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

CHAPTER XV
REGISTER OF PATENTS

59. (1) There shall be kept at the Patent Office a register of patents, wherein shall be entered the names and addresses of grantees of patents. notifications of assignments and of transmissions of patents, of licences under patents, and of amendments, extensions, and revocations of patents and particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.

(2) The register of patents existing at the commencement of this Act shall be incorporated in, and form part of, the register under this Act.

(3) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.

(4) Subject to the superintendence and direction of the Federal Government, the register shall be kept under the control and management of the Controller.

60. (1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.

(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mort-gage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.

(3) Where an application is made under this section for the registration of the title of any person, the Controller shall, upon proof of title to his satisfaction,—

(a) where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or event by which he derives title; or

(b) where that person is entitled to any other interest in patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it.

(4) Subject to the provisions of this Act relating to co-ownership of patents and subject also to any rights vested in any other person of which notice is entered in the register, the person or persons registered as grantee or proprietor of a patent shall have power to assign, grant licences under, or otherwise deal with, the patent and to give effectual receipts for any consideration for any such assignment, licence or dealing:

Provided that any equities in respect of the patent may be enforced in like manner as in respect of any other movable property.

61. (1) The High Court may, on the application of any person aggrieved—

(a) by the absence or omission from the register of any entry; or

(b) by any entry made in the register without sufficient cause; or

(d) by any error or defect in any entry in the register,

make such order for the making, variation or deletion, of any entry therein as it may think fit.

(2) In any proceeding under this section, the High Court may decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(3) Notice of any application to the High Court under this section shall be given in the prescribed manner to the Controller who shall be entitled to appear and be heard on the application, and shall appear if so directed by the Court.

(4) Any order of the High Court under this section rectifying the register shall direct that notice of the rectification shall be served in the prescribed manner upon the Controller, who shall upon receipt of such notice rectify the register accordingly.

62. (1) Subject to the provisions of this Act and any rules, the register shall at all convenient times be open to inspection by the public; and certified copies, sealed with the seal of the Patent Office, of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.

(2) The register shall be prima facie evidence of any matters required or authorised by or under this Act to be entered therein.

(3) Except in the case of an application made under section 61, a document in respect of which no entry has been made in the register under sub-section (3) of section 60 shall not be admitted in any court as evidence of title of any person to a patent or share of or interest in the patent unless the court otherwise directs.

CHAPTER XVI
COMPULSORY LICENCES, LICENCES OF RIGHT, EXPLOITING OF PATENTS AND REVOCATION

63. (1) Where

(i) the public interest, in particular national security, nutrition, health or the development of other vital sectors of the national economy so requires, or

(ii) the name of the controller or administrative body to be inserted has determined that the manner of exploitation, by the owner of the patent or his licences, is anti-competitive, and the Secretary/ Minister is satisfied that the exploitation of the invention in accordance with this subsection would remedy such practice,

the Secretary/Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Secretary/Minister may exploit a patented invention.

(2) The exploitation of the patented invention shall be limited to the purpose for which it was authorized and shall be subject to the payment to the said owner of an adequate remuneration therefor, taking into account the economic value of the Secretary/Minister’s authorization, as determined in the said decision, and where a decision has been taken under paragraph (ii), the need to correct anti-competitive practices. The Secretary/Minister shall take his decision after hearing the owner of the patent and any interested person if they wish to be heard.

(3) (a) A request for the Secretary/Minister’s authorization shall be accompanied by evidence that the owner of the patent has received, from the person seeking the authorization, a request for a contractual license, but that person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time.

(b) Paragraph (a) of this subsection shall not apply in cases of

(i) national emergency or other circumstance urgency provided, however, that in such cases the owner of the patent shall be notified of the Secretary/ Minister’s decision as soon as reasonable practicable.

(ii) public non-commercial use, and

(iii) anti-competitive practices determined as such by a judicial or administrative body in accordance with subsection (1)(ii).

(4) The exploitation of a patented invention in the field of semi-conductor technology shall only by authorized either for public non-commercial use or where a judicial or administrative body has determined that the manner of exploitation of the patented invention, by the owner of the patent or his licensee, is anti-competitive and if the Minister is satisfied that the issuance of the non-voluntary license would remedy such practice.

(5) The authorization shall both exclude:

(i) the conclusion of license contracts by the owner of the patent; or

(ii) the continued exercise, by the owner of the patent, of his rights under Section 35; or

(iii) the issuance of a non-voluntary license under Section 64.

(6) Where a third person has been designated by the Secretary/Minister, the authorization may only be transferred with the enterprise or business of the person or with the part of the enterprise of business within which the patented invention is being exploited.

(7) Where the exploitation of the invention by the Government agency or third person designated by the Secretary/Minister is authorized under subsection (1)(i), it shall be predominantly for the supply of the market in Pakistan.

(8) Upon request of the owner of the patent, of the Government agency or of the third person authorized to exploit the patented invention, the Secretary/Minister may, after hearing the parties, if either or both wish to be heard, vary the terms of the decision authorizing the exploitation of the patented invention to the extent that changed circumstances justify such variation.

(9) (a) Upon the request of the owner of the patent, the Secretary/Minister shall terminate the authorization if he is satisfied, after hearing the parties, if either or both wish to be heard, that the circumstances which led to his decision have ceased to exist and are unlikely to recur or that the Government agency or third person designated by him has failed to comply with the terms of the decision.

