee a patent of \r\naddition in respect thereof, bearing the same date as the date of the patent so revoked. \r\n(3) A patent shall not be granted as a patent of addition unless the date of filing of the \r\ncomplete specification was the same as or later than the date of filing of the complete \r\nspecification in respect of the main invention. \r\n(4) A patent of addition shall not be sealed before the sealing of the patent for the main \r\ninvention, and if the period within which, but  for this provision, a  request for the sealing of a patent \r\nof addition could be made expires before the period within which a request for the sealing of the \r\npatent for the main  invention may be so made, the request for the sealing of the patent of addition \r\nmay be made at any time within the last­mentioned period. \r\n40. Term of patents of addition.—(1) A patent of addition shall be granted for a term \r\nequal to that of the patent for the main invention, or so much thereof as is unexpired, and shall \r\nremain in force during that term or until the previous cesser of the patent for the main invention and \r\nno longer: \r\n \r\nProvided that: \r\n(a)  if the term of the patent for the main invention is extended under the foregoing \r\nprovisions of this Ordinance, the term of the patent of addition may also be \r\nextended accordingly; and \r\n \r\n(b)  if the patent for the main invention is revoked under this Ordinance, the court \r\nor, as the case  may be, Controller may order that the patent of addition shall \r\nbecome an independent patent  for the remainder of the term of the patent f or \r\nthe main invention, and thereupon the patent  shall continue in force as an \r\nindependent patent accordingly. \r\n \r\n(2) No renewal fees shall be payable in respect of a patent of addition, but, if any such patent \r\nbecomes an independent patent by virtue of an order under sub­section (1), the same fees shall \r\nthereafter be payable, upon the same dates, as if the patent had been originally granted as an \r\nindependent patent. \r\n \r\n41. Patent of addition not to be refused, etc . The grant of a patent of addition shall not be \r\nrefused, and a patent granted as a patent of addition shall not be revoked or invalidated on the \r\n \r\nPage 29 of 52  \r\nground only that  the invention claimed in the complete specification does not involve any inventive \r\nstep having regard to any publication or use of__ \r\n \r\n(a)  the main invention described in the complete specification relating thereto; or \r\n \r\n(b)  any improvement in or modification of the main invention described in the \r\ncomplete specification of a patent of addition to the patent for the main \r\ninvention or of an application  for such a patent of addition, and the validity of \r\na patent of addition shall not be questioned  on the ground that the invention \r\nought to have been the subject of an independent patent. \r\n_________ \r\n \r\nCHAPTER XI  \r\nAMENDMENT OF SPECIFICATION \r\n \r\n42. Amendment of specification with leave of Controller.—(1) Subject to the provisions \r\nof section 44, the Controller may, upon an application made under this section by an applicant for a \r\npatent or a patentee, allow the application for the patent or the complete specification to be amended \r\nsubject to such conditions, if any, as the Controller thinks fit: \r\n \r\nProvided that the Controller shall not allow a specification to be amended under this section \r\nupon an application made while any action before the Court for infringement of the patent or any \r\nproceeding before the court for the revocation of the patent is pending. \r\n \r\n \r\n(2) Every application for leave to amend and application for a patent or a specification under \r\nthis section shall state the nature of the proposed amendment and give full particulars of the reasons \r\nfor which the application is made. \r\n(3) Every application for leave to amend an application for a patent or a specification under \r\nthis section made after the acceptance of the complete specification and the nature of the proposed \r\namendment shall be advertised in the prescribed manner. \r\n(4) Within the prescribed period after the  advertisement of an application under sub­section \r\n(3), any person may give notice to the Controller of opposition thereto, and where such a notice is \r\ngiven within the  period aforesaid, the  Controller shall give  notice to the person by whom the  \r\napplication is made and shall give to that person and to the opponent an opportunity of being heard \r\nbefore he decides the case. \r\n(5) This section shall not apply in relation to any amendment of a specification effected in \r\nproceedings in opposition to the grant of a patent or effected in pursuance of any provision of this  \r\nOrdinance authorizing the  Controller to direct a reference to another specification or patent to be \r\ninserted, or to refuse to grant a patent, or to revoke a patent, un less the specification is amended to \r\nhis satisfaction. \r\n \r\n43. Amendment of specification with leave  of High Court.—(1) In any proceeding before  \r\nthe High Court for the revocation of a patent, the High Court may, subject to the provisions of \r\nsection 44, by order allow the  patentee to amend his complete  specification in such manner, and \r\nsubject to such terms as to costs, advertisements or otherwise, as the High Court may think fit, and if \r\n \r\nPage 30 of 52  \r\nin any such  proceedings for revocation the High Court decides that the patent is invalid, the High \r\nCourt may allow the specification to be amended under this section instead of revoking the patent. \r\n \r\n(2) Where an application for an order under this section is made  to the  High Court  the \r\napplicant shall give notice of the application to the Controller, and the Controller shall be entitled to \r\nappear and be heard, and shall appear if so directed by the High Court. \r\n44. Supplementary provisions as to amendment of specification.—(1) No amendment of \r\nspecification shall be allowed, except for the purpose of correcting an obvious mistake, the effect of  \r\nwhich would be that the specification as amended would claim or describe matter not in substance  \r\ndisclosed in the specification before the amendment. \r\n(2) Where, after the date of the publication of a complete specification, any amendment of the \r\nspecification is allowed or approved by the Controller or the High Court under this Ordinance, the \r\nright of the patentee or applicant to make the amendment shall not be called in question except on the \r\nground of fraud, and the amendment shall for all purposes be deemed to form part of the \r\nspecification: \r\n \r\nProvided that in construing the specification as amended reference may be made to the \r\nspecification as originally published. \r\n(3) Where, after the date of the publication of a complete specification, any amendment of the \r\nspecification is allowed or approved under this section, the fact that the specification has been \r\namended shall be advertised in the official Gazette 1[and published in the Patents’ journal]. \r\n_____________ \r\n \r\nCHAPTER XII  \r\nRESTORATION OF LAPSED PATENTS \r\n45. Restoration of lapsed patents .—(1) Where a patent has ceased to have effect by reason \r\nof a failure to pay any renewal fee within the prescribed period, an application for the restoration of \r\nthe patent may be made to the Controller under this section within eighteen months from the date on \r\nwhich the patent ceased to have effect. \r\n(2) An application under this section may be made by the person she was the proprietor of the \r\npatent or by any other person who would have  been entitled to the  patent if it had not ceased to \r\nhave effect, and where the patent was held by two or more persons jointly, the application may, with \r\nthe leave of the Controller, be made by one or more of them without joining the others. \r\n \r\n(3) If the Controller is satisfied that__ \r\n(a)  the proprietor of the patent took reasonable care to see that any renewal fee \r\nwas paid within  the prescribed period or that the fee and any prescribed \r\nadditional fee were paid within six  months immediately following the end of \r\nthat period; and \r\n_________________________________________________________________________________ \r\n1Ins. by Act of XXIV of 2016,s.5. \r\n \r\n  \r\n \r\nPage 31 of 52  \r\n(b)  those fees were not so paid because of circumstances beyond his control, \r\n  \r\n the Controller shall by order restore the patent on payment of any unpaid renewal fee and \r\nany prescribed additional fee. \r\n(4) An order under this section may be made subject to such conditions as the Controller \r\nthinks fit and if the proprietor of the patent does not comply with any condition of such an order , the \r\nController may revoke the order and give such directions consequential  on the revocation as he \r\nthinks fit. \r\n(5) Where an order is made under this section and, between the end of the period of six \r\nmonths beginning with the date when the patent concerned ceased to have effect and the date of the \r\napplication under this section, any person has begun in good faith to use the patented invention has \r\nmade effective  and serious preparations to make  use of the  invention, he  shall, after the  order \r\ncomes into force, have the right to make use of the invention and the said use shall not amount to an \r\ninfringement of the patent concerned. \r\n(6) Where a patented product is disposed of by any person to another in exercise of a right  \r\nconferred by sub­section (5), that other and any other person claiming through him shall be entitled \r\nto deal with the product in the same way as if it had been disposed of by a sole registered \r\nproprietor. \r\n_________ \r\n \r\nCHAPTER XIII \r\n \r\nREVOCATION AND SURRENDER OF PATENTS \r\n46. Revocation of patent by High Court.