RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/329/Add.1
1 March 2002
(02-1037)
Council for Trade-Related Aspects
for Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Pakistan to questions posed by Australia, the European Communities
and their member States, Japan, Switzerland and the United States
Addendum
By means of a communication from the Permanent Mission of Pakistan, dated
25 February 2002, the Secretariat has received a copy of the following responses to questions posed
by Australia, the European Communities and their member States, Japan, Switzerland and the UnitedStates, as circulated in documents IP/C/W/328, 320, 320/Add.2, 322, 315 and 316, respectively.
_______________
AUSTRALIA
A. P
ATENTS (INDLUNG PLANT VARIETY PROTECTION )
1. How does your country provide protection for new plant varieties as required under
Article 27.3(b)?  If your legislation is based on the UPOV system, on which UPOV Act was it
modelled..  Can new plant varieties be protected by patent in your country?
According to the Patents Ordinance, 2000, animals or plants other than microorganisms, and
essentially biological processes for the production of animals or plants are excluded from
patentability.  To provide protection to new plant varieties, a law is currently being drafted.
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health and
nutrition, and to promote the public interest in se ctors of vital importance to your socio-economic and
technological development as mentioned under Arti cle 8 of the TRIPS Agreement.  If yes, please
explain how such measures are consistent with the provisions of the TRIPS Agreement.
[No reply received]
B. COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of authors
in relation to their literary and artistic works, as  specified in Article 9 of the TRIPS Agreement whichIP/C/W/329/Add.1
Page 2
requires Members to comply with Articles 1-21 of the Berne Convention and the Appendix to the
Berne Convention (1971)).
The Copyright Ordinance, 1962 deals with copyright and neighbouring rights and in
accordance with the Berne Convention covers the following subject matter:
- Literary works, which include works on humanity religion, social and physical
sciences, tables, compilation of data or other material in any form and computer
programmes;
- Dramatic works which include any pieces for recitation, choreographic work or
entertainment in a dumb show;
- Musical works;
- Artistic works which include architectural works, paintings, sculptures, drawings
(including a diagram, map, chart, or plan), an engraving or photographs and any other
work of artistic craftsmanship;
- Translations or adaptations of literary, artistic or dramatic works;
- Cinematographic works;
- Records;  and
- Broadcasts and performances.
The copyright law in Pakistan protects economic rights and also moral rights of the author
under Section 62 of the Copyright Ordinance.
Economic rights provided under the Copyright Ordinance, 1962 include the right of
reproduction, the right of communication to the public, the right of translation and adaptation, theright to broadcast, and the right of rental.  Authors of dramatic and musical works also enjoy the right
of authorizing the performance of their work in  public and the communication of the work to the
public.
Certain fair dealing exceptions are permissible under the law for the purposes of teaching and
instruction, research or private study, reporting current events or judicial proceeding, for the benefit of
a religious, charitable or educational institution etc.
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
[No response received]
4. Please state whether your legislation provides for a rental right and, if so, the works to which
it applies.
Yes, the Copyright Ordinance, 1962 (as amended in the year 2000), provides rental rights in
respect of computer programmes, cinematographic works and phonograms.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organisations under your legislation.IP/C/W/329/Add.1
Page 3
Performers  are provided protection under the Copyright Ordinance in terms of Section 24A
which gives them the right to do or to prevent fixation of their unfixed performance and reproduction
of such fixation and broadcasting by wireless means and communication to public of their live
performance.  The protection is available for a period of 50 years computed from the end of the
calendar year in which the fixation was made or the performance took place.
Section 24(2) of the Copyright Ordinance, 1962 provides that producers of phonograms shall
have the right to do or prohibit the direct or indirect reproduction of their fixation or the rental thereof.
These rights subsist for a period of fifty years computed form the end of the calendar year in which
the fixation was made.
Under the Copyright Ordinance, 1962, broadcasting organizations have the right to authorize
the rebroadcasting of their broadcasts, the fixation of their broadcasts and the copying of the fixations
made of their broadcasts. These rights last for a period of fifty years after the broadcast took place.
6. Please state whether your legislation provides for any limitation or exception in relation to
each of the rights described above in accordance with the relevant provisions of the Berne and RomeConventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Yes, there are limitations or exceptions to the exclusive rights granted under the Copyrights
Ordinance, 1962.  Limited fair dealing exceptions are provided under the law for the purposes of
research, criticism or review and reporting current events, judicial proceedings, addresses, lectures,
etc. Compulsory licences may be issued in respect of works in the following cases:
(i) A Pakistani work is withheld from public due to the refusal by the author to
republish or allow republication, or refusal to allow performance in public of
the work;
(ii) In the case of a Pakistani work, refusal to allow communication to the public
by broadcast of such work, or in the case of a record, the work recorded in
such record on unreasonable terms.
(iii) In the case of a Pakistani work, the author is dead or unknown or cannot be
found and republication of the work is in the interest of the public;
(iv) A governmental institution or statutory body may be granted a licence to
reprint, translate, adapt or publish any textbook on non-profit basis.  Such a
licence may only be granted in public interest.
(v) A licence to produce or publish a translation of a literary or dramatic work
may be granted.
7. Please state the terms of protection of each right described above and the work or subject
matter to which it applies.
The following terms of protection are applicable to the following classes of works:
Copyright in published literary, dramatic,
musical and artistic works (if published
within the lifetime of the author)Fifty years from the beginning of the
calendar year following the year in which
the author dies.IP/C/W/329/Add.1
Page 4
Copyright in posthumous literary,
dramatic or musical workFifty years from the beginning of thecalendar year in which the work is first
published, or where an adaptation of the
work is published in any earlier year,
from the beginning of the calendar yearnext following that year.
Cinematographic works Fifty years from the beginning of the
calendar year next following the year in
which the work is published.
Records Fifty years from the beginning of the
calendar year in which he record is
published.
Photographs Fifty years from the beginning of the
calendar year next following the year in
which the photograph is published.
Broadcasting Organizations Twenty-five years from the beginning of
the calendar year following the year in
which the broadcast took place.
Performers and Producers of Fifty years computed from the end of the
Phonograms calendar year in which the fixation was
made or the performance took place.
