Patent Litigation Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

Patent litigation is governed by:

• the Patent Ordinance, 2000; and
• the Intellectual Property Organisation (IPO) Act 2012.

Pakistan has established specialised IP tribunals for the adjudication of patent disputes and infringement. However, no special procedure is prescribed to govern the proceedings of the tribunals; therefore, the tribunals adopt the procedures prescribed for civil litigation under the Civil Procedure Code, 1908.

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

Pakistan is a signatory to the following multilateral agreements:

• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
• the Paris Convention for the Protection of Industrial Property.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

The IPO is the primary authority responsible for patent matters, overseeing the registration, administration and enforcement of patents.

The country also has IP tribunals, established to provide specialised forums for resolving IP disputes, including those relating to patents. The tribunals aim to:

• expedite the resolution of IP cases; and
• ensure that such cases are heard by judges with expertise in IP law.

A matter can be further appealed to both the high courts and the Supreme Court.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

Infringement and validity are dealt with in separate proceedings. Infringement suits are normally heard by the IP tribunals; however, where a counterclaim for revocation of the same patent is made by the defendant, the suit and the counterclaim will be transferred to the high court.

The forum for validity or revocation proceedings may be the Pakistan Patent Office, the courts or the federal government. Each forum has different periods for filing a petition.

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

Section 16 of the Intellectual Property Organisation Act, which provides for the establishment of the IP tribunals, states that an IP tribunal will consist of a single member appointed from the judiciary or a lawyer possessing the qualifications to be appointed as a judge of the high court, called the 'presiding officer'. The presiding officer hears and decides cases involving the infringement of patents.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

There are no opportunities for forum shopping in Pakistan. Patent rights granted under and pursuant to the Patents Ordinance, 2000 are now enforceable only in the IP tribunals. However, where a counterclaim for revocation of the same patent is made by the defendant, the suit and the counterclaim will be transferred to the high court.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

The right to bring infringement proceedings belongs to the patent holder. Therefore, the person bringing the suit must be the owner of the rights conferred by grant of the patent.

The holder of an exclusive licence under a patent also has a right to bring infringement proceedings against an infringement that occurs after the date of the licence.

However, Section 22 of the Patent Ordinance, 2000 provides that an applicant will not be entitled to institute any proceedings for infringement until the patent has been sealed; although the applicant will have like privileges and rights between acceptance of the application and:

• the date of sealing a patent in respect thereof; or
• the expiration of the time for sealing as if a patent for the invention had been sealed on the date of acceptance of the application.

Therefore, before the sealing of the patent, it is not possible for the patent applicant to institute IP tribunal proceedings against any infringer.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

Patents grant exclusive rights within the country or region in which they are filed and granted, making them a territorial right. Activities that infringe a patent outside the jurisdiction in which it was granted cannot be penalised directly. However, patent holders can take steps to prevent others from making or selling their patented inventions overseas. This can be done by filing separate patent applications in each country in which protection is sought, leading to the examination and issuance of patents in those jurisdictions. If the infringing product enters a territory where the patent is in force, legal action can be taken against it.

The Customs Act empowers customs officers to act against the import and export of goods that violate patent rights. Customs officials can seize or confiscate goods that infringe on patents. Statutory Regulatory Order 170(I) 2017 outlines the procedure for filing complaints with the customs authorities, which will then take appropriate action against patent infringement involving imported or exported goods.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

In Pakistan, it is generally the practice to file a separate infringement suit against each defendant where multiple defendants are involved in infringing the same patent but the causes of action and the timeframes of infringement differ. Thus, while multiple defendants may be involved in the infringement of a single patent, if their infringement arises from different actions or at different times, it is often more appropriate to file separate suits against each defendant. This approach:

• allows for a clearer presentation of the specific allegations against each defendant; and
• ensures that each defendant has the opportunity to defend itself against the claims made against it.