—(1) Subject to the provisions of this Ordinance, a \r\npatent may, on the petition of any person interested or of the Federal Government or on a \r\ncounter­claim in a suit for infringement of the patent, be revoked in part or in whole by the High \r\nCourt on any one or more of the grounds upon which grant of patent may be refused. \r\n(2) Without prejudice to the provisions contained in sub -section (1), a patent may be revoked \r\nby the High Court on the petition of the Federal Governmen t, if the High Court is satisfied that the \r\npatentee has without reasonable cause failed to comply with the request of the Federal Government \r\nto make, use or  exercise the patented invention for the services of the Government upon reasonable \r\nterms. \r\n(3) A notice of any petition for revocation of a patent under this section shall be served on all \r\npersons appearing from the Register to be proprietor of that patent or to have shares or interests \r\ntherein, and it shall not be necessary to serve a notice on any other person. \r\n \r\n47. Revocation of patent by Controller .—(1) At any time within twelve months after the \r\nsealing of a patent, any person interested who did not oppose the grant of the patent may apply to \r\nthe Controller for an order revoking the patent on any one or more of the grounds upon which the \r\ngrant of the patent could have been opposed: \r\n \r\nProvided that when an action for infringement, or proceedings for the revocation, of a patent \r\nare pending in any court, an application to the Controller under this section shall not be made except \r\nwith the leave of the court. \r\n \r\nPage 32 of 52  \r\n(2) Where an application is made under this section, the Controller shall give notice to the \r\npatentee and shall give to the applicant and the patentee an opportunity of being heard before \r\ndeciding the case. \r\n(3) If, on an application under this section, the Controller is satisfied that any of the grounds \r\nspecified in sub­section (1) are established, he may by order direct that the patent shall be revoked \r\neither unconditionally or unless within such time as may be specified in the order the complete \r\nspecification is amended to his satisfaction: \r\n \r\nProvided that the Controller shall not make an order for the unconditional revocation of \r\na patent  under this section unless the circumstances are such as would have justified him in refusing \r\nto grant the patent. \r\n \r\n1[48.— Revocation of patent by the Federal Government. Where the Federal Government \r\nis of the opinion that:— \r\n(a)  a patent or the made in which it is exercised  is mischievous to  the State or \r\ngenerally prejudicial to the public; or \r\n (b)  a patent has been obtained through concealment or misrepresentation in the \r\napplication; or \r\n(c)  where the compulsory licence granted to prevent the abuse which might result \r\nfrom the exercise of the exclusive rights conferred by the patent, for example, \r\nfailure to work or in  relation to anti­competitive practices, has not been \r\nsufficient, it may, after giving the patentee an opportunity of being heard, \r\nmake a declaration to that effect in the official  Gazette, 2[and in the Patents ’ \r\njounal] and thereupon the patent shall be deemed to have been revoked: \r\n \r\nProvided that proceedings upon clause  (c) and shall not  begin before \r\nthe expiration of two years from the grant of first compulsory licence.] \r\n49. Revocation of surrendered patent by Controller .—(1) A patentee may, at any time by \r\ngiving notice in the prescribed manner to the Controller, offer to surrender his patent. \r\n(2) Where an offer under sub­section (1) is made, the Controller shall advertise the offer in \r\nthe prescribed manner, and also give notice to every person other than patentee whose name appears \r\nin the Register as having an interest in the patent. \r\n(3) Any person interested may, within the prescribed period after such advertisement, give \r\nnotice to  the Controller of opposition to the  surrender, and where  any such notice  is given, the  \r\nController shall give notice to the patentee. \r\n(4) If the Controller is satisfied, after hearing the patentee and any opponent, if desirous of \r\nbeing heard, that the patent may properly be surrendered, he may accept the offer and, by order, \r\nrevoke the patent. \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 12, for the original section 48. \r\n2Ins. by Act XXIV of 2016,s.6. \r\n \r\nCHAPTER XIV  \r\n \r\nPage 33 of 52  \r\nPOWERS OF CONTROLLER \r\n50. Controller to have certain powers of a civil court.__(l) Subject to any rules made in this \r\nbehalf, the Controller in any proceedings before him under this Ordinance shall have the powers of a \r\ncivil court while trying a suit under the Code of Civil Procedure, 1908 ( Act V of 1908) in respect of \r\nthe following matters, namely:— \r\n \r\n(a)  summoning and enforcing the attendance of any person and examining him on \r\noath; \r\n \r\n(b)  requiring the discovery and production of any document; \r\n \r\n(c)  receiving evidence on affidavits; \r\n \r\n(d)  issuing commissions for the examination of witnesses or documents; and \r\n \r\n(e)  awarding costs. \r\n51. Power of Controller to correct clerical errors.—(1) The Controller may, in accordance \r\nwith the provisions of this section, correct any clerical error in any patent or in any specification or \r\nother document filed in pursuance of such application or in any application for a patent or any \r\nclerical error in any matter which is entered in the Register. \r\n(2) A correction may be made in pursuance of this section either upon a request in writing \r\nmade by any person interested and accompanied by the prescribed fee, or without such a request. \r\n(3) Where the Controller proposes to make any such correction as referred to in sub­section \r\n(1), otherwise than in pursuance of a request made under this section, he shall give notice of the \r\nproposal to the patentee or the applicant for the patent, as the case may be, and to any other person \r\nwho appea rs to  him to be concerned, and shall give them an opportunity of being heard before \r\nmaking the correction. \r\n(4) Where a request is made under sub­section (2), for the correction of any clerical error in a \r\npatent or application for a  patent or any document filed in pursuance  of such an application, and it  \r\nappears to  the Controller that the correction would materially alter the meaning or scope of the \r\ndocument to which  the request relates and ought not to be made without notice to persons affected \r\nthereby, he shall require  notice of the nature of the proposed correction to be advertised in the \r\nprescribed manner. \r\n(5) Within the prescribed time after any such advertisements as referred to in sub­section (4), \r\nany person interested may give notice to the Controller of opposition to the request, and, where \r\nsuch notice  of opposition is given, the Controller shall give notice thereof to the person by whom the \r\nrequest was  made, and shall give to him and to the opponent as opportunity of being heard \r\nbefore he decides the case. \r\n52. Evidence before Controller. Subject to any rules made in this behalf, in any proceedings \r\nunder this Ordinance before the Controller, evidence shall be given by affidavit in the absence of \r\ndirections by the Controller to the contrary, but in any case in which the Controller thinks it right so \r\nto do he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any \r\nparty to be cross­examined on the contents of his affidavit. \r\n \r\nPage 34 of 52  \r\n53. Exercise of discretionary powers by Controller. Without prejudice to any provision of \r\nthis Ordinance requiring the Controller to hear any party to the proceedings thereunder or to give any \r\nsuch party an opportunity of being heard, the Controller shall give to any applicant for a patent or for \r\namendment of a specification, if within the prescribed t ime the applicant so requires, an opportunity \r\nof being heard before exercising adversely to the applicant any discretion vested in the Controller by \r\nor under this Ordinance. \r\n \r\n___________ \r\n \r\nCHAPTER XV  \r\nREGISTER OF PATENTS \r\n54. Register of Patents .