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
[No reply received]
9. Please explain whether the droit de suite provided for in Article 14ter of the Berne
Convention is protected in your legislation.
No, the droit de suite  provided for in Article 14 ter of the Berne Convention is not protected in
the copyright legislation of the country.
C. TRADEMARKS
10. Please give the definition of a sign under your national legislation and explain under what
conditions it is protectable.
The Trade Marks Ordinance, 2001 protects a trademark which is defined as a mark that is
capable of being represented graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings.  A mark is defined to include in particular a device,brand, heading, label, ticket, name including personal name, signature, word, letter, numeral, shape
of goods or their packaging, figurative element, colour, sound, or any combination thereof.  Further
to be protectable the mark has to pass tests posed by absolutes grounds (Section 14) and relatives
grounds (Section 17).  Further well-known mark s are protected as required by Article 6 bis.
11. Please confirm whether or not services are a protectable subject matter in your trademark
law.  Please confirm if signs, such as trade names, are protectable.  Please describe if elements such
as sound, perfumes and containers are protectable.
[No reply received]IP/C/W/329/Add.1
Page 5
12. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
Use of a trademark is not a prior condition for its registration.  Marks which are proposed to
be used in Pakistan are also registerable.  "Permitted use" in relation to a trademark means the use ofa trademark by an authorized user.  Except at th e time of the first renewal, the Registrar may require
that the request for renewal may be accompanied with evidence of use in Pakistan.  Under Section 73
of the Trade Marks Ordinance, 2001, the registration of a trademark may be refused on the following
grounds related to use:
(i) that within the period of five years following the date of completion of
registration procedure it has not been put to bona fide use in Pakistan by the
proprietor or by an authorized user thereof, in relation to the goods or
services for which it is registered and there are no proper reasons for its
non-use;
(ii) that the bona fide use has been suspended for an uninterrupted period of five
years and there are no proper reasons for its non-use.
For the purposes of invoking the above provisions, use of a trademark shall include use in a
form differing in elements which do not alter the distinctive character of the mark in the form in
which it was registered.
13. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Yes, the registration of trademarks is indefinitely renewable.  Subject to disposal of renewal
fees.
14. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
There are no special requirements concerning the use of a trademark under the Trade Marks
Ordinance, 2001.
D. G
EOGRAPHICAL INDICATIONS
15. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
Under Section 14 of the Trade Marks Ordinance, 2001 trademarks which consist exclusively
of marks or indications which may serve, in trade, to designate the geographical origin of goods or
services are not registerable.
16. Please give the definition of a geographical indication in your legislation.
The Trade Marks Ordinance, 2001 defines a geographical indication as given below:
"Geographical Indication in relation to goods orig inating in a particular country or in a region
or locality of that country, means a mark recognized in that country as a mark indicating that
the goods:
(a) originated in that country, region or locality;  andIP/C/W/329/Add.1
Page 6
(b) have a quality, reputation or other characteristic attributable to their geographical
region."
However, a separate laws on Geographical Indications is being drafted.
17. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
The Trademarks Ordinance, 2001 provides for the protection of geographical indications
related to goods and services.  However, protection can only be claimed if the goods or services have
a quality, reputation, or other characteristic attributable to their geographical region.
18. Please describe how additional protection is granted by your legislation to wines and spirits.
Please mention other types of products, if any, covered by this additional protection.
[No reply received]
19. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
Please refer to the response to question 18 above.
E. INDUSTRIAL DESIGNS
20. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs areprotected.
No, the definition of a design under the Registered Designs Ordinance, 2000 does not include
a method of or principles of construction or features or shape or configuration which are dictated
solely by technical or functional considerations.  Textile designs are protected under the Registered
Designs Ordinance, 2000 in a manner similar to the protection to other classes of designs.
21. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
Under the Registered Designs Ordinance, 2000, with the registration of a design the right
holder obtains, inter alia, the right to prevent third parties form applying the design to an article and
from importing an article to which the registered design or a design not substantially different from
the registered design has been applied.  If the rights of a registered proprietor are infringed, the ownerof a registered design may bring a suit for recovery of damages and for an injunction against the
continuation of the infringement.  A temporary injunction may also be obtained from the court under
certain conditions.
22. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
The Registered Designs Ordinance, 2000 does not provide for the right to issue a compulsory
licence for industrial designs.
23. Please indicate for what period of time your  legislation grants protection for industrial
designs.IP/C/W/329/Add.1
Page 7
A design may be registered for an initial period of ten years that is renewable twice for terms
of ten years each.
F. PATENTS
24. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
The Patents Ordinance, 2000 defines the above terms as given below:
Novelty:  An invention is considered to be new if it does not form part of the state of the art.
The state of the art shall comprise:
(a) everything disclosed to the public anywhere in the world, by publication in tangible
form or by oral disclosure, by use or in any other way, prior to the filing or, where
appropriate the priority date, of the application claiming the invention;
(b) contents of the complete specification and priority documents published under
Section 21 of an application filed in Pakistan.
Inventive Step:   An invention shall be considered as involving an inventive step of it has not
been obvious to a person, prior to the date of application for a patent, skilled in the art, having regard
to any matter which forms part of the state of the art.
Industrial Application:   An invention shall be considered to be capable of industrial
application if it can be made or used in any kind of industry.  The industry shall be understood in its
broadest sense.  It shall cover in particular, agriculture, handicraft, fishery and services.  An invention
of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced
on the human or animal body shall not be taken to be capable of industrial application provided that a
product consisting of a substance or composition shall not be prevented from being treated as capable
of industrial application merely because it was invented for use in such method.
25. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how these
exclusions are applied in legal as well as practical terms.
The Patents Ordinance, 2000 provides for certain exclusions from patentability. These
exclusions, contained in Section 7(4)  of the Patents Ordinance, 2000, are :
(a) for an invention the publication or exploitation of which would be contrary to the
public order or morality, provided that the exploitation shall not be considered to be
so contrary merely because it is prohibited by any law for the time being in force;
(b) for animals or plants other than micro-organisms and essentially biological process
for the production of animals or plants, but this prohibition shall not apply tomicro-biological processes or pr oducts of such processes;  and
(c) for diagnostic therapeutic and surgical methods for the treatment of humans or
animals.
