Comprehensive Guide to Applying for a Patent in Pakistan

Comprehensive Guide to Applying for a Patent in Pakistan

Protecting your invention with a patent in Pakistan ensures exclusive rights for 20 years, preventing others from making, using, selling, or importing your invention without permission. Governed by the Patents Ordinance, 2000, and the Patents Rules, 2003, the process is managed by the Intellectual Property Organization of Pakistan (IPO-Pakistan). This detailed guide outlines the steps to apply for a patent, incorporating procedures from the Patents Rules, 2003, and current fees from the IPO-Pakistan website.

Overview of Patent Protection in Pakistan

A patent is a legal right granted for an invention that is novel, involves an inventive step, and is industrially applicable (Section 7, Patents Ordinance, 2000). The patent term is 20 years from the filing date, subject to annual renewal fees (Section 31). The Patents Rules, 2003, published on December 31, 2003, provide procedural details, including forms, fees, and document requirements.

Step-by-Step Process

Step 1: Determine Eligibility

• Eligible Applicants(Section 11, Patents Ordinance, 2000):

• True and first inventor(s): The person(s) who conceived the invention.
• Assignee: An individual or entity to whom the inventor has transferred rights.
• Legal representative: For a deceased inventor entitled to apply.
• Joint applications are permitted for collaborative inventions.
  • Patentability Criteria(Section 7):
• Novelty: The invention must not be part of the prior art (Section 8).
• Inventive Step: It must not be obvious to a person skilled in the art (Section 9).
• Industrial Application: It must be capable of being made or used in industry (Section 10).
  • Exclusions:
• Inventions contrary to public order, morality, or law.
• Scientific theories, mathematical methods, or purely aesthetic creations (Section 7).
  • Special Cases:
• For genetically modified organisms, clearance from the Federal Government is required (Section 13).
• For pharmaceutical or agricultural chemical products, applications for exclusive marketing rights can be filed via the “mailbox” facility (Section 13).

Step 2: Prepare the Application

• Application Forms(Rule 8, Patents Rules, 2003):

• Choose the appropriate form from the Second Schedule:
  • Form P-1: Non-convention application by the true and first inventor.
  • Form P-1A: Non-convention application where the inventor is not the applicant (requires an original deed of assignment or endorsement).
  • Form P-2: Convention application by the true and first inventor.
  • Form P-2A: Convention application where the inventor is not the applicant.
  • Forms for patents of addition (P-1B, P-1C, P-2B, P-2C) are also available.
• Download forms from the IPO-Pakistan website.
  • Declaration:
• Include a declaration stating that the applicant (or at least one joint applicant) is the true and first inventor, or their legal representative or assignee.
• For non-inventor applicants, provide an original deed of assignment or endorsement witnessed by two persons (Rule 8).
  • Language and Formatting(Rule 6):
• All documents must be in English. If in another language, provide a verified English translation.
• Use A4 size paper(29.7 cm x 21 cm), free from cracks, creases, or folds, with 1.5 line spacing and black indelible ink.
• Documents must allow for direct reproduction.

Step 3: Draft the Specification

• Types of Specifications(Section 14, Patents Ordinance, 2000; Rule 9, Patents Rules, 2003):

• Provisional Specification(Form P-3):
  • An initial description to secure an early filing date.
  • Must start with a title, be signed and dated, and describe the invention.
  • A complete specification must be filed within 12 months, or the application is deemed abandoned.
• Complete Specification(Form P-3A):
  • A detailed description, including claims defining the scope of protection.
  • Must fully describe the invention, its method of performance, and include drawings if required.
• Content Requirements(Section 15):

• For chemical products (e.g., medicines), specify one product with physical, chemical, and environmental properties.
• Drawings must follow specific formatting rules (Rule 11), ensuring reproducibility.
  • Convention Applications(Section 88):
• File within 12 monthsof the application in a convention country, with certified copies of specifications from that country.

Step 4: Pay the Application Fees

• Fees(First Schedule, Patents Rules, 2003; updated per IPO-Pakistan):

• Standard/Convention Application(Forms P-1, P-1A, P-2, P-2A): PKR 6,750
• Provisional Specification(Form P-3): PKR 2,025
• Complete Specification(Form P-3A): PKR 4,725
• Additional Fees:
  • For each page beyond 40: PKR 90
  • For each claim beyond 20: PKR 225
• Other Relevant Fees:
  • Request for sealing (Form P-10): PKR 6,750
  • Opposition (Form P-7): PKR 2,250
  • Renewal fees (Form P-12):
• 5th to 8th year: PKR 12,000
• 9th to 12th year: PKR 18,000
• 13th to 16th year: PKR 24,000
• 17th to 20th year: PKR 32,000
  • Payment Methods(Rule 5):
• Bank Draft/Pay Order: Payable to the Director General, IPO-Pakistan.

