Q. PATENT & DESIGNS ENFORCEMENT IN IPR?
Subsequently the Patents and Designs Act, 1911 was substituted by two Ordinances namely Patents Ordinance, 2000 and Registered Designs Ordinance, 2000 in order to separate the two parts of the Intellectual Property and to provide separate laws for easy understanding.
In the New Patents Ordinance, 2000, the novelty requirement was made absolute and international whereas in the old law it was only as local novelty requirement restricted to Pakistan only. The definition of the invention has been improved whereby restrictions have been imposed for the grant of Patent as provided under section 7 of the Patents Ordinance, 2000, namely:-
a) Any invention is patentable, if it is new, involves an inventive step and is capable of industrial application;
b) The following shall not be regarded an invention within the meaning of sub-section (2) of section 7 of the Patents Ordinance, 2000 namely:
i) a discovery, scientific theory or mathematical method;
ii) a literary, dramatic, musical or artistic work or any other creation of purely aesthetic character whatsoever;
iii) a scheme, rule or method for performing a mental act, playing a game or doing business;
iv) the presentation of information; and
v) substances that exist in nature or if isolated there from.
C) Sub-Section (4) of Section 7 of the Patents Ordinance, 2000 further places restriction on the grant of Patent and provide that A Patent shall not be granted:-
i) for an invention the prevention of commercial exploitation of which would be necessary to protect the “order public” or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by any law for the time being in force;
ii) for plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes;
iii) for diagnostic, therapeutic and surgical methods for the treatment of humans and animals;
iv) for a new or subsequent use of a known product or process; and
v) for a mere change in physical appearance of a chemical product where the chemical formula or process of manufacture remains the same provided that this clause shall not apply to an invention fulfilling the criteria of patentability.
The term “Novelty”, “Inventive Steps” and “Industrial Application” have been described under section 8, 9 and 10 respectively in order to clear their concept and the intention of the legislature and to avoid any confusion which always remained in the old law.
Under Section 13(3) of the Patents Ordinance, 2000, every application for the grant of Patent is restricted to only one invention. However if the specification relates to more than one invention, the Applicant may, before the acceptance of the Original Application, divide it into two or more applications, which will be considered as Divisional Applications as required under sub-section (4) of section 13 of the Patents Ordinance, 2000.Although the concept of Divisional Application was available in the old Law but in the present Ordinance, it has made more clear.
Grounds for opposing the grant of Patent have been extended and even a concept of THIRD PARTY OBSERVATION ON PATENTABILITY has been introduced.
A New concept regarding effect of acceptance of complete specification was introduced and a right to institute a suit for infringement was given to the Applicant in the original Patents Ordinance, 2000 but subsequently in the amendment made in 2002 that right was taken back.
Since the term of the patent has been extended up to 20 years and as such the provision of Extension of term of the Patent (as provided under section 15 of the Patents & Designs Act, 1911) has been withdrawn.
Time period has been prescribed for certain act, such as payment of Renewal fee/Annuity, Restoration of lapsed Patent, Sealing Fee and exploitation of Patents etc. regarding which the old Act was silent.
A new concept of exploitation of Patent has been introduced under section 59 of the Ordinance, whereby a Patent can be exploited by Government Agency or third person if the Patentee has failed to do so within the prescribed period.
The patent is granted under section 27 of the Patents Ordinance, 2000 and the term of the Patent is for 20 years subject to payment of annuity, starting from the 5th years, the fee of which must be paid before the expiration of 4thYear. Unless the annuities are paid regularly or for the entire term of remaining 16 years, the patent will be lapse due to non-payment of Renewal fee and of no effect.
Under Section 30 of the Patent Ordinance, 2000 the valid patent in Pakistan shall have the following rights, namely:
a) Where subject matter of Patent is a product, the holder of valid patent may prevent third parties not having the owner’s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that products; and
b) Where the subject matter of a patent is a process, the holder of a valid patent may prevent third parties not having owner’s consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
c) The holder of valid patent shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
d) The owner of the patent shall, in addition to any other rights, remedies or actions available to him have the right, subject to sub-section (4) and Section 59 (compulsory licenses), 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.