26. Please explain whether your legislation provides for the exclusion of inventions from
patentability based on order public or morality.  If so, please explain the relevant section of yourlegislation and explain its formulation.  Please also explain if it has been applied in practice.IP/C/W/329/Add.1
Page 8
Yes, Pakistan's patent legislation provides an exclusion based on public order or morality. Its
formulation is explained in the response to question 25.
27. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your legislation andexplain its formulation.
Yes, diagnostic, therapeutic and surgical methods are excluded from patentability in
Pakistan's patent legislation.  The formulation of the relevant section is explained in the response to
question 25.
28. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of yourlegislation and explain its formulation.
Yes, plant, animals and essentially biological processes are excluded from patentability under
Pakistan's patent legislation.  The formulation of the relevant section is explained in the response to
question 25.
29. Please describe how micro-orga nisms, non-essentially biological processes, microbiological
processes and plant varieties are protected in your legislation.  Please explain, in this respect, the
relevant sections of your legislation.
Micro-organisms and microbiological processe s and products of such processes have been
explicitly removed from the coverage of the provision excluding plants and animals frompatentability, (Section 7(4)b of the Patents Ordinance, 2000).
30. Please explain how your legislation protects patent right holders against the importing and
against the offering for sale of a patented invention.
The exploitation of a patented invention in Pakistan by a person other than the owner of the
patent shall require the latter's agreement.  "Exploitation of a patented invention" means any of the
following acts, namely:
(a) when patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling and using the product;  or
(ii) stocking such product for the purposes of offering for sale, selling or using;
and
(b) when the patent has been granted in respect of a process:
(i) using the process;  or
(ii) doing any of the acts referred to in clause (a) in respect of a product obtained
directly by means of the process.
The owner of a patent may institute court proceedings under Section 30(3) of the Patents
Ordinance, 2000 against any person who infringes the patent by performing any of the above acts
without his agreement or who performs acts which make infringement likely.
31. Please state if your legislation provides for patent product protection of pharmaceutical and
agricultural chemical products.  In the affirmative, please indicate the legal reference.IP/C/W/329/Add.1
Page 9
Patent applications are entertained for inventions in all fields of technology, relating to
products or processes except in the area of pharmaceutical and agricultural chemical products.
Patents for the protection of pharmaceutical and agricultural chemical products will be granted with
effect from 1 January 2005 under Section 1(3) of  Patents Ordinance 2000.  The mailbox provision is
being implemented during the transition period by virtue of Section 1(3) of the Patents Ordinance,2000.
32. Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
Yes, under Section 30(2)(b) of the Patents Ordinance, 2000, the patent protection of a process
covers the product obtained directly by that process.
33. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TRIPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislation and describe the additional conditions in detail.
There are no additional conditions other than the sufficient disclosure of the invention and
provision of information regarding any foreign patent application.
34. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
The Patents Ordinance, 2000 contains limited exceptions to the exclusive rights of the patent
holder.  These exceptions pertain:
- to acts in respect of articles that have been put on the market with his consent,
- 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,
- acts done only for experimental purposes relating to a patented invention;  and
- acts performed by any person who in good faith, before the filling or, where 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.
Under Sections 58 and 59 of the Patents Ordinance, 2000, compulsory licences may be
granted by the government or the Controller of Patents following the conditions contained inArticle 31 of the TRIPS Agreement.
35. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licences may be granted.  In
particular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Under Sections 58 and 59 of the Patents Ordinance, 2000, a compulsory licence may be
issued in respect of a patent without authorization of the patent holder.  The grounds for such a licence
may be based on:
(i) public interest , in particular, national security, nutrition, health or if the
development of other vital sectors of the national economy so requires;IP/C/W/329/Add.1
Page 10
(ii) anti-competitive practices;  or
(iii) non-working of a patent.  (Importation is considered as working a patent).
The procedure/conditions to be followed are contained in subsections 2-10 of Section 58:
Any application for grant of a compulsory licence shall be considered on individual merits.
Decisions on requests for grant of a compulsory licence is to be made on a case-to-case basis and the
owner of a patent and any interested person is to be given an opportunity to be heard.
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 th e said owner of an adequate remuneration therefor,
taking into account the economic value of the authorization or the need to correct anti-competitive
practices.
A request for such 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 licence, but
that person has been unable to obtain such a licence on reasonable commercial terms and conditions
and within a reasonable time.  This condition shall not apply in cases of:
(i) national emergency or other circumstantial urgency provided that in such cases
the owner of the patent shall be informed of the decision as soon as reasonably
practicable;
(ii) public non-commercial use;  and
(iii) anti-competitive practices determined as such by a judicial or administrative body
in accordance with the provisions of the Patents Ordinance, 2000.
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 pate nted invention, by the owner of the patent or his
licensee, is anti-competitive and if the Federal Gove rnment/controller is satisfied that the issuance of
the non-voluntary licence would remedy such practices.
The authorization shall exclude:
- the conclusion of licence contracts by the owner of the patent;
- the continued exercise, by the owner of the patent, of his rights;  or
- the issuance of a non-voluntary licence.
Where a third person has been designated by the Federal Government/controller, the
authorization may only be transferred with the enterprise or business of the person or with the part of
the enterprise or business within which the patented invention is being exploited.
Where the exploitation of the invention by the government agency or third person designated
by the Federal Government/controller is authorized on grounds of public interest, it shall bepredominantly for the supply of the market in Pakistan.
Upon request of the owner of the patent, or of the government agency or of the third person
authorized to exploit the patented invention, the Fe deral Government/controller may, after hearing theIP/C/W/329/Add.1
Page 11
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.
Upon the request of the owner of the patent , the Federal Government/controller shall
terminate an authorization if it is satisfied, after hearin g 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  it has failed to comply with the terms of the
decision.
The Federal Government shall not terminate an auth orization if it is satisfied that the need for
adequate protection of the legitimate interests of the Government agency or third person designated
by it justifies the maintenance of the decision.
An appeal lies to the High Court from a decision of the Federal Government or of the
Controller Patents.
36. Please explain how your legislation explicitly ensures that a proposed user has made efforts
to obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasonable period of time.  In this context, how do you
define "reasonable period of time".  Please also exp lain how your legislation ensures that the use of a
compulsory licence shall be authorized predominantly for the supply to the domestic market of the
Member authorizing such use.
