NEW PATENT APPLICATIONS IN PAKISTAN
Introduction:-
In Pakistan, Patents and Designs are registered by the Controller of Patents and Designs, who derives his authority under the Patents and Designs Act, 1911 ("the Act"). The Act is modelled on the old English Acts of 1883 and 1907. Pakistan is not a member of the Paris Convention for Protection of Industrial Property. Application for Patent:-
Section 3(3) of the Act permits an application for a patent to be filed only by the true and first inventor or his assign. Form 1 is used for making the application by the inventor alone whereas, Form 1A is used when the true and first inventor has assigned the invention to the applicant. Endorsement by the true inventor in the presence of two witnesses, in the latter case, is required on the reverse of Form 1A. Specifications and Drawings:-
Rule 13(1) of the Patents and Designs Rules, 1933 ("the Rules") requires that two copies of the text of the specification and claims in the English language on paper size of 13" x 8-1/4" or 12 x 8 inches (A4) to be filed at the Patent Office. The papers should have the same margin dimensions as applicable to the foolscap size papers (ie., 1-1/2") and may be filed as Xerox type photocopies. The specification is required to commence with the title of invention and the name of the applicant. The specification is required to be signed and dated by the applicant or his agents. In the latter case, a power of authority (on Form 31) in favour of the agent is required to be executed and submitted with the application, or filed later. The drawings are required to be on tracing cloth and a copy on smooth white paper of 11-3/4" x 8-1/4" size. The specification is required to describe, by reference to the drawings, the particular features which render the invention novel in relation to the kind which is already known. Priority:-
Since Pakistan is not a member of any international patent convention, an applicant therefore cannot claim priority on the basis of the earlier filings in the convention countries. However, Pakistan has reciprocal arrangements with most of the Commonwealth countries which include; United Kingdom, Australia, New Zealand, Canada, India and Sri Lanka. These reciprocal arrangements entitle an applicant to claim the priority date of his application filed earlier in any of the above listed Commonwealth countries. Provided however that, the Pakistan application is made within twelve months of the application made in any of the above listed Commonwealth countries. A certified copy of the application, on which the priority is based, is required to be filed at the time of filing the Pakistan application or within three months thereafter, in which case a request for extension of time is required to be submitted. Form 2/2-A is used for making priority applications by the inventor or his assigns. Examination, Acceptance and Renewals:-
The Act requires an application to be accepted within eighteen or twenty-one months, by the latest. Examination reports are usually communicated between nine to fifteen months from the date of filing. After acceptance, the application is advertised in the Official Gazette for opposition and if there is no opposition within four months, the application is sealed on payment of the sealing fee. Renewal fees are due annually, beginning with the 5th year of patent term and are paid in advance at the beginning of the year. The duration of the life of the patent is 16 years from the date of filing. An application for the restoration of a lapsed patent (on Form-10) is required to contain a statement of the circumstances which led to the omission to pay the renewal fee. If the Controller agrees that the delay in paying the renewal fee(s) was unavoidable, the Act requires the Controller to advertise the application in the Official Gazette for any opposition. If no opposition is lodged at the Patent Office within six weeks of the advertisement, and before the patent is restored the patentee is required to pay the renewal fees which have been in arrear so far. Appeal:-
The Controller's order on the application, either refusing the application or restoring the patent is subject to an appeal to the Central Government. In the order for restoration of the patent, the Controller may impose such conditions and restrictions as are deemed to be advisable in the circumstances of the case. Extension for the Term of Patent:-
The term of a patent which has not been sufficiently remunerative during its normal term of 16 years may be extended for a further term not exceeding 5 years or in exceptional cases 10 years, by presenting a petition to the Central Government under Section 15 of the Act. Such a petition is required to be made by the patentee on Form-9. The petition must be presented at least six months before the time limited for the expiration of the patent, and is required to set forth clearly and fully all the particulars required. The petition is required to be supplemented by a balance sheet of expenditure and receipts relating to the patent in question. Such accounts must be proved on oath.
Every petition for the extension of the term of patent is advertised by the Controller in the Official Gazette. The petition is also required to be advertised by the petitioner in the prescribed manner in the newspaper(s) named by the Controller. It is open to any person to oppose the petition. The prescribed period for entering notice of opposition is two months from the advertisement of petition by the Controller. On completion of the proceedings, the Controller forwards the case to the Central Government. Upon such forwarding the Controller becomes `functus officio'.
The Central Government may itself dispose of the petition or may refer it for disposal to the High Court. Where a petition is referred by the Central Government to a High Court, the petition is dealt with by the Court according to its ordinary rules of procedure devoid of its technicalities. It must be noted that Section 15 of the Act does not admit a second petition for extension of term of a patent.
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