Draft Patent Act, 1998. Part I - Sales Taxes: VAT, GST

A BILL to repeal and re-enact the law relating to the protection of inventions.

WHEREAS it is expedient to repeal and re-enact the law relating to protection of inventions;

It is hereby enacted as follows:-

CHAPTER I
PRELIMINARY

1. (1) This Act may be called the Patent Act 1998.

(2) It extends to the whole of Pakistan.

(3) It shall come into force on such day as the Federal Government may, by notification in the official Gazette, appoint.

2. In this Act, unless there is anything repugnant in the subject or context,

(1) "Controller" means the Controller of Patents and Designs appointed under section 3;

(2) "convention application" has the meaning assigned to it by sub-section (2) of section 11;

(3) "convention country" means a country notified as such under sub-section (1) of section 102;

(4) "date of filing" or "date of the filing application" in relation to the application for a patent means-

(a) in the case of an application which is post-dated or ante-dated under this Act, the date to which it is so post-dated or ante-dated; and

(b) in any other case, the date on which the application is filed in the Patent Office;

(5) "District Court" has the meaning assigned to that expression by the Code of Civil Procedure, 1908 (Act V of 1908);

(6) "Examiner" means an officer appointed by the Federal Government under section 3;

(7) "exclusive licence" means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention, and "exclusive licensee" shall be construed accordingly;

(8) "invention’ means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology, and may be in the form of a process or a product;

(9) "inventor" means the actual advisor of an invention;

(10) "legal representative" means a person who in law represents the estate of a deceased person; or who is not deceased;

(11) "patent agent" means a person for the time being registered under this Act as a patent agent;

(12) "patentee", in relation to a patent, means the person or persons for the time being entered on the register as the grantee or proprietor of the patent;

(13) "patent of addition" means a patent granted in accordance with section 44;

(14) "Patent Office" means the Patent Office established, or deemed to have been established, under section 4;

(15) "person" includes the Government;

(16) "person interested" includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;

(17) "prescribed" means, in relation to proceedings before a High Court, prescribed by rules made by the High Court, and in other cases, prescribed by rules made under this Act;

(18) "prescribed manner" includes the payment of the prescribed fee;

(19) "priority date" has the meaning assigned to it by section 17;

(20) "process" means any process, art or method, and includes a new use of a known process or a product;

(21) "product" includes any substance, article, apparatus or machine;

(22) "register" means the register of patents referred to in section 59; and

(23) "rules" means rules made under this Act.

CHAPTER II
ADMINISTRATION

3. (1) The Federal Government may appoint the Controller and so many officers and clerks, with such designations and duties, as it thinks fit.

(2) In exercise of the powers and discharge of his function, the Controller takes decision independently in all matters independently or can exercise his discreation independently for e.g. a question of interpretation of the law or a question relating to the assessment of an inventive step a question of policy.

4. (1) For the purposes of this Act, there shall be established an office to be called the Patent Office, Ministry of Industries and Production and, until the Patent Office functioning under the Patents and Designs Act, 1911 (II of 1911), shall continue to function and shall be deemed to have been established under this section.

(2) The Patent Office shall be under the immediate control of the Controller who shall act under the superintendence and direction of the Federal Government.

(3) The Patent Office shall be entrusted with all the functions relating to the procedure for the grant of Patents and for the administration of granted Patents as specified in this Act and Rules.

(4) There shall be a seal for the Patent Office and impressions of the seal shall be judicially noticed.

5. Any officer or person employed in the Patent Office shall be incapable during the period of his appointment and for one year thereafter of applying for a patent or of acquiring, directly or indirectly, except by inheritance or bequest, any patent issued or to be issued by the Patent Office.

6. An officer or a person employed in the Patent Office shall not, except when required or authorised by this Act or under a direction in writing of the Controller or by order of a court,—

(a) divulge any information available to him by virtue of his office in respect of any application for a patent or a patent granted in Pakistan, or

(b) advise in a matter which is under consideration or is likely to come under consideration of the Patent Office in pursuance of this Act.

CHAPTER III
PATENTABILITY

7. (1) Any invention is patentable, if it is new, involves an inventive step and is capable of industrial application.

(2) 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;

the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention only to the extent that a patent or an application for a patent relates to that thing as such.

(3) The patent shall not be granted-

(a) for an invention or exploitation of which would be contrary to the public order or morality, provided that the exploi-tation shall not be considered to be so contrary merely because it is prohibited by any law for the time being in force;

(b) for any variety of animal or plant or essentially biological process for the production of animals or plants, not being a microbiological process or product of such process;

8. (1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) the state of the art shall comprise-

(a) prior art shall consist of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to the filing or, where appropriate, the priority date, of the application claiming the invention.

(b) the application may contain a declaration claiming the priority, as provides for in the Paris convention, of one or more earlier national, regional or international applicant or his predecessor in title in, or for, any state party to the said convention or any member of the World Trade Organization. The effect of the said declaration shall be as provided in the Paris convention.

(c) contents of the complete specifica-tion and priority documents published under section 23 as from their actual dates of filing in Pakistan and, where relevant, in case of priority documents, from their actual dates of filing in the convention countries.