—(1) There shall be kept at the Patent Office a Register of Patents, \r\nwherein shall be entered the names and addresses of grantees of patents, notifications of assignments \r\nand of  transmissions of patents, of licenses under patents, and of amendments, extensions,  and \r\nrevocations of patents and particulars of such other matters affecting the validity or proprietorship of \r\npatents as may be prescribed. \r\n(2) The Register of Patents kept under the Patents and Designs Act, 1911 ( Act II of 1911 ) \r\nshall be incorporated in, and form part of, the Register to be kept under this Ordinance. \r\n(3) No notice of any trust, whether express, implied or constructive, shall be entered in the \r\nRegister, and the Controller shall not be affected by any such notice. \r\n(4) Subject to the  superintendence and direction of the  Federal Government, the  Register \r\nshall be kept under the control and management of the Controller. \r\n55. Registration of assignments, transmissions, etc .—(1) Where any person becomes \r\nentitled by  assignment, transmission or operation of law to a patent or to a share in a patent or \r\nbecomes entitled as a  mortgagee, licensee or otherwise to any other interest in a patent, he shall \r\napply in w riting in the  prescribed manner to the Controller for the registration of his title or, as the \r\ncase may be, of notice of his interest in the Register. \r\n(2) Without prejudice to the provisions of sub­section (1), an application for the registration \r\nof the  title of any person becoming entitled by assignment to a  patent or a  share in a  patent or \r\nbecoming entitled by virtue  of a  mortgage, license  or other instrument  to any other interest  in a  \r\npatent may be made in the prescribed manner by t he assignor, mortgagor, licensor or other party to \r\nthat instrument, as the case may be. \r\n(3) Where an application is made under this section for the registration of the title of any \r\nperson, the Controller shall, upon proof of title to his satisfaction. \r\n(a) where that person is entitled to a patent or a share in a patent, register him in the Register \r\nas proprietor or co­proprietor of the patent, and enter in the Register particulars of the instrument or \r\nevent by which he derives title; or \r\n(b) where that person is entitled to any other interest in patent, enter in the Register notice of \r\nhis interest, with particulars of the instrument, if any, creating it. \r\n(4) Subject to the provisions of this Ordinance relating to co­ownership of patents and subject \r\n \r\nPage 35 of 52  \r\nalso to any rights vested in any other person of which notice is entered in the Register, the person or \r\npersons registered as grantee  or proprietor of a  patent shall have  power to assign, grant  licenses \r\nunder, or otherwise deal with, the patent and to give effectual receipts for any consideration for any \r\nsuch assignment, license or dealing: \r\n \r\nProvided that  any equities in respect  of the  patent may be  enforced in like  manner as in \r\nrespect of  any other movable property. \r\n56. Power of High Court regarding rectification of the  Register.—(1) The  High Court  \r\nmay, on the application of any person aggrieved:— \r\n \r\n(a)  by the absence or omission from the Register of any entry; \r\n \r\n(b) by any entry made in the Register without sufficient cause; \r\n \r\n(c)  by any entry wrongly remaining on the Register; or \r\n \r\n(d)  by any error or defect in any entry in the Register, make such order for the \r\nmaking, variation or deletion, of any entry therein as it may think fit. \r\n(2) In any proceeding under this section, the High Court may decide any question that may be \r\nnecessary or expedient to decide in connection with the rectification of the Register. \r\n(3) Notice of any application to the High Court under this section shall be given in the \r\nprescribed manner to the Controller who shall be entitled to appear and be heard on the application, \r\nand shall appear if so directed by the High Court. \r\n \r\n(4) Any order of the High Court under this section rectifying the Register shall direct that \r\nnotice of the rectification shall be served in the prescribed manner upon the Controller, who shall \r\nupon receipt of such notice rectify the Register accordingly. \r\n57. Inspection of, and extracts from, the Register, etc .—(1) Subject to the provisions of \r\nthis Ordinance and  rules, the Register shall at all convenient times be open to inspection by the \r\npublic, and certified copies, sealed with the  seal of the  Patent Office, of any entry in the  Register \r\nshall be given to any person requiring them on payment of the prescribed fee. \r\n(2) The Register shall be prima facie evidence of any matters required or authorized by or \r\nunder this Ordinance to be entered therein. \r\n(3) Except in the case of an application made under section 55, a document in respect of \r\nwhich no  entry h as been made  in the  Register under sub­section (3) of section 54 shall not  be \r\nadmitted in any  Court as evidence of title of any person to a patent or share of or interest in the \r\npatent unless the Court otherwise directs. \r\n \r\nCHAPTER XVI \r\nCOMPULSORY LICENCES, LICENCES OF RIGHT, EXPLOITING OF PATENTS AND \r\nREVOCATION \r\n58. Exploitation by a Government agency or third person.—(1) Subject to sub­section \r\n(2), where— \r\n \r\nPage 36 of 52  \r\n(i)  the public interest, in particular, national security, nutrition, health or the \r\ndevelopment of other vital sectors of the national economy so requires; or \r\n \r\n(ii)  the Federal Government has determined that the manner of exploitation, by the \r\nowner of the  patent or his licensee, is anti­competitive, and the Federal \r\nGovernment is satisfie d that the  exploitation of the invention in accordance \r\nwith this sub­section would remedy such practices 1[; or] \r\n \r\n2[(iii) the patent holder refuses to grant a licence to a third party on reasonable \r\ncommercial terms and conditions; or \r\n \r\n(iv)  where patent has not been exploited in a manner which contributes to the \r\npromotion of technological innovation and to the transfer and dissemination of \r\ntechnology.] \r\nthe Federal Government may, even without the consent of the owner of the patent, decide that a \r\nGovernment agency or a third person designated by the Federal Government may exploit a patented \r\ninvention. \r\n \r\n(2) The Federal Government shall, before taking any decision under sub­section (2), give \r\nthe owner of the patent and any interested person an opportunity of being heard if he wishes to be \r\nheard. \r\n(3) The exploitation of the patented invention shall be limited to the purpose for which it was  \r\nauthorized and shall be subject to the payment to the said owner of an adequate remuneration \r\ntherefore, taking into account the economic value of the Federal Government authorizations, as \r\ndetermined in the said decision, and where a decision has been taken under sub­section (1), the need \r\nto correct anti­competitive practices. \r\n(4) A request for the Federal Gover nment authorization shall be accompanied by evidence \r\nthat the owner of the patent has received, from the person seeking the authorization, a request for a \r\ncontractual license, but that person has been unable to obtain such a license on reasonable \r\ncommercial terms and conditions and within a reasonable time: \r\n \r\nProvided that this sub­section shall not apply in cases of— \r\n(i) national emergency or other circumstantial urgency provided that in such \r\ncases the owner of  the patent shall be informed of the decision of the Federal \r\nGovernment as soon as reasonably practicable; \r\n(ii) public non­commercial use; and \r\n(iii) anti­competitive practices determined as such by a judicial or administrative \r\nbody in accordance with clause (ii) of sub­section (1). \r\n \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 13, for “Comma”. \r\n2New sub­clauses (iii) and (iv) ins. ibid., \r\n  \r\n \r\nPage 37 of 52  \r\n (5) The exploitation of a patented invention in  the field of semi­conductor technology shall \r\nonly be authorized either for public non­commercial use or where a judicial or administrative body \r\nhas determined that the manner of exploitation of the patented invention, by the owner of the patent \r\nor his licensee, is anti­competitive and if the Federal Government is satisfied that the issuance of the \r\nnon­ voluntary license would remedy such practices. \r\n(6) 1[The authorization shall be considered on its individual merits and shall not prohibit.] \r\n(i) the conclusion of license contracts by the owner of the patent; \r\n(ii) the continued exercise, by the owner of the patent, of his rights under section \r\n30; or \r\n(iii) the issuance of a non­voluntary license under section 59. \r\n(7) Where a third person has been designated by the  Federal Government, the  authorization \r\nmay only be transferred with the enterprise or business of the person or with the part of the enterprise \r\nor business within which the patented invention is being exploited. \r\n(8) Where the exploitation of the invention by the Government agency or third person \r\ndesignated by the Federal Government is authorized under clause  (i) of sub­section (1), it  shall be \r\npredominantly for the supply of the market