INTELLECTUAL PROPERTY ORGANIZATIONS(IPO)

Intellectual Property Organization of Pakistan (IPO-Pakistan) was established as an autonomous body on April 8, 2005 under the administrative control of the Cabinet Division for integrated and efficient intellectual property management in the country. On July 25, 2016, the administrative control of IPO-Pakistan was transferred from Cabinet Division to Commerce Division. The Trade Marks Registry, Copyright Office and the Patent & Design Office became part of the new Organization under a unified and integrated management system.

TRADEMARK REGISTRATION

A Trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and / or design that identifies and distinguishes the source of a service rather than goods.

Trade Marks Registry (TMR) is premier body of Intellectual Property Organization of Pakistan (IPO-Pakistan) working for the registration of trade and services marks under the Trademarks Ordinance, 2001. It is a federal government body and its jurisdiction for trade and services marks lies within the geographical boundary of Pakistan. It works as a civil court and its decisions are appealable at the provincial high courts. The Trademarks Registry is headed by a Registrar and its office is located in Karachi and also Regional Office situated in Lahore.

TRADEMARKS

A Trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and / or design that identifies and distinguishes the source of a service rather than goods.

Trade Marks Registry (TMR) is premier body of Intellectual Property Organization of Pakistan (IPO-Pakistan) working for the registration of trade and services marks under the Trademarks Ordinance, 2001. It is a federal government body and its jurisdiction for trade and services marks lies within the geographical boundary of Pakistan. It works as a civil court and its decisions are appealable at the provincial high courts. The Trademarks Registry is headed by a Registrar and its office is located in Karachi and also Regional Office situated in Lahore.

  1. Availability of Name Checking TM-55 RS: 1000/-
  2. Filling of trademark application TM-1 and TM-2 along with government fee of Rs: 3000/-. With 7 set of Trader mark snaps. A power of attorney in favor of the agent from the applicant / Proprietor
  3. Preliminary examination of trade mark from the registrar end generally one Years.
  4. Procedural objections
  5. The Examiner may also raise objections on certain procedural ground such as the absence of a valid Power of Attorney in favor of the trademark agent, incorrect classification of goods or services, incomplete information in the Trademark Application etc. However, these objections are relatively easier to clear and do not substantially hamper the registration of the mark.
  6. Examination Report/Show Cause
    As per the section 27 of the Trademark Ordinance, 2001 in the event the Registrar has any objection in relation to the registration of the trademark, he shall communicate the same to the applicant and the applicant must respond to such objection within two months from the date of such communication.

FINAL ORDER FOR PUBLICATIONS

Once the mark is cleared of all the objections from the Trademarks Registry, it proceeds for advertisement in the Trade Marks Journal. The Trademark Journal is open to the public and the purpose of advertisement is to invite any opposition to registration of the mark from any third parties. Once a mark is advertised and no oppositions are filed within the statutory time period, the mark moves to registration. However, if the Registrar receive any objection from any person, the opposition procedure commences with:

OPPOSITION PROCEDURE

  • Notice of Opposition is given in Form TM-5 of trade mark rule 2004 along with requisite fee of Rs. 6000/- in govt treasury account.
  • Counter Statement will be filled in form TM-6 within two (2) months from the date of receipt of the notice opposition along with the requisite fee TM-6 shall be submitted along with the requisite fee of Rs. 1000/-.

Submission of Affidavit-in-Evidence by both parties will submit within two months of the receipt of the counter statement. The Applicant is thereafter required to furnish his own evidence by way of affidavit in support of the application within two (2) months from the receipt of the Opponent’s evidence affidavit.
· Hearing of Opposition, Within three (3) months of completion of the evidence, the Registrar shall give the notice of first hearing to the Parties. Rule 55 of the Trademark Rules, 2004 provides that the first date of hearing shall be at least one (1) month after the date of notice to the parties
· Decision: The Registrar pass the order on the opposition, either accept the opposition of dismissed the same. In the both situation, the aggrieved party may file an Appeal before the Appellate Forum.

ISSUANCE OF REGISTRATION CERTIFICATE

A trademark registration IS VALID FOR A PERIOD OF TEN (10) YEARS from the date of application and may be renewed under section 35 of the Trademark Ordinance, 2001 thereafter from time to time.

RENEWEL PROCESS

As per Section 35 of Trademark Ordinance, 2001, a trade mark can be renewed after the expiry of renewal if the applicant makes an application within six (6) months from the date of expiry of Registration. In such a case, the applicant has to file two forms one for renewal and one for payment of surcharge. The form for renewal is Form TM-12 of the Trade Mark Rules, 2004 and the fees for the same is Rs. 10,000/- for one mark.

