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  "title": "PATENTS ORDINANCE 2000",
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  "text": "PATENTS ORDINANCE, 2000 \r\n(LXI of 2000) \r\nCONTENTS \r\nCHAPTER I \r\nPRELIMINARY \r\n1. Short title, extent and commencement \r\n2. Definitions \r\nCHAPTER II \r\nADMINISTRATION \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 \r\ncertain matters \r\nCHAPTER III  \r\nPATENTABILITY \r\n7. Patentable inventions \r\n8. Novelty \r\n9. Inventive step \r\n10. Industrial application \r\nCHAPTER IV  \r\nAPPLICATIONS \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\n \r\n \r\nCHAPTER V  \r\nEXAMINATION OF APPLICATIONS \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 \r\n20. Power of Controller to require certain information and documents \r\nrelating to  foreign application \r\n21. Acceptance of complete specification \r\n22. Effect of acceptance of complete specification \r\nCHAPTER VI  \r\nOPPOSITION TO GRANT OF PATENT \r\n23. Opposition to the grant of patent \r\n24. Third party observations on patentability \r\nCHAPTER VII \r\nPROVISIONS FOR SECRECY OF CERTAIN INVENTIONS \r\n25. Information  prejudicial  to  defence  of  Pakistan  or  safety  of  public \r\n26. Residents not to apply outside Pakistan without permission \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\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 person \r\n \r\n35. Power of Controller to give directions to co-owners \r\n36. Power of Controller or Court to determine the matter in dispute between \r\nemployer and employee \r\n37. Avoidance of  restrictive  condition in  contracts \r\n38. Determination of certain contracts \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\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\nCHAPTER XII  \r\nRESTORATION OF LAPSED PATENTS \r\n45. Restoration of lapsed patents \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\nCHAPTER XIV \r\nPOWER OF CONTROLELR \r\n50. Controller to have certain power 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\nCHAPTER XVI \r\nCOMPULSORY LICENCES, LICENCES OF RIGHT,  \r\nEXPLOITING OF PATENTS AND REVOCATION \r\n58. Exploitation by a Government agency or third person \r\n59. Powers of Controller in granting compulsory licenses \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 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 made declaration as to non-infringement \r\n68. Power of Court to appoint scientific advisers \r\nCHAPTER XVIII \r\nAPPEALS \r\n69. Appeals \r\n70. Procedure for hearing appeals \r\nCHAPTER XIX  \r\nPENALTIES \r\n71. Penalty for contravention of secrecy provisions relating to certain \r\ninventions \r\n \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  non-registered  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\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 \r\ncountry \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 form patentees \r\n \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 patent \r\n102. Patent to bind the Government \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\n \r\nTEXT \r\nPATENTS ORDINANCE, 2000\r\n1\r\n \r\n[As amended by Patents (Amendment) Ordinance, 2002]\r\n2\r\n \r\n(LXI of 2000) \r\n[2nd December, 2000] \r\nAn \r\nOrdinance \r\nto 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 \r\nIntellectual Property Rights 1994, in accordance with its objectives and principles. \r\nWHEREAS it is expedient to amend and consolidate the law re lating to \r\npatents; \r\nAND WHEREAS the National Assembly and the Senate stand suspended in \r\npursuance of the Proclamation of Emergency of the fourteenth day of October, 1999, \r\nand the Provisional Constitution Order No.1 of 1999. \r\n AND WHEREAS the President is satisfied that circumstances exist which \r\nrender it necessary to take immediate action; \r\n NOW, THEREFORE, in pursuance of the Proclamation of Emergency of the \r\nfourteenth day of O ctober, 1999, and the Provisional Constitution Order No. 1 of \r\n1999, read with the Provisional Constitution (Amendment) Order No. 9 of 1999, and \r\nin exercise of all powers enabling him in that behalf, the President of the Islamic \r\nRepublic of Pakistan is pleased to make and promulgate the following Ordinance:– \r\nCHAPTER- I  \r\nPRELIMINARY \r\n1. Short title, extent and commencement.– (1) This Ordinance may be \r\ncalled the Patents Ordinance 2000. \r\n (2) It extends to the whole of Pakistan. \r\n(3) It sha ll come into force at once except the provisions relating to \r\nexamination, s ealing, gr ant and post-grant matters of the patents relating to \r\nchemical products intended for use in agriculture and medicines, but excluding the \r\ngrant of exclusive marketing rights therefor and mail box filings which shall come into \r\nforce on and from the first day of January, 2005. \r\n2. Definitions.– In this Ordinance, unless there is anything repugnant in the \r\nsubject or context,–  \r\n(a) “assignee” includes the legal representative of deceased assignee and \r\n                                                           \r\n1Notified under F. No. 2(1)/2000-Pub.- in the Gazette of Pakistan, Extraordinary, published from Islamabad on 2 December \r\n2000. \r\n2Notified under F. No. 2(1)/2002-Pub.- in the Gazette of Pakistan, Extraordinary, published from Islamabad on 26 October 2002. \r\n \r\nreferences to the assignee of any person includes references to the \r\nassignee of the legal representative or assignee of that person; \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 \r\ncountry, whether claiming single or multiple priorities from such \r\napplication; \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(e) “date of advertisement” wherever appearing in this Ordinance shall \r\nbe the date on which the relevant Part V of the official Gazette is \r\nactually made available to the public; \r\n(f) “date of filing” in relation to an application for a patent, means– \r\n(i) in case of an application which is post-dated or ante-dated \r\nunder this Ordinance, the date to which it is so post-dated or \r\nante-dated; and \r\n(ii) the date on which it is filed at the Patent Office or its branch \r\noffice; \r\n(g) “District Court” has the meaning assigned to that expression by the \r\nCode of Civil Procedure, 1908 (Act V of 1908); \r\n(h) “exclusive license” means a license from a proprietor of, or an \r\napplicant of, a patent which confers on the licensee, or on the licensee \r\nand persons authorized by him, to the exclusion of all other persons, \r\nincluding the pr oprietor or applicant, any right in respect of the \r\ninvention, to which the pa tent or application relates, and “exclusive \r\nlicensee” and \" non-exclusive licensee\" shall be construed accordingly; \r\n(i) “invention” means any new and useful product or process, in any field \r\nof technology and includes any new and useful improvement of either \r\nof them; \r\n(j) “inventor”  means  the  actual  devisor  of  an  invention,  and  joint  \r\ninventor  shall  be construed accordingly; \r\n(k) “legal representative” means a person who in law represents the \r\nestate of a deceased person; \r\n(ka) “mail box” means the mailbox facility provided under sub-section (9) of \r\nsection 13; \r\n(l) “patent agent” means an advocate or a  person for the time being \r\nregistered under this Ordinance as a patent agent; \r\n(m) “patentee” in relation to a patent, means the person or persons for \r\nthe time being entered on the Register as the grantee or proprietor \r\nof the patent and  includes any subsequent assignee or successor-in-\r\ninterest of a patent recordal of whose name on the Register is pending \r\nwith the Controller; \r\n(n) “patent of addition” means a patent of addition granted in accordance \r\n \r\nwith section 39;  \r\n(o) “Patent  Office”  means  the  Patent  Office  established,  or  deemed  \r\nto  have   been established, under section 4; \r\n(p) “person” means any natural or judicial person and includes any \r\nassociation or body of individuals, whether incorporated or not; \r\n(q) “person interested” includes a person engaged in,  or in promoting, \r\nresearch in the same field as that to which the invention relates; \r\n(r) “prescribed” means prescribed by rules made under this Ordinance; \r\n(s) “process” means any art,  process or method or manner of new \r\nmanufacture  of a product; \r\n(t) “product” means any substance, article, apparatus or machine; \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 \r\nprovision of this Ordinance, if it can be inspected as of right at any \r\nplace in Pakistan by  members  of public, whether on payment or free \r\nof cost ; \r\n(v) “Register” means the Register of Patents maintained under section 54; \r\nand \r\n(w) “rules” means rules made under this Ordinance. \r\nCHAPTER II \r\nADMINISTRATION \r\n3. Appointment of Controller and other officers.– (1) For the purposes of this \r\nOrdinance, the Federal Government shall, by notification  in the official Gazette, \r\nappoint an officer who shall be called the Controller of Patents. \r\n(2) The Federal Government shall appoint such other officers with such \r\ndesignations as it deems fit. \r\n4. Patent Office.– (1) For the purposes of this Ordinance, there shall be \r\nestablished a patent Office: \r\nProvided that until such time the Patent Office is established, the Patent \r\nOffice established under the Patents and Designs Act, 1911 (II of 1911), shall be \r\nthe Patent office for the  purposes of this Ordinance. \r\n (2) The Patent Office shall be under the immediate control of the \r\nController who shall act under  the superintendence and d irection of the Federal \r\nGovernment. \r\n(3) The Patent Office shall be entrusted with all the functions relating to \r\nthe procedure for the grant of patents and for the administration of granted patents \r\nas specified in this Ordinance and rules. \r\n(4) There shall be a seal of the Patent Office and impression of the seal \r\nshall be judicially noticed. \r\n5. Officers and employees incapable of an interest in a patent.– Any \r\n \r\nofficer or a person employed in the Patent Office shall be incapable during the \r\nperiod of his appointment and  for one year thereafter of applying for a patent or \r\nof acquiring, directly or indirectly, except by inheritance or bequest, any patent \r\nissued or to be issued by the Patent Office. \r\n6. Officers and employees not to divulge certain information or advise in \r\ncertain matters.– An officer or a person employed in the Patent Office shall not, \r\nexcept when required or  authorized by this Ordinance or under a direction in \r\nwriting of the Controller or by order of the Court– \r\n(a) divulge any information available to him by virtue of his office in \r\nrespect of  any application for a patent or a patent granted in Pakistan; \r\nor \r\n(b) advise in a matter which is under consideration or is likely to come \r\nunder consideration of the Patent Office in pursuance of this \r\nOrdinance. \r\nCHAPTER III \r\nPATENTABILITY \r\n7. Patentable inventions.– (1) Any invention is patentable, if it is new, involves \r\nan inventive step and is capable of industrial application. \r\n (2) Subject to sub -section (3), the fo llowing sha ll not be regarded as \r\ninvention within the meaning of sub-section (1), namely:– \r\n(a) a discovery, scientific theory or mathematical method; \r\n(b) a literary, dramatic, musical or artistic work or any other creation of \r\npurely aesthetic character whatsoever; \r\n(c) a scheme, rule or method for performing a mental act, playing a  \r\ngame  or doing business; \r\n(d) the presentation of information; and \r\n(e) substances that exist in nature or if isolated therefrom. \r\n (3) The prov isions of sub -section (2) sh all pr event an ything from be ing \r\ntreated  as an invention for the purposes of this Ordinance only to the extent that a \r\npatent or an application for a patent relates to that thing as such. \r\n (4) A patent shall not be granted: \r\n(a) for invention the prevention of commercial exploitation of which  \r\nwould  be necessary to protect the “ordre public”   or morality,  \r\nincluding to protect human, animal or plant life or health or to avoid  \r\nserious prejudice to the environment, provided that such exclusion is  \r\nnot made merely because the exploitation is prohibited by any law for \r\nthe time being in force; \r\n(b) for plants and animals other than micro-organisms, and essentially \r\nbiological processes for the production of plants or animals other \r\nthan  non-biological and microbiological processes; \r\n(c) for diagnostic, therapeutic and surgical methods for the treatment of \r\nhumans or animals; \r\n \r\n(d)  for a new or subsequent use of a known product or process; and \r\n(e)  for a mere change in physical appearance of a chemical product \r\nwhere the chemical formula or process of manufacture remains the \r\nsame provided that this  clause  shall  not  apply  to  an  invention  \r\nfulfilling   the criteria of patentability. \r\n8. Novelty.– (1) An invention shall be considered to be new if it does not form \r\npart of the state of the art. \r\n (2) The state of the art shall comprise– \r\n(a) everything disclosed to the public anywhere in the world, by \r\npublication in tangible form or by oral disclosure, by use or in any \r\nother way, prior to the filing or, where appropriate, the priority date, of \r\nthe application claiming the invention; or \r\n(b) contents of the complete specification and priority documents published \r\nunder section 21 of an application filed in Pakistan; \r\n(c) traditionally developed or existing knowledge available or in \r\npossession of a local or indigenous community. \r\n(3) Notwithstanding the provisions of  sub-section (2),  disclosure of  a \r\npatentable invention in respect of goods shall not constitute, „state of the art‟ if an \r\narticle is exhibited at an official or officially recognized international exhibition within \r\ntwelve months preceding the da te of filing of an application for grant of patent. If \r\nlater on, the right of priority is invoked, then the period shall start from the date of \r\nintroduction of the article into the exhibition.   The Controller may require proof, \r\nwith such docu mentary ev idence as considered necessary, of the identity of the \r\narticle exhibited and the date of its introduction into the exhibition. \r\n(4)  In this section references to the inventor include references to any \r\nproprietor of the invention for the time being. \r\n9.  Inventive step.– An invention shall be considered as involving an inventive \r\nstep if it has not been obvious to a person, prior to the date of application for a \r\npatent, skilled in the art having regard to any matter which forms part of the state of \r\nart by virtue of section 8. \r\n10. Industrial application.– (i) An invention shall be considered to be capable \r\nof  industrial application if it is capable of being manufactured or otherwise industrially \r\nused. \r\nCHAPTER IV \r\nAPPLICATIONS \r\n11. Persons entitled to make an application for patent.– (1) Any of the \r\nfollowing  persons, whether alone or jointly with any other person, may make an \r\napplication for a patent, namely:– \r\n(a)  the true and the first inventor 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 \r\n \r\nbefore his death was entitled to make such application. \r\n12. Right to patent for invention made by employee.– The right to the patent \r\nfor an invention made by an employee during the course of his employment in the \r\narea of activity of the employer shall in the absence of contractual obligation to the \r\ncontrary belong to the inventor unless  the employer proves that the invention \r\ncould not have been made without the use of employer‟s facilities,equipment and \r\nthe like necessary for the invention: \r\nProvided that an invention of exceptional economic value shall entitle the \r\ninventor  to  an equitable remuneration taking into account the nature of his duties, \r\nhis salary and the benefits derived by the employer. \r\n13. Application for patent.