in Pakistan. \r\n(9) Upon request of the owner of the patent, or of the Government agency or of the third \r\nperson authorised to exploit the patented invention, the Federal Government may, after hearing the \r\nparties, if  either or both wish to be  heard, vary the  terms of the  decision authorizing the  \r\nexploitation of the patented invention to the extent that changed circumstances justify such variation. \r\n(10) Upon the request of the owner of the patent, the Federal Government  shall 2[subject to \r\nadequate protection of the legitimate interest of the persons so authorized,] be inserted; and shall \r\nterminate an authorization if it is satisfied, after hearing the parties, if either or both wish to be heard, \r\nthat the circumstances which led to 3[the] decision have ceased to exist and are unlikely to recur or \r\nthat the Government agency or third person designated by it has failed to comply with the terms of \r\nthe decision. \r\n(11) Notwithstanding the provisions of sub­section (10), the Federal Government shall not \r\nterminate an authorization if it is satisfied that the need for adequate protection of the legitimate \r\ninterests of the Government agency or third person designated by it justifies the maintenance of the \r\ndecision. \r\n(12) Any appeal shall lie to the High Court against the decisions of the Federal Government \r\nunder sub­sections (1) to (9). \r\n \r\n \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 13, for “the authorization shall both exclude.” \r\n2Ins.Ibid s. 13. \r\n3Subs. ibid., for “his”. \r\n \r\n  \r\n \r\nPage 38 of 52  \r\n 59. Powers of Controller in granting compulsory licenses.__1[(1) On request, made to the \r\nController after the expiration of a period of four years from the date of filing of the patent \r\napplication or three years from the date of the grant of the patent, whichever period expires last, the \r\nController may  issue a non­voluntary licence to prevent the abuses which might result from the \r\nexercise of the rights conferred by the patent, for example, failure to work.] \r\n(2) Notwithstanding the provisions of sub­section (1), a non­voluntary license shall not be \r\nissued if the owner of the patent satisfies the Controller that circumstances exist which justify the \r\nnon­exploitation or insufficient exploitation of the patented invention in Pakistan. \r\n(3) The decision issuing the non­voluntary license shall fix__ \r\n(i)  the scope and function of the license; \r\n(ii)  the time limit within which the  licensee must begin to exploit the patented \r\ninvention; and \r\n(iii)  the amount of the adequate remuneration to be paid to the owner of the \r\npatent and the conditions of payment. \r\n(4) The beneficiary of the non­voluntary license shall have the right to exploit the patented \r\ninvention in Pakistan according to the  terms set  out in the  decision issuing the  license, shall \r\ncommence the exploitation of the  patented invention within the  time limit fixed in the said decision \r\nand, thereafter, shall exploit the patented invention sufficiently. \r\n(5) If the invention claimed in a patent, hereinafter referred to as “later patent”, cannot be \r\nexploited in Pakistan without infringing a patent granted on the basis of an application benefiting \r\nfrom an earlier  filing or, where appropriate, priority date, hereinafter referred to as “earlier patent”, \r\nand provided that the invention claimed in the later patent involves an important technical advance of \r\nconsiderable economic importance in relation to the invention claimed in the earlier patent, the \r\nController, upon the request of the owner of the later patent, may issue a non­voluntary license to the \r\nextent necessary to avoid infringement of the earlier patent. \r\n(6) Where a non­voluntary license is issued under sub-section 2[(5)] the Controller upon the \r\nrequest of the owner of the earlier patent shall issue a non­voluntary license in respect of the later \r\npatent. \r\n(7) In the case of a request for the issuance of a non­voluntary license under sub­sections \r\n3[(5)] and 3[(6)] sub­section 3[(3)] shall apply mutatis mutandis with the provision that no tim e limit \r\nneeds to be fixed. \r\n(8) In the case of a non­voluntary license issued under sub­section 4[(5)] the transfer may be \r\nmade only with the later patent, or, in the case of a non­voluntary license issued under sub -section \r\n4[(6)] only with the earlier patent. \r\n \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 14, for sub­section (1). \r\n2Subs. Ibid, for “the brackets and figure (4)”. \r\n3Subs. ibid., for the brackets and figures (3), (4) and (2). \r\n4Subs. ibid., for the brackets and figures (3) and (4). \r\n \r\n \r\nPage 39 of 52  \r\n(9) The request for the issuance of a non­voluntary license shall be subject to payment of the  \r\nprescribed fee. \r\n(10) The provisions of sub­sections (2) to (10) of section 58 shall apply mutatis mutandis for \r\nissuance of a non­voluntary license under this section. \r\n \r\nCHAPTER XVII \r\nPROCEEDINGS FOR INFRINGEMENT OF PATENTS \r\n60. Suit for infringement of a patent .—(1) A patentee  may institute  a suit in a  District \r\nCourt having jurisdiction to try the suit against any person who, during the continuance of a patent \r\nacquired by him under this Ordinance  in respect of an invention, makes, sells or uses the  invention \r\nwithout his license, or counterfeits it, or imitates it: \r\n \r\nProvided that, where a counter­claim for revocation of the patent is made by the defendant, \r\nthe suit,  along with the counter-claim, shall be transferred to the High Court for decision. \r\n \r\n(2) Every ground on which a patent may be revoked under the provisions of this Ordinance \r\nshall be available by way of defence to a suit for infringement. \r\n61. Reliefs in suits for infringement.—1[(1) In any suit for infringement the Court shall \r\nhave the power,— \r\n(a) to grant relief by way of damages, injunctions or accounts provided that, \r\nwhere permitted,  effective provisional measure may also  be ordered by the \r\nCourt; \r\n(b) to order, if the subject matter of a patent is a process for obtaining a product, \r\nthe defendant to prove that the process to obtain an identical product is \r\ndifferent from the patented process  and that the identical product in question \r\nshall, in the absence of proof to the contrary, be deemed to have been obtained \r\nby the patented process provided that the product obtained by patented process \r\nis new if it has not been put into the market for more than one year before the \r\ndate of the initiation of the judicial action by the patentee: \r\n \r\n Provided that this provision shall apply subject to the prior proof by the \r\nplaintiff that the  allegedly infringing product is identical to the product \r\ndirectly produced by the patented process: \r\n \r\nProvided further that in the adduction of proof to the contrary, the \r\nlegitimate interests of  defendants in protecting their manufacturing and \r\nbusiness secrets shall be taken into account.] \r\n(2) In any suit for infringement­ \r\n \r\n_________________________________________________________________________________ \r\n1Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002), s. 15, for sub section (1). \r\n  \r\n \r\nPage 40 of 52  \r\n \r\n(a)  the Court shall have the authority to order prompt and effective provisional \r\nmeasures— \r\n(i)  to prevent an infringement, and in particular, to prevent the entry into \r\nthe channels of commerce of goods, including imported goods after \r\ncustom clearance, and \r\n \r\n(ii)  to preserve relevant evidence in regard to the alleged infringement; \r\n \r\n(b) the Court shall have the authority to order provisional measures, inaudita \r\naltera parte where appropriate, in particular, where any delay is likely to cause \r\nirreparable harm to the right  holder, or where there is a demonstrable risk of \r\nevidence being destroyed; \r\n(c)  the Court shall have the authority to require the applicant to provide any \r\nreasonably available evidence to satisfy it with a sufficient degree of certainty \r\nthat the applicant is the  right holder and that the applicant ’s right is being \r\ninfringed or that such infringement is  imminent, and to order the applicant to \r\nprovide a security or equivalent assurance sufficient to protect the defendant \r\nand to prevent abuse; \r\n(d)  where provisional measures have  been adopted inaudita altera parte, the \r\nparties affected shall be given notice, without delay after the execution of the \r\nmeasures at the latest, and a  review, including a right to be hear d, shall take \r\nplace upon request of the defendant with a  view to deciding within a \r\nreasonable period after the notice of the measures, whether these  measures \r\nshall be modified, revoked or confirmed; \r\n(e)  the Court may require the applicant to supply other information necessary for \r\nidentification of the goods concerned; \r\n(f)  without prejudice to the provisions of clause (d), provisional measures taken \r\non the basis of  clauses (a) and (b) shall upon the request of the defendant, be \r\nrevoked or otherwise