The Patents Ordinance, 2000 contains an explicit provision requiring the production of
evidence that the owner of the patent had received  a request for contractual licence from the person
seeking the authorization but that person was unable to obtain such a licence at reasonable
commercial terms and within a reasonable period of time.
The term "reasonable period of time" shall be clarified by court decisions as case law
develops in the area.
An explicit provision of the Patents Ordinance, 2000 (Section 58(8)) requires that the
exploitation of a patented invention under a compulsory licence shall be predominantly for the supply
of market in Pakistan.
37. Please state if your legislation grants additional protection for innovations after the 20 years
of patent protection has lapsed.
No, the Patents Ordinance does not provide for additional period of protection beyond twenty
years.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Pakistan is a common law country and thereby court decisions have the status of law. In the
past, courts have placed the onus of proof on the defendant in cases involving infringement of a
process patent. Citations can be provided on request.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
A layout design of an integrated circuit may be protected under the Registered Designs of
Integrated Circuits Ordinance, 2000 if the layout design is original and has been a subject of anIP/C/W/329/Add.1
Page 12
application for registration.  A layout design is considered to be original if it is the result of the
creator's own intellectual effort and is not commonplace among creators and manufacturers of layout
designs of integrated circuits at the time of its creation.  The right to protection under the Ordinance
belongs to the creator.
Under Section 6 of the Ordinance, the protection of layout design of an integrated circuits
shall commence on the date of first commercial exploitation anywhere in the world and shall
terminate at the end of the tenth calendar year from the date of such commercial exploitation.
For a protected layout design of an integrated circuit, the following acts shall be unlawful if
performed without the authorization of the right holder:
(i) reproducing, whether by incorporation in an integrated circuit or otherwise,
the registered layout design in its enti rety or any part thereof, except the act
of reproducing any part that does not comply with the requirement of
originality;  and
(ii) importing, selling or otherwise distributing for commercial, purpose the
registered layout design, or an integrated circuit in which the registered
layout design is incorporated or an article incorporating such an integrated
circuit in so far as it continues to contain an unlawfully reproduced layout
design.
40. Please explain what protection your national legislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies including
integrated circuits or other articles in which a topography is incorporated in accordance with
Article 36 of the TRIPS Agreement.
Importing, selling or otherwise distributing for commercial purpose a registered layout design
or an integrated circuit in which the registered layout design is incorporated or an article incorporatingsuch an integrated circuit, without the authoriza tion of the right holder is an unlawful act. The
performance of such an unlawful act is considered to be infringement against which court proceedings
may be initiated by the right holder or his licensee. The District Court may grant an injunction to
prevent infringement or an imminent infringement and award damages and grant any other remedy
provided for in the relevant law in force.
41. Please explain how your legislation provides for the derogation from Article 36 as specified
in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable grounds to
know when acquiring an integrated circuit or an article incorporating such an integrated circuit that
it contains an unlawful topography.
Section 5(2) of the Registered Layout designs of Integrated Circuits Ordinance, provides that
importing, selling or otherwise distributing for comm ercial purpose a registered layout design or an IC
incorporating the design or an article containing such an IC, where the person performing or ordering
the acts above did not know that it contained an unlawful topography, does not require authorization
from the right holder.  However, after he has been informed that the layout design was unlawfully
reproduced he may perform the above acts with respect to the stock on hand only or ordered before
time and would be liable to pay reasonable royalty.
42. Please state the term of protection granted by your legislation to topographies.
The protection of a registered layout design under the Registered Layout Designs of
Integrated Circuits Ordinance, 2000 commences on the first day of the commercial exploitation
anywhere in the world and lasts for ten years.IP/C/W/329/Add.1
Page 13
H. PROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
[No reply received]
44. Please explain how your legislation defines "undisclosed information".
The Trade Marks Ordinance, 2001 defines Undisclosed Information as such information that
is secret in the sense that:
- it is not, as a body or in the precise configuration and assembly of its components,
generally known among or readily accessible to persons within the circles that
normally deal with the kind of information in question;
- has commercial value because it is secret;  and- has been subject to reasonable steps under circumstances, by the person lawfully in
control of the information, to keep it secret.
45. Please explain how your legislation defines da ta submitted to governments or governmental
agencies.
[No reply received]
I. E
NFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
I. Civil Action
In any suit for infringement, in addition to provisional and border measures, the courts may
order the following remedies that may act as effective deterrents to infringements of intellectual
property:
Patents
Under the Patents Ordinance, 2000, the court, in any suit of infringement has the powers:
(i) to order to desist from infringement;
(ii) to prevent the entry into the channels of commerce of imported goods that
involve the infringement immediately after custom clearance of such goods;
(iii) to order the infringer to pay to the right holder damages adequate to
compensate for the injury he has suffered because of infringement;
(iv) to pay the right holder expenses which may include appropriate attorney's
fee;IP/C/W/329/Add.1
Page 14
(v) in appropriate cases, to order recovery of profits, damages and
pre-established damages even where the infringer did not knowingly or with
reasonable ground to know, engage in infringing;
(vi) to order that goods found to be infringing be, without compensation of any
sought, disposed off outside the channels of commerce;
(vii) to order that material and implements the predominant use of which has been
in the creating of infringing goods be, without compensation of any sought,
disposed off outside the channels of commerce in such a manner as to
minimize risk of further infringement, and in considering such orders, the
need for proportionality between seriousness of infringement and remedies
ordered as well as interests of third parties shall be taken into account;
(viii) unless this would be out of proportion to the seriousness of infringement, to
order infringer to inform the right holder of the identity of third parties
involved in production and distribution of the infringing goods and of their
channels of commerce;  and
(ix) to order a party at whose request measures were taken and who has abused
enforcement procedure, to provide to a party wrongfully enjoined orrestrained, adequate compensation for injury suffered because of such abuse;
and
(x) to order the applicant to pay the defendant expenses, which may include
appropriate attorney's fee.
