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What You Need To Know About IPRs In Pakistan

January 5, 2021

With its significant geopolitical position in South Asia that provides the country with convenient access to the international market, Pakistan is nestled in the cradle of the historical Indus Valley civilization, which dates back at least 5,000 years. Local industries include textiles and apparel, food processing, pharmaceuticals, surgical instruments, construction materials, paper products, fertilizer, and shrimp. Pakistan’s GDP growth has gradually increased since 2012, and was 5.3 percent in 2017. The GDP composition by sector of origin is 24.4 percent for agriculture, 19.1 percent for industry, and 56.5 percent for services.

Pakistan maintains a relatively comprehensive regulatory and legislative system for the protection of trademarks, patents, designs, and copyright. In order to have an effective protection strategy, all intellectual property rights must be registered and enforced in Pakistan, under local laws. While Pakistan has been a Contracting Party to the Paris Convention for the Protection of Industrial Property since July 2004, the country is not a Contracting Party to the Patent Cooperation Treaty.

On the trademarks front, Pakistan follows the 11th edition of the Nice classification and a single application may not include several classes. Trademark examination is performed on formal, absolute, and relative grounds and oppositions may be filed after two months from publication date. The protection term for a trademark is 10 years from filing date and is renewable for like periods. As for use, trademarks are vulnerable to a cancellation action by any interested party if there has been no effective use of the mark for a period of five consecutive years after registration. An extension of time is possible for filing oppositions, counter oppositions, and responding to office actions.

It is worth noting that priority can be claimed if the application is filed within six months of the application in the Paris Convention country. If registration is granted without use, the brand owner must use the mark within five years from the date of registration to maintain the registration. This is also useful in order to mitigate any risk from a third-party that might challenge on grounds of non-use.

As for patents, priority rights may be claimed from states that are a party to the Paris Convention for the Protection of Industrial Property, and a claim for priority is required to be filed within twelve months of the first filing. The examination results for the filed patents in Pakistan are subject to the Patents Ordinance (2000) and Patents Rules (2003). The Examiners will consider equivalent filings as well when evaluating patentability. Once approved, the notification is published upon grant in the Official Gazette and oppositions may be filed within four months from publication date. Patents are protected for a period of 20 years from the filing date, or from the priority date. Annuities are due annually on the anniversary of the filing date, or the priority date, and payable after the granting of the patent. A six month grace period is observed for late payment along with a surcharge.

Given that Pakistan is not a member of the PCT, nationals do not have the option of filing with the PCT Receiving Office for international protection or for international publication of their patents within the 153 PCT contracting states.

Pakistan remains a country with high aspirations that welcomes foreign investments. A healthy balance between the latter and local development is bound to be beneficial for the country’s own growth. The proper application and enforcement of IP laws should help Pakistan become more of an innovative hub in South Asia and lead to this required healthy financial balance.

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