(3) Subject to the rules in this behalf, a disclosure such as is referred to in clause (a) of sub-section (2) shall be disregarded if it occurred within one year preceding the date of the application and was by reason or in consequence of-

(a) acts committed by the applicant or his predecessor in title; or

(b) an abuse committed against the rights of the applicant or his predecessor.

9. An invention shall be considered as involving an inventive step if it is not obvious to a person skilled in the art having regard to the state of the art defined in clause (a) of sub-section (2) of section 8.

10. (1) Subject to sub-section (2), and invention shall be considered to be capable of industrial application if it can be made or used in any kind of industry, including agriculture, handicraft, fishery and services.

(2) An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application:

Provided that a product consisting of a substance or composition shall not be prevented from being treated as capable of industrial application merely because it was invented for use in such a method.

CHAPTER IV
APPLICATIONS

11. (1) Any of the following persons, whether alone or jointly with any other person, may make an application for a patent for an invention, namely:-

(a) the actual inventor of the invention;

(b) any person who has applied for the protection of the same invention in a convention country:

Provided that the application, or where more than one such application has been made, the first application, is made within twelve months preceding the date of application in Pakistan; and

(2) An application for a patent made by a person mentioned in clause (b) of sub-section (1) is referred to in this Act as convention application.

12. Notwithstanding anything in section 11, right to the patent for an invention made by an employee during the course of his employment in the area of activity of the employer shall belong in the absence of contractual provisions to the contrary:

Provided that an invention of exceptional economic value shall entitle the inventor to an equitable remuneration taking into account to an equitable remuneration taking into account the nature of his duties, his salary and the benefits derived by the employer.

13. (1) The application for a patent shall be filed with the controller and shall contain a request, a description, one or more claims, once or more drawings (where required), and an abstract. It shall be subject to the payment of the prescribed application fee.

(2) If the application (not being a convention application) is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period after the filing of the application as may be prescribed, a declaration, signed by the person claiming to be the true and first inventor or his legal representative, stating that he assents to the making of the application.

(a) The request shall contain a petition to the effect that a patent be granted, the name of and other prescribed data concerning the applicant, the inventor and the agent, of the invention;

(b) where the applicant is not the inventor, the request shall be accompanied by a statement justifying the applicants right to the patent.

(3) The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art, and shall, in particular, indicate at least one mode known to the applicant for carrying out the invention.

(a) Every application (other than a convention application) shall state that the applicant is in possession of the invention and shall name the person claiming to be the inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the inventor.

(4) Every convention application shall specify the date on which and the convention country in which the application for protection, or the first such application, was made, and shall state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or any person from whom he derives title.

(a) The claim as claims shall define the matter for which protection is sought. The description and the drawings may be used to interpret the claims.

(b) claims shall be clear and concise. They shall be fully supported by the description.

(5) Drawing shall be required when they are necessary for the understanding of the invention.

(6) The abstract shall merely serve the purpose of technical information, in particular, it shall not be taken into account for the purpose of interpreting the scope of protection.

(7) The applicant may up to the time when the application is in order for grant, withdraw the application at any time during its pendency.

(8) Where applications for protection have been made in one or more convention countries in respect of two or more inventions which are cognate or of which one is modification of another, a single convention application may, subject to the provisions of section 16, be made in respect of those inventions at any time within twelve months from the date of the earliest of the said applications for protection:

Provided that the fee payable on the making of any such application shall be the same as if separate applications have been made in respect of each of the said inventions; and the requirements of sub-section (4) shall in case of any such application apply separately to the applications for protection in respect of each of the said inventions.

14. (1) Where an applicant for a patent under this Act has made, either alone or jointly with any other person, another application for protection in any country outside Pakistan in respect of the same or essentially the same invention, or where to his knowledge such an application is being prosecuted by his predecessor in title, he shall file at the time of his application, or if the said other application is filed subsequently at any time before the expiration of twelve months from the date of the application, as soon as practicable, a statement of particulars in respect of the said other application setting out the name of such country and the date and number of the application:

(a) The applicant shall at the request of the controller, furnish him with the date and number of any application for a patent filed by him abroad (foreign application) relating to the same or essentially the same invention as that claimed in the application filed with the office of the controller.

(2) (a) The applicant shall at the request of the controller, furnish him with the following documents relating to one of the foreign applications referred to in sub-section (1):

(i) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;

(ii) a copy of the patent granted on the basis of the foreign application;

(iii) a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application.

(b) The applicant shall, at the request of the controller, furnish him with a copy of any final decision invalidating the patent granted on the basis of the foreign application refused to in paragraph (a).

15. (1) Every application for a patent (other than a convention application) shall be accompanied by either a complete specification or a provisional specification; and every convention application shall be accompanied by a complete specification.

(2) Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned.

(3) Where two or more applications in the name of the same applicant are accompanied by provisional specification in respect of invention which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this section and section 16, be filed in pursuance of those applications, or, if more than one complete specification has been filed, may, with the leave of the Controller, be proceeded with in respect of those applications.

(4) Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time before the acceptance of the specification, direct that it shall be treated for the purposes of this Act as a provisional specification, and proceed with the application accordingly.