– (1) Every application for the patent shall be made in \r\nthe prescribed form and shall be filed at the Patent Office in the prescribed manner \r\nand shall contain a declaration to the effect that the applicant is in possession of an \r\ninvention of which he, or in the case of the joint application, at least one of the \r\napplicants, claims to be the true and the first inventor of or the legal representative \r\nor assignee of such inventor or, as the case may be, inventors, provided that where \r\nthe 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 \r\nmade in the prescribed manner and after  hearing any interested person, insert \r\nthe name of such person as an inventor or co-inventor, as the case may be, if he is \r\nsatisfied th at he be na med as an inv entor of the invention for  which the applicant \r\ndesires to obtain a patent. \r\n(2) Where applications  for  protection  have  been  made  in  one  or  \r\nmore  Convention countries in respect of two or more inventions which are cognate \r\nor of which one is modification of another, a single Convention application may, \r\nsubject to the provisions of section  15,  be made in respect of those inventions \r\nat any time within twelve months from the date of earliest of the said applications for \r\nprotection. \r\n(3) Each application shall relate to one invention only. \r\n(4) The applicant may, before the acceptance of the application, divide it \r\ninto two  or more applications, hereinafter referred to as divisional applications, \r\nprovided that each divisional application shall not  go beyond the disclosure in the \r\nfirst application. \r\n(5) Each divisional application shall be entitled to the filing date and, \r\nwhere application, the priority date of the first application. \r\n(6) The fact that a patent has been granted on an application that did not \r\ncomply with the requirement of  unity of invention sh all not be a ground for the \r\ninvalidation of the patent. \r\n(7) The applicant may at anytime withdraw the application by making a \r\nrequest to the Controller \r\n(8) An application for an invention relating to genetically modified \r\norganisms shall require clearance from the Fed eral Government and sha ll comply \r\nwith such requirement as may be prescribed. \r\n(9) An application for availing exclusive marketing rights for a \r\n \r\npatentable  invention relating to pharmaceutical or agricultural chemical product \r\nshall be filed in the mailbox  provided for this purpose by the Controller who may \r\nrequire the form and manner for submitting such application as may be prescribed. \r\n14. Complete and provisional application.– (1) Every application for a \r\npatent, other  than a Convention application, shall be accompanied by either a \r\ncomplete specification or a provisional specification, and every  Convention \r\napplication shall be accompanied by a complete specification. \r\n(2) Where an application for a patent is accompanied by a provisional \r\nspecification, a complete specification shall be filed within twelve months from the \r\ndate of filing of the application, and if the complete specification is not so filed the \r\napplication shall be deemed to be abandoned. \r\n(3) Where two or more applications in the name of the same applicant are \r\naccompanied by provisional specification in respect of invention which are cognate \r\nor of which one  is  a modification of another, and the Controller is of the opinion \r\nthat the whole of such inventions or such as to constitute a single invention and \r\nproperly be included in one patent, he may allow one complete specification to be \r\nfiled in respect of all such provisional specification. \r\n(4)  Where an  application  for  a  patent,  not  being  a  Convention   \r\napplication,   is accompanied by specification purporting to be a complete \r\nspecification, the Controller may, if the applicant so requests at any time before the \r\nacceptance of the specification, direct that it shall be treated for the purposes of this \r\nOrdinance as a provisional specification, and proce ed with the app lication \r\naccordingly. \r\n(5)  Where a complete specification has been filed in pursuance of an \r\napplication for a patent accompanied by a provisional specification or by a \r\nspecification treated by virtue of a direction under sub-section (4) as a provisional \r\nspecification the Controller may, if the applicant so requests at any time before the \r\nacceptance of the complete specification, cancel the provisional specification and \r\npost-date the application to the date of filing the complete specification. \r\n15. Contents of specification.– (1) Every specification, whether complete or \r\nprovisional,  shall describe in the form and manner as may be prescribed. \r\n(2)  subject to any rules made in this behalf, drawings may, and shall if the \r\nController so requires, be supplied for the purposes of any specification, whether \r\ncomplete or provisional, and any drawings so supplied shall, unless the Controller \r\notherwise directs, be deemed to  form part of the specification, and reference in \r\nthis Ordinance to a specification shall be construed accordingly. \r\n(2A) For a chemical product intended for use in medicine or agriculture, the \r\nspecification shall  be  specific  to  one  chemical  product  only  describing  the  \r\nphysical,  chemical,  pharmacological  and pharmaceutical properties or, as the case \r\nmay be, the properties related to its use in agriculture and its impact on environment. \r\n(2B) Where a biological material is used, the specification shall disclose \r\nthe  place  of origin and source of such  biological material and shall also exh ibit \r\ncompliance with the relevant app licable rules on access, export and use of that \r\nmaterial and where such a material is obtained from Pakistan for use outside \r\nPakistan, the permission of the Federal Government shall be necessary as may be \r\n \r\nprescribed. \r\n(3) Every complete specification shall– \r\n(a) fully and particularly describe the invention and the method by which it \r\nis to be performed; \r\n(b) disclose the invention which is known to the applicant and for which  \r\nhe is entitled to claim protection; and \r\n(c) end with a claim or claims concisely defining the scope of the \r\ninvention for which protection is claimed. \r\n(4) The claim or claims of a complete specification shall relate to a \r\nsingle  invention, shall be clear and succinct and shall be fairly based on the matter \r\ndisclosed in the specification. \r\n(5) Subject to the foregoing provisions of this section, a complete \r\nspecification  filed after a provisional specification, or filed with a Convention \r\napplication, may include claims in  respect of developments of, or additions to, the \r\ninvention which was described in the provisional specification of, as the case may \r\nbe, the invention in respect of wh ich the application for pro tection was made in a \r\nConvention country, being developments or additions in respect of which the \r\napplicant  would be entitled under the provisions of section 11 to make a separate \r\napplication for a patent. \r\n(6) Every complete specification shall be accompanied by an abstract for \r\nthe purposes of giving technical information and the Controller shall determine \r\nwhether the abstract fulfils its purpose and, if it does not, shall instruct the applicant \r\nto make modifications to the satisfaction of the Controller. \r\n(7) The abstract shall merely serve the purpose of technical information, in \r\nparticular, it shall not be taken into account for the purpose of interpreting the scope \r\nof protection. \r\n(8) Claim or c laims in respect of a co mplete specification of a chemical \r\nproduct intended for use in agriculture or medicine shall be structurally defined and \r\nshall relate to a single chemical product only, excluding its derivates and salts, each \r\nof which, with a material or a novel improvement in its claim from the main product, \r\nshall be filed as a separate invention or where  applicable, as a divisional \r\napplication. Where structural description is not possible, as in the case of biological \r\nproducts, the “product by process” claim shall be made and protection shall be \r\nlimited to the product obtained with the claimed process only: \r\nProvided  that  a  claim  which  is  based  on  a  mere  admixture  resulting  \r\nonly  in aggregation of the properties of the component subst ances thereof, or a \r\nprocessing of producing such substance, shall not be allowed. \r\nCHAPTER V \r\nEXAMINATION OF APPLICATIONS \r\n16. Examination of application.– (1) The Controller shall refer to an examiner \r\nevery application in respect of which a complete specification has been filed, for \r\nmaking a report to the Controller after detail scr utiny of the application, \r\nspecification, claims and drawing, if any, to the effect whether the invention is new \r\nand involves an inventive step, and to also determine whether other requirements \r\n \r\nof this Ordinance and rules  have been complied with. \r\n(2) The examiner shall make the report to the Controller as soon as is \r\nreasonably possible, but before the period of eighteen months from the date of filing \r\nof the application in Pakistan. \r\n(3) If the examiner reports that any of the requirements of this Ordinance \r\nand rules are not complied with, the Controller shall give the applicant an \r\nopportunity, or more than one opportunity, to comply with such requirements as \r\nmay be mentioned in the said report and to  amend the application, if necessary, \r\nwithin such time as may be prescribed, failing which the Controller may refuse to \r\nproceed with the application. \r\n(4) If the Controller considers, at any time, before the acceptance of the \r\napplication, that the invention claimed therein has been wholly or in part claimed in a \r\nspecification published on or after the date which the patent applied for would bear, if \r\ngranted appertaining to an application for grant of a patent which , if granted, will be \r\nprior date to the patent applied for, he may require that the applicant‟s specification \r\nbe amended by the insertion of  a reference to such  other specification by way of \r\nnotice to the public. \r\n(5) The  investigation  required  under  this  section  shall not  be  held  in  \r\nany  way  to guarantee the validity of any patent, and no liability shall be incurred by \r\nthe Federal Government or any officer by reason of, or in connection with, any such \r\ninvestigation or any proceeding consequent thereon. \r\n(6)  Unless  an  application  is  accepted  within  eighteen  months  from \r\nthe  date of  the application, the application shall, except where an appeal has been \r\nlodged, be deemed to have been refused: \r\nProvided that where, before, or within three months after the expiration of the \r\nsaid period of eighteen months, a request is made to the Controller for an extension \r\nof time, the application shall, on payment of the prescribed fee, be continued for \r\nany period so requested not exceeding in all three months from the expiration of \r\nthe said period of eighteen months: \r\nProvided further that the Controller may upon a written request made by an \r\napplicant in  the pr escribed manner postpone the formal acceptance of the \r\napplication until such date, not later than twenty-one months from  the date of filing \r\nof the complete specification, as may be requested by the applicant. \r\nExplanation.– When a request is made under any  of the above  provisos the \r\nController may permit the applicant to put the application in order of acceptance but \r\nshall not pass formal orders of acceptance and sha ll not proceed to advertise the \r\nacceptance till the date requested by the applicant. \r\n(7) Notwithstanding anything in the preceding sub-sections, all \r\napplications  claiming protection for chemical products intended for use in medicine \r\nor agriculture filed after the first day of January, 1995, in accordance w ith Article \r\n70(8) and 70(9) of the World Trade Organization Agreement on Trade  Related \r\nAspects of Intellectual Property Rights (TRIPs), shall be dealt with in accordance \r\nwith  sub-section (3) of section 1. \r\n17. Reference to other patent.– (1) If, in consequence of the investigation \r\nunder Section 16, it appears to the Controller that an invention in respect of which \r\n \r\napplication for a patent has been made cannot be performed without substantial risk \r\nof infringement of a claim of any other patent, he may direct that a reference to that \r\nother patent shall be inserted in the applicant‟s complete specification by way of \r\nnotice 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 \r\nare  reasonable grounds for contesting the validity of the said claim of \r\nthe other patent; or \r\n(b) the complete specification is amended to the satisfaction of the \r\nController. \r\n(2) Where,  after  a  reference  to  another  patent  has  been  inserted  \r\nin a complete specification in pursuance of a direction under sub-Section (1)– \r\n(a) that other patent is revoked or otherwise ceases to be in force; \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 \r\nrelevant claim of that other  patent is invalid or is  not  infringed by \r\nany working  of the  applicant‟s invention, the Controller may, on the \r\napplication of the applicant, delete the reference to that other patent. \r\n18. Substitution of applicants, etc.– (1) If the Controller is satisfied, on an \r\napplication made in the prescribed manner at any time before a patent has been \r\ngranted, that by virtue of any  assignment or agreement in writing made by the \r\napplicant or one of the applicants for the patent, or by operation of law, the claimant \r\nwould, if the patent were then granted, be entitled thereto or to the interest of the \r\napplicant 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 \r\nshall proceed in the name of the claimant or in the names of the claimants and the \r\napplicant or the other joint applicant or applicants, as the case may require. \r\n(2) No such direction under sub-section (1) shall be given by virtue of any \r\nassignment or agreement made by one of two or more joint applicants for a patent \r\nexcept with the consent of the other joint applicant or applicants. \r\n(3) No such direction under sub-section (1) shall be given by virtue of any \r\nassignment or agreement 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 \r\nperson  by whom  the  assignment  or  agreement  was  made  that  \r\nthe   assignment  or agreement relates to the invention in respe ct of \r\nwhich that application is made; \r\n(c) the  rights  of  the  claimant  in  respect  of  the  invention  have  been  \r\nfinally established by a decision of a court; or \r\n(d) the Controller gives directions for enabling the application to proceed \r\nor for regulating the manner in which it should be proceeded with \r\nunder sub-section (5). \r\n \r\n(4) Where one of two or more joint applicants for patent dies at any \r\ntime before the patent has been granted, the Controller may, upon a request in that \r\nbehalf made by the survivor or survivors, and with the consent of the legal \r\nrepresentative of the deceased, direct that the application shall proceed in the name \r\nof the survivor or survivors alone. \r\n(5) If any dispute arises between joint applicants for a patent whether or in \r\nwhat manner the application should be proceeded with, the Controller may, upon \r\napplication made to him in the prescribed manner by any of the parties, and after \r\ngiving to all parties concerned an opportunity of being heard, give such directions as \r\nhe thinks fit for enabling the application to proceed in the name of one or more of the \r\nparties alone or for regulating the manner in which it should be proceeded with, or \r\nfor both those purposes, as the case may require. \r\n19. Time for putting application in order of acceptance.