(b) Notwithstanding paragraph (a), the Secretary/ Minister shall not terminate the authorization if he is satisfied that the need for adequate protection of the legitimate interests of the Government agency or third person designated by him justifies the maintenance of the decision.

(10) The decisions of the Secretary/Minister under subsections (1) to (9) may be the subject of an appeal before the court.

Termination of the authorization may be ordered under subsection (9). It may only be requested by the owner of the patent. Paragraph (a) of subsection (9) sets out the reason for which termination will be ordered.

64. (1)(a) On request, made to the Controller after the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last, the Controller may issue a non-voluntary license if he is satisfied that the patented invention is not exploited or is insufficiently exploited, by working the invention locally or by important, in Pakistan.

(b) Notwithstanding paragraph (a) of this subsection, a non-voluntary license shall not be issued if the owner of the patent satisfies the Controller that circumstances exist which justify the non-exploitation or insufficient exploitation of the patented invention in Pakistan.

(2) The decision issuing the non-voluntary license shall fix

(i) the scope and function of the license.

(ii) the time limit within which the licensee must begin to exploit the patented invention, and

(iii) the amount of the adequate remuneration to be paid to the owner of the patent and the conditions of payment.

(3) The beneficiary of the non-voluntary license shall have the right to exploit the patented invention in Pakistan according to the terms set out in the decision issuing the license, shall commence the exploitation of the patented invention within the time limit fixed in the said decision and, thereafter, shall exploit the patented invention sufficiently.

(4) If the invention claimed in a patent ("later patent") cannot be exploited in the country without infringing a patent granted on the basis of an application benefiting from an earlier filing or, where appropriate, priority date ("earlier patent") and provided that the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent, the Controller, upon the request of the owner of the later patent, may issue a non-voluntary license to the extent necessary to avoid infringement of the earlier patent.

(5) Where a non-voluntary license is issued under subsection (4), the Controller upon the request of the owner of the earlier patent shall issue a non-voluntary license in respect of the later patent.

(6) In the case of a request for the issuance of a non-voluntary license under subsections (3) and (4), subsection (2) shall apply mutatis mutandis with the provision that no time limit needs to be fixed.

(7) In the case of a non-voluntary license issued under sub-section (3), the transfer may be made only with the later patent, or, in the case of a non-voluntary license issued under sub-section (4), only with the earlier patent.

(8) The request for the issuance of a non-voluntary license shall be subject to payment of the prescribed fee.

(9) Section 63(2) to (10) shall apply mutatis mutandis.

65. (1) At any time after the expiration of three years from the date of the sealing of a patent, the Federal Government may make an application to the Controller for an order that the patent may be endorsed with the words "Licences of right" on the ground that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price.

(2) If the Controller is satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, he may make an order that the patent be endorsed with the words "Licences of right".

(4) Every patent granted under this Act in respect of a substance capable of being used as food or medicine or a process for producing such a substance or any invention capable of being used as or as part of a surgical or curative device, shall be deemed to be endorsed with the words "Licences of right".

(5) All endorsements of patents made under this section shall be entered in the register and published in the official Gazette and in such other manner as the Controller thinks desirable for bringing the endorsement to the notice of manufacturers.

66. (1) Where a patent has been endorsed with the words "Licences of right", any person who is interested in exploiting the patented invention in Pakistan may require the patentee to grant him a licence for the purpose on such terms as may be mutually agreed upon, notwithstanding that he is already the holder of a licence under the patent.

(2) If the parties are unable to agree on the terms of the licence, either of them may apply in the prescribed manner to the Controller to settle the terms thereof.

(3) The Controller shall, after giving notice to the parties and hearing them and after making such enquiry as he may deem fit, decide the terms on which the licence shall be granted by the patentee.

(4) The provisions of sub-section (1), (2). (4) and (5) of section 64 and of section 70 shall apply to licences granted under this section as they apply to licences granted under section 63.

67. (1) Where, in respect of a patent, a compulsory licence has been granted or the endorsement "Licences of right" has been made or is deemed to have been made, the Federal Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence or, as the case may be the date of the grant of the first licence under section 66, apply to the Controller for an order revoking the patent on the ground that the reason-able requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price.

(2) Every application under sub-section (1) shall contain such particulars as may be prescribed and the facts upon which the application is based, and, in the case of an application other than one made by the Federal Government, shall also set out the nature of the applicant’s interest.

(3) If the Controller is satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, he may make an order revoking the patent.

(4) Every application under sub-section (1) shall ordinarily be decided within one year of its being presented to the Controller.

68. For the purposes of section 63, 65 and 67, the reasonable requirements of the public shall be deemed not to have been satisfied-

(a) if, by reason of the default of the patentee to manufacture in Pakistan to an adequate extent and supply on reasonable terms the patented article (including any article made by patented process) or a part of the patented article which is necessary for its efficient working or if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms,-

(i) an existing trade or industry or the development thereof or the establishment of any new trade or industry in Pakistan is prejudiced; or

(ii) the demand for the patented article is not being met to an adequate extent or on reasonable terms from manufactures in Pakistan; or

(iii) a market for the export of the patented article manufactured in Pakistan is not being supplied or developed; or

(b) if, by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of materials not protected by the patent, or the establishment or development of any trade or industry in Pakistan, is prejudiced; or

(c) if the patented invention is not being exploited in Pakistan on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable; or

(d) if the demand for the patented article in Pakistan is being met to a substantial extent by importa-tion from abroad; or

(e) if the exploiting of the patented invention in Pakistan on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or persons claiming under him.