(5) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (4) as a provisional specification the Controller may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

16. (1) Every specification, whether complete or provisional, shall describe the invention, and shall begin with a title indicating the subject to which the invention relates.

(2) Subject to any rules made in this behalf, drawings may, and shall if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the specification, and reference in this Act to a specification shall be construed accordingly.

(3) Every complete specification shall-

(a) fully and particularly describe the invention and the method by which it is to be performed;

(b) disclose the invention which is known to the applicant and for which he is entitled to claim protection; and

(4) The claim or claims of a complete specification shall relate to a single invention, shall be clear and succinct and shall not be unduly vide having regard to the disclosure in the specification.

(5) A declaration as to the inventorship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period after the filing of that specification as may be prescribed.

(6) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 11 to make a separate application for a patent.

(7) Every complete specification shall be accompanied by an abstract for the purposes of giving technical information and the Controller shall determine whether the abstract fulfills its purpose and, if it does not, may reframe it so that it does.

17. (1) (a) The Controller shall accord as the filing date the date of receipt of the application, provided that, on the date of receipt, the application contains:

(i) an express or implicit indication that the granting of a patent is sought;

(ii) indications allowing the identity of the applicant to be established;

(iii) a part which, on the face of it, appears to be a description of an invention.

(b) If the Controller finds that the application did not, on the date of receipt, fulfill the requirements referred to in paragraph (a) he shall invite the applicant to file the required correction and shall accord as the filing date the date of receipt of the required correction, but if no correction is made, the application shall be treated as if it had not been filed.

(2) Where the application refers to drawings which in fact are not included in the application, the Controller shall invite the applicants to furnish the missing drawings. If the applicant complies with the said invention, the controller shall accord as the filing date the date of receipt of the application and shall treat any reference to the said drawings as non-existent.

CHAPTER V
EXAMINATION OF APPLICATIONS

18. (1) When the complete specification has been filed in respect of an application for a patent, the Controller shall refer the application and the specification to the Examiner for making a report and the Examiner shall make such investigation as is practicable as to whether the invention is new and involves an inventive step, and shall determine as to whether other requirements of this Act and the rules have been complied with.

(2) If the Examiner reports that any of the requirements of this Act or the rules are not complied with, the Controller shall give the applicant an opportunity, or more than one opportunity, to make observations on the report and to amend the application so as to comply with the requirements, and if the applicant fails to satisfy the Controller that these requirements are complied with or to amend the application so as to comply with them, the Controller may refuse to proceed with the application.

(3) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the Controller may on that ground refuse to proceed with more, than one of the applications.

(4) At any time after an application has been filed and before acceptance of the complete specification, the Controller may, at the request of the applicant and upon payment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request;

Provided that:

(a) no application shall be post-dated under this sub-section to a date later than six months from the date on which it was actually made or would, but for this sub-section, be deemed to have been made; and

(b) a convention application shall not be post-dated under this sub-section to a date later than the date on which, under the foregoing provisions of this Act, the application could have been made.

(5) When an application or specification filed under this Act is amended before acceptance of the complete specification, the Controller may direct that the application or specification shall be post-dated to the date on which it is amended or, if it has been returned to the applicant, to the date on which it is refiled.

(6) Where, at any time after an application or specification has been filed under this Act and before acceptance of the complete specification, a fresh application or specification is filed in respect of any part of the subject matter of the first-mentioned application or specification, the Controller may direct that the fresh application or specification shall be ante-dated to a date not earlier than the date of filing of the first-mentioned application or specification.

19. (1) If, in consequence of the investigation required by the foregoing provisions of this Act it appears to the Controller that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public unless within such time as may be prescribed either-

(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or

(b) the complete specification is amended to the satisfaction of the Controller.

(2) Where, after a reference to an other patent has been inserted in a complete specification in pursuance of a direction under sub-section (1)-

(a) that other patent is revoked or otherwise ceases to be in force; or

(b) the specification of that other patent is amended by the deletion of the relevant claim; or

(c) it is found, in proceedings before the court or the Controller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant’s invention,

the Controller may, on the application of the applicant, delete the reference to that other patent.

20. (1) If the Controller is satisfied, on an application made in the prescribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for the patent, or by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants as the case may require.

(2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint applicants for a patent except with the consent of the other joint applicant or applicants.

(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless-

(a) the invention is identified therein by reference to the number of the application for the patent; or

(b) there is produced to the Controller an acknowledgement by the person by whom the assignment or agreement was made that the assignment or agreement relates to the invention in respect of which that application is made; or

(d) the Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under sub-section (5).

(4) Where one of two or more joint applicants for patent dies at any time before the patent has been granted, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.

(5) If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity of being heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require.

21. (1) An application for a patent shall be deemed to have been automatically refused unless within eighteen months from the date of filing of complete specification or within the extended period provided for in sub-section (2), the applicant has complied with all the requirements imposed on him by or under this Act.

Explanation.- Where any document filed in connection with the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with the said requirements unless and until he has refiled it.

(2) The period of eighteen months specified in sub-section (1) shall, on request made by the applicant in the prescribed manner and before the expiration of the said period, be extended for a further period of three months.