– (1) If on the \r\nexpiration of the period of eighteen months specified in sub-section (6) of section 16 \r\nor the extended period– \r\n(a)  an appeal to the High Court is pending in respect of an application for \r\na patent for an invention; or \r\n(b) in the case of an application for a patent of addition, an appeal to the \r\nHigh Court is pending in respect either of that application or the \r\napplication for the main invention, the time within which the \r\nrequirements of the Controller shall be complied with shall, on an \r\napplication made by  the applicant before the expiration of the said \r\nperiod of eighteen months or the extended period, as the case may be, \r\nbe extended until such date as the High Court may determine. \r\n(2) If the time within which the appeal mentioned in sub-section (1) may \r\nbe instituted has not expired, the Controller may extend the period of eighteen \r\nmonths or, as the case may be, the extended period, until the expiration of  such \r\nfurther period as he may determine: \r\nProvided that, if an appeal has been filed during the said further period and \r\nthe High Court has granted any extension of t ime for co mplying wi th the \r\nrequirements of the Controller, then the requirements may be complied with within \r\nthe time granted by the High Court. \r\n20. Power of Controller to require certain information and documents \r\nrelating to foreign application.– (1) The applicant shall, when required by the \r\nController, furnish him with the date and number of any application for a patent filed \r\nby him abroad, hereinafter referred to as foreign application, relating to the same or \r\nessentially the same invention as that claimed in the application filed in Pakistan. \r\n(2) The applicant shall, when required by the Controller, furnish him with \r\nthe following documents relating to one of the foreign applications referred to in sub-\r\nsection (1), namely:– \r\n(i) a copy of any communication received by the applicant concerning the \r\nresults of any search or examination carried out in respe ct of the \r\nforeign application; \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 \r\ncopy of any final decision invalidating the patent granted on the basis of foreign \r\napplication referred to in sub-section (1). \r\n21. Acceptance of complete specification.– On the acceptance of a complete \r\nspecification, the Controller shall give notice thereof to the applicant and shall \r\nadvertise in the  official Gazette the fact that specification has been accepted and \r\nthereupon the application and the  specification, and the priority documents, if any, \r\nfiled in pursuance thereof shall be open to public inspection. \r\n22. Effect of acceptance of complete specification.– After the acceptance of \r\nan application and un til the date of sealing a patent in respect thereof, or the \r\nexpiration of the time for sealing, the applicant shall have  the like privileges and \r\nrights as if a patent for the invention had been sealed on the date of the acceptance \r\nof the application: \r\nProvided that the applicant shall not be entitled to institute any proceedings \r\nfor infringement until the patent has been sealed. \r\nCHAPTER VI \r\nOPPOSITION TO GRANT OF PATENT \r\n23. Opposition to the grant of patent.– (1) At any time within four months from \r\nthe date of advertisement of the acceptance of a complete specification under this \r\nOrdinance, any person may give notice to the Controller of opposition to the grant of \r\npatent on any of the following grounds, namely:– \r\n(a) that the applicant for the patent obtained the invention or any part \r\nthereof from him or from the person of whom the opponent is the \r\nlegal representative, assignee, agent or attorney; \r\n(b) that the invention is not a patentable invention within the meaning of \r\nthis Ordinance; \r\n(c) that the specification does not disclose the invention in a manner \r\nclear and complete enough for it to be carried out by a person skilled in \r\nthe art; \r\n(d) that the claims are not clear or extend beyond the scope of the \r\ndisclosures in  the complete specification as originally filed; and \r\n(e) that  the  complete specification  describes  or  claims  an  invention  \r\nother  than  that described in the provisional specification and that \r\nsuch other invention either forms the subject of an application made \r\nby the opponent for a patent which if  granted would bear a date in \r\nthe interval between the date of the application and the leaving of the \r\ncomplete specification, or has been made available to the public by \r\npublication in any document in that interval. \r\n(2) Where a notice is given under sub-section (2), the Controller shall give \r\nnotice of the opposition to the applicant, and shall, before deciding the case, give \r\nto the applicant and the  opponent an opportunity of being heard. \r\n \r\n24. Third party observations on patentability.– (1) At any time after the \r\npublication  of  the specification under section 21, any person may make \r\nobservations in writing to the Controller on the novelty of the invention giving \r\nevidence in support of his observations and the Controller shall consider the \r\nobservations in the light of the evidence made available to him before the grant of \r\npatent. \r\n(2) The person who  makes observations under sub-section (1) shall not \r\nbecome a party to the proceedings under this Ordinance before the Controller by  \r\nreason only that he has made the observations, failing which the observations shall \r\nbe rejected as if not filed at all. \r\nCHAPTER VII \r\nPROVISIONS FOR SECRECY OF CERTAIN INVENTIONS \r\n25. Information pre judicial to defense of P akistan or sa fety of p ublic.– (1) \r\nWhere  an application for a patent in respect of an invention is filed in the Patent \r\nOffice and it appears to the Controller that the invention is one of the class notified \r\nto him by the Federal Government as being one the publication of which might be \r\nprejudicial to the defense of Pakistan, or if he himself thinks so, then he may give \r\ndirections 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  spe cification of any \r\napplication so  f iled contains information the publication of which might be \r\nprejudicial to the safety of the public, he  may give d irections prohibiting or \r\nrestricting the publication of that information or its communication to any person until \r\nthe 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 \r\nproceed to the stage where it is in order for acceptance, but specification shall not be \r\npublished. \r\n(4) Where the Controller gives directions under this section with respect \r\nto any application, he shall give notice of the application and of the directions to \r\nthe Federal Government and the following provisions shall then have effect, namely: \r\n(a) the Federal Government shall, on receipt of the notice, consider \r\nwhether the publ ication of the invention or  the publication or \r\ncommunication of the infor mation in question would be prejudicial to \r\nthe defense of Pakistan or the safely of the public; \r\n(b) if the Federal Government determine under clause (a) that the \r\npublication of the  specification or  the  pub lication or  communication  \r\nof  that information would be prejudicial to the safety of the public, it  \r\nshall given notice to the Controller who sha ll con tinue his d irection \r\nunder sub-section (2) until they are revoked under clause (e); \r\n(c) if the Federal Government determine under clause (a) that the \r\npublication of the specification or the publication or communication of \r\nthat information would be prejudicial to the defence of Pakistan or the \r\nsafety of the public, it sha ll, unless a notice und er clause  (d)  has  \r\npreviously been given to the Controller, reconsider that question during \r\nthe period of nine months from the date of filing the application and at \r\n \r\nleast once in every subsequent period of twelve months; \r\n(d) If on consideration of an application at any time it appears to the  \r\nFederal Government that the publication of the specification or the  \r\npublication or communication of the information contained in it would  \r\nnot, or would no longer, be prejudicial to the defence of Pakistan or \r\nthe safety of the public, it shall g ive no tice to the Controller to that \r\neffect; and \r\n(e) On  receipt  of  a  notice  under  clause  (d),  the  Controller  shall  \r\nrevoke  the direction and may, subject to such conditions, if any, as \r\nhe thinks fit, extend the time for doing any thing required or authorized \r\nto be done by or under this Ordinance in connection with the \r\napplication, whether or  not that time has previously expired. \r\n(5) Where a complete specification filed in pursuance of an application for \r\na patent for an invention in respect of which directions have been given under this \r\nsection is accepted before the directions are revoked; then– \r\n(a) if any use of the invention is made by or on behalf or to the order \r\nof  the Federal Government, the provisions of section 58 shall apply in \r\nrelation to that use as if the patent had been granted for the invention; \r\nand \r\n(b) if it appears to the Federal Government that the applicant for the \r\npatent has suffered hardship by reason of the continuance in force of \r\nthe directions, the Federal Government may make su ch payment, if \r\nany, by way of compensation to the applicant as appears to the \r\nFederal Government to be reasonable having regard to the inventive \r\nmerit and utility of the invention, the purpose for which it is designed \r\nand any other relevant circumstances. \r\n(6) Where a patent is granted in pursuance of an application in respect of \r\nwhich d irections have been given under this section, no renewal fees shall be \r\npayable in respect of any period during which those directions were in force. \r\n26. Residents not to apply outside Pakistan without permission.– (1) No \r\nperson  resident in Pakistan shall, without written authority granted by the Controller, \r\nfile or cause to be filed outside Pakistan an application for the grant of a patent for \r\nan invention unless– \r\n(a) an app lication for patent for the same invention h as been filed in the \r\nPatent Office not less than s ix w eeks b efore the application outside \r\nPakistan; and \r\n(b) either no directions have been given under section 25 in relation to \r\nthe application in Pakistan or all such directions have been revoked. \r\n(2) The provisions of sub-section (1) shall not apply in Pak istan to an \r\ninvention in respect of  which an application for a patent has first been filed in a \r\ncountry outside Pakistan by a person resident outside Pakistan. \r\n \r\nCHAPTER VIII \r\nGRANT AND SEALING OF PATENT \r\n27. Grant and sealing of patent.– (1) Subject to the provisions of this Ordinance \r\nwith respect to opposition and to any power of the Controller to refuse the grant, a \r\npatent sealed with the seal of the Patent Office shall, if the request is made within \r\nthe time allowed under this section, be granted to the applicant or applicants within \r\nthat time or as soon as may be thereafter, and the date on which the patent is \r\nsealed shall be entered in the Register. \r\n(2) Subject to the provisions of this Ordinance with respect to patents \r\nof  addition, a request under this section for the sealing of a patent shall be made \r\nnot later than the expiration of six months from the date of the pub lication of the \r\ncomplete specification: \r\nProvided that– \r\n(a) where at the expiration of the said six months any proceedings in \r\nrelation to  the application for the patent is pending in any court or \r\nbefore the Controller, the request may be made within three months \r\nafter the final determination of that proceeding; and \r\n(b) where the applicant or one of the applicants has died before the \r\nexpiration of the time within which under the provisions of this sub-\r\nsection the request could otherwise be made, the said request may be \r\nmade at any time within twelve months after the date of the death or at \r\nsuch later time as the Controller may allow. \r\nExplanation.– Any proceedings shall be deemed to be pending so long as the \r\ntime for any appeal therein has not expired, and any proceedings shall be deemed \r\nto be finally determined when the time for any appeal therein has expired without the \r\nappeal being brought. \r\n(3) The period for making the request under sub-section (2) for the \r\nsealing of a patent may be extended by the Controller by six months if the \r\napplication is made and the prescribed fee paid within the extended period. \r\n28. Amendment of patent granted to a deceased person.– Where, at any time \r\nafter a patent has been sealed in pursuance of an application under this Ordinance, \r\nthe Controller is satisfied that the person to whom the patent was granted had died, \r\nor, in the case of a  body corporate, had ceased to exist, before the pa tent was \r\nsealed, he may amend the patent by substituting for the name of that  person the \r\nname of the person to whom the patent ought to have been granted, and the \r\npatent shall have effect, and shall be deemed always to have had  effect, \r\naccordingly. \r\n29. Date of patent.– (1) Subject to the other provisions of this Ordinance, every \r\npatent shall be da ted as of the filing date of the application and in case of a \r\nConvention application the date of such earliest application filed in the Convention \r\ncountry 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) Subject to other provisions of this \r\n \r\nOrdinance, the holder of a va lid patent in Pakistan shall have the following rights, \r\nnamely:– \r\n(a) Where the subject matter of Patent is a product, the holder of valid \r\npatent  may prevent third parties not hav ing the owner‟s consent from \r\nthe acts of making, using,  offering for sa le, selling, or importing for \r\nthese purposes that product; and \r\n(b) where the subject matter of a patent is a process, the holder of a \r\nvalid patent may prevent third parties not having the owner‟s consent \r\nfrom the act of using the process, and from the acts of using, offering \r\nfor sale, selling , or importing for these purposes at least the product \r\nobtained directly by that process. \r\n(2) The holder of a valid patent shall also have the right to assign, or \r\ntransfer  by succession, the patent and to conclude licensing contracts. \r\n(3) The owner of the patent shall, in addition to any other rights, \r\nremedies or  actions available to him have the right, subject to sub-section (4) and \r\nsection 59, to institute court proceedings against any person who infringes the \r\npatent by performing, without his agreement, any of the acts referred to in sub- \r\nsection (2) or who performs acts which make it likely that infringement will occur. \r\n(4) Where a person has filed an application in the mailbox, in \r\naccordance with  sub- section(9) of section 13, for protection of an invention \r\nrelating to a pharmaceutical or  agriculture  chemical product, exclusive marketing \r\nrights shall be granted for a period of five years  after obtaining marketing \r\napproved 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 \r\nbeen filed and a patent granted for  that  product in any Convention country and \r\nmarketing approval obtained in such country; \r\n(4A) where  a  person  has  made  an  invention  in  Pakistan  in  respect of  \r\na  process  of manufacture of any of the products referred to in sub-section (4) and \r\nhas obtained a patent for the same and has filed an application in the mailbox for \r\nprotection of the invention, and has been  granted marketing approval thereof, then \r\nhe shall have the exclusive marketing rights for that  product  for a period of five \r\nyears after obtaining marketing approval or until a product patent is granted or \r\nrejected whichever period is shorter. \r\n(5) The rights under the patent shall not extend to– \r\n(a) acts in respect of articles which have been put on the market \r\nanywhere in the world by the owner of the patent or with his consent \r\nor by an  authorized person or in any other legitimate manner such as \r\ncompulsory licenses; \r\n(b) the use of articles on an aircraft, land vehicles or vessels of other \r\ncountries which temporarily or accidentally enter the airspace, \r\nterritory  or waters of Pakistan; \r\n(c) acts done only for experimental purposes relating to a  patented \r\ninvention; \r\n(d) acts performed by any person who in good faith, before the filling or, \r\nwhere priority is claimed, the priority date of the application on which \r\n \r\nthe patent is granted in Pakistan, was using the invention or was  \r\nmaking effective and serious preparations for such use; or \r\n(e) acts,  including  tests,  necessary  for  the  approval  of  a  product  \r\nfor its commercialization after the expiration of the patent; or \r\n(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 sub-section (5), may \r\nbe transferred or devolve only together with the enterprise or business, or with that \r\npart of the enterprise or business, in which the use of preparations for use have been \r\nmade. \r\n31. Term of patent.