69. (1) Where the Controller is satisfied, upon consideration of application under section 63, section 65 or section 67, that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the patentee and any other person appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the official Gazette.

(2) The patentee or any other person desiring to oppose the application may, within such time as may be prescribed or within such further time as the Controller may on application allow, give to the Controller notice of opposition.

(3) Any such notice of opposition shall contain a statement setting out the grounds on which the application is opposed.

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

70. (1) In settling the terms and conditions of a licence under section 63, the Controller shall endeavour to secure-

(i) that the royalty and other remuneration, if any, reserved to the patentee or other person beneficially entitled to the patent is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant factors;

(ii) that the patented invention is exploited to the fullest extent by the person to whom the licence is granted and with reasonable profit to him; and

(iii) that the patented articles are made available to the public at reasonable prices.

(2) No licence granted by the Controller shall authorise the licensee to import the patented article or an article or substance made by a patented process from abroad where such importation would, but for such authorisation, constitute an infringement of the rights of the patentee.

(3) Notwithstanding anything contained in sub-section (2), the Federal Government may, if in its opinion it is necessary so to do in the public interest, direct the Controller at any time to authorise any licensee in respect of a patent to import the patented article or an article or substance made by a patented process from abroad, subject to such conditions as it considers necessary to impose relating among other matters to the royalty and other remuneration, if any, payable to the patentee, the quantum of import, the sale price of the imported article and the period of importation, and thereupon the Controller shall give effect to the directions.

71. Any order for the grant of a licence under this Chapter shall operate as if it were a deed gran-ting a licence executed by the patentee and all other necessary parties embodying the terms and conditions, if any, settled by the Controller.

CHAPTER XVII
USE OF PATENTED INVENTIONS BY THE GOVERNMENT

72. (1) Notwithstanding anything contained in this Act, at any time after an application for a patent has been filed at the Patent Office or a patent has been granted, the Federal Government and any person authorised in writing by it may use the invention for the services of the Government in accordance with the provisions of this Chapter.

Explanation.— The expression "services of the Government" covers any activities of the Federal Government, a Provincial Government or an organiza-tion operating under the directions of the Federal Government or a Provincial Government; and the expression "use" means in addition to using, when the invention is a product, making or importing the product; and when the invention is a process, making or importing the product obtainable by the process.

(2) Where an invention has, before the priority date of the relevant claim of the complete specification, been duly recorded in a document, or tested or tried, by or on behalf of the Government or a Government department, otherwise than in consequence of the communication of the invention directly or indirectly by the patentee or by a person from whom he derives title, any use of the invention by virtue of this section may be made free of any royalty or other payment to the patentee.

(3) If and so far as the invention has not been so recorded or tried or tested as aforesaid, any use of the invention made by virtue of this section at any time after the acceptance of the complete specification in respect of the patent, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Federal Government or any person authorised under sub-section (1) and the patentee or as may, in default of agreement, be determined by the High Court on a reference under section 75.

(4) The authorisation by the Federal Government in respect of an invention may be given under this section, either before or after the patent is granted and either before or after the acts in respect of which the authorisation is given are done, and may be given to any person whether or not he is authorised directly or indirectly by the patentee to make, use exercise or vend the invention.

(5) Where any use of an invention is made by or with the authority of the Federal Government under this section, then, unless it appears to the Federal Government that it would be contrary to the public interest so to do, it shall notify the patentee as soon as practicable after the use is begun and furnish him with such information as to the extent of the use of the invention as he may, from time to time, require.

(6) The right to use an invention for the services of the Government under sub-section (1) shall, subject to conditions prescribed in this behalf, include the right to sell goods which have been made in exercise of that right, and the purchaser of goods so sold, and a person claiming through him, shall have the power to deal with the goods as if the Federal Government or the person authorised under sub-section (1) were the patentee of the invention.

(7) Where in respect of a patent which has been the subject of an authorisation under this section, there is an exclusive licensee as is referred to in sub-section (3) of section 73, or where such patent has been assigned to the patentee in consideration of royalties or other benefits determined by reference to the use of the invention, the notice directed to be given under sub-section (5) shall also be given to such exclusive licensee or assignor, as the case may be, and the reference to the patentee in sub-section shall be deemed to include a reference to such assignor or exclusive licensee.

73. (1) In relation to any use of a patented invention or an invention in respect of which an application for a patent is pending, made for the services of the Government-

(a) by the Federal Government or any person authorised by the Federal Government under section 72; or

(b) by the patentee or applicant for the patent to the order made by the Federal Government,

the provisions of any licence, assignment or agreement granted or made, whether before or after the commencement of this Act, between the patentee or applicant for the patent (or any person who derives title from him or from whom he derives title) and any person other than the Federal Government shall be of no effect so far as those provisions-

(i) restrict or regulate the use for the services of the Government of the invention, or of any model, document or information relating thereto, or

(ii) provide for the making of payments in respect of any use of the invention or of the model, document or information relating thereto,

(2) Where the patent, or the right to apply for or obtain the patent, has been assigned to the patentee in consideration of royalties or other benefits determined by reference to the use of the invention then, in relation to any use of the invention by the patentee to the order of the Federal Government, sub-section (3) of section 72 shall have effect as if that use were made by virtue of an authority given under that section, and any use of the invention by virtue of sub-section (3) of that section shall have effect as if the reference to the patentee included a reference to the assignor of the patent, and any sum payable by virtue of that sub-section shall be divided between the patentee and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the High Court on reference under section 75.