Under Order 1, Section 3 of the Code of Civil Procedure 1908, multiple persons or parties can be joined as defendants in a single suit – whether jointly, severally or in the alternative – if they:

• are alleged to have a right to relief; or
• are involved in acts arising from the same cause of action or series of acts or transactions.

This joinder is permissible if bringing separate suits against these individuals would result in common questions of law or fact.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

Under Section 24 of the Patents Ordinance, 2000, any person may make observations in writing to the controller of patents on the novelty of the invention, giving evidence in support of its observations. The controller will consider the observations in light of the evidence made available to her before grant of patent.

A person that makes observations will not become a party to the proceedings before the controller solely by reason of making the observations.

4 Patent infringement

4.1 What constitutes patent infringement in your jurisdiction?

The right to bring infringement proceedings belongs to the patent holder. Therefore, the person bringing the suit must be the owner of the rights conferred by the patent.

4.2 How is infringement determined?

If the subject matter of a patent is a product, the holder of a valid patent may prevent third parties from making, using, offering for sale, selling or importing for such purposes that product without the patent holder's consent.

If the subject matter of a patent is a process, the holder of a valid patent may prevent third parties from using the process and from using, offering for sale, selling or importing for such purposes a product obtained directly by that process, without the patent holder's consent.

4.3 Does your jurisdiction apply the doctrine of equivalents?

Unfortunately, there are neither judicial precedents nor any reported decisions of the Pakistan courts in patent infringement cases which can assist us in answering this question. Nevertheless, we believe that since the Pakistan patent regime is modelled on UK law, the Pakistan courts will be guided and influenced by the corresponding UK law on patent infringement.

4.4 Is wilful infringement recognised? If so, what is the applicable standard?

There is no mention of the concept of wilful or intentional patent infringement under the Patent Ordinance, 2000. However, Section 62 states that damages will not be awarded against an infringer which proves that, at the date of the infringement, it was not aware and had no reasonable grounds to suppose that the patent existed.

5 Bringing a claim

5.1 What measures can a patent holder take to enforce its rights in your jurisdiction? Are interim measures available before receiving a ruling on the merits?

As regards the procedure for enforcing patent rights against an infringer, generally a suit setting out the facts of the case must be filed with the IP tribunal in the province where the infringement has taken place.

Preliminary injunctions are granted to restrain the defendant from committing the acts complained of until the final hearing. For a preliminary injunction, the plaintiff must show that:

• there is a prima facie case to be answered; and
• the balance of convenience is in its favour.

If the defendant can establish that there are grounds to dispute the validity of the patent, the preliminary injunction will not be granted.

Final injunctions are granted:

• after hearing the merits of the suit; and
• where actual infringement or a threat of infringement is established.

5.2 What is the limitation period for patent infringement in your jurisdiction?

The Patents Ordinance does not specify a timeframe within which infringement suits must be initiated. However, Article 40 of the Schedule to the Limitation Act, 1908 provides that the limitation period "for compensation for infringing copyright or any other exclusive privilege" is three years from the date of infringement. Therefore, a right to invent and the grant of a patent under the Patents Ordinance, 2000 are considered to constitute an exclusive privilege.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

A cease and desist letter can be issued to the infringer; but in our experience, it only incites the infringer to approach the court and obtain an interim order in its favour stating that its products are not infringing and that no one should be interfering in its business. We then end up having to vacate that injunction order in multiple forums before we can obtain any injunctive relief in favour of the rights holder.

5.4 What are the procedural and substantive requirements for bringing a claim for patent infringement? How much detail must be presented in the complaint?

A suit is commenced by the presentation and filing of the plaint, which:

• sets out the particulars of the claim; and
• must contain all material facts that the plaintiff will rely on.

Along with the plaint, the plaintiff may file additional necessary applications for the grant of interim remedies in order to restrain the defendant from continuing the infringing act in the interim.

After scrutinising the papers submitted to the IP tribunal, the officer fixes the matter before the judge. The officer is empowered either:

• to admit the plaint; or
• to raise objections on the grounds of formalities.