– The term of a patent under this Ordinance shall be twenty \r\nyears from the filing date. \r\n32. Grant of patents to be subjected to certain conditions.– (1) \r\nNotwithstanding anything in section 31, a patent shall cease to have effect on the \r\nexpiration of a period for the payment of any renewal fee if that fee is not paid within \r\nthe prescribed period or within the period as extended under this section. \r\n(2) The period prescribed for the payment of any renewal fee shall be \r\nextended to such period not being more than six months if the request is made to \r\nthe Controller and the renewal  fee and the prescribed additional fee is paid before \r\nthe expiration of the extended period. \r\nCHAPTER IX \r\nMISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS \r\n33. Priority date in case of invention obtained from other person.– (1) Where \r\nan application is  made for a patent for an invention which has been  claimed in a \r\ncomplete specification filed in pursuance of any other such application, then if– \r\n(a) the Controller has refused to grant a patent in pursuance of that other \r\napplication on the ground spec ified in clause (a) of sub-section (1) of \r\nsection 23; \r\n(b) a patent granted in pursu ance of that other application has been \r\nrevoked by the High Court under section 46 or by the Controller under \r\nsection 47 on the ground specified in clause (a) of sub-section (1) of \r\nsection 23; or \r\n(c) the complete specification filed in pursu ance of the said other \r\napplication has been amended by the exclusion of the claim relating to \r\nthe said invention in consequence of a finding by the Controller that the \r\ninvention w as obtained by the applicant or patentee from any other \r\nperson, the Controller may direct that the first-mentioned application \r\nand any specification filed in pursuance thereof shall be deemed, for \r\nthe purposes of the provisions of this Ordinance relating to the priority \r\ndate of claims of complete specification, to have been filed on the date \r\non which the corresponding document was or was deemed to have \r\nbeen filed in the proceedings upon the said other application. \r\n34. Grant of patent to two or more person.– (1) Where a patent is granted \r\n \r\nto two or  more persons, each of those persons shall, unless an agreement to the \r\ncontrary is in force, be entitled  to an equal undivided share in the patent. \r\n(2) Subject to the provisions of this section and section 35, where two or \r\nmore persons are registered as grantee or proprietor of a patent, then, unless an \r\nagreement to the contrary is in force, each of those persons shall be entitled, by \r\nhimself or his agents, to exploit, use, exercise and sell the patented invention for his \r\nown benefit without accounting to the other person or persons. \r\n(3) Subject to the provisions of this section and section 35 and to any \r\nagreement for the time being in force, where two or more persons are registered as \r\ngrantee or proprietor of a patent, then, a licence under a patent shall not be granted, \r\nand a share in a patent shall not be  assigned, by one of such persons, except with \r\nthe consent of the other person or persons. \r\n(4) Where a patented article is sold by one of two or more persons \r\nregistered as grantee or  proprietor of the patent relating to that article, the \r\npurchaser and any person claiming through him shall be entitled to deal with it in the \r\nsame 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 \r\napplicable to  the ownership  and  devolution  of  movable  property  generally  shall  \r\napply  in  relation  to  patents,  and  nothing contained in sub-section (1) or sub-\r\nsection (2) shall affect the mutual rights or obligations of trustees or of the legal \r\nrepresentatives of a deceased person or their rights or obligations as such. \r\n35. Power of Controller to give directions to co-owners.– (1) Where two or \r\nmore persons are registered as grantee or proprietor of a patent, the Controller \r\nmay, upon application made to  him in the prescribed manner by any of those \r\npersons, give such directions in accordance with the application as to the sale or \r\nlease of the patent or any interest therein, the grant of licences under the patent, or \r\nthe exercise of any right under section 39 in relation thereto, as he thinks fit. \r\n(2) If any person registered as grantee or proprietor of the patent fails to \r\nexecute  any instrument or to do any other thing required for the carrying out of any \r\ndirection given und er this section within fourt een days after being requested in \r\nwriting so to do by any of the other persons so registered, the Controller may,  upon \r\napplication made to him in the prescribed manner by any such  o ther person, \r\ngive directions empowering any person to execute that instrument or to do that thing \r\nin the name and on behalf of the person in default. \r\n(3) Before  giving  directions  in  pursuance  of  an  application  under  this  \r\nsection, the Controller shall give an opportunity of being heard– \r\n(a) in the case of an application under sub-section (1), to the other  \r\nperson  or persons r egistered as grantee or proprietor of the patent; \r\nand \r\n(b) in the case of an app lication under sub-section (2), to the person in \r\ndefault. \r\n (4) No direction shall be given under this section so as to affect the mutual \r\nrights or obligations of trustee or of the legal representatives of a deceased person, \r\nor their rights or obligations as such. \r\n \r\n36. Power of Controller or Court to determine the matter in dispute between \r\nemployer and employee.– (1) Where a dispute arises between an employer and a \r\nperson who is or was at the material time his employee as to the rights of the parties \r\nin respect of an invention made by the employee either alone or jointly with other \r\nemployees or in respect of any patent granted or to be granted in respect thereof, \r\nthe Controller may, upon application made to him in the prescribed manner by either \r\nof the parties and after giving to each of them an opportunity of being heard, \r\ndetermine the matter in dispute, and may make such orders for giving effect to his \r\ndecision as he considers expedient: \r\nProvided that, if it appears to the Controller upon an application under this \r\nsection that the matter in dispute involves questions which should he determined by \r\nthe Court, he may decline to deal therewith. \r\n(2) In proceedings before the Court between an employer and a person \r\nwho is or was at the material time his employee, or upon an application made to the \r\nController under sub-section (1), the Court or, as the case may be, the Controller \r\nmay, if satisfied that both the parties are entitled  to the benefit of an invention \r\nmade by the employee, by order provide for the apportionment between them of \r\nthe benefit of the invention, and of any patent granted or to be granted in respect \r\nthereof, in such manner as the Court or, as the case may be, the Controller \r\nconsiders just. \r\n(3) A decision of the Controller under this section shall have the same \r\neffect as between the parties and persons claiming under them as a decision of the \r\nCourt. \r\n37. Avoidance of  restrictive  cond ition in  contracts.– (1)  Subject to  the  \r\nprovisions of  this section, any condition of a contract for the sale or lease of a \r\npatented article or of an article made by a patented process or for license to exploit \r\na patented article or process, or relating to any such sale, lease or license, shall be \r\nvoid so far as it purports– \r\n(a) to  require  the  purchaser, lessee  or  licensee  to  acquire  from the  \r\nvendor,  lessor  or licensor, or his nominees, or prohibit him from \r\nacquiring from any specified person, or from acquiring except from the \r\nvendor, lessor or licensor, or his nominees, any article other than the \r\npatented article or an article made by the patented process; or \r\n(b) to prohibit the purchaser, lessee or licensee from using articles, \r\nwhether  patented or not, which are not supplied by, or any patented \r\nprocess which does not belong to, the vendor, lessor or licensor, or \r\nhis nominees, or to restrict the  right of the purchaser, lessee or  \r\nlicensee to use any such article or process. \r\n(2) In proceedings against any person for infringement of a patent, it shall \r\nbe a defence to prove that at the time of the infringement there was in force a \r\ncontract relating to the patent made by or with the consent  of the plaintiff and \r\ncontaining a condition void by virtue of this section. \r\n(3) A condition of a contract shall not he void by virtue of this section if– \r\n(a) at the time of the making of the contract the vendor, lessor or \r\nlicensor was willing to sell or lease the article, or grant a license to use \r\n \r\nor exploit the ar ticle or  process,  as  the  case  may  be,  to  the  \r\npurchaser, lessee  or  licensee,  on reasonable terms specified in the \r\ncontract and without any such condition as is mentioned in sub-section \r\n(1); and \r\n(b) the  purchaser, lessee  or  licensee  is  entitled  under  the  contract  to  \r\nrelieve himself of his liability to observe the condition upon giving to the \r\nother party three  months  notice  in  writing  and  subject to  payment  \r\nto  him  of  a  just compensation. \r\n38. Determination of certain contracts.– Any contract for the sale or lease of a \r\npatented article or for license to manufacture, exploit a patented article or process, \r\nor relating to any such sale, lease or license, whether made before or after the \r\ncommencement of this Ordinance, may at any time after the patent or all the \r\npatents by which the article or process was protected at the time of the making of \r\nthe 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 \r\ngiving three months notice in writing to the other party. \r\nCHAPTER X \r\nPATENTS OF ADDITION \r\n39. Patents of addition.– (1) Where an application is made for a patent in \r\nrespect of  any improvement in or modification of an invention, hereinafter \r\nreferred to as the “main  invention”,  and the applicant also applies or has applied \r\nfor a patent for that invention or is the  patentee in respect thereof, the Controller \r\nmay, 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 \r\nanother invention, is the subject of an independent patent and the patentee in \r\nrespect of that patent is also the patentee in respect of the patent for the main \r\ninvention, the Controller may, if the patentee so requests, by order revoke the patent \r\nfor the improvement or the modification and grant to the patentee a patent of addition \r\nin 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 \r\nof filing of the complete specification was the same as or later than the date of filing \r\nof the complete specification in respect of the main invention. \r\n(4) A patent of addition shall not be scaled before the sealing of the \r\npatent for the main invention, and if the period within which, but for this provision, a \r\nrequest for the sealing of a patent of addition could be made expires before the \r\nperiod within which a request for the sealing of the  patent for the main invention \r\nmay be so made, the request for the scaling of the patent of addition may be made \r\nat any time within the last-mentioned period. \r\n40. Term of patents of addition.– (1)  A patent of addition shall be granted for a \r\nterm equal to that of the patent for the main invention, or so much thereof as is \r\nunexpired, and shall remain in force during that term or until the previous cesser of \r\nthe patent for the main invention and no longer: \r\nProvided that– \r\n \r\n(a) if the term of the patent for the main invention is extended  under the \r\nforegoing provisions of this Ordinance, the term of the patent of \r\naddition may also be extended accordingly; and \r\n(b) if the patent for the main invention is revoked under this Ordinance, the \r\ncourt or, as the case may be, Controller may order that the patent of \r\naddition  shall become an independent patent for the remainder of the \r\nterm of the patent for the main invention, and thereupon the patent \r\nshall continue in force as an independent patent accordingly. \r\n(2) No renewal fees shall be payable in respect of a patent of addition, \r\nbut, if any such patent becomes an independent patent by virtue of an order under \r\nsub-section (1), the same fees shall thereafter be payable, upon the same dates, as \r\nif the patent had been originally granted as an independent patent. \r\n41. Patent of addition not to be refused, etc.– The grant of a patent of \r\naddition shall not be r efused, and a patent granted as a patent of addition shall not \r\nbe revoked or invalidated on the ground on ly that the invention claimed in the \r\ncomplete specification does not involve any inventive step having regard to any \r\npublication or use of– \r\n(a) the main invention described in the complete specification relating \r\nthereto; or \r\n(b) any improvement in or modification of the main invention described in \r\nthe complete specification of a patent of addition to the patent for \r\nthe main invention or of an application for such a patent of addition, \r\nand the validity of a patent of addition shall not be questioned on the \r\nground that the invention ought to have been the subject of an \r\nindependent patent. \r\nCHAPTER XI \r\nAMENDMENT OF SPECIFICATION \r\n42. Amendment of specification with leave of Controller.– (1) Subject to the \r\nprovisions of section 44, the Controller may, upon an application made under this \r\nsection by an applicant for a patent or a patentee, allow the application for the \r\npatent or the complete specification  to be amended subject to such conditions, if \r\nany, as the Controller thinks fit: \r\nProvided that the Controller shall not allow a specification to be amended \r\nunder this section upon an application made while any action before the Court for \r\ninfringement of the patent or any proceeding before the court for the revocation of \r\nthe patent is pending. \r\n(2) Every application for leave to amend an application for a patent or a \r\nspecification under this section shall state the nature of the proposed amendment \r\nand give full particulars of the reasons for which the application is made. \r\n(3) Every application for leave to amend an application for a patent or a \r\nspecification under this section made after the acceptance of the complete \r\nspecification and the  nature of the proposed amendment shall be advertised in the \r\nprescribed manner. \r\n(4) Within the prescribed period after the advertisement of an \r\n \r\napplication under  sub- section (3), any person may give notice to the Controller of \r\nopposition thereto, and where such a notice is given within the period aforesaid, the \r\nController shall give notice to the person by whom the application is made and shall \r\ngive to that person and to the opponent an opportunity of being heard before he  \r\ndecides the case. \r\n(5) This section shall not apply in relation to any amendment of a \r\nspecification effected in proceedings in opposition to the grant of a patent or effected \r\nin pursuance of any provision of this Ordinance authorizing the Controller to direct a \r\nreference to another specification or patent to be inserted, or to refuse to grant a \r\npatent or to revoke a patent, unless the specification is amended to his satisfaction. \r\n43. Amendment of specification with leave of High Court.