(3) Where by virtue of sub-section (3) of section 72 payments are required to be made by the Federal Government or persons authorised under sub-section (1) of that section in respect of the use of an invention and where in respect of such patent there is an exclusive licensee authorised under his licence to use the invention for the services of the Government, such sum shall be shared by the patentee and such licensee in such propor-tions, if any, as may be agreed upon between them or as may in default of agreement be determined by the High Court on a reference under section 75 to be just, having regard to any expenditure incurred by the licensee-

(a) in developing the said invention; or

(b) in making payment to the patentee other than royalties or other benefits determined by reference to the use of the invention in consideration of the licence.

74. (1) The Federal Government may, if satisfied that it is necessary that an invention which is the subject of an application for a patent or a patent should be acquired from the applicant or the patentee in the public interest, publish a notification to that effect in the official Gazette, and thereupon the invention or patent and all rights in respect of the invention or patent shall, by force of this section, stand transferred to and be vested in the Federal Government.

(2) Notice of the acquisition shall be given to the applicant, and, where a patent has been granted, to the patentee and other persons, if any, appearing in the register as having an interest in the patent.

(3) The Federal Government shall pay to the applicant, or, as the case may be, the patentee and other persons appearing on the register as having an interest in the patent such compensation as may be agreed upon between the Federal Government and the applicant, or the patentee and other persons, or, as may in default of agreement be determined by the High Court on a reference under section 75 to be just, having regard to the expenditure incurred in connection with the invention and, in the case of a patent, the term thereof, the period during which and the manner in which it has already been worked (including the profits made during such period by the patentee or by his licensee whether exclusive or otherwise) and other relevant factors.

75. (1) Any dispute as to the exercise by the Federal Government or a person authorised by it of the powers conferred by section 72, or as to terms for the use of an invention for the services of Government thereunder or as to the right of any person to receive any part of a payment made in pursuance of sub-section (3) of that section or as to the amount of compensation payable for the acquisition of an invention or a patent under section 74 may be referred to the High Court by either party to the dispute in such manner as may be prescribed by rules of the High Court.

(2) In any proceedings under this section to which the Federal Government is a party, the Federal Government may,-

(a) if the patentee is a party to the proceedings petition by way of counter-claim for revocation of the patent on any ground upon which a patent may be revoked under section 51; and

(b) whether a patentee is or is not a party to the proceedings, put in issue the validity of the patent without petitioning for revocation.

(3) If in such proceedings as aforesaid any question arises whether an invention has been recorded, tested or tried as is mentioned in section 72, and the disclosure of any document regarding the invention, or of any evidence of the test or trial thereof, would, in the opinion of the Federal Government, be prejudicial to the public interest, the disclosure may be made confidentially to the advocate of the other party or to an independent expert mutually agreed upon.

(4) In determining under this section any dispute between the Federal Government and any person as to terms for the use of an invention, the High Court shall have regard to any benefit or compensation which that person, or any person from whom he derives title, may have received, or may be entitled to receive, directly or indirectly, in respect of the use of the invention in question for the services of the Government.

(5) In any proceedings under this section, the High Court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to an official referee, commissioner or an arbitrator on such terms as the High Court may direct, and references to High Court in the foregoing provisions of this section shall be construed accordingly.

(6) Where the invention claimed in a patent was made by a person who at the time it was made was in the service of the Federal government or of a Provincial Government or was an employee of a Government undertaking and the subject matter of the invention is certified by the relevant Government or the principal officer of the Government undertaking to be connected with the work done in the course of the normal duties of the Government servant or employee of the Government undertaking, then, notwithstanding anything contained in this section, any dispute of the nature referred to in sub-section (1) relating to the invention shall be disposed of by the Federal Government conformably to the provisions of this section so far as may be applicable, but before doing so the Federal Government shall give an opportunity of being heard to the patentee and such other parties as it considers have an interest in the matter.

CHAPTER XVIII
PROCEEDINGS FOR INFRINGEMENT OF PATENTS

76. (1) A patentee may institute a suit in a District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Act in respect of an invention, makes, sells or uses the invention without his licence, or counterfeits it, or imitates it:

Provided that, where a counter-claim for revocation of the patent is made by the defendant, the suit, along with the counter-claim, shall be transferred to the High Court for decision.

(2) Every ground on which a patent may be revoked under section 51 shall be available by way of defence to a suit for infringement.

77. The reliefs which a court may grant in any suit for infringement include an injunction (subject to such terms, if any, as the court thinks fit) and1 at the option of the plaintiff, either damages or an account or profits.

78. (1) In proceedings for the infringement of a patent, damages shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had not reason-able ground for supposing, that the patent existed; and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the application to an article of the word ‘patent", "patented", or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanied the word or words in question.

(2) Nothing in this section shall affect the power or the court to grant an injunction in any proceedings for infringement of a patent.

79. (1) If in any proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of which infringement is alleged, is valid, but that any other claim is invalid, the court may grant relief in respect of any valid claim which is infringed:

Provided that the court shall not grant relief by way of damages or costs except in the circumstances mentioned in sub-section (2).

(2) Where the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the court as to costs and as to the date from which damages should be reckoned.

80. The holder of an exclusive licence under a patent shall have the like right as the patentee to take proceedings in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.