(3) If at the expiration of the period of eighteen months specified in sub-section (1) or the extended period:

(a) an appeal to the High Court is pending in respect of the application for the patent for the invention, or

(b) in the case of an application for a patent of addition, an appeal to the High Court is pending in respect either of that application or the application for the main invention,

the time within which the requirements of the Controller shall be complied with shall, on an application made by the applicant before the expiration of the said period of eighteen months or the extended period, as the case may be, be extended until such date as the High Court may determine:

(4) If the time within which the appeal mentioned in sub-section (3) may be instituted has not expired, the Controller may extend the period of eighteen months or, as the case may be, the extended period, until the expiration of such further period as he may determine:

Provided that, if an appeal has been filed during the said further period and the High Court has granted any extension of time for complying with the requirements of the Controller, then the requirements may be complied with within the time granted by the Court.

22. Subject to the provisions of section 21, the complete specification filed in pursuance of an application for a patent may be accepted by the Controller at any time after the applicant has complied with the requirements mentioned in sub-section (1) of that section, and, if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter:

Provided that the applicant may give notice to the Controller requesting him to postpone acceptance until such date., not being later than twenty one months from the date of filing of the complete specification as may be specified in the notice; and if such notice is given and, where the notice requests postponement to date later than eighteen months from the date aforesaid, the prescribed fee is paid, the Controller may postpone acceptance accordingly.

23. On the acceptance of a complete specification, the Controller shall give notice thereof to the applicant and shall advertise in the official Gazette the fact that specification has been accepted and thereupon the application and the specification, and the priority documents (if any) filed in pursuance thereof shall be open to public inspection.

24. On and from the date of advertisement of the acceptance of a complete specification and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement of acceptance of the complete specification:

Provided that the applicant shall not be entitled to institute any proceedings for infringe-ment until the patent has been sealed.

CHAPTER VI
OPPOSITION TO GPANT OF PATENT

25. (1) At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act, any person may give notice to the Controller of opposition to the grant of patent on any of the following grounds, namely:-

(a) 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;

(b) that the invention is not a patentable invention;

(c) 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; and

(d) that the claims are not clear or extend beyond the scope of the disclosures in the complete specification as originally filed.

(2) Where any such notice is given, the Controller shall give notice of the opposition to the applicant, and shall, before deciding the case, give to the applicant and the opponent an opportunity of being heard.

26. (1) At any time after the publication of the specification under section 23, any person may make observations in writing to the Controller on the novelty of the invention giving evidence in support of his observations and the Controller shall consider the observations in the light of the evidence made available to him before the grant of patent.

(2) The person who makes observations under sub-section (1) does not become a party to the proceedings under this Act before the Controller by reason only that he has made the observations.

27. If at any time after the acceptance of the complete specification and before the grant of a patent thereon it comes to the notice of the Controller, otherwise than in consequence of proceedings in opposition under section 25, that the invention, so far as claimed in any claim of the complete specification, has been published in a document anywhere in the world which come to the notice of Controller before the priority date of the claim, the Controller may refuse to grant the patent unless, within such time as may be prescribed, the complete specification is amended to his satisfaction.

28. (1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,-

(a) that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and

(b) that the application for the patent is a direct consequence of his being the inventor,

the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance of the application, in the complete specification and in the register:

Provided that the mention of any person as inventor under this section shall not confer, or derogate from, any rights under the patent.

(2) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or, where the person alleged to be the inventor is not the applicant or one of the applicants, by the applicant and that person.

(3) If any person other than a person in respect of whom a request in relation to the application in question has been made under sub-section (2) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.

(4) A request or claim under the foregoing provisions of this section shall be made not later than two months after the date of advertisement of acceptance of the complete specification or within such further period, not exceeding one month, as the Controller may, on an application made to him in that behalf before the expiration of the said period of two months and subject to the payment of the prescribed fee, allow.

(5) No request or claim under the foregoing provisions of this section shall be entertained if it appears to the Controller that the request or claim is based upon facts which, if proved in the case of an opposition under the provisions of clause (a) of sub-section (1) of section 25 by the person in respect of or by whom the request or claim is made, would have entitled him to relief under that section.

(6) Subject to the provisions of sub-section (5), where a claim is made under sub-section (3), the Controller Shall give notice of the claim to every applicant for the patent, not being the claimant, and to any other person whom the Controller may consider to be interested; and before deciding upon any request or claim made under sub-section (2) or sub-section (3). the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.

(7) Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a certificate to that effect, and the Controller may, after hearing, if required, any person whom he may consider to be interested, issue such a certificate, and if he does so, he shall rectify the specification and the register accordingly.

CHAPTER VII
PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS

29. (1) Where an application for a patent in respect of an invention is filed in the Patent Office and it appears to the Controller that the invention is one of the class notified to him by the Federal Government as being one the publication of which might be prejudicial to the defence of Pakistan, or if he himself thinks so, then he may give directions prohibiting or restricting the publication of the invention or its communication to any specified person or class of persons.