– (1) In any \r\nproceeding before the High Court for the revocation of a patent, the High Court may, \r\nsubject to the provisions of section 44, by order allow the patentee to amend his \r\ncomplete specification in such manner, and subject to such terms as to costs, \r\nadvertisements or otherwise, as the High Court may think fit, and if in any such \r\nproceedings for revocation the H igh Court decides that the patent is invalid, the \r\nHigh Court may allow the specification to be amended under this section instead of \r\nrevoking the patent. \r\n(2) Where an application for an order under this section is made to the \r\nHigh Court, the applicant shall give notice of the application to the Controller, and \r\nthe Controller shall be entitled to appear and be he ard, and shall appear if so  \r\ndirected by the High Court. \r\n44. Supplementary provisions as to amendment of specification.– (1) No \r\namendment of specification shall be allowed, except for the purpose of correcting \r\nan obvious  mistake,  the effect of which would be that the specification as \r\namended would claim or describe matter not in substance disclosed in the \r\nspecification before the amendment. \r\n(2) Where, after the date of the publication of a complete specification, \r\nany amendment of the specification is allowed or approved by the Controller or the \r\nHigh Court under this Ordinance, the right of the patentee or applicant to make the \r\namendment shall not be called in  question  except on the ground of fraud, and the \r\namendment shall for all purposes be deemed to form part of the specification: \r\nProvided that in construing the specification as amended reference may \r\nbe made to  the specification as originally published \r\n(3) Where, after the date of the publication of a complete specification, \r\nany amendment of the specification is allowed or approved under this section, the \r\nfact that the specification has been amended shall be advertised in the official \r\nGazette. \r\nCHAPTER XII \r\nRESTORATION OF LAPSED PATENTS \r\n45. Restoration of lapsed patents.– (1) Where a patent has ceased to have \r\neffect by reason of a failure to pay any renewal fee within the prescribed period, an \r\napplication for the restoration of the patent may be made in the prescribed manner \r\nto the Controller under this section within eighteen months from the date on which \r\n \r\nthe patent ceased to have effect. \r\n(2) An application under this section may be made by the person who was \r\nthe proprietor of the patent or by any other person who would have been entitled to \r\nthe patent if it had not ceased to have effect, and where the patent was held by two \r\nor more persons jointly, the application may, with the leave of the Controller, be  \r\nmade by one or more of them without joining the others. \r\n(3) If the Controller is satisfied that– \r\n(a) the proprietor of the patent took reasonable care to see that any \r\nrenewal fee was  pa id within the prescribed period or that the fee \r\nand any  prescribed add itional fee were paid within six months \r\nimmediately following the end of that period; and \r\n(b) those fees were not so paid because of circumstances be yond his \r\ncontrol, the Controller shall by order restore the patent on payment \r\nof any unpaid renewal fee and any  prescribed additional fee. \r\n(4) An order under this section may be made subject to such conditions as \r\nthe Controller thinks fit and if the proprietor of the patent does not comply with any \r\ncondition of such an order, the Controller may revoke  the order and give such \r\ndirections consequential on the revocation as he thinks fit. \r\n(5) Where an order is made under this section and, between the end of \r\nthe period of six months beginning with the date when the patent concerned ceased \r\nto have effect and the date of the application under  this section, any person has \r\nbegun in good faith to use the patented invention or has made effective arid serious \r\npreparations to make use of the invention, he shall, after the order comes into \r\nforce, have the right to make use of the invention and the said use shall not amount \r\nto an infringement of the patent concerned. \r\n(6) Where a patented product is disposed of by any person to another in \r\nexercise of a right conferred by sub-section (5), that other  and any other person \r\nclaiming through him shall be entitled to deal with the product in the same way as if it \r\nhad been disposed of by a sole registered proprietor. \r\nCHAPTER XIII \r\nREVOCATION AND SURRENDER OF PATENTS \r\n46. Revocation of patent by High Court.– (1) Subject to the provisions of this \r\nOrdinance, a patent may, on the petition of any per son interested or of the Federal \r\nGovernment or on a counter-claim in a suit for infringement of the patent, be \r\nrevoked in part or in whole by the high Court on any one or more of the grounds \r\nupon which grant of patent may be refused. \r\n(2) Without prejudice to the provisions contained in sub-section (1), a \r\npatent  may  be revoked by the High Court on the petition of the Federal \r\nGovernment, if the High Court is satisfied that the patentee has without reasonable \r\ncause failed to comply with the request of the Federal Government to make, use or \r\nexercise 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 \r\nshall be served on all persons appearing from the Register to be proprietor of that \r\n \r\npatent or to have shares or interests therein, and it shall not be necessary to serve a \r\nnotice on any other person. \r\n47. Revocation of patent by Controller.– (1) At any time within twelve months \r\nafter the sealing of a patent, any person interested who did not oppose the grant of \r\nthe patent may apply to the Controller for an order revoking the patent on any one or \r\nmore of the grounds upon which the grant of the patent could have been opposed: \r\nProvided that when an action for infringement, or proceedings for  the \r\nrevocation, of a patent are pending in any court, an application to the Controller \r\nunder this section shall not be made except with the leave of the court. \r\n(2) Where an application is made under this section, the Controller shall \r\ngive notice to the patentee and shall give to the applicant and the patentee an \r\nopportunity of being heard before deciding the case. \r\n(3) If, on an application under this section, the Controller is satisfied \r\nthat any of  the grounds specified in sub-section (1) are established, he may by \r\norder direct that the patent shall  be  revoked either unconditionally or unless within \r\nsuch time as may be specified in the order the complete specification is amended to \r\nhis satisfaction: \r\nProvided that the Controller shall not make an order for the unconditional \r\nrevocation  of a patent under this section unless the circumstances are such as \r\nwould have justified him in refusing to grant the patent. \r\n48. Revocation of patent by the Federal Government.– Where the Federal \r\nGovernment is of the opinion that– \r\n(a) a  patent  or  the  mode  in  which  it is  exercised  is  mischievous  to  \r\nthe  State  or  generally prejudicial to the public; or \r\n(b) a patent has been obtained through concealment or misrepresentation \r\nin the application; or \r\n(c) where the compulsory; license granted to prevent the abuse which \r\nmight result from  the exercise of the exclusive rights conferred by the \r\npatent, for example, failure to work or in  relation to anti- competitive \r\npractices, has not been sufficient, it may, after giving the patentee an \r\nopportunity of being heard, make a declaration to that effect in the \r\nOfficial Gazette, and thereupon the patent shall be deemed to have \r\nbeen revoked: \r\nProvided that proceedings upon clause(c) shall not begin before the expiration \r\nof two years from the grant of first compulsory license. \r\n49. Revocation of surrendered patent by Controller.– (1) A patentee may, at \r\nany tune by giving not ice in the prescribed manner to the Controller, offer to \r\nsurrender his patent. \r\n(2) Where an offer under sub -section (1) is made, the Controller shall \r\nadvertise the offer in the prescribed manner, and also give notice to every person \r\nother than patentee whose name appears in the Register as having an interest in the \r\npatent. \r\n(3) Any person interested may, within the prescribed period after such  \r\n \r\nadvertisement, give notice to the Controller of opposition to the surrender, and where \r\nany such notice is given, the Controller shall give notice to the patentee. \r\n(4) If the Controller is satisfied, after hearing the patentee and any \r\nopponent, if desirous of being heard, that the patent may properly be surrendered, \r\nhe may accept the offer and, by order, revoke the patent. \r\nCHAPTER XIV \r\nPOWER OF CONTROLELR \r\n50. Controller to have certain power of a civil court.– (1) Subject to any rules \r\nmade in this behalf, the Controller in any proceedings before him under  this \r\nOrdinance shall have the powers of a civil court while trying a suit under the Code of \r\nCivil Procedure, 1908 (Act V of 1908), in respect of the following matters, namely:– \r\n(a) summoning and enforcing the attendance of any person and examining \r\nhim on oath;  \r\n(b) requiring the discovery and production of any document; \r\n(c) receiving evidence on affidavit; \r\n(d) issuing commissions for the examination of witnesses or documents; \r\nand \r\n(e) awarding costs. \r\n51. Power of Controller to correct clerical errors.– (1) The Controller may, in \r\naccordance with the provisions of this section, correct may clerical error in any \r\npatent or in any specification or other document filed in pursuance of such \r\napplication or in any application for a patent or any clerical error in any matter which \r\nis entered in the Register. \r\n(2) A correction may be made in pursuance of this section either upon a  \r\nrequest  in writing made by any person interested and accompanied by the \r\nprescribed fee, or without such a request. \r\n(3) Where the Controller proposes to make any such correction as referred \r\nto in  sub- section (1), otherwise than in pursuance of a request made under this \r\nsection, he shall give  notice of the proposal to the patentee or the applicant for the \r\npatent, as the case may be and to  any  other person who appears  to  him to  be \r\nconcerned, and shall give  them an  opportunity of  being  heard before making the \r\ncorrection. \r\n(4) Where a request  is made under sub-section (2), for the correction of \r\nany clerical error in a patent or application for a patent or any document filed in \r\npursuance of such an application, and it appears to the Controller that the correction \r\nwould materially alter the meaning or scope of the document to which the request \r\nrelates and ought not to be made without notice to persons affected thereby, he shall \r\nrequire notice of the nature of the proposed correction to be advert ised in the \r\nprescribed manner. \r\n(5) Within the prescribed time after any such advertisements as referred to \r\nin sub-section (4),  any person interested may give notice to  the Controller of \r\nopposition to  the request, and, where such notice of opposition is given, the \r\nController shall give notice thereof to the person by whom the request was made, \r\n \r\nand shall give to him and to the opponent an opportunity of being heard before he \r\ndecides the case. \r\n52. Evidence before Controller.– Subject to any rules made in this behalf, in \r\nany proceedings under this Ordinance before the Controller, evidence shall be given \r\nby affidavit in the absence of directions by the Controller to the contrary, but in any \r\ncase in which the Controller thinks it right so to do he may take oral evidence in lieu \r\nof, or in addition to, evidence by affidavit, or may allow any party to be cross-\r\nexamined on the contents of his affidavit. \r\n53. Exercise of discretionary powers by Controller.– Without prejudice to any  \r\nprovision of th is Ordinance requiring the Controller to hear any party to the \r\nproceedings thereunder or to give any such party an opportunity of being heard, the \r\nController shall give to any applicant for a patent or for amendment of a specification, \r\nif within the prescribed time the applicant so requires, an  opportunity of being heard \r\nbefore exercising adversely to the applicant any discretion vested in the Controller by \r\nor under this Ordinance. \r\nCHAPTER XV \r\nREGISTER OF PATENTS \r\n54. Register of Patents.– (1) There shall be kept at the Patent Office a Register \r\nof  Patents, where in shall be entered the names and addresses of grantees of \r\npatents, notifications of assignments and of transmissions of patents, of licenses \r\nunder patents, and of amendments, extensions, and revocations of patents and \r\nparticulars of such other matters affecting the validity or proprietorship of patents as \r\nmay be prescribed. \r\n(2) The Register of Patents kept under the Patents and Designs Act, 1911 \r\n(II of 1911), shall be incorporated in, and form part of, the Register to be kept under \r\nthis Ordinance. \r\n(3) No notice of any trust, whether express, implied or constructive, shall \r\nbe entered in the Reg ister, and the Controller shall not be affected by any such \r\nnotice. \r\n(4) Subject to the sup erintendence and d irection of the Federal \r\nGovernment, the Register shall be kept under the control and management of the \r\nController. \r\n55. Registration of assignments, transmissions, etc.– (1) Where any person \r\nbecomes entitled by assignment, transmission or operation of law to a patent or to a \r\nshare in a patent or becomes entitled as a mortgagee, licensee or otherwise to any \r\nother interest in a patent, he shall apply in writing in the prescribed manner to the \r\nController for the registration of his title or, as the case may be, of notice of his \r\ninterest in the Register. \r\n(2) Without  prejudice  to  the  provisions  of  sub-section  (1),  an  \r\napplication  for  the registration of the title of any person becoming entitled by \r\nassignment to a patent or a share in a  patent or becoming entitled by virtue of a \r\nmortgage, license or other instrument to any other interest in a patent may be made \r\nin the prescribed manner by the assignor, mortgagor, licensor or other party to that \r\ninstrument, as the case may be. \r\n \r\n(3) Where an application is made under this section for the registration of \r\nthe title of any person, 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 \r\nhim i n the Register as proprietor or co-proprietor of the patent, and  \r\nenter in the Register particulars of the instrument or event by which he \r\nderives title; or \r\n(b) where  that  person  is  entitled  to  any other  interest in  patent, enter  \r\nin  the R egister  notice  of  his  interest,  with  particulars  of  the  \r\ninstrument,  if  any, creating it. \r\n(4) Subject to the provisions of this Ordinance relating to co-ownership of \r\npatents and subject also to any rights vested in any other person of which notice is \r\nentered in the Register, the person or persons registered as grantee or proprietor of \r\na patent shall have power to assign, grant  licenses under, or otherwise deal with, \r\nthe patent and to give effectual receipts for any consideration  for any such \r\nassignment, license or dealing: \r\nProvided that any equities in respect of the p atent may be enforced in like \r\nmanner as in respect of any other movable property. \r\n56. Power of High Court regarding rectification of the Register.