The right granted under Section 30 to a Patentee shall not extend to:
a) acts in respect of articles which have been put on the market anywhere in the world by the owner of the patent or with his consent or by an authorized person or in any other legitimate manner such as compulsory licenses;
b) the use of articles on an aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Pakistan;
c) acts done only for experimental purposes relating to a patented invention;
d) acts performed by any person who in good faith, before the filing or, priority is claimed, the priority date of the application on which the patent is granted in Pakistan, was using the invention or was making effective and serious preparations for such use; or
e) acts, including tests, necessary for the approval of a product for its commercialization after expiration of the Patent; or
f) acts done for teaching purposes in educational or research institutions.
UNDER SECTION 60 OF THE PATENTS ORDINANCE, 2000, 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 Ordinance in respect of an invention, makes, sells, or uses the invention without his license, 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.
Every ground on which a patent may be revoked under the provisions of this Ordinance shall be available by way of defense to a suit for infringement.
Under Section 61 of the Patent Ordinance, 2000, in a suit for infringement the Court shall have the power:
a) to grant relief by way of damages, injunctions or account provided that, where permitted, effective provisional measure may also be ordered by the Court;
b) to order, if the subject matter of a patent is a process for obtaining a product, the defendant to prove that the process to obtain an identical product is different from the
patented process and that the identical product in question shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process provided that the product obtained by patented process is new if it has not been put into the market for more than one year before the date of the institution of the judicial action by the patentee:
Provided that this provision shall apply subject to the prior proof by the plaintiff that the allegedly infringing product is identical to the product directly produced by the patented process:
Provided further that in the abduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.
In any suit for infringement:
a) the court shall have the authority to order prompt and effective provisional measures:-
i) to prevent an infringement, and in particular , to prevent the entry into
the channels of commerce the goods, including imported goods after custom clearance; and
ii) to preserve relevant evidence in regard to the alleged infringement;
b) the court shall have the authority to order provisional measures, inedita altera party where appropriate, in particular, where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed;
c) The court shall have the authority to require the applicant to provide any reasonable available evidence to satisfy it with a sufficient degree of certainty that the applicant is the right holder and that applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse;
d) Where provisional measures have been adopted, inedita altera party, the parties affected shall be given notice, without delay after the execution of the measures at the latest, and a review, including a right to be heard, shall take place upon request of the defendant with a view to deciding within a reasonable period after the notice of the measures, whether these measures shall be modified, revoked or confirmed;
e) The court may require the applicant to supply other information necessary for identification of the goods concerned;
f) Without prejudice to the provisions of clause (d), provisional measures taken on the basis of clause (a) and (b) shall upon the request of the defendant, be revoked or otherwise cease to have affect if proceedings leading to a decision on merit of the case are not initiated within a reasonable period not to exceed twenty working days or thirty-one calendar days; and
g) Where the provisional measures are revoked or where they have lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement, the court shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for an injury caused by these measures.
Under section 66 of the Patents Ordinance, 2000 remedy for groundless threats of infringement proceedings is provided.
New Sections regarding Power of the Court to made declaration as to non-infringement of a Patent and to appoint scientific advisors have been introduced in the present Ordinance.
SOME RELAVENT CASE LAWS ABOUT THE TOPIC.
The actual litigation started between the parties during the year 1980 on the patent subject and the first remarkable case is reported in the year 1985, where the temporary injunction was refused on the ground of delay in taking proceeding against the defendant. In the year 1987 in another case reported as 1987 CLC 1571 the defendant was restrained from importing, marketing or publicizing any products under the name of the plaintiff or reproducing the chemical or structural formula of the said drug on any of their products in any form although the drug of the defendant was registered with the Ministry of Health under the Drug Act, 1976.