Step 5: Submit the Application

• Submission Location(Rule 7):

• Head Office: Patent Office, Plot # ST 1 & 2, New Broadcasting House (Ground Floor), Behind KDA Civic Center, Block-14, Gulshan-e-Iqbal, Karachi-75300, Pakistan.
• Regional Office: Basement of Lahore Chamber of Commerce Building, 11-Shahrah-e-Aiwan-e-Sanat-o-Tijarat, Lahore.
• Applications can be submitted by hand or via prepaid post/courier.
  • Submission Requirements:
• Completed application form in triplicate.
• Specification (provisional or complete).
• Proof of fee payment.
• For convention applications, certified copies of foreign specifications.
• An address for servicein Pakistan (Rule 10).
  • Note: Applications are deemed submitted when received in the ordinary course of post or courier.

Step 6: Examination by the Controller

• Process(Section 16; Rule 14):

• The Controller refers the application to an examiner, who assesses:
  • Novelty (not part of prior art).
  • Inventive step (not obvious).
  • Industrial applicability.
  • Compliance with the Ordinance and Rules.
• The examiner’s report is typically provided within 18 months.
  • Objections:
• If issues are found (e.g., prior publication), the Controller notifies the applicant, who can amend the specification or request a hearing (Rule 14).
• Failure to address objections may lead to refusal.
  • Infringement Risks(Section 17):
• If the invention risks infringing another patent, the Controller may require a reference to that patent in the specification.

Step 7: Publication

• Acceptance and Advertisement(Section 21; Rule 17):

• If the application is accepted, the Controller advertises it in the Official Gazette.
• The application, specification, and priority documents become open to public inspection.
  • Abstract Submission:
• Within 30 daysof publication, send the abstract to institutions listed in the Fourth Schedule (Rule 17).

Step 8: Opposition Period

• Opposition(Section 23; Rule 18):

• Within four monthsof advertisement, any person can file an opposition using Form P-7 (fee: PKR 2,250).
• Grounds for opposition include:
  • The invention is not patentable.
  • The specification is insufficient or unclear.
  • The invention was obtained from another person.
• The Controller hears both parties, with evidence and counter-statements exchanged, before deciding.

Step 9: Third-Party Observations

• Observations(Section 24):

• Post-publication, any person can submit written observations on the invention’s novelty with supporting evidence.
• The Controller considers these before granting the patent, but the observer is not a party to the proceedings.

Step 10: Request for Sealing

• Request(Section 27; Rule 21):

• Within six monthsof publication, request sealing using Form P-10 (fee: PKR 6,750).
• Include proof of abstract dispatch to listed institutions.
• Extensions are possible with additional fees or if legal proceedings are pending.

Step 11: Grant and Registration

• Grant(Section 27):

• If the request is timely, the patent is sealed and granted.
  • Registration(Section 54):
• The sealing date is entered in the Register of Patents, recording patentees, assignments, and licenses.
  • Patent Term(Section 31):
• Valid for 20 yearsfrom the filing date, subject to renewals.

Step 12: Maintain the Patent

• Renewal Fees(Section 32; Rule 24):

• Pay annual renewal fees using Form P-12before the year’s expiration, starting from the fourth year:
  • 5th to 8th year: PKR 12,000
  • 9th to 12th year: PKR 18,000
  • 13th to 16th year: PKR 24,000
  • 17th to 20th year: PKR 32,000
• Failure to pay may cause the patent to lapse, but restoration is possible using Form P-13(fee: PKR 13,500).

Additional Considerations

• Convention Applications(Section 88):

• Submit certified copies of specifications from the convention country within the prescribed time.
  • Biological Material(Rule 13):
• For inventions involving biological material, comply with the Third Schedule, ensuring deposition and availability of samples if not publicly accessible.
  • Controller’s Powers(Section 50):
• The Controller has civil court-like powers, including summoning witnesses and ordering document production.
  • Prior Art Search:
• Conduct a search to ensure novelty, as prior art includes anything disclosed publicly worldwide before the filing or priority date (Section 8).

Fee Structure

The following table summarizes key patent-related fees as of April 21, 2025, based on IPO-Pakistan data:

Source: IPO-Pakistan Patent Forms and Fees.

Practical Tips:

• Verify Current Procedures: Check the IPO-Pakistan website for the latest forms, fees, and updates, as practices may evolve.
• Document Preparation: Ensure all documents are in English, on A4 paper, and meet formatting requirements (Rule 6).
• Monitor Deadlines:

• File a complete specification within 12 months of a provisional specification.
• Request sealing within six months of publication.
  • Keep Records: Maintain copies of all submissions, payment receipts, and correspondence.
  • Professional Support: For complex or international filings, consult a patent attorney to ensure compliance and maximize protection.

Why Apply for a Patent?

• Exclusive Rights: Prevent unauthorized use of your invention for 20 years.
• Legal Protection: The patent serves as evidence in infringement disputes.
• Market Advantage: Enhances licensing or commercialization opportunities.

Conclusion

Applying for a patent in Pakistan involves preparing forms, drafting specifications, paying fees, and navigating examination and opposition. By following the steps outlined in the Patents Ordinance, 2000, and Patents Rules, 2003, and staying updated via the IPO-Pakistan website, you can secure your invention’s protection.

If you need Patent protection in Pakistan and require expert guidance and legal assistance, contact us at Baakza & Bansari and let us guide you on your inventive journey.