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Legislative Implementation of Flexibilities - Pakistan

Title:Sections 16, 17, 19, 20, 21 and 22 of the Patent Ordinance No. LXI of 2000 as last amended by Patent Ordinance No. 2(1)/2002
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

16. Examination of application.- (1) The Controller shall refer to an examiner every application in respect of which a complete specification has been filed, for making a report to the Controller after detail scrutiny of the application, specification, claims and drawing, if any, to the effect whether the invention is new and involves an inventive step, and to also determine whether other requirements of this Ordinance and rules has e been complied with

(2) The examiner shall make the report to the Controller as soon as is reasonably possible, but before the period of eighteen months from the date of filing of the application in Pakistan.

(3) If the examiner reports that any of the requirements of this Ordinance and rules are not complied with, the Controller shall give the applicant an opportunity, or more than one opportunity, to comply with such requirements as may be mentioned in the said report and to amend the application, if necessary, within such time as may be prescribed, failing which the Controller may refuse to proceed with the application.

(4) If the Controller considers, at any time, before the acceptance of the application, that

the invention claimed therein has been wholly or in part claimed in a specification published on or after the date which the patent applied for would bear, if granted appertaining to an application for grant of a patent which, if granted, will be prior date to the patent applied for, he may require that the applicant's specification be amended by the insertion of a reference to such other specification by way of notice to the public.

(5) The investigation required under this section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Federal Government or any officer by reason of, or in connection with, any such investigation or any proceeding consequent thereon.

(6) Unless an application is accepted within eighteen months from the date of the application, the application shall, except where an appeal has been lodged, be deemed to have been refused:

Provided that where, before, or within three months after the expiration of the said period of

eighteen months, a request is made to the Controller for an extension of time, the application shall, on payment of the prescribed fee, be continued for any period so requested not exceeding in all three months from the expiration of the said period of eighteen months:

Provided further that the Controller may upon a written request made by an applicant in the prescribed manner postpone the formal acceptance of the application until such date, not later than twenty-one months from tile date of filing of the complete specification, as may be requested by the applicant.

17. Reference to other patent.- (1) If, in consequence of the investigation under Section 16, 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 another 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;

(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.

19. Time for putting application in order of acceptance.- (1) If on the expiration of the period of eighteen months specified in sub-section (6) of section 16 or the extended period-

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

(2) If the time within which the appeal mentioned in sub-section (1) 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 High Court.

20. Power of Controller to require certain information and documents relating to foreign application.

(1) The applicant shall, when required by the Controller, furnish him with the date and number of any application for a patent filed by him abroad, hereinafter referred to as foreign application, relating to the same or essentially the same invention as that claimed in the application filed in Pakistan.

(2) The applicant shall, when required by the Controller, furnish him with the following documents relating to one of the foreign applications referred to in sub-section (1), namely:

(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; and

(iii) a copy of any final decision rejecting the foreign application.

(3) The applicant shall, when required by the Controller, furnish him with a copy of any final decision invalidating the patent granted on the basis of foreign application referred to in sub-section (1).

21. Acceptance of complete specification.- 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.

22. Effect of acceptance of complete specification.

After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application:

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

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