Patents: Frequently Asked Questions

 1. What is a Patent?
A patent for an invention is grant of exclusive rights to make, use and sell the invention for a limited period of 20 years. The patent grant excludes others from making, using, or selling the invention. Patent protection does not start until the actual grant of a patent. A patent cannot be obtained on a mere idea or suggestion. Patent applications are examined for both technical and legal merit.
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2. What is Patenting System?
The basic theory of the patent system is simple and reasonable. It is desirable in the public interest that industrial techniques should be improved. In order to encourage improvement and to encourage also the disclosure of improvements in preference to their use in secret.
Any person devising any improvement in a manufactured article or in machinery or methods for making it, may upon disclosure of his improvement at the Patent Office demand to be given a monopoly in the use of it for a limited period. After that period, it passes into the public domain.
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3. What rights does a Patent owner have?
A patent owner has the right to decide who may or may not use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and invention enters the public domain, that is, the owner no longer holds exclusive right to the invention, which becomes available to commercial exploitation by others.
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4. What is an invention?
According to Patents Ordinance 2000, invention is any new & useful product, including chemical products, art, process, method or manner of manufacture, machine, apparatus or other articles in any field of technology and includes any new and useful improvement of any of them is an alleged invention.
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5. Are all inventions Patentable?
Any invention, whether a product or process, in all fields of technology, is Patentable provided the invention meets the substantive criteria for patentability – namely, novelty, inventive step and industrial applicability.
The following shall not be regarded as invention within the meaning of sub¬section (1), namely:-
a) A discovery, scientific theory or mathematical method;
b) A literary, dramatic, musical or artistic work or any other creation of purely aesthetic character whatsoever;
c) A scheme, rule or method for performing a mental act, playing a game or doing business;
d) The presentation of information; and
e) Substances that exist in nature or if isolated there from.
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6. What is exclusion to Patentability?
There are specific exclusions to Patentability under section 7 of Patents Ordinance 2000 (as -amended in 2002 and 2006) which may be generally summarized as follows:
• Inventions the prevention of whose commercial exploitation is necessary to protect order public (public order) or morality, including to protect animal or plant life or health;
• Inventions that are of an intellectual, abstract or aesthetic character (including discoveries, artistic works, computer software and methods for doing business);
• Diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and certain biotechnology-based inventions.
• For a new or subsequent use of known product or process.
• For a mere physical change in the appearance of a chemical product where the chemical formula or process of manufacturer remains the same.
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7. Who can apply for Patent protection in Pakistan?
Any of the following persons are entitled to make an application for Patent, Whether alone or jointly with any other person, may make an application for a Patent, namely:-
(a) The true and the first inventor or inventors of the invention or his or, as the case may be, their assignee or successor -in -interest; and
(b) The legal representative of any deceased person who immediately before his death was entitled to make such application.
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8. What mode of payment is acceptable to the Patent Office?
Fee can be paid in cheque only in the name of DG-IPO Pakistan at
The Patent Office 2nd Floor Kandawala Building Main M.A Jinnah Road Karachi-75500 Pakistan
OR
Money order or postal order or cheque or bank draft can be made at the same address if application has been sent from any city other than Karachi.
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9. What is declaration?
A declaration is a statement in which the inventor declares that he has read and understood the application and that he believes himself to be an inventor (or the sole inventor) of the invention described in the patent application.
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10. Who is a Patent Attorney and what is his power?
A Patent Attorney is a lawyer with graduation in any of the disciplines of Science who can write patent applications and can file them with the Patent Office because these applications can be technically and procedurally complex hence advise from attorney is recommended
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11. Why is it necessary to apply through Patent Attorney?
A patent application is an agreement between the inventor and the Patent Office that results in the issuance of patent. Drafting a patent application is different than writing a scientific paper. The issued patent will be reviewed over the year by public officials, such as patent examiners and judges, and business partners. Thus, the patent application should be drafted with these important audiences in mind. Due to the legal aspect of patent application it’s advised to consult a Patent Attorney for preparing a patent draft.
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12. What is Prior Art?
The Prior Art or “state of the art” is defined in section 8(2) as comprising:
a) Everything disclosed to the public anywhere in the world by publication in tangible form, by oral disclosure, by use or in any other way, before the filing date or, where appropriate, the priority date, of the claimed invention;
b) the contents of the complete specification and priority documents of an application filed in Pakistan published under section 21 – such publication occurs when the application is accepted; and
c) Traditionally developed or existing knowledge available or in possession of a local or indigenous community.