– (1) The High \r\nCourt may, on the application of any person aggrieved– \r\n(a) by the absence or omission from the Register of any entry;  \r\n(b) by any entry made in the Register without sufficient cause;  \r\n(c) by any entry wrongly remaining on the Register; or \r\n(d) by any error or defect in any entry in the Register, \r\nmake such order for the making, variation or deletion, of  any entry \r\ntherein as it may think fit. \r\n(2) In any proceeding under this section, the High Court may decide any \r\nquestion that may be  necessary or expedient to decide in connection w ith the \r\nrectification of the Register. \r\n(3) Notice of any application to the High Court under this section shall be \r\ngiven in the prescribed manner to the Controller who shall be entitled to appear and \r\nbe heard on the application, and shall appear if so directed by the High Court. \r\n(4) Any order of the High Court under this section rectifying the Register \r\nshall direct that notice of the rectification shall be served in the prescribed manner \r\nupon the Controller, who shall upon receipt of  such notice rectify the Register \r\naccordingly. \r\n57. Inspection of, and extracts from, the Register, etc.– (1) Subject to the \r\nprovisions of  this Ordinance and rules, the Register shall at all convenient times be \r\nopen to inspection by the public, and certified copies, sealed with the seal of the \r\nPatent Office, of any entry in the Register shall be  given to any person requiring \r\nthem on payment of the prescribed fee. \r\n(2) The Register shall be prima facie evidence of any matters required or \r\nauthorized by or under this Ordinance to be entered therein. \r\n \r\n(3) Except in the case of an app lication made und er section 55, a \r\ndocument in respect of which no entry has been made in the Register under sub-\r\nsection (3) of section 54 shall not be admitted in any Court as evidence of title of \r\nany person to a patent or share of or interest in the  patent unless the Court \r\notherwise directs. \r\nCHAPTER XVI \r\nCOMPULSORY LICENCES, LICENCES OF RIGHT,  \r\nEXPLOITING OF PATENTS AND REVOCATION \r\n58. Exploitation by a Government agency or third person.– (1) Subject to \r\nsub-section (2), where– \r\n(i) the public interest, in particular, national security, nutrition, health or \r\nthe development of other vital sectors of the national economy so \r\nrequires; or \r\n(ii) the Federal Government has determined that the manner of \r\nexploitation, by  the o wner of the patent or his licensee, is anti-\r\ncompetitive, and the Federal Government is satisfied that the \r\nexploitation of the invention in accordance with this sub-section would \r\nremedy such practices; or \r\n(iii) the patent holder refuses to grant a license to a third party on \r\nreasonable commercial terms and conditions; or \r\n(iv) where patent has not been exploited in a manner which contributes to \r\nthe promotion of technological innovation and to the transfer and  \r\ndissertation of technology, the Federal Government may, even without \r\nthe consent of the owner of the patent, decide that a Government \r\nagency or a third person designated by the Federal Government may \r\nexploit a patented invention. \r\n(2) The Federal Government shall, before taking any decision under sub–\r\nsection (2), give the owner of the patent and any interested person an opportunity of \r\nbeing heard if he wishes to be heard. \r\n(3) The exploitation of the patented invention shall be limited to the \r\npurpose for which it  was authorized and shall be subject to the payment to the \r\nsaid owner of an adequate remuneration therefore, taking into account the \r\neconomic value of the Federal Government authorizations, as determined in the \r\nsaid decision, and where a decision has been taken under sub-section (1), the \r\nneed to correct anti-competitive practices. \r\n(4) A  request  for  the  Federal  Government  authorization  shall  be  \r\naccompanied  by evidence that the owner of the patent has received, from the \r\nperson seeking the authorization, a request for a con tractual license, but that \r\nperson has been unable to obtain such a license on reasonable commercial terms \r\nand conditions and within a reasonable time: \r\nProvided that this sub-section shall not apply in cases of– \r\n(i) national emergency or other circumstantial urgency provided that in \r\nsuch cases the owner of the patent shall he informed of the decision \r\nof the Federal Government as soon as reasonably practicable; \r\n \r\n(ii) public non-commercial use; and \r\n(iii) anti-competitive practices determined as such by a judicial or \r\nadministrative body in accordance with clause (ii) of sub-section (1). \r\n(5) The exploitation of a patented invention in the field of semi-conductor \r\ntechnology shall only by authorized either for public non-commercial use or where \r\na judicial or administrative body has determined that the manner of exploitation of \r\nthe patented invention, by the owner of the patent or his licensee, is anti-competitive \r\nand if the Federal Government is satisfied that  the issuance of the non-voluntary \r\nlicense would remedy such practices. \r\n(6) The authorization shall be considered on its individual merits and shall \r\nnot 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 \r\nsection 30; or \r\n(iii) the issuance of a non-voluntary license under section 59. \r\n(7) Where  a  third  person  has  been  designated  by  the  Federal  \r\nGovernment,   the authorization may only be transferred with the enterprise or \r\nbusiness of the person or with the  part of the enterprise or business within which \r\nthe patented invention is being exploited. \r\n(8) Where the exploitation of the invention by the Government agency or \r\nthird person designated by the Federal Government is authorized under clause (i) \r\nof sub-section  (1), it shall be predominantly for the supply of the market in Pakistan. \r\n(9) Upon request of the owner of the patent, or of the Government agency \r\nor of the third person authorized to exploit the patented invention, the Federal \r\nGovernment may, after hearing the parties, if either or both wish to be heard, vary \r\nthe terms of the decision authorizing the  exploitation of the patented invention to \r\nthe extent that changed circumstances justify such variation. \r\n(10) Upon the request of the owner of the patent, the Federal Government \r\nshall, subject to adequate protection of the legitimate interest of the persons so \r\nauthorized, terminate an authorization if it is satisfied, after hearing the parties, if \r\neither or both wish to be heard, that the circumstances which led to the decision \r\nhave ceased to exist and are unlikely to recur or that the Government agency or third \r\nperson designated by it has failed to comply with the terms of the decision. \r\n(11) Notwithstanding the provisions of sub-section (10), the Federal \r\nGovernment  shall not terminate an authorization if it is satisfied that the need for \r\nadequate protection of the legitimate interests of the Govern ment agency or third \r\nperson designated by it justified the maintenance of the decision. \r\n(12) An appeal shall lie to the H igh Court against the decisions of the \r\nFederal Government under sub-sections (1) to (9). \r\n59. Powers of Controller in granting compulsory licenses.– (1) On request, \r\nmade  to the Controller after the expiration of a period of four years from the date of \r\nfiling of the patent application or three years from the date of the grant of the \r\npatent, whichever  period  expires last, the Controller may issue a  non-voluntary \r\nlicense to prevent the abuses which might result from the exercise of the rights \r\n \r\nconferred by the patent, for example, failure to work. \r\n(2) Notwithstanding the provisions of sub-section (1), a non-voluntary \r\nlicense shall not be issued if the owner of the patent satisfies the Controller that \r\ncircumstances exist which justify  the non- exploitation or insufficient exploitation of \r\nthe patented invention in Pakistan. \r\n(3) The decision issuing the non-voluntary 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  \r\npatented invention; and \r\n(iii) the amount of the adequate remuneration to be paid to the owner of \r\nthe patent and the conditions of payment. \r\n(4) The beneficiary of the non-voluntary license shall have the right to \r\nexploit  the patented invention in Pakistan ac cording to the terms set out in the \r\ndecision issuing the license, shall commence the exploitation of the patented \r\ninvention within the time limit fixed in the said decision and, thereafter, shall exploit \r\nthe patented invention sufficiently. \r\n(5) If the invention claimed in a patent, hereinafter referred to as “later \r\npatent”, cannot be exploited in Pakistan without infringing a patent granted on the \r\nbasis of an application benefiting from an earlier filing or, where appropriate, priority \r\ndate, hereinafter referred to as “earlier patent”, and provided that the invention  \r\nclaimed in the later patent involves an important technical  advance of \r\nconsiderable economic importance in relation to the invention claimed in the \r\nearlier  patent, the Controller, upon the request of the owner of the later patent, \r\nmay issue a non-voluntary license to the extent necessary to avoid infringement of \r\nthe earlier patent. \r\n(6) Where a non-voluntary license is issued under sub-section (5), the \r\nController upon the requ est of the owner of the earlier patent shall issue a non-\r\nvoluntary license in respect of the later patent. \r\n(7) In the c ase of a r equest for the issuance of a non-voluntary license \r\nunder sub-sections (5) and (6), sub-section (3) shall apply mutatis mutandis with the \r\nprovision that no time limit needs to be fixed. \r\n(8) In the case of a non-voluntary license issued under sub-section (5), \r\nthe transfer may made only with the later patent, or, in the case of a non-voluntary \r\nlicense issued under sub-section (6), only with the earlier patent. \r\n(9) The request for the issuance of a non-voluntary license shall be subject \r\nto payment of the prescribed fee. \r\n(10) The provisions of sub-sections (2) to (10) of section 58 shall apply \r\nmutatis mutandis for issuance of a non-voluntary license under this section. \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 \r\nDistrict Court having jurisdiction to try the suit against any person who, during the \r\ncontinuance of a patent acquired by him under this Ordinance in respect of an \r\n \r\ninvention, makes, sells or uses the invention  without his license, or counterfeits it, \r\nor imitates it: \r\nProvided that, where a counter-claim for revocation of the patent is made by \r\nthe defendant, the suit along with the counter-claim, shall be transferred to the High \r\nCourt for decision. \r\n(2) Every ground on which a patent may be revoked under the provisions  \r\nof  this Ordinance shall be available by way of defence to a suit for infringement. \r\n61. Reliefs in suits for infringement.– (1) In any suit for infringement the Court \r\nshall have the power,– \r\n(a) to grant relief by way of damages, injunctions or a ccounts provided \r\nthat, where  permitted, ef fective provisional measure may also be \r\nordered by the Court; \r\n(b) to order, if the subject matter of a patent is a process for obtaining \r\na product, the defendant to prove that the process to obtain an \r\nidentical product is different  from the patented process and that the \r\nidentical product in question shall, in the absence of proof to  the \r\ncontrary, be deemed to have been obtained by the patented process \r\nprovided that the product obtained by patented process is new if it has \r\nnot been put into the market for more than one year before the date of \r\nthe initiation of the judicial action by the patentee: \r\nProvided that this provision shall apply subject to the prior proof by  the \r\nplaintiff that the allegedly infringing product is identical to the product directly \r\nproduced by the patented process: \r\nProvided further that in the adduction of proof to the contrary, the legitimate \r\ninterests of defendants in protecting their manufacturing and business secrets  \r\nshall  be taken into account. \r\n(2) In any suit for infringement– \r\n(a) the Court shall have the authority to order prompt and effective  \r\nprovisional measures- \r\n(i) to prevent an infringement, and in particular, to prevent the \r\nentry into the channels of commerce of goods, including \r\nimported  goods after custom clearance; and \r\n(ii) to preserve relevant evidence in r egard to the alleged \r\ninfringement; \r\n(b) the Court shall have the authority to order provisional measures, \r\ninaudita altera parte where appropriate, in particular, where any delay \r\nis likely to cause irreparable harm to the right holder, or where there \r\nis a  demonstrable risk of evidence being destroyed; \r\n(c) The Court shall  have  the  authority to require the applicant  to  \r\nprovide  any reasonab le available evidence to satisfy it with a \r\nsufficient degree of certainty that the applicant is the right holder \r\nand that the applicant‟s  right is being infringed or that such \r\ninfringement is imminent, and to  order the applicant to provide a \r\nsecurity or equivalent assurance sufficient to protect the defendant and \r\n \r\nto prevent abuse; \r\n(d) where provisional measures have been adopted, inaudita altera parte, \r\nthe parties affected shall be given notice, without delay after the \r\nexecution of the measures at the latest, and a review, including a right \r\nto be heard, shall take place upon request of the defendant with a \r\nview to deciding within a reasonable period after the notice of the \r\nmeasures, whether these measures shall be modified, revoked or \r\nconfirmed; \r\n(e) the Court may require the applicant to supply other information \r\nnecessary  for identification of the goods concerned; \r\n(f) without prejudice to the provisions of clause (d), provisional measures \r\ntaken on the basis of clauses (a) and (b) shall upon the request of \r\nthe  defendant, be revoked  or otherwise c ease to have affect if  \r\nproceedings leading to a decision on  the merit of the case are not \r\ninitiated within a reasonable period not to exceed twenty working days \r\nor thirty-one calendar days; and \r\n(g) where the provisional measures are revoked or where they lapse due \r\nto any act or omission by the applicant, or where it is subsequently \r\nfound that  there has been  no  infringement  or  threat  of  \r\ninfringement,  the  Court  shall  have  the authority to order the \r\napplicant, upon request of the  defendant, to provide the defendant \r\nappropriate compensation for an injury caused by these measures. \r\n62. Damages not be awarded against defendant in certain cases.– (1)  In \r\nproceedings for the infringement of a patent, damages shall not be awarded against \r\na defendant who proves that at the date of the infringement he was not aware, and \r\nhad not reasonable ground for supposing, that the  patent existed, and a person \r\nshall be not be deemed to have been aware or to have had reasonable grounds for \r\nsupposing as aforesaid by reason on ly 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 \r\nbeen obtained for the article, unless the number of the patent accompanied the \r\nword or words in question. \r\n (2) Nothing in this section shall affect the power of the Court to grant an \r\ninjunction in any proceedings for infringement of a patent. \r\n63. Relief for infringement of partially valid specification.