81. (1) If in any proceedings before the court the validity of any claim of a specification is contested, and that claim is found by the court to be valid, the court may certify that the vali-dity of that claim was contested in those pro-ceedings.

(2) Where any such certificates has been granted, then, if in any subsequent proceedings before the court for infringement of the patent or for revocation of the patent, a final order or judgement is made or given in favour of the party relying on the validity of the patent, that party shall, unless the court otherwise directs, be entitled to the full costs so far as they concern the claim in respect of which the certificate was granted:

Provided that this sub-section shall not apply to the costs of any appeal in any such proceedings as aforesaid.

82. (1) Where any person (whether entitled to or interested in a patent or an application for a patent or not) threatens any other person by circulars, advertisements or otherwise with proceedings for infringement of a patent, any person aggrieved thereby may bring suit against him for any such relief as is mentioned in sub-section (2).

(2) Unless in any suit under sub-section (1) the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent or of rights arising from the publica-tion of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following reliefs, that is to say,—

(a) a declaration to the effect that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; and

(3) For the avoidance of doubt, it is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of sub-section (1).

83. (1) A declaration that the use by any person of any process, or the making or use or sale by any person of any article, does not or would not constitute an infringement of a claim of a patent may be made by the court in proceedings between that person and the patentee or the holder of an exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if it is shown—-

(a) that the plaintiff has applied in writing to the patentee or licensee for a written acknowledgement to the effect of the declaration claimed, and has furnished him with full particulars in writing of the process or article in question; and

(b) that the patentee or licensee has refused or neglected to give such an acknowledgement.

(2) The costs of all parties in proceedings for a declaration brought by virtue of this section shall, unless for special reasons the court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a claim of the specification of a patent shall not be called in question in proceedings for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.

(4) Proceedings for a declaration may be brought by virtue of this section at any time after the date of the publication of the complete specification in pursuance of an application for a patent, and references in this section to the patentee shall be construed accordingly.

84. (1) In any suit for infringement or in any proceedings before a court under this Act, the court may at any time, and whether or not an application has been made by any party for that purpose, appoint an independent scientific adviser to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.

(2) The remuneration of the scientific adviser shall be fixed by the court and shall include the costs of making a report and a proper daily fee for any day on which the scientific adviser may be required to attend before the court, and such remuneration shall be defrayed out of moneys provided by the Federal Government for the purpose.

CHAPTER XIX
APPEALS

85. (1) No appeal shall lie from any decision, order or direction made or issued under this Act by the Federal Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction,

(2) Subject to sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, Sub-section (2) and (5) of section 18, section 19, section 20, section 25, section 27, section 28, section 40, section 44, section 47, section 50, section 54, section 56, sub-section (3) of section 60, section 63, section 64, section 65, sub-section (3) of section 66 and section 67.

(3) Every appeal under this section shall be in writing and shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller, or within such further time as the High Court may in accordance with the rules made by it under section 120 allow.

86. (1) Every appeal before a High Court under section 85 shall be by petition and shall be in such form and shall contain such particulars as may be provided by rules made by the High Court under section 120.

(2) Every such appeal shall be heard by a single Judge of the High Court:

Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the proceeding to a Bench of the High Court.

(3) Every such appeal shall be heard as expeditiously as possible and endeavour shall be made to decide the appeal within a period of twelve months from the date on which it is filed.

CHAPTER XX
PENALTI ES

87. If any person fails to comply with any direction given under section 29 or makes or causes to be made an application for the grant of a patent in contravention of section 30, he shall be punishable with imprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand rupees or with both.

88. If any person makes, or causes to be made, a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in such a register, or produces or tenders, or causes to be produced or tendered, in evidence any such writing knowing the entry or writing to be false, he shall be punishable with imprisonment for a term which may extend to two years, or with fine not exceeding twenty thousand rupees, or with both.

89. If any person falsely represents that any article sold by him is patented in Pakistan or is the subject of an application for a patent in Pakistan, he shall be punishable with fine which may extend to five thousand rupees.

Explanation 1. For the purposes of this section, a person shall be deemed to represent-

(a) that an article is patented in Pakistan if there is stamped, engraved or impressed on, or otherwise applied to, the article the word "patent" or "patented" or some other word expressing or implying that a patent for the article has been obtained in Pakistan;

(b) that an article is the subject of an application for a patent in Pakistan, if there are stamped, engraved or impressed on, or otherwise applied to, the article the word "patent applied for", "patent pending", or some other words implying that an application for a patent for the article has been made in Pakistan.

Explanation 2. The use of words "patent", "patented", "patent applied for", "patent pending" or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in Pakistan, or to a pending application for a patent in Pakistan, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside Pakistan.

90. If any person uses on his place of business or any document issued by him or otherwise the words "patent office" or any other words which would reasonably lead to the belief that his place of business is, or is officially connected with, the Patent Office, he shall be punishable with a fine which may extend to one thousand rupees and, in the case of a continuing offence, with a further fine of one hundred rupees for every day after the first during which the offence continues.

91. (1) If any person refuses or fails to furnish to the Controller any information or statement which he is required to furnish by or under section 109, he shall be punishable with fine which may extend to two thousand rupees.

(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or a statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with fine which may extend to ten thousand rupees.

92. If the applicant fails to file the statement required by section 14 or has furnished information which in any material particular is false to his knowledge or if he fails to comply with the Controller’s request within the specified time, he shall be punished with fine which may extend to two thousand rupees.