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13. What is Substantive Examination?
The substantive requirements of Patents Ordinance 2000 against which the application and complete specification must be assessed are whether:
• the applicant is entitled to the grant of a patent;
• the invention is fully described;
• the claims define a patentable invention;
• the claims relate to a single invention;
• the claims are clear and succinct;
• the claims are fairly based on the matter disclosed in the specification;
• the claims define a new invention; and
• the claims define an invention that involves an inventive step
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14. What is Novelty and Inventive Step?
According to section 8(1) of Patents Ordinance 2000, an invention is new (the legal term is novel), if it does not form part of the state of the art (defined above).Section 9 of the Patents Ordinance provides that an invention shall be considered to involve an inventive step if at the date of the application it is not obvious to a person skilled in the art having regard to any matter that forms part of the state of the art.
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15. How can be applied for Patent protection in Pakistan?
The Patent application can be filed at the Patent Office of Pakistan on prescribed form (P-l,P1A,P-2,P2A) and paying the filing fee in the form of cheque in the name of DG- IPO Pakistan at the address:
The Patent Office
2nd Floor Kandawala Building
Main M.A Jinnah Road
Karachi.
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16. What is the procedure and time of Patent grant in Pakistan?
Applications, other than provisional applications, filed in the Patent Office of Pakistan as complete applications are assigned for examination to the respective examiners related to the field of invention. In this procedure, applications are taken up for examination by the examiner to whom they have been assigned.
The examination of the application consists of a study of the application for compliance with the legal requirements and a search through National and International Databases, to see if the claimed invention is new, useful and non-obvious and if the application meets the requirements of the patent statute and rules of practice.
If the application does not satisfy the legislative requirements, the examiner issues a written examination report, which sets out any deficiencies as Office action. The applicant may respond to the written report by filing amendments to the application to overcome the objections.
The examiner must then reconsider the application in the light of the applicant’s response. If any office action remains unresolved, the examiner issues another report. If the applicant does not comply with the office action within the given time the application will lapse.
When the application is free of objections (either at the beginning of examination or as a result of an applicant’s response to report), the examiner is obliged to accept the application. The acceptance is then advertised in the Official Gazette.
A decision is reached by the examiner in the light of the study and the result of the search. As a result of the examination by the Patent Office, patents are granted.
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17. What is Patent specification?
The part of the patent application, which gives technical disclosure of the invention, is called patent specification. The description must contain enough information for the person skilled-in-the-art to be able to understand what the invention is and how the invention is to be performed. Specification is the most important document that a patent examiner examines against the pertinent art of the field of the invention.
The specification has following sections:
• The Abstract
• The Background of the invention
• The Summary of the invention
• The Detailed description and
• The Drawings (if any)
• The Claims
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18. What are Patent claims and how these can be drafted?
The claim defines the scope of protection provided by a patent. The claims are a written approximation of the abstract inventive concept created by the inventor, and the claim defines the outer limits of patent protection. The claim clearly and concisely tell the world what the patent application claims to be his invention. The specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The scope of the invention should be defined before first office action on the application. One should generate a series of brief statements which describes the invention as precisely as possible. Each element of the invention should be listed separately. One should attempt to make the description of the invention as broad as possible while remaining novel and non-obvious. After determining the breadth of the invention, one should very carefully define each detail of the invention which is novel. This precise definition of the invention will become the “Claims” of the patent.
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19. How Patent database can be searched in Pakistan? Is there any online database available?
The Patent Office of Pakistan doesn’t have any online database at present through which you can search the patent database.
The method you can utilize for the same purpose is that put a request for patent database search on form P-27 along with fee in the form of cheque in the name of DG-IPO Pakistan at The Patent Office.
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20. How can one get a certified copy of an accepted Patent application?
One has to submit a request on form P-26 with the prescribed fee for a certified copy of an accepted patent specification, in the form of Cheque in the name of Director General IPO Pakistan at The Patent Office.
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21. What is Provisional Specification?
A provisional specification does not provide patent protection on its own. However, the real value of a provisional specification is that it may be used to establish an early priority date for a complete specification filed within twelve months in Pakistan.