c ease to have affect if proceedings leading to a  decision \r\non the  merit of the  case are not initiated  within a  reasonable period not  to \r\nexceed twenty working days or thirty­one calendar days, and \r\n(g)  where the provisional measures are revoked or where they lapse due to any act \r\nor omission by the applicant, or where it is subsequently found that there has \r\nbeen no infringement or  threat of infringement, the Court shall have the \r\nauthority to order the applicant, upon request of the defendant, to provide th e \r\ndefendant appropriate compensation for an injury caused by these measures. \r\n62. Damages not to be awarded against defendant in certain cases. —(1) In proceedings \r\nfor the infringement of a patent, damages shall not be awarded against a defendant who proves that at \r\nthe date of the infringement he was not aware, and had not reasonable ground for supposing, that the \r\npatent existed, and a person shall not be deemed to have been aware or to have had reasonable \r\ngrounds for  supposing as aforesaid by reason only of the application to an article of the word \r\n“patent”, “patented”, or any word or words expressing or implying that a patent has been obtained \r\n \r\nPage 41 of 52  \r\nfor the article, unless the number of the patent accompanied the word or words in question. \r\n(2) Nothing in this section shall affect the power of the Court to grant an injunction in any \r\nproceedings for infringement of patent. \r\n \r\n63. Relief for infringement of partially valid specification.—(1) If in any proceedings for \r\ninfringement of a patent it is found that any claim of the specification, being a claim in respect of \r\nwhich infringement is alleged, is valid, but that any other claim is invalid, the Court may grant relief \r\nin respect of any valid claim which is infringed: \r\n \r\nProvided that the Court shall not grant relief by way of damages or costs except in the \r\ncircumstances mentioned in sub-section (2). \r\n \r\n(2) Where the plaintiff proves that the invalid claim was framed in good faith and with \r\nreasonable skill and knowledge, the Court shall grant relief in respect of any valid claim which is \r\ninfringed subject to the discretion of the Court as to costs and as to the date from which damages \r\nshould be reckoned. \r\n64. Proceedings for infringement by exclusive licensee . The holder of an exclusive license \r\nunder a  patent shall have the like right as the patentee to take proceedings in respect of any \r\ninfringement of the  patent committed after the  date of the  license, and in awarding damages or \r\ngranting any other relief in  any such proceedings the Court shall take into consideration any loss \r\nsuffered or likely to be  suffered by the exclusive licensee as such or, as the case may be, the profits \r\nearned by means of the infringement  so far  as it constitutes an infringement of the rights of the  \r\nexclusive licensee as such. \r\n65. Certificate of contested validity of specification .—(1) If in any proceedings before  the \r\nCourt the validity of any claim of a specification is contested, and that claim is found by the Court to \r\nbe valid, the Court may certify that the validity of that claim was contested in those proceedings. \r\n \r\n(2) Where any such certificates has been granted, then, if in any subsequent proceedings \r\nbefore the Court for infringement of the patent or for revocation of the patent, a final order or \r\njudgement is made or given in favour of the party relying on the validity of the patent, that party \r\nshall, unless the Court otherwise directs, be entitled to the full costs so far as they concern the claim \r\nin respect of which the certificate was granted: \r\n \r\nProvided that this sub­section shall not apply to the costs of any appeal in any such \r\nproceedings as aforesaid. \r\n66. Remedy for groundless threats of infringement proceedings.—(1) Where any person, \r\nwhether entitled to or interested in a  patent or an application for a  patent or not, threatens any other  \r\nperson by circulars, advertisements or otherwise  with proceedings for infringement  of a patent, any \r\nperson aggrieved thereby may bring suit against him for any such relief as is specified in sub-section \r\n(2). \r\n(2) Unless in any suit under sub­section (1) the defendant proves that the acts in respect of \r\nwhich proceedings were threatened constitute or, if done, would constitute, an infringement of a \r\npatent or of rights arising from the publication of a complete specification in respect of a claim of \r\nthe specification not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the \r\nfollowing reliefs, namely:__ \r\n \r\nPage 42 of 52  \r\n(a)  a declaration to the effect that the threats are unjustifiable; \r\n(b) an injunction against the continuance of the threats; and \r\n(c)  such damages, if any, as he has sustained thereby. \r\n \r\n(3) For the avoidance of doubt, it is hereby declared that a mere notice of the existence of a \r\npatent does not constitute a threat of proceedings within the meaning of sub­section (1). \r\n67. Power of Court to make  declaration as to non­infringement .—(1) A declaration that  \r\nthe use by any person of any process, or the making or use or sale by any person of any article, \r\ndoes not or would not constitute an infringement of a claim of a patent may be made by the Court in \r\nproceedings between that person and the patentee or the holder of an exclusive license under the \r\npatent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if \r\nit is shown— \r\n(a)  that the plaintiff has applied in writing to the patentee or licensee for a written \r\nacknowledgement to the effect of the declaration claimed, and has furnished \r\nhim with full particulars in writing of the process or article in question; and \r\n(b)  that the patentee or licensee has refused or neglected to give such an \r\nacknowledgement. \r\n(2) The costs of all parties in proceedings for a declaration brought by virtue of this section \r\nshall, unless for special reasons the Court thinks fit to order otherwise, be paid by the plaintiff. \r\n(3) The validity of a claim of the specification of a patent shall not be called in question in \r\nproceedings for a declaration brought by virtue of this section, and accordingly the making or refusal \r\nof such a declaration in the case of a patent shall not be deemed to imply that the patent is valid. \r\n(4) Proceedings for a declaration may be brought by virtue of this section at any time after \r\nthe date of the publication of the complete specification in pursuance of an application for a patent, \r\nand references in this section to the patentee shall be construed accordingly. \r\n68. Power of Court to appoint scientific advisers .—(1) In any suit for infringement or in \r\nany proceedings before a Court under this Ordinance, the Court may at any time, and whether or not \r\nan application has been made by any party for that purpose, appoint an independent scientific adviser \r\nto assist the Court or to inquire and report upon any such question of fact or of opinion, not involving \r\na question of interpretation of law, as it may formulate for the purpose. \r\n \r\n(2) The remuneration of the scientific adviser appointed under sub­section (1) shall be fixed \r\nby the Court and shall include the costs of making a report and a proper daily fee for any day on \r\nwhich the scientific adviser may be required to attend before the Court, and such remuneration shall \r\nbe defrayed out of moneys provided by the Federal Government for the purpose. \r\n \r\n \r\n \r\n \r\n  \r\n \r\nPage 43 of 52  \r\nCHAPTER XVIII \r\nAPPEALS \r\n69. Appeals.—(1) No appeal shall lie from any decision, order or direction made or issued \r\nunder this Ordinance by the Federal Government, or from any act  or order of the  Controller for the \r\npurpose of giving effect to any such decisions, order or direction. \r\n(2) The public authorities and officials shall be exempted from liability to appropriate \r\nremedial measures where actions are taken or intended in good faith in course of administration of \r\nthis Ordinance. \r\n(3) Subject to sub­section (1), an appeal shall lie to the High Court from any decision, order \r\nor direction of the Controller or, as the case may be, the Federal Government under any of the \r\nprovisions of this Ordinance. \r\n(4) Every appeal under this section shall be in writing and shall be made within three months \r\nfrom the date of the decision, order or direction of the Controller, as the case may be, of the Federal \r\nGovernment, or within such further time as the High Court may allow. \r\n70. Procedure for hearing appeals .