– (1) If in any  \r\nproceedings  for infringement of a patent it is found that any claim of the \r\nspecification, being a  claim in respect of which infringement is alleged, is valid, but \r\nthat any other claim is invalid, the Court may grant relief in respect of any valid claim \r\nwhich is infringed: \r\nProvided that the Court shall not grant relief by way of damages or costs \r\nexcept in  the circumstances mentioned in sub-section (2). \r\n(2) Where the plaintiff proves that the invalid claim was framed in good \r\nfaith and with reasonable skill and knowledge, the Court shall grant relief in \r\nrespect of any valid claim which  is infringed subject to the discretion of the Court as \r\nto costs and as to the date from which damages should be reckoned. \r\n \r\n64. Proceedings for infringement by exclusive licensee.– The holder of an \r\nexclusive  license under a patent shall have the like right as the patentee  to take \r\nproceedings in respect of any infringement of the patent committed after the date of \r\nthe license, and in awarding damages or granting any other relief in any such \r\nproceedings the Court shall take into consideration any loss suffered or likely to be \r\nsuffered 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 \r\nrights of the exclusive licensee as such. \r\n65. Certificate of contested validity of specification.– (1) If in any \r\nproceedings  before the Court the validity of any claim of a specification is \r\ncontested, and that claim is found by the Court to be valid, the Court may certify that \r\nthe validity of that claim was contested in those proceedings. \r\n(2) Where any such certificates has been granted, then, if in any \r\nsubsequent proceedings before the Court for infringement of the patent or for \r\nrevocation of the patent, a final order or judgement is made or given in favour of \r\nthe party relying on the validity of the patent, that party shall, unless the Court \r\notherwise directs, be entitled to the full costs so far as they concern the claim in \r\nrespect of which the certificate was granted: \r\nProvided that this sub-section  shall  not  apply  to  the  costs  of  any  appeal  \r\nin  any  such proceedings as aforesaid. \r\n66. Remedy for groundless threats of infringement proceedings.– (1) Where \r\nany  person, whether entitled to or interested in a patent or an application for a \r\npatent or not, threatens any other person by circulars, advertisements or otherwise \r\nwith proceedings for infringement of a patent,  any person aggrieved thereby may \r\nbring suit against him for any such relief as is specified in sub-section (2). \r\n(2) Unless in any suit under sub-section (1) the defendant proves that the \r\nacts in respect of  which proceedings were threatened constitute or, if done, would \r\nconstitute an infringement of a patent or of rights arising from the publication of a \r\ncomplete specification in respect of a claim of the  specification not shown by the \r\nplaintiff to be invalid, the plaintiff shall be entitled to the following reliefs, namely:– \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(3) For the avoidance of doubt, it is hereby declared that a mere notice of \r\nthe existence of a  patent does not constitute a threat of proceedings within the \r\nmeaning of sub-section (1). \r\n67. Power of Court to made declaration as to non-infringement.– (1) A \r\ndeclaration that the use by any person of any process, or the making or use or sale \r\nby any person of any article, does not or would not constitute an infringement of a \r\nclaim of a patent may be made by the Court in proceedings between that person \r\nand the patentee or the holder of an exclusive license under the patent, \r\nnotwithstanding that no assertion to the contrary has been made by the patentee or \r\nlicensee, if it is shown– \r\n(a) that the plaintiff has applied in writing   to the patentee or licensee \r\n \r\nfor  a  written acknowledgement to the effect of the declaration \r\nclaimed, and has furnished him with full p articulars in writing of the \r\nprocess 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 \r\nvirtue of this section shall, unless for special reasons the Court thinks fit to ord er \r\notherwise, be paid by the plaintiff. \r\n(3) The validity of a claim of the specification of a patent shall not be \r\ncalled in question in   proceedings for a declaration brought by virtue of this \r\nsection, and accordingly the making or refusal of such a declaration in the case of a \r\npatent 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 \r\nat any time aft er the date of the publication of the complete specification in \r\npursuance of an application for a patent, and references in this section to the \r\npatentee shall be construed accordingly. \r\n68. Power of Court to appoint scientific advisers.– (1)  In any suit for \r\ninfringement or in any proceedings before a Court under this Ordinance, the Court \r\nmay at any time, and whether or not an application has been made by any party for \r\nthat purpose, appoint an independent scientific adviser to assist the Court or to \r\ninquire and report upon any such question of fact or of opinion, not involving a \r\nquestion of interpretation of law, as it may formulate for the purpose. \r\n(2) The remuneration of the scientific adviser appointed under sub-\r\nsection (1) shall be fixed by the Court and shall include the costs of making a report \r\nand a proper daily fee for any day on which the scientific adviser may be required to \r\nattend before the Court, and such remuneration shall be defrayed out of moneys \r\nprovided by the Federal Government for the purpose. \r\nCHAPTER XVIII \r\nAPPEALS \r\n69. Appeals.– (1) No appeal shall lie from any decision, order or direction made \r\nor issued under this Ordinance by the Federal Government, or from any act or order \r\nof the Controller for the purpose of  giving effect to any  such decision, order  or \r\ndirection. \r\n(2) The public authorities and officials shall be exempted from liability to \r\nappropriate remedial measures where actions are taken or intended in good faith \r\nin course of  administration of this Ordinance. \r\n(3) Subject to sub-section (1), an appeal shall lie to the High Court from \r\nany decision, order or direction of the Controller or, as the case may be, the Federal \r\nGovernment under any other provisions of this Ordinance. \r\n(4) Every appeal under this section shall be in writing and shall be made \r\nwithin three months from the date of decision, order or direction of the Controller, \r\nas the case may be, of  the Federal Government, or within such further time as the \r\nHigh Court may allow. \r\n \r\n70. Procedure for hearing appeals.– (1) Every appeal before the High Court \r\nshall be by petition and shall be in such form and shall contain such particulars as \r\nmay be provided by rules made by the High Court. \r\n(2) Every appeal under this section shall be heard by a single Judge of \r\nHigh Court: Provided that any such Judge may, if he so thinks fit, refer the appeal \r\nat any stage  of  the proceedings to a larger Bench of the High Court. \r\n(3) Every appeal under this section shall be heard as expeditiously as \r\npossible  and endeavor shall be made to decide the appeal within a period of twelve \r\nmonths from the date on which it is filed. \r\nCHAPTER XIX \r\nPENALTIES \r\n71. Penalty for contravention of secrecy provisions relating to certain \r\ninventions.– If any person fails to comply with any direction given under section 25 \r\nor makes or causes to be made an application for  the grant of a patent in \r\ncontravention of section 26, he shall be punishable with imprisonment for a term \r\nwhich may extend to two years, or with fine not exceeding twenty thousand rupees, \r\nor with both. \r\n72. Penalty for false entry in any register, etc.– If any person makes, or \r\ncauses to be made, a false entry in any register kept under this Ordinance, or a \r\nwriting falsely purporting to be a copy of an entry in such a register, or produces or \r\ntenders, or causes to be produced or tendered, in  evidence any such writing \r\nknowing the entry or writing to be false, he shall be punishable with imprisonment for \r\na term which may extend to two years, or with fine not exceeding twenty thousand \r\nrupees, or with both. \r\n73. Penalty for false representation.– If any person falsely represents that any \r\narticle  sold  by him is patented in Pakistan or is the subject of an application for a \r\npatent in Pakistan, he shall be punishable with fine which may extend to f ive \r\nthousand rupees. \r\nExplanation 1.–  For the purposes of this section, a  person sha ll be deemed to \r\nrepresent– \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 \r\nthe article has been obtained in Pakistan; or \r\n(b) that an article is the subject of an application for a patent in \r\nPakistan, if  there are stamped, engraved or impressed on, or \r\notherwise applied to, the article the words “patent  applied  for”,  \r\n“patent  pending”,  or  some  other words  implying  that  an \r\napplication for a patent for the article has been made in Pakistan. \r\nExplanation 2.– The use of words “patent”, “p atented”,  “patent  applied  for”,  \r\n“patent pending” or other words expressing or implying that an article is patented or \r\nthat a patent has been applied for shall be deemed to refer to a patent in force in \r\nPakistan, or to a pending application for a patent in Pakistan, as the case may be, \r\n \r\nunless there is an accompanying indication that the patent has been obtained or \r\napplied for in any country outside Pakistan. \r\n74. Penalty for wrongful use of words “patent office”.– If any person uses \r\non his  place of business or any document issued by him or otherwise the words \r\n“patent office” or any other words which would reasonably lead to the belief that his \r\nplace of business is, or is officially connected with, the Patent Office, he shall be \r\npunishable with imprisonment for a term which may extend to two years, and with \r\nfine which may extend to one million rupees. \r\n75. Penalty for refusal or failure to supply Information.– (1) If any person \r\nrefuses or fails to furnish to the Controller  any information or statement which he \r\nis required to furnish by or under this Ordinance, he shall be punishable with fine \r\nwhich may extend to five thousand rupees. \r\n(2) If any person, b eing required to furnish any such information as is \r\nreferred to in sub- section (1), furnishes information or a statement which is false, \r\nand which he either knows or has reason to believe to be false or does not believe \r\nto be true, he shall be punishable with fine which may extend to fifty thousand \r\nrupees. \r\n76. Penalty for contravention of section 20.– If the applicant fails to file the \r\nstatement required under  section 20 or has furnished information which in any \r\nmaterial particular is false to his knowledge or if he fails to comply with the \r\nController‟s request within the specified time, he shall be punishable with fine which \r\nmay extend to five thousand rupees. \r\n77. Penalty for p ractice by no n-registered patent agents.– If  any  person \r\ncontravenes  the prov isions of section 82, he shall be punishable with fine which \r\nmay extend to twenty five thousand rupees in the case of a first offence and one \r\nhundred thousand rupees in the case of a second or subsequent offence. \r\n78. Offences by companies, etc .– (1) Where person  guilty  of an  offence  \r\nunder  this Ordinance is a company, corporation, firm or institution, every owner, \r\ndirector, and employee of the company, firm, institution or corporation, having \r\nknowledge of the offence and consented to the  commission of the offence shall \r\nbe guilty of the offence. \r\nCHAPTER XX \r\nPATENT AGENTS \r\n79. Register of patent agents.– There shall be  kept at the Patent Office a \r\nregister of patent agents wherein shall be entered the names and addresses of all \r\npersons qualified to practice before the Patent Office as patent agents. \r\n80. Registration as patent agent.– The Controller may, on an application made \r\nin the prescribed manner, register as a patent agent any person who is a citizen of \r\nPakistan, has completed the age of twenty-one years, poss esses the prescribed \r\nqualifications and has paid the prescribed fee. \r\n81. Subscription and verification of certain documents by patent agents.– \r\n \r\n(1) Subject to sub- section (2) and rules, all applications and communications to the \r\nController under this Ordinance may be s igned by a  patent agent authorized in \r\nwriting is 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 for revocation; and \r\n(vi) notices of surrender of patents, shall be signed and verified in the \r\nprescribed manner by the person making such applications or giving \r\nsuch notices: \r\n Provided that, if such person is absent from Pakistan, they may be signed \r\nand verified by a patent agent authorized by him in writing in that behalf. \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 \r\na patent agent, or permit himself to be so described or held out, unless he is \r\nregistered as a patent agent or, as the case may be,  unless he and all his \r\npartners are so registered. \r\n(2) No company or other body corporate shall practice or describe or hold \r\nitself out as a patent agent or permit itself to be so described or held out. \r\nExplanation.– For the purposes of this section, practice as a patent agent includes \r\nany of the 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 \r\nOrdinance or of the patent law of any other country; and \r\n(c) giving advice, other than advice of a scientific or technical nature, as \r\nto the validity of patents or their infringement. \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 \r\nwhen it is satisfied, after giving that person a reasonable opportunity of being heard \r\nand after such further inquiry, if any, as it thinks fit to make– \r\n(i) that his name has been entered in the register of patent agents by \r\nerror or on account of misrepresentation or suppression of material \r\nfacts; or \r\n(ii) that he has been convicted of any offence and sentenced to a term of \r\nimprisonment or h as been guilty of misconduct in his professional \r\ncapacity which in the opinion of the Federal Government renders him \r\nunfit to be kept in the register of patent agents. \r\n (2) The Federal Government may, on application and on sufficient cause \r\nbeing shown, restore to the register of  patent agents the name of any person \r\n \r\nremoved therefrom. \r\n84. Power of Controller to refuse to recognize as agent.– (1) Subject to any \r\nrules made in this behalf, the Controller may refuse to recognize as agent in respect \r\nof any business under this Ordinance– \r\n(a) any person whose name has been removed from, and not restored \r\nto, the  register 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 \r\nthe Controller is engaged wholly or mainly in acting as agent in \r\napplying for  patents in Pakistan or elsewhere in the name or for the \r\nbenefit of the person by whom he is employed; or \r\n(d) any company or firm, if any person whom the Controller could refuse \r\nto recognize as patent agent in respect of any bus iness under this \r\nOrdinance, is a director or manager of the company or is a partner in \r\nthe firm. \r\n(2) The Controller sh all refuse to recognize as agent in resp ect of any \r\nbusiness under this Ordinance any person who neither resides nor has a place of \r\nbusiness in Pakistan. \r\n85. Saving in respect of other persons authorize to act as agents.– \r\nNothing in this  Chapter shall be deemed to prohibit– \r\n(a) the applicant for a patent or any person, not being a patent agent, who \r\nis duly authorized by the applicant from drafting any specification or \r\nappearing or acting before Controller; or \r\n(c) an advocate, not being a patent agent, from taking part in any \r\nproceedings under this Ordinance otherwise than by  way of drafting \r\nany specification. \r\nCHAPTER XXI \r\nINTERNATIONAL ARRANGEMENTS \r\n86. Power of the Federal Government to declare a country as Convention \r\ncountry.