Trademarks
Under the Trade Marks Ordinance, 2001, all such relief by way of damages, injunctions,
accounts or otherwise is available to the proprietor of a trademark, as is available in respect of the
infringement of any other property right.  Under Section 47 of the Trade Marks Ordinance, 2001 the
court may also order the erasure, removal or obliteration of the offending trademark from theinfringing goods, and the destruction of the infringing goods.  The court may also pass an order that
the infringing goods, material or articles may be delivered up to the proprietor of the trademark.
Copyright
Under Section 6 of the Copyright Ordinance, 1962, in any suit of infringement of copyright,
the owner of copyright is entitled to all such relief by way of injunction, damages, accounts andotherwise, as are or may be conferred by law for in fringement of a right.  The owner of the copyright
may initiate proceedings for the recovery or conversion of all infringing copies of a work in which
copyright subsists and all plates used or intended to be used for the production of such infringing
copies.
Industrial designs
In a suit for infringement of a registered industrial design, the court may order recovery of
damages or an injunction against the continuation of the infringement.IP/C/W/329/Add.1
Page 15
Integrated Circuits
In a suit for infringement of a registered layout design of an integrated circuit, the court may
grant an injunction to prevent infringement or an  imminent infringement and may award damages and
grant any other remedy provided for in the relevant law in force.
II. Criminal Action
Under the Copyright Ordinance, 1962 and Pakistan Penal Code, criminal penalties are
available against copyright piracy and trademark counterfeiting:
Copyright
Under the Copyrights Ordinance,- Any person who knowingly infringes or abets the infringement of:
(a) the copyright in a work, .
(b) the rental rights in cinematographic works and computer programmes:
(c) the rights of performers or producers of sound recording;  or
(d) any other right conferred by the Ordinance,
shall be punishable with imprisonment which may extend to three years, or with fine
which may extend to on hundred thousand rupees, or with both.
- Any person who knowingly publishes, or causes to be published, a collection or
compendium of works which have been adapted, translated or modified in any
manner without the authority of the owner of the copyright in the original works, orwho fraudulently employs a title which tends to mislead the public or create
confusion with another work published earlier, shall be punishable with imprisonment
which may extend to three years, or with fine which may extend to one hundred
thousand rupees, or with both.
- Any person who unauthorizedly makes or distributes counterfeit of sound recording
and cinematographic work for the purpose of business, profit or gain shall bepunishable with imprisonment which may extend to three years, or with fine which
may extend to one hundred thousand rupees, or with both.
- Any person who for the purpose of business, profit or gain exploits or appropriates
any sound recording or audio-visual work intended for private use, shall bepunishable with imprisonment which may extend to three years, or with fine which
may extend to one hundred thousand Rupees, or with both.
- Any person who, without authorization of the copyright owner or his licensee rents
out the original or copies of the cinematographic works or computer programmes,shall be punishable with imprisonment which may extend to three years or with fine
which may extend to one hundred thousand rupees or with both.
- Any person who produces, or causes to be produced copies or reproductions in excess
of the number authorized by the copyright owner or his successor-in-title, shall beIP/C/W/329/Add.1
Page 16
punishable with imprisonment which may extend to three years, or with fine which
may extend to one hundred thousand rupees, or with both.
- Whosoever:
(1) inserts or affixes the name of any person in or on a work of which that person
is not the author, or in or on a reproduction of such a work, in such a way as
to imply that such person is the author of the work;  or
(2) publishes, or sells or lets for hire, or by way of trade offers, exposes for sale
or hire, or by way of trade exhibits in public a work in or on which the name
of a person has been inserted or affixed in such a way as to imply that suchperson is the author of the work, or the publisher of the work, who to his
knowledge is not the author or the publisher, as the case may be, of such
work;  or
(3) does any of the acts mentioned in clause (2) in relation to or distributes,
reproductions of a work, being reproductions in or on which any person's
name has been inserted or affixed in such a way as to imply that such person
is the author of the work, who to his k nowledge is not the author of the work,
who to his knowledge is not the author of such work, or performs in public,
or broadcasts the work as being the wo rk of a particular author, who to his
knowledge is not the author of such work;
shall be punishable with imprisonment which may extend to two years, or with fine
which may extend to one hundred thousand rupees, or with both.
- Any person who publishes a record or a video film in contravention of the provisions
of section 57A, shall be punishable with imprisonment which may extend to three
years, or with fine which may extend to one hundred thousand rupees, or with both.
The Court before which any offence under the Copyright Ordinance is tried may, whether the
alleged offender is convicted or not, order that all copies of the work or plates or recording equipment
in the possession of the alleged offender, which appear to it to be infringing copies, or plates, orrecording equipment used or intended to be used for the purpose of making infringing copies, be
destroyed or delivered to the owner of the copyright or otherwise dealt with as the Court may think fit.
Trademarks
Criminal penalties are available under the following provisions of the Pakistan Penal Code:
Section 482:   Whoever uses any false trade mark or any false property mark shall, unless he
proves that he acted without intent to defraud, be punished with imprisonment of either
description for a term which may extend to one year, or with fine, or with both.
Section 483.   Whoever counterfeits any trade mark or property mark used by any other person
shall be punished with imprisonment of either description for a term which may extend to two
years, or with fine, or with both.
Section 484.   Whoever counterfeits any property mark used by public servant, or any mark
used by a public servant to denote that any property has been manufactured by a particular
person or at particular time or place, or that the property is of a particular quality or has
passed through a particular office, or that it is entitled to any exemption or uses as genuineIP/C/W/329/Add.1
Page 17
any such mark knowing the same to be counte rfeit, shall be punished with imprisonment of
either description for a term which may extend to three years, and shall also be liable to fine.
Section 485.  Whoever makes or has in his possession any die, plate or other instrument for
the propose of counterfeiting a trade mark or property mark, or has in his possession a trade
mark or property mark for the purpose of denoting that any goods are the manufacture or
merchandise of a person whose manufacture or merchandise they are not, or that they belong
to a person to whom they do not belong, shall be punished with imprisonment of either
description for a term which may extend to three years, or with fine, or with both.