Once the matter has been admitted for hearing, all relevant documents relied on in the plaint must be filed. Where a suit has been properly instituted, summons may be issued to the defendant to appear and answer the claim. The defendant has the right to file a written statement setting out its defence to the claim. Once the court has determined the main issues in the case, evidence must be produced (whether orally or by way of affidavit) and is subsequently examined by the tribunal. Thereafter, the case is heard and once the arguments have concluded, the tribunal may pronounce judgment followed by a decree.

5.5 Are interim remedies available in patent litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Preliminary injunctions are granted to restrain the defendant from committing the acts complained of until the final hearing. To obtain a preliminary injunction, the plaintiff must show that:

• there is a prima facie case to be answered; and
• the balance of convenience is in its favour.

If the defendant can establish that there are grounds for disputing the validity of the patent, the preliminary injunction will not be granted.

Final injunctions are granted:

• after hearing the merits of the suit; and
• where actual infringement or threat to infringe is established.

The IP tribunal will first hear and decide on the plaintiff's application for the grant of an urgent hearing. In most cases, this application is granted as prayed. The tribunal then proceeds to hear the plaintiff's application seeking a temporary injunction and ex parte ad interim orders.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

The IP tribunal has the power to grant relief by way of damages or accounts of profit in suits for infringement. In determining the damages, the tribunal will examine the loss that has been sustained by the patent holder as a result of the sale of the unlawful goods. The loss must be a natural and direct consequence of the defendant's acts.

When claiming an account of profits, the tribunal will consider the extent to which the invention was appropriated in order to determine the proportion of the infringer's profits that are attributable to the use of the invention. If the patent holder does not itself sell the goods but licenses others to use them, the assessment will be on the basis of lost royalties.

However, Pakistani tribunals tend to be hesitant in awarding damages.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Under the Code of Civil Procedure, any party may apply to the court for an order directing another party to disclose documents which are or have been in its possession relating to any matter therein. On the hearing of such an application, the IP tribunal will have discretion to make such an order as it thinks fit (Order XI, Rule 12) compelling the other party to disclose the existence of documents.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Third parties will be required to produce documents in their possession only if:

• this is requested by one of the litigants; and
• the court considers that knowledge of such documents is of importance for the purposes of the judgment to be handed down.

The court will:

• order the person that possesses the documents to be called in person;
• hear that person accordingly;
• decide on the request; and
• take all necessary measures to protect the confidentiality of the documents, if requested.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

The Qanun-e-Shahadat Order 1984 prohibits advocates from doing the following without clients' consent:

• disclosing any communication made to them in the course of their employment by or on behalf of a client;
• stating the contents or condition of any document that they have become acquainted with during their professional engagement; or
• disclosing any advice given to a client.

This confidentiality obligation continues even after the termination or expiry of their employment.

Additionally, no one can be compelled to disclose any confidential communication with their legal adviser to a court, tribunal or other judicial or quasi-judicial authority.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in patent infringement litigation?

The plaint, supported by necessary applications along with other evidentiary documents, is presented in the court and copies of the documents submitted must be sent to the defendant. The defendant must file a written statement containing its defence to the claim. Once the tribunal has determined the main issues in the case, evidence must be produced and is subsequently examined by the tribunal. Any evidence produced by the parties must be presented either:

• orally before the tribunal; or
• by way of affidavit.

7.2 What types of evidence are permissible in your jurisdiction? Is expert evidence accepted?

The arguments are presented at the trial both orally and by written/counterstatements; while the evidence is presented orally or by way of affidavit along with documentary proofs.

Under Section 68(1) of the Patents Ordinance 2000, the tribunal may at any time, irrespective of whether an application has been made by any party, appoint an independent scientific adviser to assist it or to inquire and report on any question of fact or of opinion.