—(1) Every appeal before the High Court shall be by \r\npetition and shall be  in such form and shall contain such particulars as may be  provided by rules \r\nmade by the High Court. \r\n(2) Every appeal under this section shall be heard by a single Judge of the High Court: \r\n \r\nProvided that any such Judge may, if he so thinks fit,  refer the appeal at any stage of the \r\nproceedings to a larger Bench of the High Court. \r\n(3) Every appeal under this section shall be heard as expeditiously as possible and endeavor \r\nshall be made to decide the appeal within a period of twelve months from the date on which it is \r\nfiled. \r\n \r\n \r\n \r\nCHAPTER XIX \r\n PENALTIES \r\n71. Penalty for contravention of secrecy provisions relating to certain inventions. If any \r\nperson fails to comply with any direction given under section 25 or makes or causes to be made an \r\napplication for the grant of a patent in contravention of section 26, he shall be punishable with \r\nimprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand \r\nrupees, or with both. \r\n72. Penalty for false entry in any register, etc. If any person makes, or causes to be made, a \r\nfalse entry in any register kept under this Ordinance, or a writing falsely purporting to be a copy of \r\nan entry in such a register, or produces or tenders, or causes  to be produced or tendered, in evidence \r\nany such writing knowing the entry or writing to be false, he shall be punishable with imprisonment \r\nfor a term  which may extend to two years, or with fine not exceeding twenty thousand rupees, or \r\nwith both. \r\n \r\nPage 44 of 52  \r\n73. Penalty for false representation. If any person falsely represents that any article sold by \r\nhim is patented in Pakistan or is the  subject of an application for a  patent in Pakistan, he  shall be \r\npunishable with fine which may extend to five thousand rupees. \r\n \r\nExplanation 1.—For the purposes of this section, a person shall be deemed to represent— \r\n \r\n(a)  that an article is patented in Pakistan if there is stamped, engraved or \r\nimpressed on, or  otherwise applied to, the article the word “patent” or \r\n“patented” or some other word expressing or implying that a patent for the \r\narticle has been obtained in Pakistan; or \r\n(b)  that an article is the subject of an application for a patent in Pakistan, if there \r\nare stamped, engraved or impressed on, or otherwise applied to, the article the \r\nwords “patent applied for ”, “patent pending”, or some other words \r\nimplying that an application for a patent for the article has been made in \r\nPakistan. \r\n \r\nExplanation 2.—The use of words “patent”, “patented”, “patent applied for ”, “pending” or \r\nother words expressing or implying that an article is patented or that a patent has been applied for \r\nshall be deemed to refer to a  patent in force in Pakistan, or to a  pending application for a patent in \r\nPakistan, as the case may be, unless there is an accompanying indication that the patent has been \r\nobtained or applied for in any country outside Pakistan. \r\n74. Penalty for wrongful use of Words “patent office”. If any person uses on his place of \r\nbusiness or any document issued by him or otherwise the words “patent office” or any other words \r\nwhich would  reasonably lead to the  belief that  his place  of business is, or is officially connected \r\nwith, the patent Office, he shall be 1[punishable with imprisonment for a term which may extend to \r\ntwo years, and with fine which may extend to one million rupees]. \r\n75. Penalty for refusal or failure to supply information. —(1) If any person refuses or fails \r\nto furnish to the Controller any information or statement which he is required to furnish by or under \r\nthis Ordinance, he shall be punishable with fine which may extend to 2[five thousand rupees]. \r\n \r\n(2) If any person, being required to furnish any such information as is referred to in \r\nsub­section (1), furnishes information or a statement which is false, and which he either knows or has \r\nreasons to believe to be false or does not believe to be true, he shall be punishable with fine which \r\nmay extend to 3[fifty thousand rupees]. \r\n \r\n 76. Penalty for  contravention of section 20 . If the  applicant fails to file  the statement \r\nrequired under section 20 or has furnished information which in any material particular is false to \r\nhis knowledge or if he  fails to comply with the  Controller’s request  within the  specified time, he  \r\nshall be punishable with fine which may extend to 4[five thousand rupees]. \r\n \r\n_________________________________________________________________________________ \r\n1Subs, by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 16 for certain words. \r\n2Subs. ibid., s. 17 for “two thousand rupees”. \r\n3Subs.ibid, for “ten thousand rupees”. \r\n4Subs. Ibid., s.18,for “two thousand rupees”.  \r\n  \r\n \r\nPage 45 of 52  \r\n77. Penalty for practice by non-registered patent agents. If any person contravenes the \r\nprovisions of section 82, he shall be punishable with fine which may extend to 1[twenty five \r\nthousand rupees] in the case of a first offence and 2[one hundred thousand rupees] in the case of a \r\nsecond or subsequent offence. \r\n \r\n3[78. Offences by companies etc. Where the person guilty of an offence under this \r\nOrdinance is a company, corporation, firm or institution, every owner, director, and employee of the \r\ncompany, firm,  institution, or corporation, having knowledge of the offence  and consented to the \r\ncommission of the offence shall be guilty of the offence]. \r\n \r\n_____________ \r\n \r\nCHAPTER XX  \r\nPATENT AGENTS \r\n \r\n79. Register of patent agents . There shall be kept at the Patent Office a register of patent \r\nagents wherein shall be entered the names and addresses of all person qualified to practice before the \r\nPatent Office as patent agents. \r\n80. Registration as patent agent. The Controller may, on an application made in the \r\nprescribed manner, register as a patent agent any person who is a citizen of Pakistan, has completed \r\nthe age of twenty­one years, possesses the prescribed qualifications and has paid the prescribed fee. \r\n81. Subscription and verification of certain documents by patent agents .—(1) Subject to \r\nsub­section (2) and rules, all applications and communications to the Controller under this Ordinance \r\nmay be signed by a patent agent authorized in writing in this behalf by the person concerned. \r\n(2) The following documents, namely,— \r\n(i)  applications for patents; \r\n(ii)  applications for the restoration of lapsed patents; \r\n(iii)  notices of opposition; \r\n(iv)  applications for leave to amend; \r\n(v)  applications for compulsory licences or for revocation; and \r\n(vi)  notices of surrender of patents, \r\n \r\nshall be signed and verified  in the prescribed manner by the person making such applications  or \r\ngiving such notices: \r\n \r\n_________________________________________________________________________________ \r\n1Subs. Ibid., s.19, for “five thousand rupees”.  \r\n2Subs. Ibid., for “one thousand rupees”. \r\n3Subs. Ibid., s.20,for original section 78. \r\n  \r\n \r\nPage 46 of 52  \r\nProvided that, if such person is absent from Pakistan, they may be signed and verified by \r\na patent  agent authorized by him in writing in that behalf. \r\n \r\n82. Restrictions on practice as patent agent.___ (1) No person, either alone or in \r\npartnership with any other person, shall practice or describe or hold himself out as a patent agent, or \r\npermit himself to be so described or held out, unless he is registered as a patent agent or, as the case \r\nmay be, unless he and all his partners are so registered. \r\n(2) No company or other body corporate sha ll practice or describe or hold itself out as a \r\npatent agent or permit itself to be so described or held out. \r\n \r\nExplanation.—For the purposes of this section, practice as a patent agent includes any of \r\nthe  following acts, namely:— \r\n(a)  applying for or obtaining patents in Pakistan or elsewhere; \r\n(b)  preparing specifications or other documents for the purposes of this Ordinance \r\nor of the patent law of any other country; and \r\n(c)  giving advice, other than advice  of a scientific or technical nature, as to the \r\nvalidity of patents or their infringement. \r\n \r\n83. Removal from register of patent agents and restoration .—(1) The Federal \r\nGovernment may  remove the name  of any person from the register of patent agents when it is \r\nsatisfied, after giving that  person a reasonable opportunity of being heard and after such further \r\ninquiry, if any, as it thinks fit to make— \r\n(i)  that his name has been entered in the register of patent agents by error or on \r\naccount of misrepresentation or suppression of material facts; or \r\n(ii)  that he has been convicted of any offence and sentenced to a term of \r\nimprisonment or has  been guilty of misconduct in his professional capacity \r\nwhich in the opinion of the Federal  Government renders him unfit to be kept \r\nin the register of patent agents. \r\n \r\n(2) The Federal Government may, on application and on sufficient cause being shown restore \r\nto the register of patent agents the name of any person removed therefrom. \r\n84. Power of controller to refuse to recognize as agent.