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PATENT REGISTRATION

A patent is grant of exclusive rights for an invention to make, use and sell the invention for a limited period of 20 years. The patent grant excludes others from making, using, or selling the invention. Patent protection does not start until the actual grant of a patent.A patent owner has the right to decide who may or may not use the patented invention for the period in which the invention is protected. The patent owner may give permission, or license, to other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends and invention enters the public domain, that is, the owner no longer holds exclusive right to the invention which becomes available to commercial exploitation by others.

The patent system is desirable in the public interest that industrial techniques should be improved. The monopoly rights are granted in lieu of disclosure of the invention i.e advancement in technology. In order to encourage improvements and to encourage also the disclosure of improvements in preference to their use in secret. Any person devising any improvement in a manufactured article or in machinery or methods for making it, may upon disclosure of his improvement at the Patent Office demand to be given a monopoly in the use of it for a limited period. After that period, it passes into the public domain.

PATENTABLE INVENTIONS IN PAKISTAN

  • The invention should be process or product.
  • The invention should be novel or new.
  • It involves an inventive step.
  • It is capable of industrial application.

Patent applications are examined under the Patents Ordinance, 2000 and Rules there under for both technical and legal merits.

PROCEDURE & TIMEFRAME OF PATENT REGISTRATIONS

  1. Preparation of complete patent specification

The first step in filling patent application is to prepare a patent specification.       Writing a high-quality patent application is important because it sets out in a clear    manner the terms by which the patent owner and other will be bound.

Specifications:

  • Write specification in English
  • 5 Line Spacing, on White A4 Size paper with minimum 2cm from top-bottom
  • 5cm from left and 2cm from right side.

Contents:

  • Subject matter of Invention’s title (Avoid overly narrow or Broad in invention’s title)

Abstract

  • Important technical aspects of your invention not more than 2 pages.

Field of Inventions.

  • Inventions relates to e.g. accessory of computer you may write “this invention relates to computer”

 Background of Inventions

  • Invention necessary or useful, and what has it developed out of? It is important to discuss some “prior Art” here patents that have already been filed by someone else relating to your idea.

Detailed Description

  • How exactly does your invention work? Here you should describe in detail the exact components, systems, methods and so on that make your invention work so that someone else skilled in the area would be able to reproduce it using your instructions.

Claim

  • The patent application must end with one or more claims, at least one independent claim and other dependent claims. Usually begin with “I or We Claim” and should be sequentially numbered and be presented in order from broadest to narrowest.

Preamble or opening statement of the claim (s) must indicate whether a process or product feature of invention is claimed.

            Drawing

  • What does your invention look like? Patent application is required to contain drawings. Drawing(s) should commence on separate sheet (s) and the minimum margin shall be as follow:

Top            2.5cm

Left Side   2.5cm

Right Side 1.5cm

Bottom      1.0 cm

Only numeral references may indicate different parts of diagram (For further details, please see Rule 11 of the Patent Rules 2003). You have to mention reference to the drawing(s) in specification under the heading Brief description of drawings and further elaborate your invention with the help of drawings.

Application Form Submission for Patent Registration

  • Two (02) copies of Dully filled in Application Form.

For Non -Convention Applications (Application without priority)

  • Duly filled in application Form P-1 (in case when inventor is sole or joint applicant) OR Form P-1A (in case when inventor or inventors is not a party to application and application is being filed by assignee or company / organization etc.).
  • Duly filled-in Form P-3A (in case of Complete Specification) OR P-3 (in case of Provisional/Incomplete Specification). Please note that Form P-3/P-3A is the first page of the specification.
  • Form P-28 for authorization of patent Attorney/Agent (if any). 9
  • For applicant being a student or employee of institution like University, Research institutes and organizations, a NO OBJECTION CERTIFICATE (NOC) from the respective department should be produced.

For Convention applications

  • s (application with priority) Convention application means an application made in Pakistan within twelve months after the date of an application made in a Convention country, whether claiming single or multiple priorities from such application. Convention country means a member country of the World Trade Organization or a country declared as such under section 86.
  • Duly filled in application Form P-2 (in case when inventor is sole or joint applicant) OR Form P-2A (in case when inventor or inventors is not a party to application).
  • Duly filled in Form P-3A (complete specification)
  • Form P-28 for authorization of patent Attorney/Agent.
  • Priority document (if the document is in any other language then English translation verified by the affidavit should be provided) It is recommended that an e-mail or telephone number of the applicant should also be given, in case of any concerns or questions regarding your documents.