(2) If it appears to the Controller that the specification of any application so filed contains information the publication of which might be prejudicial to the safety of the public, he may give directions prohibiting or restricting the publication of that information or its communication to any person until the end of a period not exceeding three months from the date of the acceptance.

(3) While directions are in force under this section, the application may proceed to the stage where it is in order for acceptance, but specification shall not be published.

(4) Where the Controller gives directions under this section with respect to any application, he shall give notice of the application and of the directions to the Federal Government and the following provisions shall then have effect, namely:-

(a) the Federal Government shall, on receipt of the notice, consider whether the publication of the invention or the publication or communication of the information in question would be prejudicial to the defence of the country or the safety of the public;

(b) if the Federal Government determine under clause (a) that the publication of the specification or the publication or communication of that information would be prejudicial to the safety of the public, it shall notify the Controller who shall continue his directions under sub-section (2) until they are revoked under clause (e);

(c) If the Federal Government determine under clause (a) that the publication of the specification or the publication or communication of that information would be prejudicial to the defence of Pakistan or the safety of the public, it shall, unless a notice under clause (d) has previously been given to the Controller, reconsider that question during the period of nine months from the date of filing the application and at least once in every subsequent period of twelve months;

(d) if on consideration of an application at any time it appears to the Federal Government that the publication of the specification or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to the defence of Pakistan or the safety of the public, it shall give notice to the Contro-ller to that effect; and

(e) on receipt of such a notice, the Controller shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing any thing required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.

(5) Where a complete specification filed in pursuance of an application for a patent for an invention in respect of which directions have been given under this section is accepted before the directions are revoked, then-

(a) if any use of the invention is made by or on behalf or to the order of the Federal Government, the provisions of sections 72 to 75 shall apply in relation to that use as if the patent had been granted for the invention; and

(b) if it appears to the Federal Government that the applicant for the patent has suffered hardship by reason of the continuance in force of the directions, the Federal Government may make such payment, if any, by way of compensation to the applicant as appears to the Federal Government to be reasonable having a regard to the inventive merit and utility of the invention, the purpose for which it is designed and any other relevant circumstances.

(6) Where a patent is granted in pursuance of an application in respect of which directions have been given under this section, no renewal fees shall be payable in respect of any period during which those directions were in force.

30. (1) No person resident in Pakistan shall, without written authority granted by the Controller, file or cause to be filed outside Pakistan an application for the grant of a patent for an invention unless-

(a) an application for patent for the same invention has been filed in the Patent Office not less than six weeks before the application outside Pakistan; and

(b) either no directions have been given under section 29 in relation to the application in Pakistan or all such directions have been revoked.

(2) The provisions of sub-section (1) shall not apply in Pakistan to an invention in respect of which an application for a patent has first been filed in a country outside Pakistan by a person resident outside Pakistan.

31. All orders of the Controller giving directions as to secrecy, and all orders of the Federal Government under this Chapter, shall be final and shall not be called in question in any court on any ground whatsoever.

CHAPTER VIII
GRANT AND SEALING OF PATENT

32. (1) Subject to the provisions of this Act with respect to opposition and to any power of the Controller to refuse the grant, a patent sealed with the seal of the Patent Office shall, if the prescribed request is made within the time allowed under this section, be granted to the applicant or applicants within that time or as soon as may be thereafter; and the date on which the patent is sealed shall be entered in the register.

(2) Subject to the provisions of this Act with respect to patents of additions, a request under this section for the sealing of a patent shall be made not later than the expiration of six months from the date of the publication of the complete specification:

Provided that-

(a) where at the expiration of the said six months any proceeding in relation to the application for the patent is pending in any court or before the Controller, the request may be made within three months after the final determination of that proceeding:(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this sub-section the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.

Explanation.- A proceeding shall be deemed to be pending so long as the time for any appeal therein has not expired, and a proceeding shall be deemed to be finally determined when the time for any appeal therein has expired without the appeal being brought.

(3) The period for making the request under sub-section (2) for the sealing of a patent may be extended by the Controller by six months if the application is made and the prescribed fee paid within the extended period.

33. Where, at any time after a patent has been sealed in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or, in the case of a body corporate, had ceased to exist, before the patent was sealed, he may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted; and the patent shall have effect, and shall be deemed always to have had effect, accordingly.

34. (1) Subject to the other provisions of this Act, every patent shall be dated as of the date on which the complete specification was filed.

(2) The date of every patent shall be entered in the register.

(3) Notwithstanding anything contained in this section, no suit or other proceedings shall be commenced or prosecuted in respect of an infringement committed before the date of advertise-ment of the acceptance of the complete specification.

35. (1) The exploitation of the patented invention in Pakistan by person other than the owner of the patent shall require the letter’s agreement.

(2) For the purpose of this Act "exploitation" of a patented invention means any of the following acts:

(a) when patent has been granted in respect of a product:

(i) making, importing, offering for sale, selling and using the product;

(ii) stocking such product for the purposes of offering for sale, selling or using;

(b) when the patent has been granted in respect of a process:

(i) using the process;

(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.

(3) The owner of the patent shall, in addition to any other rights, remedie or actions available to him have the right, subject to sub-section (4) here of and section ( ) to institute court proceedings against any person who infringes the patent by performing, without his agreement, any of the acts referred to in sub-section (2) or who performs acts which make it likely that infringement will occur.