7.3 What are the applicable standards of proof?

A party may also be compelled to disclose documents for the purpose of inspection. The tribunal may:

• order the production by any party of such documents on oath in its possession or power relating to any matter in question in such suit; and
• deal with such documents in a manner that appears just.

Such an order can be made at any time on application or suo moto (Order XI, Rule 14).

7.4 On whom does the burden of proof rest?

Where the subject matter of a patent is a product, the burden of proof rests with the patent holder to prove that both products are identical.

However, where the subject matter of a patent is a process for obtaining a product, the defendant must prove that the process used to obtain an identical product was different from the patented process. In the absence of proof to the contrary, the identical product in question will be deemed to have been obtained by the patented process. However, the product obtained through the patented process will be regarded as new if it was not put on the market for more than one year before initiation of the judicial action by the patent holder.

8 Claim construction

8.1 Is there a procedure for construing claims during a patent infringement action? If so, when and how is it performed?

The protective scope of a patent is defined by its claims. The invention is precisely what is outlined in the claims of the patent specification, interpreted through the description and any drawings included in the specification. There is no distinct procedure for interpreting the terms of a patent's claims.

Unfortunately, there are no judicial precedents or reported decisions of the Pakistan courts in patent infringement cases which can assist us further in considering this question. Nevertheless, we believe that since the Pakistan patent regime is modelled on UK law, the Pakistan courts will be guided and influenced by the corresponding UK patent law concerning patent infringement.

8.2 What is the legal standard used to define disputed claim terms?

Unfortunately, there are no judicial precedents or reported decisions of the Pakistan courts in patent infringement cases which can assist us in considering this question. Nevertheless, we believe that since the Pakistan patent regime is modelled on UK law, the Pakistan courts will be guided and influenced by the corresponding UK patent law concerning patent infringement.

8.3 What evidence does the court consider in defining the claim terms?

While there are no limitations on the evidence that can be produced, the court will normally consider expert reports in defining the claim terms.

8.4 Can the claims of a patent be amended in the course of the proceedings?

Under Section 42(5) of the Patents Ordinance, 2000, the provisions on amendments will not apply:

• in relation to the amendment of a specification made in opposition proceedings;
• where the controller of patents is authorised under the ordinance to direct that a reference to another specification or patent be inserted; or
• in proceedings to refuse a patent or revoke a patent, unless the specification is amended to the controller's satisfaction.

However, under Section 43, in proceedings before the high court for the revocation of a patent, the High Court may, subject to the provisions of Section 44, by order allow the patent holder to amend its complete specification in such a manner – and subject to such terms as to costs, publication or otherwise – as the high court may think fit. If, in any such proceedings for revocation, the high court decides that the patent is invalid, it may allow the specification to be amended under this section instead of revoking the patent.

9 Defences and counterclaims

9.1 What defences are typically available in patent litigation?

Any ground on which a patent may be revoked can be raised as a defence to infringement proceedings.

9.2 Can the defendant counterclaim for revocation or invalidation of the patent? If so, on what grounds and what is the process for doing so?

The grounds for opposition/invalidation of a patent are laid down in Section 23 of the Patent Ordinance, 2000, as follows:

1. that the applicant for the patent obtained the invention or any part thereof from him or from the person of whom the opponent is the legal representative, assignee, agent or attorney;
2. that the invention is not a patentable invention within the meaning of this Ordinance;
3. that the specification does not disclose the invention in a manner clear and complete enough for it to be carried out by a person skilled in the art;
4. that the claims are not clear or extend beyond the scope of the disclosures in the complete specification as originally filed; and
5. that the complete specification describes or claims an invention other than that described in the provisional specification and that such other invention either forms the subject of an application made by the opponent for a patent which if granted would bear a date in the interval between the date of the application and the leaving of the complete specification, or has been made available to the public by publication in any document in that interval.

9.3 Are there any grounds on which an otherwise valid patent may be deemed unenforceable against a defendant?

Apart from the defences set out in questions 9.1 and 9.2, the defendant may raise the defence that the plaintiff is not entitled to sue for infringement as it is not the registered owner or exclusive licence holder of the patent.