93. If any person contravenes the provisions of section 98, he shall be punishable with fine which may extend to five hundred rupees in the case of a first offence and one thousand rupees in the case of a second or subsequent offence.

94. (1) If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly:

Provided that nothing contained in this sub-section shall render any such person liable to any punishment if he proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

(2) Notwithstanding anything contained in sub-section (1), where an offence under this Act has been committed by a company and it is proved that the offence has been committed with the consent or connivance of, or that the commission of the offence is attributal to any neglect on the part of, any director1 manager, secretary or other officer of the company, such director, manager, secretary or other officer shall also be deemed to be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

Explanation. For the purpose of this section,

(a) "company" means any body corporate and includes a firm or other association of individuals; and

(b) "director", in relation to a firm, means a partner in the firm.

CHAPTER XXI
PATENTS AGENTS

95. There shall be kept at the Patent Office a register of patent agents wherein shall be entered the names and addresses of all persons qualified to practice before the Patent Office as patent agents.

96. The Controller may, on an application made in the prescribed manner, register as a patent agent any person who is a citizen of Pakistan, has completed the age of twenty one years, possesses the prescribed qualifications and has paid the prescribed fee.

97. (1) Subject to the provisions of sub-section (2) and to any rules, all applications and communications to the Controller under this Act may be signed by a patent agent authorised in writing in this behalf by the person concerned.

(2) The following documents, namely,-

(i) applications for patents;

(ii) applications for the restoration of lapsed patents;

(iii) notices of opposition;

(iv) applications for leave to amend;

(v) applications for compulsory licences or for revocation; and

(vi) notices of surrender of patents, shall be signed and verified in the prescribed manner by the person making such applications or giving such notices:

Provided that, if such person is absent from Pakistan, they may be signed and verified by a patent agent authorised by him in writing in that behalf.

98. (1) No person, either alone or in partnership with any other person, shall practice or describe or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent or, as the case may be, unless he and all his partners are so registered.

(2) No company or other body corporate shall practice or describe or hold itself out as a patent agent or permit itself to be so described or held out.

Explanation. For the purposes of this section, practice as a patent agent includes any of the following acts, namely:--

(a) applying for or obtaining patents in Pakistan or elsewhere;

(b) preparing specifications or other documents for the purposes of this Act or of the patent law of any other country; and

(c) giving advice, other than advice of a scientific or technical nature, as to the validity of patents or their infringement.

99. (1) The Federal Government may remove the name of any person from the register when it is satisfied, after giving that person a reasonable opportunity of being heard and after such further inquiry, if any, as it thinks fit to make,

(i) that his name has been entered in the register by error or on account of misrepresentation or suppression of material facts; or

(ii) that he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Federal Government renders him unfit to be kept in the register.

(2) The Federal Government may, on application and on sufficient cause being shown, restore to the register the name of any person removed therefrom.

100. (1) Subject to any rules made in this behalf, the Controller may refuse to recognise as agent in respect of any business under this Act-

(a) any individual whose name has been removed from, and not restored to, the register;

(b) any person who has been convicted of an offence under section 93;

(c) any person, not being registered as patent agent, who in the opinion of the Controller is engaged wholly or mainly in acting as agent in applying for patents in Pakistan or elsewhere in the name or for the benefit of the person by whom he is employed; or

(d) any company or firm, if any person whom the Controller could refuse to recognise as agent in respect of any business under this Act is acting as a director or manager of the company or is a partner in the firm.

(2) The Controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in Pakistan.

101. Nothing in this Chapter shall be deemed to prohibit

(a) the applicant for a patent or any person, not being a patent agent, who is duly authorised by the applicant from drafting any specification or appearing or acting before Controller; or

(b) an advocate, not being a patent agent, from taking part in any proceedings under this Act otherwise than by way of drafting any specification.

CHAPTER XXII
INTERNATIONAL ARRANGEMENTS

102. (1) With a view to the fulfilment of a treaty, convention or arrangement between Pakistan and any other country, the Federal Government may, by notification in the official Gazette, declare such country to the convention country for the purposes of this Act, in addition to the members signatory to the TRIPS agreement.

(2) A declaration under sub-section (1) may be made for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of Act is in force shall be deemed to be a convention country for the purposes of those provisions only.

103. For the purposes of this Act, matter shall be deemed to have been disclosed in an application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgement of prior art) in that application or in any document submitted by the applicant for protection in support of and at the same time as that application; but no account shall be taken of any disclosure effected by any such document unless a copy of the document is filed in the Patent Office with the convention application in accordance with the provisions of section 104.

104. (1) Where a convention application is made in accordance with the provisions of this Chapter, the applicant shall furnish, in addition to the complete specifications, copies of the specifications or corresponding documents filed or deposited by the applicant in the patent office of the convention country in which the relevant application was made, certified by the official chief or head of the patent office of the convention country, or otherwise verified to the satisfaction of the Controller, along with the application or within three months thereafter, or within such further period as the Controller may on good cause allow.

(2) If any such specification or other document is in a foreign language, a translation into English of the specification or document, verified by affidavit or otherwise to the satisfaction of the Controller, shall be annexed to the specification or document.

(3) For the purposes of this Act, the date on which an application was made in a convention country is such date as the Controller is satisfied, by certificate of the official chief or head of the patent office of the convention country or otherwise, is the date on which the application was made in that convention country.