(4) (a) The rights under the patent shall not extend:

(i) to acts in respect of articles which have been put on the market by the owner of the patent or with his consent; or

(ii) to the use of articles and aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Pakistan; or

(iii) to acts done only for experimental purposes relating to a patented invention; or

(iv) to acts performed by any person who in good faith, before the filling or, where priority is claimed, the priority date of the application on which the patent is granted and in Pakistan, was using the invention or was making effective and serious preparations for such use.

(b) The right of prior user referred to in paragraph (a)(iv) may be transferred or devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the use of preparations for use have been made.

36. Notwithstanding anything contained in section 35 or in any other provision of this Act, a patent shall not be deemed to extend to, prevent or affect the following, namely:

(a) acts done privately and for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject matter of the patented invention; and

(c) the use of the invention in any ship, vessel, aircraft or land vehicle of any other country entering Pakistan if such invention is employed exclusively for the needs of the ship, vessel, aircraft or the land vehicle.

37. (1) Subject to the provisions of this section, the term of a patent granted under this Act shall be twenty years from the filing date.

(2) On application made by the patentee in the prescribed manner within a period of not more than twelve months and not less than three months before the expiration of the term of a patent, the Controller shall extend the term of the patent by a period of six years if the patentee proves to the satisfaction of the Controller that the invention protected by the said patent is being worked in Pakistan or, subject to the provisions of sub-section (3), serious preparations have been made by the patentee for the exploitation of the invention in Pakistan.

(3) The extension granted under sub-section (2) shall expire after three years if the patentee fails to convince the Controller at least three months before the expiration of the said three years that the invention has been exploited.

(4) Notwithstanding anything in the foregoing sub-section, a patent shall cease to have effect on the expiration of a period prescribed for the payment of any renewal fee if that fee is not paid within the prescribed period or within the period as extended under this section.

(5) The period prescribed for the payment of any renewal fee shall be extended to such period, not being more than six months longer than the prescribed period, as may be specified in a request made to the Controller if the request is made and the renewal fee and the prescribed additional fee paid before the expiration of the period so specified.

CHAPTER IX
MISCELLANEOUS PROVISIONS AS TO RIGHTS IN INVENTIONS

38. (1) Where an application is made for a patent for an invention which has been claimed in a complete specification filed in pursuance of any other such application, then if-

(a) the Controller has refused to grant a patent in pursuance of that other application on the ground specified in clause (a) of sub-section (1) of section 25;

(b) a patent granted in pursuance of that other application has been revoked by the court under section 51 or by the Controller under section 52 on the ground specified in clause (a) of sub-section (1) of section 25; or

(c) the complete specification filed in pursuance of the said other application has, in proceedings under section 25 or section 52, been amended by the exclusion of the claim relating to the said invention in consequence of a finding by the Controller that the invention was obtained by the applicant or patentee from any other person,

the Controller may direct that the first-mentioned application and any specification filed in pursuance thereof shall be deemed, for the purposes of the provisions of this Act relating to the priority date of claims of complete specification, to have been filed on the date on which the corresponding document was or was deemed to have been filed in the procee-dings upon the said other application.

39. (1) Where a patent is granted to two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.

(2) Subject to the provisions of this section and section 40, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to exploit, use, exercise and sell the patented invention for his own benefit without accounting to the other person or persons.

(3) Subject to the provisions of this section and section 40 and to any agreement for the time being in force, where two or more persons are registered as grantee or proprietor of a patent, then, a licence under a patent shall not be granted, and a share in a patent shall not be assigned, by one of such persons, except with the consent of the other person or persons.

(4) Where a patented article is sold by one of two or more persons registered as grantee or proprietor of the patent relating to that article, the purchaser and any person claiming through him shall be entitled to deal with it in the same manner as if the article had been sold by a sole patentee.

(5) Subject to the provisions of this section, the rules of law applicable to the ownership and devolution of movable property generally shall apply in relation to patents; and nothing contained in sub-section (1) or sub-section (2) shall affect the mutual rights or obligations of trustees or of the legal representatives of a deceased person or their rights or obligations as such.

40. (1) Where two or more persons are registered as grantee or proprietor of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licences under the patent, or the exercise of any right under section 39 in relation thereto, as he thinks fit.

(2) If any person registered as grantee or proprietor of the patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.

(3) Before giving directions in pursuance of an application under this section, the Controller shall give an opportunity of being heard,__

(a) in the case of an application under sub-section (1), to the other person or persons registered as grantee or proprietor of the patent; and

(b) in the case of an application under sub-section (2), to the person in default.

(4) No direction shall be given under this section so as to affect the mutual rights or obliga-tions of trustee or of the legal representatives of a deceased person, or their rights or obligations as such.

41. (1) Where a dispute arises between an employer and a person who is or was at the material time his employee as to the rights of the parties in respect of an invention made by the employee either alone or jointly with other employees or in respect of any patent granted or to be granted in respect thereof, the Controller may, upon application made to him in the prescribed manner by either of the parties and after giving to each of them an opportunity of being heard, determine the matter in dispute, and may make such orders for giving effect to his decision as he considers expedient:

Provided that, if it appears to the Controller upon any application under this section that the matter in dispute involves questions which should be determined by the court, he may decline to deal therewith.