The defendant may also raise the defence of innocent infringement – that is, it was unaware of the fact that the product in question is patented. The defendant will not be held to have reasonable grounds to suppose that a product is patent protected merely by the word 'patent' being labelled on it without the patent number. This defence, however, will only prevent the tribunal from awarding damages against the infringer; it will not restrict it from granting an injunction.

10 Settlement

10.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

These are optional.

10.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

In patent litigation, proceedings can be adjourned while settlement discussions are ongoing.

10.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

It is not necessary to report settlement discussions to the court. However, in such a scenario, if either party breaches the settlement, a new suit cannot be filed.

On the other hand, if the parties wish for the settlement to be part of the court order, they can request the tribunal to dispose of the case based on that settlement and issue an order accordingly. In this situation, if one party fails to adhere to or breaches the settlement terms, a new legal action arises based on breach of the agreement. The aggrieved party can then file a lawsuit for the breach.

11 Court proceedings for infringement and validity

11.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

Yes, ordinarily all court hearings are held in public. However, all judgments are not made available to the public except those which are published and reported in the law journals.

Order 20, Rule 20 of the Code of Civil Procedure states that certified copies of the judgment and decree must be furnished to the parties on application to the tribunal and at their expense. At the time of applying for the certified copies, an affidavit in support may be required.

11.2 Procedurally, what are the main steps in patent infringement proceedings in your jurisdiction? Is patent validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

A suit for patent infringement can be instituted in an IP tribunal of competent jurisdiction within whose local limits the infringement has taken place. As regards the procedure for enforcing patent rights against an infringer, generally a suit setting out the facts of the case must be filed at the tribunal in the province where the infringement has taken place.

A suit for patent infringement is normally adjudicated in two stages:

• In the first stage, the application for temporary injunction is heard and decided; and
• In the second stage, the main suit is heard and decided.

In the initial stage, the following documents are prepared, finalised and filed by the plaintiff's counsel:

• the plaint, which sets forth the plaintiff's claim;
• an injunction application, along with an affidavit seeking temporary (until disposal of the suit) and ex parte ad interim orders; and
• an application along with an affidavit for the grant of an urgent hearing for the aforementioned application.

First, the IP tribunal will hear and decide on the plaintiff's application for the grant of an urgent hearing. In most cases, this application is granted and the tribunal then proceeds to hear the plaintiff's application seeking a temporary injunction and ex parte ad interim orders.

The grant of a temporary injunction and ex parte ad interim orders is a matter of discretion for the tribunal and will depend on whether the judge is satisfied that, given the facts and circumstances of the case, the plaintiff has established that:

• it has a prima facie case;
• the balance of inconvenience is in its favour; and
• it will suffer irreparable loss if the injunction is not granted.

After hearing the arguments presented by the plaintiff's counsel, and if satisfied of the existence of the above factors, the tribunal may:

• grant ex parte ad interim orders restraining the defendant from using the patented invention until the next hearing (as a matter of practice, the duration of the ex parte ad interim orders is extended by the tribunal at each hearing); and
• give directions for the issuance of notices to the defendant.

These orders are likely to be issued on the same day as filing of the suit.

Once the notices have been served on the defendant, the defendant must make an appearance in the tribunal (either personally or through counsel) and submit its reply to the plaintiff's application for grant of a temporary injunction and to the main suit subsequently.

Usually, the defendant's counsel seeks time to file its response and as such, the hearing of the plaintiff's application seeking a temporary injunction will be adjourned to a further date (the duration of the ex parte ad interim orders will be extended by order of the tribunal until that date).

Once the defendant's counsel have filed a reply to the plaintiff's application seeking a temporary injunction and such reply has been served on the plaintiff's counsel, the plaintiff's counsel will either:

• seek time to file a response (ie, rejoinder); or
• file a rejoinder by the next hearing date.