Section 486.   Selling goods marked with a counterfeit trade mark or property mark.  Whoever
sells, or exposes, or has in possession for sale or any purpose of trade or manufacture, any
goods or thing with a counterfeit trade mark or property mark affixed to or impressed upon
the same or to or upon any case, package or other receptacle in which such goods are
contained, shall unless he proves:
(a) that, having taken all reasonable precautions against committing an offence against
this section, he had at the time of the commission of the alleged offence no reason to
suspect the genuineness of the mark, and,
(b) that on demand made by or on behalf of the prosecutor, he gave all the information in
his power with respect to the persons from whom he obtained such goods or things,
or
(c) that otherwise he had acted innocently.
be punished with imprisonment of either description for a term which may extend to one year,
or with fine or with both.
Section 487.   Making a false mark upon any receptacle containing goods. Whoever makes an
false mark upon any case, package or other receptacle containing goods, in a manner
reasonable calculated to cause any public servant or any other person to believe that such
receptacle contains goods which it does not contai n or that it does contain goods which it does
contain, or that the goods contained in such receptacle are of a nature or quality different from
the real nature or quality thereof, shall unless he proves that he acted without intent to
defraud, be punished with imprisonment of either description for a term which may extend to
three years, or with fine, or with both.
Section 488.   Punishment for making use of any such false mark. Whoever makes use of any
such false mark in any manner prohibited by the last foregoing section shall, unless he proves
that he acted without intent to defraud, be punished as if he had committed an offence against
that section.
47. Please explain whether or not your legislation provides for a mechanism to appeal to judicial
bodies of final administrative decisions.
Yes, under the following provisions of law, an appeal against administrative decisions can be
lodged with judicial authorities:
Patents Ordinance, 2000 Section 69(3)
Trade Marks Ordinance, 2001 Section 114
Registered Layout Designs of Integrated
Circuits Ordinance, 2000Section 19IP/C/W/329/Add.1
Page 18
Registered Designs Ordinance, 2000 Section 5(6)
Copyright Ordinance, 1962 Section 76
48. Please describe how your legislation authorizes judges to order production of evidence by the
opposing party.  Please give precise information on what measures are taken to ensure the protection
of confidential information.
Under Section 30 of the Civil Procedure Code, a court has the power, either on its own
motion or on the application of a party, to make any such orders that may be necessary or reasonablefor the production of documents or objects producible as evidence.  Under Section 61 of the Patents
Ordinance, 2000, the court has the authority to order prompt and effective provisional measures to
preserve evidence regarding an alleged infringement.
The Court has the inherent powers (under Section 151 of the Code of Civil Procedure) to
make such orders as may be necessary for the ends of justice and to prevent abuse of the process of
court including an order to protect confidential information.
49. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
Under Section 61 of the Patents Ordinance, 2000, Section 46(2) of the Trade Marks
Ordinance, 2001, Section 15 of the Registered Layout  Designs of Integrated Circuits Ordinance, 2000,
Section 8 of the Registered Designs Ordinance,  2000 and Section 60 of the Copyright Ordinance,
1962, an injunction may be passed ordering a defendant to desist from infringement in the respective
field of intellectual property.
50. Please quote what provisions of your legislation authorize judges to order the payment to the
right holder of adequate damages to compensate the injury he suffered.
Under Section 61 of the Patents Ordinance, 2000, Section 46 of the Trade Marks Ordinance
2001, Section 15 of the Registered Layout Design of  Integrated Circuits Ordinance, 2000, Section 8
of the Registered Designs Ordinance, 2000 and Section 60 of the Copyright Ordinance, 1962, the
court may order the infringer to pay adequate damage s to the right holder to compensate for the injury
that he has suffered because of the infringement.
51. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
Under Section 61 of the Patents Ordinance, 2000, Section 46 of the Trade Marks Ordinance
2001, Section 60(3) of the Copyright Ordinance, 1962, and Section 15 of the Registered Layout
Designs of Integrated Circuits Ordinance, 2000, j udges can order the payment of the right holder's
expenses by the infringer.
Also costs can be ordered under Court of Civil Procedure.
52. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.
Under Section 61 of the Patents Ordinance, 2000 the courts have the authority to prevent the
entry into the channels of commerce of imported g oods that involve infringement immediately after
the custom clearance of such goods and to order that the infringing goods be disposed of outside the
channels of commerce without compensation of any sort.IP/C/W/329/Add.1
Page 19
Under Section 48 of the Trade Marks Ordinance, 2001, the proprietor of a registered
trademark may apply to the court for the delivery up to him or to any other person as the court may
direct, of any infringing goods or material.  By passing an order pursuant to such an application, the
court may place the infringing goods or material outside the channels of commerce.  Under Section 51
of the Ordinance, an order may be sought for the destruction or forfeiture of such goods.  Infringinggoods seized at the border may be forfeited and are to be disposed of by the Customs Authorities.
Under Section 63 of the Copyright Ordinance, 1962, all infringing goods are deemed to be the
property of the right holder who may take proceedings for the recovery of possession thereof or for
their conversion.  An officer of the Customs may also detain a consignment intended to be imported
or exported out of Pakistan which is suspected to contain infringing copies (Section 65 B of the
Copyright Ordinance, 1962).  The consignment may be confiscated and disposed of by the CustomAuthorities outside the channels of commerce.
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
Courts exercising the powers of a civil cour t have the authority under Section 35A of the
Code of Civil Procedure to award compensatory costs in the case of false or vexatious claims, if such
an objection is brought forward by a party.
Where in any suit a temporary injunction, an arrest or attachment has been ordered under
Section 94 of the Code of Civil Procedure and it appears to the court that such order was oninsufficient grounds or in case the suit fails there was no reasonable or probable ground for instituting
the same, the court may upon application by the defendant award compensation to the defendant for
the expense or injury caused to him.
Under the Patents Ordinance, the court has the authority to order the applicant to provide a
security or equivalent assurance to protect the defendant and to prevent abuse.
Under the Copyright Ordinance, where any interi m orders are revoked or cease to have any
effect due to any act or omission of the applicant,  the court may award costs to the defendant for any
injury caused.
54. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
Under the Code of Civil Procedure, the court has powers to order temporary injunctions, and
interlocutory orders.  In granting a temporary injunction, there has to be firstly, a strong prima facie
case, secondly, the accrual of irreparable loss or in jury and lastly, the balance of inconvenience in the
favour of the petitioner.  An interlocutory order may be passed for the detention, preservation,
inspection etc. of the subject matter of the suit.