Filling Fees Payments

Filling fees are applicable in the form Pay Order or Demand Draft from scheduled bank in favor of Director General, IPO Pakistan.

  • In case of complete specification PKR. 6750/- and in case of provisional specification PKR. 2025/-.
  • For each additional page of specification beyond 40 pages PKR. 90/-
  • For each additional claim beyond 20 claims PKR. 225/- Basic filing fee PKR. 6750/- is acceptable for complete specification having 40 pages and 20 claims. You have to pay additional filing fee if specification exceeds 40 pages and claims are more than 20 as mentioned above. Please note that filing fee is nonrefundable.

DOCUMENTS REQUIREMENTS

  • Form P-1 or Form P-1A Application without priority (02 Copies)
  • Form P-1 or Form P-2A Application without priority (02 Copies)
  • Form P-3 for provisional or Form P-3A for complete specification (02 Copies)
  • Patent Specification (02 Copies)
  • Drawing(s), if any (02 Copies)
  • Pay Order or Demand draft 01 Original + 01 Copy
  • Form P-28 (Power of Attorney) if any 01 Original + 01 Copy
  • Priority documents (for convention application) 01 Copy
  • NOC (01 Copy)

COPY RIGHT

Copyright is a legal instrument that provides the creator of a work of art or literature, or a work that conveys information or ideas, the right to control how the work is used. The intent of copyright is to advance the progress of knowledge by giving an author of a work an economic incentive to create new works.

Copyright includes the following creative works:

  • Literary works which includes Books, Magazines, Journals, Lectures, Dramas, Novels, Computer programmers/Software and compilation of data etc.
  • Artistic works like paintings, Maps, photographs, drawings, Charts, Calligraphies, Sculptures, Architectural Works, Label Designs, Logos, Monograms and other works alike.
  • Cinematographic works which includes movies, audio-visual works, documentaries etc.
  • Record works which include sound recordings, musical works etc.

Steps for Registration of Copyright:

  • Filing of application.
  • Examination.
  • Publication in newspaper (Artistic Work only).
  • Opposition, if any
  • Issuance of Certificate by Registrar (Registration).

DESIGN REGISTRATION

The owner is able to prevent unauthorized copying or imitation of his or her design by third parties. In addition, as industrial designs add to the commercial value of a product & facilitate its marketing & commercialization, their protection helps ensure that a fair return on investment is obtained.

Protection of industrial designs encourages fair competition & honest trade practices. It leads to the production of more aesthetically attractive & diversified products, thereby broadening consumer choice.

Industrial design protection acts as a spur to a country’s economic development by contributing to the expansion of commercial activities & by enhancing the export potential of national product.

WHAT MAY NOT BE REGISTERED

                           The following do not constitute registrable designs within meaning of the Ordinance:

  • A design, which in the opinion of the Registrar of Designs is not new or original.
  • A design which is the same as a design already registered or published anywhere in the world before the date of the application (or, in the case of an application claiming priority of date under Section 11, before the priority date), or which differs from such prior design only in immaterial details or in features which are variants commonly used in the trade.

But under Section 6 of the Ordinance, the following is an exception to this rule:
– “Where the registered proprietor of a design registered in respect of any article makes an application.

  1. for registration in respect of one or more other articles of the registered design, or
  2. for registration in respect of the same or one or more other articles of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof.
    The application shall not be refused and the registration made on that application should not be invalidated by reason only of the previous registration or publication of the registered design:
    Provided that the period of registration of a design registered by virtue of this section shall not extend beyond the expiration of the original and extended period of registration in the original registered design”.
  • A method or principle of construction, or an improvement in the construction, arrangement or application of machinery.
  • Anything, which is in substance a mere mechanical device. In other words, a design consisting features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.
  • Any Trade Marks as defined in Section 2 of the Trade Marks Act, 1940.
  • A mere adjunction of two or more known articles of known shape or patterns.
  • Copyrights in literary, dramatic, musical and artistic work within the meaning of Copyrights Ordinance, 1962. In other words, works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process; wall plaques and medals; and printed mater primarily of a literary or artistic character including book-jackets, calendars, certificates, coupons, dressmaking patterns, greeting cards, leaflets, maps plans, postcards, stamps, trade advertisements, trade forms and cards, transfers and the like.

A design containing a reproduction or imitation of the armorial bearings, emblems, seals, coat-of-arms, insignia, orders of chivalry, decorations or flags of any country, city, borough, town, place, society, body corporate, institution or person, or the name or portrait of a living or dead person, unless the consent of the appropriate official or person to the registration of design is furnished to the Registrar.

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