On the question of grant of Patent the remarkable judgment is reported in 1990 MLD 11.
In the year 1991 three cases on Patent were reported as 1991 CLC Note 69 at page 52; PLD 1991 Karachi 252 and 1991 MLD 85. All these cases are related to the pharmaceutical products/drug and the defendants were restrained from infringing the patent of the plaintiffs.
In the year 1992 again two cases of patent were reported and again the decision were given in favour of the Patentee as reported in 1992 CLC 2382 and 1992 MLD 2226.
In the year 1995, the supreme Court of Pakistan vide a judgment reported in 1995 SCMR 529 directed the promulgation of specific law for the control of strategic and sensitive inventions in Pakistan in line with section 5 of Indian Patents Act, 1970, which prohibits patenting of an invention relating to atomic energy, to effectively deal with situation, whereby the patent was refused for grant to atomic energy subject.
In the year 2001, 2002 and 2003 certain development were made in the patent and the litigation was increased due to Black box/Mail Box applications and the provision of the Patent Ordinance, 2000, wherein the right even to the applicant has been granted for filing the suit for infringement whose application has been accepted but not sealed. Such litigation is also pending in the High Court of Sindh at Karachi. Several cases were also reported as 2001 CLR 1852 = 2002 CLD 120,SBLR 2002 Sindh 1194 = 2003 CLD 407, 2002 CLD 1653. Now we shall see some of the cases in detail:
2001 CLR 1852 = 2002 CLD 120,
ATCO LAB. (PVT) LIMITED V. PFIZER LIMITED & Another.
In the present judgment three cases were heard together; consisting of two suits for infringement of Patent No. 130621 one filed against ATCO (Suit No. 1024/1998) and the other was filed against Square Pharmaceutical (Pvt) Ltd ( Suit No. 1025/1998 ) and one cancellation petition filed by ATCO for cancellation of Patent No. 130621. In all the cases, Application for temporary relief were also filed by the parties. The case of defendants in the two suits was that there are two earlier Patents of the Plaintiffs’ company being No. 1288705 and 128277 were relating to the same chemical compound, which is already expired and the disputed Patent No. 130621 is not invention but a discovery which could not be registered as Patent. After considering all the facts and the record available with the Hon’ble Court, all the Applications were dismissed and the matter was ordered to proceed further for recordable of evidence.
2002 CLD 1653.
{PFIZER LIMITED & ANOTHER V. WILSON’S PHARMACEUTICALS.
In the subject case the facts are the same as in the above mentioned case with the difference in the defendant, who has filed a suit for declaration that he is the lawful importer/manufacturer of the drug called in question. The defendant on the basis of that earlier case prayed that the suit filed in Karachi was a subsequent suit and the same should be stayed. Upon hearing the Application for stay of suit was dismissed and the Hon’ble Court was pleased to grant temporary injunction restraining the defendant from infringement of the Registered Patent of the Plaintiff.
SBLR 2002 Sindh 1194 = 2003 CLD 407,
Merck & Co. Inc and others v. Hilton Pharma (Pvt) Ltd.
This is first reported case wherein the Patents Ordinance, 2000 was discussed in detail. An Application was moved under Order XXXIX Rules 1 & 2 read with section 151 C.P.C. seeking interim injunction against the defendant restraining them from infringing plaintiffs Patent Nos. 134571, 134730, 134743, 134762 and 135143 and from manufacturing, making, importing, packing, formulating, marketing, launching and/or selling ALENDRONATE SODIUM or any products containing Alendronate itself or as its sodium salts or any other variation thereof in any form in any manner and under any name by using or adopting any process identical to or equivalent to or substantially similar to or incorporating the essential steps of any of the process. After detailed arguments, the defendant was restrained from infringing the Patent of the plaintiff although several objections were raised and even it was the case of the defendant that they have not yet launched the product in the market.
This FAQ is prepared by Sadia Saman Advocate