Once the plaintiff's counsel have filed a response (ie, rejoinder), the court will appoint a hearing for the adjudication of the plaintiff's application for grant of a temporary injunction.

Upon hearing both parties, the tribunal will either:

• confirm the grant of a temporary injunction against the defendant restraining it from using the invention until disposal of the suit; or
• vacate the ex parte ad interim order (granted previously) and dismiss the application for grant of a temporary injunction.

Once the plaintiff's application for grant of temporary injunction has been decided by the tribunal, the parties must file and assist the court in finalising the issues which arise for decision by the tribunal.

Once the issues have been framed by the tribunal, the parties must file lists of witnesses within seven days of filing of the issues.

Once the lists of witnesses have been filed, the parties will then attend to the recordal of evidence in court. In particular, the plaintiff's counsel will:

• examine the plaintiff's witnesses and, where necessary, re-examine them after cross-examination by the defendant's counsel;
• cross-examine the defendant's witnesses examined in court;
• exhibit all requisite documentary evidence through admission of counsel for the other side or proof by witnesses; and
• address arguments to assist the tribunal in deciding on each of the issues framed.

Thereafter, the main arguments are heard and decided by the tribunal. The tribunal may:

• grant a permanent injunction against the defendant; or
• dismiss the suit.

Final disposal of the suit may take up to four to five years at first instance.

Where proceedings for patent infringement are ongoing and simultaneously a case for revocation of the same patent on the grounds of invalidity is filed by another party, either in court or with the controller of patents, the court will most probably grant an interim injunction restraining the defendant in the patent infringement proceedings from infringing the patented product until the case on the validity of the patent has been decided. The court could be either a high court or a district court, as the case may be.

11.3 What is the typical timeframe for patent infringement proceedings? If separate patent validity proceedings are available, with is the typical timeframe for those proceedings?

Depending on the nature of the suit and the extent of the evidence which must be examined, a suit may be disposed of within three to four years. In practice, however, in many cases proceedings have continued for several years due to backlogs and political uncertainty. It is therefore difficult to comment on the timeframe involved in obtaining relief.

11.4 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

In patent litigation, decrees issued by the superior courts of certain reciprocating territories, as notified by the government of Pakistan, may be enforced in Pakistan as if they were issued by a district court. Reciprocating territories include:

• the United Kingdom;
• Fiji;
• Singapore;
• Australia;
• New Zealand;
• Kuwait;
• Turkey; and
• the United Arab Emirates.

To enforce such a decree, a certified copy must be filed with the district court at the place where enforcement is sought.

If a foreign decree was not issued by a superior court in one of the abovementioned jurisdictions, the decree holder must initiate a new lawsuit in Pakistan based on the foreign decree.

12 Remedies

12.1 What remedies for infringement are available to a patent holder in your jurisdiction?

As regards the types of relief which may be granted in a suit for infringement, Section 61(2) of the Patents Ordinance provides as follows:

Apart from damages and an account of profits, other forms of relief may be obtained by the patent holder under the law. The tribunal has the power to:

• order prompt and effective provisional measures to prevent infringement or the entry into channels of commerce of goods, including imported goods after customs clearance; and
• preserve relevant evidence with regard to the alleged infringement.

Provisional measures may be ordered without hearing a party where:

• any delay would be likely to cause irreparable harm to the rights holder; or
• there is a demonstrable risk of evidence being destroyed.

12.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

With regard to damages arising from a case of infringement, to our knowledge, the question has never been decided by the Pakistan courts, but we would expect that the same general principles will be followed in Pakistan as in the United Kingdom. In Pakistan, the remedies are pursued through the courts.

12.3 What factors will the courts consider when deciding on the quantum of damages?

In determining the damages, the tribunal will consider what loss has been sustained by the patent holder as a result of the sale of the unlawful goods. The loss must be a natural and direct consequence of the defendant's acts.