CHAPTER XXIII
MISCELLANEOUS

105. (1) There shall be paid in respect of the grant of patents and applications therefor, and in respect of other matters in relation to patents under this Act, such fees as may be prescribed.

(2) A proceeding in respect of which a fee is payable under this Act or the rules shall be of no effect unless the fee has been paid.

106. Subject to the provisions of Chapter VII, an application for a patent, and any specification filed in pursuance thereof, shall not, except with the consent of the applicant, be published by the Controller or be open to public inspection at any time before the date of advertisement of acceptance of the application in the official Gazette in pursuance of section 23.

107. The reports of examiners to the Controller under this Act shall not be open to public inspection or be published by the Controller; and such reports shall not be liable to production or inspection in any legal proceeding unless the court certifies that the production or inspection is desirable in the interests of justice, and ought to be allowed.

108. The Controller shall issue periodically a publication containing such information relating to patented inventions as the Federal Government may direct.

109. The Controller may, at any time during the continuance of the patent, by notice in writing. require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in Pakistan as may be specified in the notice.

(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statement as to the extent to which the patented invention has been worked on a commercial scale in Pakistan.

(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed.

110. (1) A certificate purporting to be signed by the Controller as to any entry, matter or thing which he is authorised by this Act or any rule to make or do, shall be prima facie evidence of the entry having been made and of the contents thereof and of the matter or thing having been done or omitted to be done.

(2) A copy of any entry in any register or of any document kept in the Patent Office or of any patent, or an extract from any such register or document, purporting to be certified by the Controller and sealed with the seal of the Patent Office shall be admitted in evidence in all courts, and in all proceedings, without further proof or production of the original.

(3) The Controller or any other officer of the Patent Office shall not, in any legal proceedings to which he is not a party, be compellable to produce the register or any other document in his custody, the contents of which can be proved by the production of a certified copy issued under this Act or to appear as a witness to prove the matters therein recorded unless by order of the court made for special causes.

111. (1) If any person is, by reason of minority, lunacy or other disability, incapable of making any statement or doing anything required or permitted by or under this Act, the lawful guardian committee or manager (if any) of the person subject to the disability, or if there be none, any person appointed by any court possessing jurisdiction in respect of his property, may make such statement or a statement as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

(2) An appointment may be made by the court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any other person interested in the making of the statement or the doing of the thing.

112. Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

113. If any party by whom notice of any opposition is given under this Act or by whom application is made to the Controller for the grant of a licence under a patent neither resides not carries on business in Pakistan, the Controller may require him to give security for the costs of the proceeding, and in default of such security being given may treat the opposition or application as abandoned.

114. (1) Every order of the High Court on a petition for revocation, including an order granting certificate of validity of any claim, shall be transmitted by the High Court to the Controller who shall cause an entry thereof and reference thereto to be made in the register.

(2) Where in any suit for infringement of a patent or in any suit under section 82 the validity of any claim or a specification is contested and that claim is found by the court to be valid or not valid, as the case may be, the court shall transmit a copy of its judgement and decree to the Controller who shall on receipt thereof cause an entry in relation to such proceeding to be made in the prescribed manner in a supplemental record.

(3) The provisions of sub-section (1) and (2) shall also apply to the court to which appeals are preferred against decisions of the courts referred to in those sub-sections.

115. Copies of all such specifications drawings and amendments left at the Patent Office as become open to public inspection under the provisions of the Act shall be transmitted, as soon as may be, after the printed copies thereof are available, to such authorities as the Federal Government may appoint in this behalf, and shall be open to the inspection of any person at all reasonable times at places to be specified by those authorities with the approval of the Federal Government.

116. A person making a request to the Controller in the prescribed manner for information relating to any such matters as may be prescribed as respects any patent specified in the request or as respects any application for a patent so specified shall be entitled, subject to the payment of the prescribed fee, to have information supplied to him accordingly.

117. If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Controller, the Controller may at any time, on application made in the prescribed manner and on payment of the prescribed fee, cause a duplicate thereof to be sealed and delivered to the applicant.

118. Subject to the other provisions of this Act, a patent shall have to all intents the like effect as against Government as it has against any person.

119. Nothing in this Act shall affect the power of the Government or of any person deriving title directly or indirectly from the Government to sell or use any articles forfeited under any law for the time being in force.

120. The High Court may make rules consistent with this Act as to the conduct and procedure in respect of all proceedings before it under this Act.

121. (1) The Federal Government may, by notification in the official Gazette, make rules for carrying out the purposes of this Act.

(2) In particular and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:

(i) the form and manner in which any application for a patent, any specifications or drawings and any other application or document may be filed in the Patent Office;

(ii) the time within which any act or thing may be done under this Act, including the manner in which and the time within which any matter may be advertised under this Act;

(iii) the fees which may be payable under this Act and the manner of payment of such fees;

(iv) the matters in respect of which the examiner may make a report to the Controller;

(v) the form of request for the sealing of a patent;

(vi) the form and manner in which and the time within which any notice may be given under this Act;

(vii) the provisions which may be inserted in an order for restoration of a patent for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had ceased;

(viii) the maintenance of the register of patents and the matters to be entered therein;

(ix) the matters in respect of which the Controller shall have powers of a civil court;

(x) the time when and the manner in which the register and any other document open to inspection may be inspected under this Act;

(xi) the qualifications of and the preparation of a roll of scientific advisers for the purpose of section 84;

(xii) the manner in which any compensation for acquisition by Government of an invention may be paid;

(xiii) the manner in which the register of patent agents may be maintained; and matters connected with the practice and conduct of the patent agents. including the taking of disciplinary proceedings against them for misconduct;

(xiv) the regulation of the making, printing, publishing and selling of indexes to, and abridgements of, specifications and other documents in the Patent Office, and inspection of indexes and abridgements and other documents;

(xv) any other matter which has to be or may be prescribed.