__(1) Subject to any rules made  in \r\nthis behalf, the Controller may refuse to recognize as agent in respect of any business under  this \r\nOrdinance— \r\n(a)  any person whose name has been removed from and not restored to, the \r\nregister of patent agents; \r\n(b)  any person who has been convicted of an offence under section 77; \r\n(c)  any person, not being registered as patent agent, who in the opinion of the \r\nController is  engaged wholly or mainly in acting as agent in applying for \r\n \r\nPage 47 of 52  \r\npatents in Pakistan or elsewhere in the name or for the benefit of the person by \r\nwhom he is employed; or \r\n(d)  any company or firm, if any person whom the Controller could refuse to \r\nrecognize as patent agent in respect of any business under this Ordinance, is a \r\ndirector or manager of the company or is a partner in the firm. \r\n \r\n(2) The Controller shall refuse to recognize as agent in respect of any business under this \r\nOrdinance any person who neither resides nor has a place of business in Pakistan. \r\n85. Saving in respect of other persons authorize to act as agents. Nothing in this Chapter \r\nshall be deemed to prohibit. \r\n(a)  the applicant for a patent or any person, not being a patent agent, who is duly \r\nauthorized by  the applicant from drafting any specification or appearing or \r\nacting before Controller; or \r\n(b)  an advocate, not being a  patent agent, from taking part  in any proceedings \r\nunder this Ordinance otherwise than by way of drafting any specification. \r\n \r\n__________ \r\n \r\nCHAPTER XXI  \r\nINTERNATIONAL ARRANGEMENTS \r\n86. Power of the Federal Government to declare a country as Convention country. —(1) \r\nWith a  view to the  fulfillment of a  treaty, convention or arrangement  between Pakistan and any \r\nother country,  the Federal Government may, by notification in t he official Gazette, declare such \r\ncountry to be the Convention country for the purposes of this Ordinance, in addition to the members \r\nof the World Trade Organization. \r\n \r\n(2) A declaration under sub­section (1) may be made for the purposes either for all or for \r\nsome only of the provisions of this Ordinance, and a country in the case of which a declaration made \r\nfor the purposes of some only of the provisions of the Ordinance is in force shall be deemed to be a \r\nConvention country for the purposes of those provisions only. \r\n \r\n87. Supplementary provisions as to Convention application . For the purposes of this \r\nOrdinance, any matter shall be deemed to have been disclosed in an application for protection in a \r\nConvention country if it was claimed or disclosed, otherwise than by way of disclaimer or \r\nacknowledgement of prior art, in that application or in any document submitted by the applicant for \r\nprotection in support of and at the same time as that application, but no account shall be taken of \r\nany disclosure effected by any such document unless a copy of the document is filed in the Patent \r\nOffice with the Convention application in accordance with the provisions of section 88. \r\n88. Documents to be filed with a Convention application .—(1) Where a Convention \r\napplication is  made under this Ordinance, the applicant shall furnish, in addition to the complete \r\nspecifications, copies  of the specifications or corresponding documents filed or deposited by the \r\napplicant in the patent office  of the Convention country in which the relevant application was made, \r\ncertified by the official chief or  head of the patent office of the Convention country, or otherwise \r\nverified to the satisfaction of the  Controller, along with the application or within three m onths \r\n \r\nPage 48 of 52  \r\nthereafter, or with in such further period as the Controller may on good cause allow. \r\n(2) If any such specification or other document referred to in sub­section (1) is in a foreign \r\nlanguage, a translation into English of the specification or document , verified by affidavit or \r\notherwise to the satisfaction of the Controller, shall be annexed to the specification or document. \r\n(3) For the purposes of this Ordinance, the date on which an application was made in a \r\nConvention country is such date as the Controller is satisfied, by certificate of the official chief or \r\nhead of the patent office of the Convention country or otherwise, is the date on which the application \r\nwas made in that Convention country. \r\n \r\n \r\n_________ \r\n \r\nCHAPTER XXII  \r\nMISCELLANEOUS \r\n89. Fees.—(1) There shall be paid in respect of the grant of patents and applications therefor, \r\nand in respect of other matters in relation to patents under this Ordinance, such fees, to the Patent \r\nOffice, as may be prescribed by the Federal Government. \r\n(2) Any proceedings in respect of which a fee is payable under this Ordinance or the rules \r\nshall be of  no effect unless the fee has been paid. \r\n90. Restrictions upon publication of specifications, etc . Subject to the provisions of \r\nChapter VII, an application for a patent, and any specification filed in pursuance thereof, shall not, \r\nexcept with the  consent of the  applicant, be  published by the  Controller or be  open to public  \r\ninspection at  any time  before the date of advertisement of acceptance  of the  application in the  \r\nofficial Gazette 1[or in the Patents’ jounal]. \r\n91. Reports of examiners to be confidential . The reports of examiners to the Controller \r\nunder this Ordinance shall not be open to public inspection or be published by the Controller, and \r\nsuch reports shall not be liable to production or inspection in any legal proceedings unless the Court \r\ncertifies that the  production or  inspection is  desirable in the interests of justice,  and ought  to be  \r\nallowed. \r\n92. Publication of Patented Inventions. The Controller shall issue periodically a publication \r\ncontaining such information relating to patented inventions as the Federal Government may direct. \r\n \r\n93. Power of Controller to call for information from patentees.—(1) The Controller may, \r\nat any  time during the  continuance of the patent, by notice in writing, require a patentee or a \r\nlicensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or \r\nwithin such  further time as the Controller may allow, such information or such periodical \r\nstatements as to the extent to which the patented invention has been commercially worked in \r\nPakistan as may be specified in the notice. \r\n \r\n_________________________________________________________________________________ \r\n1Ins. by Act No.  XXIV of 2016,s.7 \r\n \r\nPage 49 of 52  \r\n(2) Without prejudice to the provisions of sub­section (1), every patentee and every \r\nlicensee, whether exclusive or otherwise, shall furnish in such manner and form and at such intervals, \r\nnot being less than six months, as may be  prescribed, statement  as to the  extent to which the  \r\npatented invention has been worked on a commercial scale in Pakistan. \r\n(3) The Controller may publish the information received by him under sub­section (1) or \r\nsub­section (2) in such manner as may be prescribed. \r\n94. Evidence of entries, documents, etc.—(1) A certificate purporting to be signed by the \r\nController as to any entry, matter or thing which he is authoritized by this Ordinance or any rule to \r\nmake or do, shall be  prima facie evidence of the  entry having been made  and of the  contents \r\nthereof and of the matter or thing having been done or omitted to be done. \r\n \r\n(2) A copy of any entry in any Register or of any document  kept in the Patent Office or of \r\nany patent, or an extracts from any such Register or document, purporting to be certified by the \r\nController  and sealed with the seal of the Patent Office shall be admitted in evidence in all courts, \r\nand in all proceedings, without further proof or production of the original. \r\n \r\n \r\n (3) The Controller or any other officer of the Patent Office shall not, in any legal proceedings \r\nto which he is not a party, be compellable to produce the Register or any other document in his \r\ncustody, the contents of which can be proved by the production of a certified copy issued under this \r\nOrdinance or  to appear as a  witness to prove  the matters therein recorded unless by order of the  \r\nCourt made for special causes. \r\n95. Declaration by infants, lunatics, etc .—(1) If any person is, by reason of minority, \r\nlunacy or other disability, incapable of making any statement or doing anything required or permitted \r\nby or under this Ordinance, the lawful guardian, committee or manager, if any, of the person subject \r\nto the disability,  or if there  be none, any person appointed by any Court  having jurisdiction in \r\nrespect of his property, may make such statement or a statement as nearly corresponding thereto as \r\ncircumstances permit, and  do such thing  in the name and on behalf  of the  person subject to the  \r\ndisability. \r\n \r\n(2) An appointment may be made by the Court for the purposes of this section upon the \r\npetition of any person active on behalf of the person subject to the disability or of any other person \r\ninterest in the making of the statement or the doing of the thing. \r\n96. Service of notice, etc., by post . Any no tice required or authorized to be given by or \r\nunder this Ordinance, and any application or other document so authorized or required to be made or \r\nfiled, may be given, made or filed by post. \r\n97. Security for cost . If any party by whom notice  of any opposition is given under this \r\nOrdinance or by whom application is made to the Controller for the grant of a licence under a patent \r\nneither resides nor carries on business in Pakistan, the Controller may require him to give security \r\nfor the costs of the proceedings, and in default of such security being given may treat the  opposition \r\nor application abandoned. \r\n \r\n \r\nPage 50 of 52  \r\n98. Transmission of orders of High Court or Court to the Controller.