Under Section 61 of the Patents Ordinance, and Section 60A of the Copyright Ordinance, the
Court has the powers to order prompt and effective provisional measures to prevent an infringement
and to preserve relevant evidence.
Where delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable
risk of evidence being destroyed, or where it appears that the object of granting the injunction will be
defeated by the delay, the court has the power to order such measures inaudita altera parte.
55. Please identify the competent authorities in your jurisdiction who receive requests from right
holders for an application to suspend the release of counterfeit goods by the customs authorities.IP/C/W/329/Add.1
Page 20
The Registrar of Copyright and the Customs authorities are the competent authorities to take
cognizance, and action on a complaint at the instance of an aggrieved copyright owner.
Under the Trade Marks Ordinance, 2001 (Section 53), a notice may be made to the Collector
of Customs for the suspension of the release of counterfeit goods.  This is also the case with the PatentLaw.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
No, the suspension of exportation of counterfeit goods is not provided in the Trade Marks
Ordinance, 2001and the Draft Customs Rules on enforcement of Intellectual Property Rights.
57. Please indicate whether or not your legislation provides for a de minimis imports exception.
[No reply received]
58. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
Please refer to the response to question 46 above.
JAPAN
A. C
OPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbou ring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
[No reply received]
B. TRADEMARKS
2. Regarding "well-known trademark", please explain how legislation of your country
implements Articles 16.2 and 16.3 of the TRIPS Ag reement, to which Article 6bis of the Paris
Convention shall apply, mutatis mutandis.  Please cite the relevant provisions of your country's law.
The Trade Marks Ordinance, 2001 protects well-known service marks in a manner similar to
the protection of well-known trademarks.  The law provides for the refusal of registration of a service
mark that is identical or similar to an earlier serv ice mark and which is to be registered for goods or
services which are not similar to those for which the earlier service mark is registered (Section 17 of
the Trade Marks Ordinance).  The registration of a service mark may also be opposed on the grounds
that it is substantially identical with or deceptively similar to a well-known service mark. (Section 29
of the Trade Marks Ordinance, 2001).  Under Section 40(4) of the Trade Marks Ordinance, 2001 the
use of a well-known service mark, where the use of the service mark, being without due cause, takesunfair advantage of, or is detrimental to the distinctive character or the repute of the service mark, is
considered to be infringement and such use can be challenged in a court of law.
C. P
ROTECTION OF UNDISCLOSED INFORMATION
3. Please explain how legislation of your country provides for the protection of the "Undisclosed
Information" as required by Articles 39.1 and 39.2 of  the TRIPS Agreement.  Please explain in detail
the relevant provisions of your country's law.IP/C/W/329/Add.1
Page 21
Under Section 67 of the Trade Marks Ordinance, 2001, the disclosure, acquisition or use by
others of information (fulfilling the criteria contained in Article 39.2 of the TRIPS Agreement)
without the consent of the person lawfully in control of that information, is an act of unfair
competition.  Any act of unfair competition is unlawful under the Ordinance and can be tried before a
District Court.
4. If your legislation ensures that undisclosed test or other data submitted by an applicant to the
responsible State agency in the procedure fo r market authorisation of a pharmaceutical or an
agricultural chemical product is protected against disclosure and against unfair commercial use by a
competitor, for example by prohibiting a second applicant for a similar product from relying on
original data of the first applicant, when applying subsequently for market authorisation for a similar
product, please explain it in detail.  Does legislation of your country provide for exceptions to this?Does legislation of your country set a specific term of protection by the responsible State agency for
undisclosed test or other data of the first applicant?  If yes, please explain such specific term in detail,
citing the relevant provisions of law.
[No reply received]
D. E
NFORCEMENT
5. Please indicate the remedies which the judicial authorities order regarding each intellectual
property rights provided in the TRIPS Agreement, including injunctions, damages, expenses,
destruction or disposal of infringing goods, materials or implements for their production.  Please
explain the criteria and the way of calculation to decide the amount of the damages which judicial
authorities order to the infringer to pay the right holder.
[No reply received]
6. Please explain the kind and amounts of criminal penalties including imprisonments and fines
regarding intellectual Property rights, citing the relevant provisions of your country's law. Inparticular, are the crimes persecuted only when the injured part has made a formal complaint?
Please explain whether penalties are consistent with Article 61 of the TRIPS Agreement which
requires provisions for a sufficient deterrent, consistently with the level of penalties applied for crimes
of a corresponding gravity.
Pakistan's copyright and trademark laws provide for criminal penalties in many cases, as
elaborated in the response to question 21 of the Checklist of Issues on Enforcement (document
IP/N/6/PAK/1).
Criminal Offences in Pakistan can either be cognizable or non-cognizable. In respect of
cognizable offences the police are authorized to initiate criminal proceedings on its own on
information of the offence being committed.  In the case of non-cognizable offences, the police
initiate criminal proceedings at the order of a ma gistrate to whom a complaint has been made under
Section 190 of the Code of Criminal Procedure.  All offences under the Copyright Ordinance are
cognizable.
The level of penalties in the law, which may consist of fines as well as imprisonment, provide
a sufficient deterrent consistently with the leve l of penalties applied for crimes of corresponding
gravity.IP/C/W/329/Add.1
Page 22
7. Please indicate titles of laws and regulations and their provisions in which the suspension of
the release of counterfeit trademark or pirated copyright goods is prescribed, as stipulated in
Article 51 of the TRIPS Agreement.
[No reply received]
SWITZERLAND
A. TRADEMARKS
1. Please explain how your legislation implements Article 62.2 of the TRIPS Agreement.  Please
indicate how long it takes on average to register a trademark.  Please cite the relevant provisions of
your Law.
The procedure for registration of trademarks under the new Trade Marks Ordinance, 2001 is
in conformity with Article 62.2 of the TRIPS Agreement.  Registration of a trademark is completed
within a reasonable period of time, subject to compliance with reasonable procedures and formalities.
Section 33 of the Trade Marks Ordinance, 2001 provides that "a trade mark shall be registered as of
the date of filing of the application for registration and that date shall be deemed to be, for thepurposes of this Ordinance, the date of registration."  Thus, the rights are granted from the date of
application and not from the date of registration of the trademark and thus there is no curtailment of
the period of protection.
2. Please explain in detail how Pakistan protects service marks and cite the relevant provisions
of law.