(2) In proceedings before the court between an employer and a person who is or was at the material time his employee, or upon an application made to the Controller under sub-section (1), the court or the Controller may, if satisfied that both the parties are entitled to the benefit of an invention made by the employee, by order provide for the apportionment between them of the benefit of the invention, and of any patent granted or to be granted in respect thereof, in such manner as the court or the Controller considers just.

(3) A decision of the Controller under this section shall have the same effect as between the parties and persons claiming under them as a decision of the court.

42. (1) Subject to the provisions of this section, any condition of a contract for the sale or lease of a patented article or of an article made by a patented process or for licence to exploit a patented article or process, or relating to any such sale, lease or licence, shall be void so far as it purports-

(a) to require the purchaser, lessee or licensee to acquire from the vendor, lessor or licensor, or his nominees, or prohibit him from acquiring from any specified person, or from acquiring except from the vendor, lessor or licensor, or his nominees, any article other than the patented article or an article made by the patented process; or

(b) to prohibit the purchaser, lessee or licensee from using articles (whether patented or not) which are not supplied by, or any patented process which does not belong to, the vendor, lessor or licensor, or his nominees, or to restrict the right of the purchaser, lessee or licensee to use any such article or process.

(2) In proceedings against any person for infringement of a patent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent or the plaintiff and containing a condition void by virtue of this section.

(3) A condition of a contract shall not be void by virtue of this section if-

(a) at the time of the making of the contract the vendor, lessor or licensor was willing to sell or lease the article, or grant a licence to use or exploit the article or process, as the case may be, to the purchaser, lessee or licensee, on reasonable terms specified in the contract and without any such condition as is mentioned in sub-section (1), and

(b) the purchaser, lessee or licensee is entitled under the contract to relieve himself of his liability to observe the condition upon giving to the other party three months notice in writing and subject to payment to him of a just compensation.

43. Any contract for the sale or lease of a patented article or for licence to manufacture, exploit a patented article or process, or rela-ting to any such sale, lease or licence, whether made before or after the commencement of this Act, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by either party on giving three months notice in writing to the other party.

CHAPTER X
PATENTS OF ADDITION

44. (1) Where application is made for a patent in respect of any improvement in or modification of an invention (in this Act referred to as "the main invention") and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Contro-ller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.

(2) Where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so requests, by order revoke the patent for the improvement or the modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.

(3) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or later than the date of filing of the complete specifica-tion in respect of the main invention.

(4) A patent of addition shall not be sealed before the sealing of the patent for the main invention; and if the period within which, but for this provision, a request for the sealing of a patent of addition could be made under section 32 expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of the patent of addition may be made at any time within the last-mentioned period.

45. (1) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer:

Provided that-

(a) if the term of the patent for the main invention is extended under the foregoing provisions of this Act, the term of the patent of addition may also be extended accor-dingly; and

(b) if the patent for the main invention is revoked under this Act, the court or, as the case may be, Controller may order that the patent of addition shall become an independent patent for the remainder of the term of the patent for the main invention, and thereupon the patent shall continue in force as an independent patent accordingly.

(2) No renewal fees shall be payable in respect of a patent of addition; but, if any such patent becomes an independent patent by virtue of an order under sub-section (1), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.

46. The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of-

(a) the main invention described in the complete specification relating thereto; or

(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition; and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

CHAPTER XI
AMENDMENT OF SPECIFICATION

47. (1) Subject to the provisions of section 49, the Controller may, upon application made under this section by an applicant for a patent or a patentee, allow the application for the patent or the complete specification to be amended subject to such conditions, if any, as the Controller thinks fit:

Provided that the Controller shall not allow a specification to be amended under this section upon an application made while any action before the court for infringement of the patent or any proceeding before the court for the revocation of the patent is Pending.

(2) Every application for leave to amend an application for a patent or a specification under this section shall state the nature of the proposed amendment and give full particulars of the reasons for which the application is made.

(3) Every application for leave to amend an application for a patent or a specification under this section made after the acceptance of the complete specification and the nature of the proposed amendment, shall be advertised in the prescribed manner.

(4) Within the prescribed period after the advertisement of an application under sub-section (3), any person may give notice to the Controller of opposition thereto, and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application is made and shall give to that person and to the opponent an opportunity of being heard before he decides the case.

(5) This section shall not apply in relation to any amendment of a specification effected in proceedings in opposition to the grant of a patent or effected in pursuance of any provision of this Act authorising the Controller to direct a reference to another specification or patent to be inserted, or to refuse to grant a patent, or to revoke a patent, unless the specification is amended to his satisfaction.

48. (1) In any proceeding before the High Court for the revocation of a patent, the High Court may, subject to the provisions of section 49, by order allow the patentee to amend his complete specification in such manner, and subject to such terms as to costs, advertisements or otherwise, as the Court may think fit, and if in any such proceedings for revocation the High Court decides that the patent is invalid, the High Court may allow the specification to be amended under this section instead of revoking the patent.