13 Appeals

13.1 Can the decision of a first instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Any decree passed by an IP tribunal may be appealed before a court that is authorised to hear such appeals.

A first appeal may be brought on a matter of law or fact and there are no restrictions on the grounds for appeal. However, a decision which is correct on both merits and jurisdiction cannot be reversed on account of:

• misjoinder of parties;
• cause of action; or
• any defect in the proceedings.

13.2 What is the average time for each level of appeal in your jurisdiction?

Under Section 19 of the Intellectual Property Organisation Act 2012, any person aggrieved by a final judgment or order of an IP tribunal can file an appeal before the high court with territorial jurisdiction over that tribunal within 30 days.

14 Costs, fees and funding

14.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

The costs associated with a patent infringement lawsuit before trial, during trial or on appeal vary depending on the nature and complexity of the case, and typically range from $7,000 to $25,000 or higher. While a successful plaintiff may theoretically recover reasonable costs, the Pakistan courts are generally reluctant to award costs or pecuniary relief in IP cases. In the rare instances where damages or costs are awarded, they are usually a small fraction of the total expenses.

14.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Contingency fees are not expressly prohibited in Pakistan. However, the Canons of Professional Conduct and Etiquettes of Advocates outlined in Chapter XII of the Pakistan Legal Practitioners and Bar Council Rules 1976 specify factors that should be considered in determining an advocate's fee, which may indirectly impact on the use of contingency fees.

14.3 Is third-party litigation funding permitted in your jurisdiction?

There are no specific rules on the use of third-party funding and this practice is rare. In the absence of such rules, parties are at liberty to enter into contractual agreements regarding the funding of litigation and the distribution of any resulting proceeds.

15 Trends and predictions

15.1 How would you describe the current patent litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

The introduction of IP tribunals aims to establish a new specialised judiciary that will have an enhanced understanding of IP law and deal exclusively with matters relating to IP rights. The tribunals will exercise civil and criminal jurisdiction to try all IP-related offences under:

• the Code of Civil Procedure 1908; and
• the Code of Criminal Procedure 1898.

All trademark and copyright suits and proceedings pending under IP law have already been transferred to the appropriate tribunals with jurisdiction.

The establishment of IP tribunals demonstrates Pakistan's continued commitment to improving protection and awareness of IP rights, which should:

• give confidence to rights holders; and
• facilitate economic growth.

Additionally, the Intellectual Property Organisation (IPO) is in the process of improving its IP laws, including the Patents Ordinance, 2000. The draft amendments to the ordinance aim to:

• bring it into line with the IPO Act;
• streamline patent processes according to international best practices; and
• facilitate Pakistan's accession to international patent agreements (eg, the Patent Cooperation Treaty).

16 Tips and traps

16.1 What would be your recommendations to parties facing patent litigation in your jurisdiction and what potential pitfalls would you highlight?

While Pakistan has a robust set of intellectual property (IP) laws aimed at safeguarding the rights of IP owners and patent holders, the actual implementation of these laws remains a significant challenge. Despite having a comprehensive legal framework, enforcement is often hindered by bureaucratic delays and inefficiencies within the system. Additionally, the litigation process in Pakistan is typically lengthy, with cases taking years to reach resolution, further complicating matters for IP owners seeking timely redress.

One of the primary issues has been the insufficient number of dedicated IP Tribunals. Until recently, only three such tribunals were operational, located in Lahore, Karachi, and Islamabad. This limited geographical coverage created significant barriers for individuals and companies outside these major cities, making it difficult for them to access swift justice. However, in a significant development, the Intellectual Property Office Pakistan (IPO-Pakistan) has announced the establishment of two additional IP Tribunals in Rawalpindi and Quetta.

Additionally, there is a need for comprehensive training of the presiding officers of these tribunals and the officers responsible for IP rights at customs, to ensure effective enforcement. Therefore, engaging a competent patent attorney is crucial in order to secure your rights in Pakistan.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.