—(1) Every order of \r\nthe High Court on a petition for revocation, including an order granting certificate of validity of any \r\nclaim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and \r\nreference thereto to be made in the Register. \r\n(2) Where in any suit for infringement of a patent  or in any suit under section 60 the validity \r\nof any claim or a specification is contested and that claim is found by the Court to be valid or not \r\nvalid, as the  case may be, the Court shall transmit a copy of its judgement and decree to the \r\nController who shall on receipt thereof cause an entry in relation to such proceedings to be made in \r\nthe prescribed manner in a supplemental record. \r\n(3) The provisions of sub­sections (1) and (2) shall also apply to the Court to which appeals \r\nare referred against decisions of the Court referred to in those sub­sections. \r\n99. Transmission of copies of specifications,  etc. and inspection thereof.  Copies of  all \r\nsuch specifications drawings and amendments left at the Patent Office as become open to public \r\ninspection under the provisions of the Ordinance shall be transmitted, as soon as may be, after the \r\nprinted copies thereof are available, to such authorities as the F ederal Government may appoint in \r\nthis behalf, and shall  be open to the inspection of any person at all reasonable times at places to be \r\nspecified by those authorities with the approval of the Federal Government. \r\n100. Information relating to patents. Any person making a request to the Controller in the \r\nprescribed manner for information relating to any such matter, as may be prescribed, as respects any  \r\npatent specified in the request or as respects any application for a patent so specified shall be entitled, \r\nsubject to the payment of the prescribed fee, to have information supplied to him accordingly. \r\n101. Loss or destruction of patents . If a patent is lost or destroyed, or its non­production is  \r\naccounted for to the  satisfaction of the  Controller, the Controller may at  any time, on application \r\nmade in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be \r\nsealed and delivered to the applicant. \r\n \r\n1[*  * * * * * *] \r\n103. Right of the Government to sell or use forfeited articles. Nothing in this Ordinance \r\nshall affect the power of the  Government or of any person deriving title  directly or indirectly from \r\nthe Government to sell or use any articles forfeited under any law for the time being in force. \r\n104. Power of High Court to make rules . The High Court may make rules consistent with \r\nthis Ordinance as to the conduct and procedure in respect of all proceedings before it under this \r\nOrdinance. \r\n \r\n105. Power of the Federal Government to make rules.—(1) The Federal Government \r\nmay, by notification in the official Gazette, make rules for  carrying out the purposes of  this \r\nOrdinance. \r\n \r\n \r\n_________________________________________________________________________________ \r\n1Section 102 Omitted by the Patent (Amdt.) Ordinance, 2002 (95 of 2002), s.21. \r\n  \r\n \r\nPage 51 of 52  \r\n(2) In particular and without prejudice to the generality of the foregoing power, such rules \r\nmay provide  for all or any of the following matters, namely:— \r\n(i)  the form and manner in which any application for  a patent, any specifications \r\nor drawings, and any other application or document may be filed in the Patent \r\nOffice; \r\n(ii)  the time within which any act or thing may be done under this Ordinance, \r\nincluding the manner in which and the time within which any matter may be \r\nadvertised under this Ordinance; \r\n(iii)  the fees which may be  payable under this Ordinance  and the  manner of \r\npayment of such fees; \r\n(iv)  the matters in respect of which an examiner may make a report to the \r\nController; \r\n(v)  the form of request for sealing of patent; \r\n(vi)  the form and manner in which and the time within which any notice may be \r\ngiven under this Ordinance; \r\n(vii) the provisions which may be inserted in an order for restoration of a patent for \r\nthe protection of the  person who may have  availed themselves of the  \r\nsubject­matter of the patent after the patent had ceased; \r\n(viii)  the maintenance of the Register and the matters to be entered therein; \r\n(ix)  the time when and the manner in which the Register and any other document \r\nopen to inspection may be inspected under this Ordinance; \r\n(x)  the qualifications of and the preparation of a role of scientific advisers for the \r\npurpose of section 68; \r\n(xi)  the manner in which any compensation for acquisition by the Government of \r\nan invention may be paid; \r\n(xii) the manner in which the register of patent agents may be maintained, and \r\nmatters connected with the practice and conduct of the patent agents; 1* \r\n(xiii) the regulation of the making, printing, publishing and selling of indexes to, \r\nand abridgements of, specifications and other documents in the Patent Office, \r\nand inspection of indexes and abridgements and other documents 2[;]. \r\n \r\n3[(xiv)  the manner to establish the regime for exhaustion of intellectual property \r\nrights; \r\n \r\n_____________________________________________________________________________ \r\n1The word “and” omitted by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 22. \r\n2Subs. ibid., for the full stop. \r\n3New clauses (xiv), (xv), (xvi), (xvii) and (xviii) added ibid. \r\n \r\n \r\nPage 52 of 52  \r\n(xv)  the details in respect of inventions referred to in sub-section (4) of section 7; \r\n(xvi)  the manner in which an invention shall be disclosed including the best mode \r\nknown for the  execution of the invention, the forms and limits of allowable \r\nclaims and, in the case of  inventions relating to microorganisms, the \r\nrequirement and the manner of submission of a  culture for experimental \r\npurposes in relation to the scope of the claim and th e procedure for  grant of \r\nsuch patents; \r\n(xvii)  the procedure and the criteria for determining the remuneration for a \r\ncompulsory licence  and the  terms and conditions for licensing agreements \r\nincluding, in particular, those  which do not adversely affect comp etition or \r\ncause impediment to the research and development in  the country or to bind \r\nthe licensee to transfer the improvements made by him to the licensor  or to \r\nforce the licensee to acquire technologies or inputs not needed or desired by \r\nhim; and \r\n \r\n(xviii)  the form of filing application and  manner of  grant of exclusive  marketing \r\nrights]. \r\n(3) The power to make rules under this section shall be subject to the condition of the rules \r\nbeing made after previous publication. \r\n106. Repeal and savings._(1) The Patents and Designs Act, 1911 (Act II of 1911) is hereby \r\nrepealed. \r\n(2) Notwithstanding the repeal of the Patents and Designs Act, 1911 (Act II of 1911) the \r\nrenewal fee in respect of a patent granted under that Act shall be as fixed thereunder. \r\n(3) Save as otherwise provided in sub­section (2), the provisions of this Ordinance shall apply \r\nto any  application for a patent pending on  the commencement of this Ordinance and to any \r\nproceedings consequent thereon, and to any patent granted in pursuance thereof. \r\n(4) Notwithstanding anything contained in this Ordinance, any suit for infringement of a \r\npatent, or any proceedings for revocation of a patent, pending in any Court on the commencement of \r\nthis Ordinance, may be continued and disposed of under the Patents and Designs Act, 1911 (Act II \r\nof 1911) as if this Ordinance had not come into force, 1* * *. \r\n \r\n2[107. Acts done in good faith . No suit, prosecution, or any other legal proceedings shall lie \r\nagainst any government employee or any person exercising any powers or performing any functions \r\nunder this Ordinance or the rules made thereunder for any act or thing which has been done in good \r\nfaith. \r\n \r\n108. Removal of difficulties. If any difficulty arises in giving effect to any of the provisions \r\nof this Ordinance, the Federal Government may, by notification in the official Gazette, make such \r\nprovisions as it deems fit for removing that difficulty]. \r\n \r\n_________________________________________________________________________________ \r\n1The certain words omitted by the Patents (Admt.) Ordinance, 2002 (95 of 2002), s.23. \r\n2New sections 107 and 108 added ibid., s.24",
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