(3) The power to make rules under this section shall be subject to the condition of the rules being made after previous publication.

122. (1) The Patents and Designs Act, 1911 (II of 1911), in so far as it relates to patents, is hereby repealed.

(2) Notwithstanding the repeal of the Patents and Designs Act, 1911 (II of 1911), the renewal fee in respect of a patent granted under that Act shall be as fixed thereunder.

(3) Save as otherwise provided in sub-section (2), the provisions of this Act shall apply to any application for a patent pending at the commencement of this Act and to any proceedings consequent thereon and to any patent granted in pursuance thereof.

(4) The mention of particular matters in this section shall not prejudice the general application of the General Clauses Act, 1897 (X of 1897), with respect to repeals.

(5) Notwithstanding anything contained in this Act, any suit for infringement of a patent or any proceeding for revocation of a patent, pending in any court at the commencement of this Act, may be continued and disposed of, as if this Act had not come into force.

Short title,

extent and commencement.

Definitions.

Officers and clerks.

Patent Office.

Employees incapable of an interest in a patent.

Employees not to divulge secrets.

Patentable inventions.

Novelty.

Inventive step.

Industrial application.

Persons entitled to make application.

Right of employer in the invention.

Application.

Information on corresponding applications filed abroad.

Contents of Specification.

Priority dates of claims of complete specification.

Examination of applications.

Reference in case of potential infringement.

Substitution of applicants, etc.

Time for putting application in order of acceptance.

Acceptance of complete specification.

Advertisement of acceptance of complete specification.

Effect of acceptance of complete specification.

Opposition to the grant of patent.

Third party observations on patentability.

Refusal of patent without opposition.

Mention of inventor as such in patent.

Information prejudicial to defence of Pakistan or safety of public.

Residents not to apply outside Pakistan without permission.

Finality of orders of Controller and Federal Government.

Grant and sealing of patent.

Opposition to the grant of patent.

Amendment of patent granted to deceased applicant.

Date of patent.

Rights conferred by patent.

Grant of patents to be subject to certain conditions.

Priority date in case of invention obtained from other person.

Co-ownership of patents.

Power of Controller to give directions to co-owners.

Disputes as to inventions made by employees.

Avoidance of restrictive conditions in contracts.

Determination of certain contracts.

Patents of addition.

Term of patents of addition.

Validity of patents of addition.

Amendment of specification with leave of Controller.

Amendment of specification with the leave of the High Court.

Supplementary provisions as to amendment of specification.

Restoration of lapsed patents.

Revocation of patent by High Court.

Revocation of patent by Controller.

Revocation of patent in public interest.

Surrender of patent.

Controller to have certain powers of civil court.

Power of Controller to correct clerical errors.

Evidence how to be given and powers of Controller in respect thereof.

Exercise of discretionary powers by Controller.

Registration of assignments transmissions, etc.

Rectification of register by High Court.

Exploitation by Government or Person thereby authorized.

Powers of Controller in granting compulsory licences.

Endorsement of patent with the words "licence of right".

Effect of endorsement of patent with the words "Licence of right".

Revocation of patents by Controller for non-working.

When reasonable requirements of the public deemed not satisfied.

Procedure for dealing with applications under sections 63, 65 and 67.

Terms and conditions of compulsory licences.

Order for licence to operate as a deed between parties concerned.

Use of patented inventions for services of the Government.

Rights of third parties in respect of use of invention or services of the Government.

Compulsory acquisition by Government.

Reference to High Court of disputes as to use for services of Government.

Suit for infringement of patents.

Reliefs in suits for infringement.

Relief for infringement of partially valid specification.

Proceedings for infringement by exclusive licensee.

Certificate of contested validity of specification.

Remedy for groundless threats of infringement proceedings.

Power of court to make declaration as to non-infringement.

Scientific advisers.

Appeals.

Procedure for hearing appeals.

Contravention of secrecy provisions relating to certain inventions.

Unauthorised claim of patent rights.

Wrongful use of words "patent office".

Refusal or failure to supply information.

Practice by non-registered patent agents.

Offences by companies.

Qualifications for registration as patent agents.

Subscription and verification of certain documents by patent agents.

Restrictions on practice as patent agents.

Removal from register of patent agents and restoration.

Power of Controller to refuse to deal with certain agents.

Saving in respect of other persons authorised to act as agents.

Notification as to convention countries.

Supplementary provisions as to convention applications.

Provisions relating to documents to be filed with the convention applications.

Fees.

Restrictions upon publication of specifications, etc.

Reports of Examiners to be confidential.

Publication of patented inventions.

Power of Controller to call for information from patentees.

Evidence of entries, documents, etc.

Declaration by infant, lunatic, etc.

Service of notice, etc; by post.

Security for costs.

Transmission of orders of court to Controller.

Transmission of copies of specifications, etc., and inspection thereof.

Information relating to patents.

Loss or destruction of patents.

Patent to bind Government.

Right of Government to sell or use forfeited articles.

Power of High Court to make rules.

Power of Federal Government to make rules.

Complete and provisional specifications.

Term of patent.

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 II

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