(2) Where an application for an order under this section is made to the High Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the High Court.

49. (1) No amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment.

(2) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved by the Controller or the High Court under this Act, the right of the patentee or applicant to make the amendment shall not be called in question except on the ground of fraud; and the amendment shall for all purposes be deemed to form part of the specification.

Provided that in construing the specifica-tion as amended reference may be made to the specification as originally published.

(3) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved as aforesaid, the fact that the specification has been amended shall be advertised in the official Gazette.

CHAPTER XII
RESTORATION OF LAPSED PATENTS

50. (1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee within the prescribed period, an application for the restoration of the patent may be made to the Controller under this section within eighteen months from the date on which the patent ceased to have effect.

(2) An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect; and where the patent was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others.

(3) If the Controller is satisfied that

(a) the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that the fee and any prescribed additional fee were paid within six months immediately following the end of that period, and

(b) those fees were not so paid because of circumstances beyond his control,

the Controller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.

(4) An order under this section may be made subject to such conditions as the Controller thinks fit and if the proprietor of the patent does not comply with any condition of such an order, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.

(5) Where an order is made under this section and, between the end of the period of six months beginning with the date when the patent concerned ceased to have effect and the date of the application under this section, any person has begun in good faith to use the patented invention or has made effective and serious preparations to make use of the invention, he shall, after the order comes into force, have the right to make use of the invention and the said use shall not amount to an infringement of the patent concerned.

(6) Where a patented product is disposed of by any person to another in exercise of a right conferred by sub-section (5), that other and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.

CHAPTER XIII
REVOCATION AND SURRENDER OF PATENTS

51. (1) Subject to the provisions of this Act, a patent may, on the petition of any person interested or of the Federal Government or on a counter-claim in a suit for infringement of the patent, be revoked in part or in whole by the High Court on any one or more of the grounds upon which grant of patent may be refused under section 25.

(2) Without prejudice to the provisions contained in sub-section (1), a patent may be revoked by the High Court on the petition of the Federal Government, if the High Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Federal Government to make, use or exercise the patented invention for the services of Government upon reasonable terms.

(3) A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietor of that patent or to have shares or interests therein, and it shall not be necessary to serve a notice on any other person.

52. (1) At any time within twelve months after the sealing of a patent, any person interested who did not oppose the grant of the patent may apply to the Controller for an order revoking the patent on any one or more of the grounds upon which the grant of the patent could have been opposed:

Provided that when an action for infringement, or proceedings for the revocation, of a patent are pending in any court, an application to the Controller under this section shall not be made except with the leave of the court.

(2) Where an application is made under this section, the Controller shall notify the patentee and shall give to the applicant and the patentee an opportunity of being heard before deciding the case.

(3) If, on an application under this section, the Controller is satisfied that any of the grounds aforesaid are established, he may by order direct that the patent shall be revoked either unconditionally or unless within such time as may be specified in the order the complete specification is amended to his satisfaction:

Provided that the Controller shall not make an order for the unconditional revocation of a patent under this section unless the circumstances are such as would have justified him in refusing to grant the patent in proceedings under section 25.

53. Where the Federal Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity of being heard, make a declaration to that effect in the official Gazette and thereupon the patent shall be deemed to have been revoked.

54. (1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.

(2) Where such an offer is made, the Controller shall advertise the offer in the pres-cribed manner, and also notify every person other than patentee whose name appears in the register as having an interest in the patent.

(3) Any person interested may, within the prescribed period after such advertisement, give notice to the Controller of opposition to the surrender; and where any such notice is given, the Controller shall notify the patentee.

(4) If the Controller is satisfied, after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.

CHAPTER XIV
POWERS OF CONTROLLER GENERALLY

55. (1) Subject to any rules made in this behalf, the Controller in any proceedings before him under this Act shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908 (Act V of 1908) in respect of the following matters, namely:—

(a) summoning and enforcing the attendance of any person and exami-ning him on oath;

(b) requiring the discovery and production of any document;

(d) issuing commissions for the examination of witnesses or documents; and

(e) awarding costs.

56. (1) Without prejudice to the provisions contained in sections 47 and 49 as regards amendment of applications for patents or complete specifica-tions and subject to the provisions of section 33, the Controller may, in accordance with the provisions of this section, correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register.

(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

(3) Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity of being heard before making the correction.

(4) Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be advertised in the prescribed manner.

(5) Within the prescribed time after any such advertisement as aforesaid, any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity of being heard before he decides the case.

57. Subject to any rules made in this behalf, in any proceeding under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary; but in any case in which the Controller thinks it right so to do he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be cross-examined on the contents of his affidavit.

58. Without prejudice to any provision of this Act requiring the Controller to hear any party to the proceedings thereunder or to give any such party an opportunity of being heard, the Controller shall give to any applicant for a patent or for amendment of a specification (if within the prescribed time the applicant so requires) an opportunity of being heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.

The content of this article is intended to provide general information on the subject matter. It is therefore not a substitute for specialist advice.

Pakistan: Draft Patent Act, 1998. Part I

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