– (1) With a view to the fulfillment of a treaty, convention or arrangement \r\nbetween Pakistan and any other country, the Federal Government may, by \r\nnotification in the official Gazette, declare such country to  be the Convention \r\ncountry for the purposes of this Ordinance, in addition to the members of the World \r\nTrade Organization. \r\n(2) A d eclaration under  sub-section (1) may be made for the purpos es \r\neither for all or for some only of the provisions of this Ordinance, and a country in \r\nthe case of which a declaration made for the purposes of some only of the \r\nprovisions of this Ordinance is in force shall be deemed  to  be a Convention \r\ncountry for the purposes of those provisions only. \r\n87. Supplementary provisions as to Convention application.– For  the  \r\npurposes  of   this Ordinance, any matter shall be deemed to have been disclosed in \r\nan application for protection in a Convention country if it was claimed or disclosed, \r\n \r\notherwise than by way of disclaimer or  acknowledgement of prior art, in that \r\napplication or in any document submitted by the applicant for protection in support \r\nof and at the same time as that application, but no account shall be taken of any \r\ndisclosure effected by any such document unless a copy of the document is filed in \r\nthe Patent Office with the Convention application in accordance with the provisions \r\nof section 88. \r\n88. Documents to be filed with a Convention application.– (1) Where a \r\nConvention application is made under this Ordinance, the applicant shall furnish, in \r\naddition to the complete specifications, copies of the specifications or \r\ncorresponding documents filed or deposited by the  applicant in the patent office of \r\nthe Convention country in which the relevant application was made, certified by the \r\nofficial 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 \r\nthree months thereafter, or within such further period as the Controller may on good \r\ncause allow. \r\n(2) If any such specification or other document referred to in sub-\r\nsection (1) is in a foreign language, a translation into English of the specification or \r\ndocument, verified by affidavit or otherwise to the satisfaction of the Controller, shall \r\nbe annexed to the specification or document. \r\n(3) For the purposes of this Ordinance, the date on which an application \r\nwas made in a Convention country is such date as the Controller is satisfied, by \r\ncertificate of the official chief or head of the patent office of the Convention country \r\nor otherwise, is the date on which the application  was made in that Convention \r\ncountry. \r\nCHAPTER XXII \r\nMISCELLANEOUS \r\n89. Fees.– (1) There shall be paid in respect of the grant of patents and \r\napplications therefor, and in respect of other matters in relation to patents under this \r\nOrdinance, such fees, to the Patent Office, as may be prescribed by  the Federal \r\nGovernment. \r\n(2) Any proceedings in respect of which a fee is payable under this \r\nOrdinance or  the rules shall be of no effect unless the fee has been paid. \r\n90. Restrictions upon publication of specifications, etc.– Subject to the \r\nprovisions of Chapter VII, an application for a patent, and any specification filed in \r\npursuance thereof, shall not,  except with the consent of the applicant, be \r\npublished by the Controller or be open to public inspection at any time before the \r\ndate of advertisement of acceptance of the application in the official Gazette. \r\n91. Reports of examiners to be confidential.– The reports of examiners to the \r\nController under this Ordinance shall not be open to public inspection or be \r\npublished by the Controller, and such reports shall not  be liable to production or \r\ninspection in any legal proceedings unless the Court certifies that the production or \r\ninspection is desirable in the interests of justice, and ought to be allowed. \r\n92. Publication of patented Inventions.– The Controller shall issue \r\n \r\nperiodically a  publication containing such information relating to patented inventions \r\nas the Federal Government may direct. \r\n93. Power of Controller to call for information form patentees.– (1) The \r\nController may, at any time during the continuance of the patent, by notice in writing, \r\nrequire a patentee or a licensee, exclusive or otherwise, to furnish to him within two \r\nmonths from the date of such notice or within such further time as the Controller \r\nmay allow, such information or such periodical statements as  to the extent to \r\nwhich the patented invention has been commercially worked in Pakistan as may be \r\nspecified in the notice. \r\n(2) Without prejudice to the provisions of sub-section (1), every \r\npatentee and  every licensee, whether exclusive or otherwise, shall furnish in such \r\nmanner and form and at such intervals, not being less than six months, as may be \r\nprescribed, statement as to the extent to which the patented invention has been \r\nworked on a commercial scale in Pakistan. \r\n(3) The Controller may publish the information received by him under sub-\r\nsection (1) or sub-section (2) in such manner as may be prescribed. \r\n94. Evidence of entries, documents, etc.– (1) A certificate  purport ing to  be \r\nsigned  by  the Controller as to any entry, matter or thing which he is authorized by \r\nthis Ordinance or any rule to make or do, shall be prima facie evidence of the entry \r\nhaving been made and of the contents thereof and of the matter or thing having \r\nbeen done or omitted to be done. \r\n(2) A copy of any entry in any Register or of any document kept in the \r\nPatent Office or of any patent, or an extracts from any such Register or document, \r\npurporting to be certified by the Controller and sealed with the seal of the Patent \r\nOffice shall be admitted in evidence in all courts, and in all proceedings, without \r\nfurther proof or production of the original. \r\n(3) The Controller or any other officer of the Patent Office shall not, in \r\nany  legal proceedings to which he is not a party, he compellable to produce the \r\nRegister or any other document in his custody, the contents of which can be proved \r\nby the production of a certified copy issued under this Ordinance or to appear as a \r\nwitness to prove the matters therein recorded unless by order of the Court made \r\nfor special causes. \r\n95. Declaration by infants, lunatics, etc.– (1) if any person is, by reason of \r\nminority, lunacy or other disability, incapable of making any statement or doing \r\nanything required or permitted by or under this Ordinance, the lawful guardian, \r\ncommittee or manager, if any, of the person subject to the disability, or if there be \r\nnone, any person appointed by any Court having jurisdiction in respect of  his \r\nproperty, may make such statement or a statement as nearly corresponding thereto \r\nas circumstances permit, and do such thing in the name and on behalf of the person \r\nsubject to the disability. \r\n(2) An appointment may be made by the Court for the purposes of this \r\nsection upon the petition of any person active on behalf of the person subject to the \r\ndisability or of any other person interested in the making of the statement or the \r\ndoing of the thing. \r\n \r\n96. Service of notice, etc., by post.– Any notice required or authorized to be \r\ngiven by or under this Ordinance, and any application or other document so \r\nauthorized or required to be made or filed, may be given, made or filed by post. \r\n97. Security for cost.– If any party by whom notice of any opposition is \r\ngiven under  this Ordinance or by whom application is made to the Controller for \r\nthe grant of a licence under a patent neither r esides nor carries on business in \r\nPakistan, the Controller may require him to give security for the costs of the \r\nproceedings, and in default of such security being given may treat the opposition or \r\napplication abandoned. \r\n98. Transmission of orders of High Court or Court to the Controller.– (1) \r\nEvery order of the High Court on a petition for revocation, including an order granting \r\ncertificate of validity of any claim, shall be transmitted by the High Court to the \r\nController who shall cause an entry thereof and reference thereto to be made in \r\nthe Register. \r\n(2) Where in any suit for infringement of a patent or in any suit under \r\nsection 60 the validity of any claim or a specification is contested and that claim is \r\nfound by the Court to be valid or not va lid, as the case may be, the Court shall \r\ntransmit a copy of its judgement and decree to the Controller who shall on receipt \r\nthereof cause an entry in relation to such proceedings to be made  in  the \r\nprescribed manner in a supplemental record. \r\n(3) The provisions of sub-section (1) and (2) shall also apply to the \r\nCourt to  which appeals are referred against decisions of the Courts referred to in \r\nthose sub-sections. \r\n99. Transmission of copies of specifications, etc., and inspection thereof.– \r\nCopies of all such specifications drawings and amendments left at the Patent Office \r\nas become open to public inspection under the provisions of the Ordinance shall \r\nbe transmitted, as soon as may be, after the  printed copies thereof are \r\navailable, to such authorities as the Federal Government may appoint in this \r\nbehalf, and shall be open to the inspection of any person at all reasonable times at \r\nplaces to be specified by those  authorities with the approval of the Fed eral \r\nGovernment. \r\n100. Information relating to patents.– Any person making a request to the \r\nController  in the prescribed manner for information relating to any such matters, as \r\nmay be prescribed, as respects any patents specified in the request or as respects \r\nany application for a patent so specified shall be entitled, subject to the payment of \r\nthe prescribed fee, to have information supplied to him accordingly. \r\n101. Loss or destruction of patent.– If a patent is lost or destroyed, or its  \r\nnon-production is accounted for to the satisfaction of the Controller, the Controller \r\nmay at any time, on application made in the prescribed manner and on payment of \r\nthe prescribed fee,  cause a  duplicate thereof to be sealed and delivered to the \r\napplicant. \r\n102. [*****] (This Section has been deleted and has no more effect through \r\n“An Ordinance to amend the Patents Ordinance, 2000) \r\n103. Right of the Government to sell or use forfeited articles.– Nothing in this \r\n \r\nOrdinance shall affect the power of the Government or of any deriving title directly or \r\nindirectly from the Government to sell or use any articles forfeited under any law for \r\nthe time being in force. \r\n104. Power of High Court to make rules.– The High Court may make rules \r\nconsistent with this Ordinance as to the conduct and procedure in r espect of all \r\nproceedings before it under this Ordinance. \r\n105. Power of the Federal Government to make rules.– (1) The Federal \r\nGovernment may, by notification in the official Gazette, make rules for carrying out \r\nthe purposes of this Ordinance. \r\n(2) In particular and without prejudice to the generality of the foregoing \r\npower,  such rules may 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 \r\nspecifications or drawings, and any other application or document may \r\nbe filed in the Patent Office; \r\n(ii) the time within which any act or thing may be done under this \r\nOrdinance, including t he manner in which and the time within which \r\nany matter may be advertised under this Ordinance; \r\n(iii) the fees  which  may  be  payable  under this  Ordinance and  the  \r\nmanner  of payment of such fees; \r\n(iv) the  matters  in  respect  of  which  an  examiner  may  make  a  report  \r\nto  the Controller; \r\n(v) the form of request for sealing of a patent; \r\n(vi) the form and manner in which and the time within which any notice \r\nmay be given under this Ordinance; \r\n(vii) the provisions which may be  inserted in an order for  restoration of a \r\npatent for the protection of t h e  p e r s o n  who may have availed \r\nthemselves  of the subject matter of the patent after the p atent had \r\nceased; \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 \r\ndocument open to inspection may be inspected under this Ordinance; \r\n(x) the qualifications of and the preparation of a roll of scientific advisors \r\nfor the purpose of section 68; \r\n(xi) the manner in which any compensation for acquisition by the \r\nGovernment of an invention may be paid; \r\n(xii) the manner in which the register of patent agents may be \r\nmaintained,  and matter connected with the practice and conduct of the \r\npatent agents; \r\n(xiii) the regulation of the making, printing, publishing and selling of  \r\nindexes to, and abridgements of, specifications and other documents \r\nin the Patent Office, and inspection of indexes and abridgements and \r\nother documents; \r\n \r\n(xiv) the manner to establish the regime for exhaustion of intellectual  \r\nproperty rights; \r\n(xv) the details in respect of inventions referred to in sub-section (4) of \r\nsection (7);  \r\n(xvi)  the manner in which an invention shall be disclosed including the best \r\nmode known for the execution of the invention, the forms and limits \r\nof allowable claims  and,  in  the  case  of  inventions  relating  to  \r\nmicroorganisms, the requirement  and  the  manner  of  submission  of  \r\na  culture  for  experimental purposes in relation to the scope of the \r\nclaim and the procedure for grant of such patents; \r\n(xvii) the  procedure  and  the  criteria  for  determining  the  remuneration \r\nfor a compulsory license and the terms and conditions for licensing  \r\nagreements in cluding, in particular, those which do not adversely \r\naffect  competition or cause  impediment to the research and \r\ndevelopment in the country or to bind the licensee to transfer the \r\nimprovements made by him to the licensor or to force the licensee to \r\nacquire technologies or inputs not needed or desired by him; and \r\n(xviii) the form of filing application and manner of grant of exclusive  \r\nmarketing rights. \r\n(3) The power to make rules under this section shall be subject to the \r\ncondition of the rules being made after previous publication. \r\n106. Repeal and savings.– (1) The Patents and Designs Act, 1911 (II of 1911), is \r\nhereby repealed. \r\n(2) Notwithstanding the repeal of the Patents and Designs Act, 1911 (II \r\nof  1911), the renewal fee in respect of a patent granted under that Act shall be as \r\nfixed thereunder. \r\n(3) Save as otherwise provided in sub-section (2), the provision of this \r\nOrdinance shall app ly to any application for a patent pending on the \r\ncommencement of this Ordinance and to any proceedings consequent thereon, and \r\nto any patent granted in pursuance thereof. \r\n(4) Notwithstanding anything contained in this Ordinance, any suit for  \r\ninfringement of a patent, or any proceedings for revocation of a patent, pending in \r\nany Court on the  commencement of this Ordinance, may be continued and \r\ndisposed of under the Patents and Designs Act, 1911 (II of 1911), as if this \r\nOrdinance had not come into force. \r\n107. Acts d one in good faith.– No  suite,  prosecution,  or  any  other  legal  \r\nproceedings  shall  lie against any government employee or any person exercising \r\nany powers or performing any functions under this Ordinance o r the rules made \r\nthereunder for any act or thing which has been done in good faith. \r\n108. Removal of difficulties.– If any difficulty arises in giving effect to any of the \r\nprovisions of this Ordinance, the Federal Government may, by notification in the \r\nofficial Gazette, make such provisions as it deems fit for removing that difficulty. \r\nMUHAMMAD RAFIQ TARAR, President \r\nMR. JUSTICE \r\nFAQIR MUHAMMAD KHOKHAR, Secretary",
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