Under Section 2(xlvii) of the Trade Marks Ordinance, 2001, services are included in the
definition of the term "trade mark" which implies that service marks are protected as trademarks.  The
definition of the term "service" under Section 2(xliii) states that service means "service of any
description which is made available to users or potential users and includes the provision for servicesin connection with business of any industrial or commercial nature, and without limitation, includes
banking, retailing, communication, including telecommunication, education, law, financing,
insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of goods
including electrical or other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news, or information and advertising".  Thus, service marks are fully covered
under the scope of protection offered by the Trade Marks Ordinance, 2001.
B. I
NDUSTRIAL DESIGNS
3. Please describe the procedure that must be followed to obtain protection for industrial
designs in your country.  Please cite the relevant provisions of your law
Section 5 of the Registered Designs Ordinance, 2000 lays down the procedure for registration
of an industrial design. An application for the registration of an industrial design should be in theprescribed format and should be filed at the Patent Office in the prescribed manner. An industrial
design is protectable under the law on disclosure of the apparent features of the article concerned, its
nature of material, excluding the process or method of its production and its working. Under the
Registered Designs Ordinance, 2000, the term of protection for a registered design is ten years which
is further extendable by periods of ten years twice.IP/C/W/329/Add.1
Page 23
C. PATENTS
4. Does your legislation grant patent protection for inventions relating to products and
processes in all fields of technology?  Are there any exceptions?  If so, please explain what these
exceptions are and how they comply with Article 27 the TRIPS Agreement.
Patent applications are entertained for inventions in all fields of technology, relating to
products or processes except in the area of pharmaceutical and agricultural chemical products.
Patents for the protection of pharmaceutical and agricultural chemical products will be granted with
effect from 1 January 2005 under Section 1(3) of Patents Ordinance 2000.
Exclusions to patentability are contained in Section 4 of the Patents Ordinance which states
that a patent shall not be granted:
(a) for an invention the publication or exploitation of which would be contrary to the
public order or morality, provided that the exploitation shall not be considered to be
so contrary merely because it is prohibited by any law for the time being in for
(b) for animals or plants other than micro-organisms and essentially biological process
for the production of animals or plants, but this prohibition shall not apply tomicro-biological processes or pr oducts of such processes;  and
(c) for diagnostic therapeutic and surgical methods for the treatment of humans or
animals.
5. Please describe in detail any provisions in your law permitting the use of a patent without
authorization of the right holder.  Please cite the relevant provisions of the law and describe in detailthe conditions under which such use may occur.
Under Sections 58 and 59 of the Patents Ordinance, 2000, a compulsory licence may be
issued in respect of a patent without authorization of the patent holder.  The grounds for such a licence
may be based on:
(i) public interest , in particular, national security, nutrition, health or if the development
of other vital sectors of the national economy so requires;
(ii) anti-competitive practices;  or(iii) non-working of a patent. (Importation is considered as working a patent).
The procedure/conditions to be followed are contained in subsection 2-10 of Section 58:
Any application for grant of a compulsory licence shall be considered on individual merits.Before taking any decision, the owner of the patent and any interested person shall be given
an opportunity of being heard if he wishes to be heard.
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
therefore, taking into account the economic value of the authorization or the need to correctanti-competitive practices.
A request for such 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 licence, butIP/C/W/329/Add.1
Page 24
that person has been unable to obtain such a licence on reasonable commercial terms and conditions
and within a reasonable time.  This condition shall not apply in cases of :
(i) national emergency or other circumstantial urgency provided that in such
cases the owner of the patent shall be informed of the decision as soon asreasonably practicable;
(ii) public non-commercial use;  and
(iii) anti-competitive practices determined as such by a judicial or administrative
body in accordance with the provisions of the Patents Ordinance, 2000.
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 pate nted invention, by the owner of the patent or his
licensee, is anti-competitive and if the Federal Gove rnment/controller is satisfied that the issuance of
the non-voluntary licence would remedy such practices.
The authorization shall exclude:
(a) the conclusion of licence contracts by the owner of the patent;
(b) the continued exercise, by the owner of the patent, of his rights;  or
(c) the issuance of a non-voluntary licence.
Where a third person has been designated by the Federal Government/controller, the
authorization may only be transferred with the enterprise or business of the person or with the part ofthe enterprise or business within which the patented invention is being exploited.
Where the exploitation of the invention by the government agency or third person designated
by the Federal Government/controller is authorized on grounds of public interest, it shall be
predominantly for the supply of the market in Pakistan.
Upon request of the owner of the patent, or of the government agency or of the third person
authorized to exploit the patented invention, the Fe deral Government/controller 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.
Upon the request of the owner of the patent , the Federal Government/controller shall
terminate an authorization if it is satisfied, after hearin g 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  it has failed to comply with the terms of the
decision.
The Federal Government shall not terminate an auth orization if it is satisfied that the need for
adequate protection of the legitimate interests of the Government agency or third person designated
by it justifies the maintenance of the decision.
An appeal lies to the High Court from a decision of the Federal Government or of the
Controller Patents.IP/C/W/329/Add.1
Page 25
6. Does your legislation, in accordance with Art. 27.1 in combination with Article 31 of the
TRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing if a product is being imported)
Yes, under Section 59(1) of the Patents Ordinance, 2000, importation is considered as
working a patent.
7. Does your legislation make the granting of a compulsory licence subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of law.
Yes, the grant of a compulsory licence under the Patents Ordinance, 2000 is subject to all the
conditions enumerated in Article 31 of the TRIPS Agreement, as compared below:
Article 31(a) Section 58(4) read with Section 58(2), Section 59(10)
Article 31(b) Section 58(4), Section59(10)
Article 31(c) Section 58(3), Section58(5), Section 59(10)
Article 31(d) Section 59(6), Section 59(10)
Article 31(e) Section 58(7), Section 59(10)
Article 31(f) Section 58(8), Section 59(10)
Article 31(g) Section 58(10), Section 59(10)
Article 31(h) Section 58(3), Section 59(10)
Article 31(i) Section 58(12 ) and Section 69
Article 31(j) Section 58(12), Section 69
Article 31(k) Section 58(3), Section58(11), Section 59(10)
Article 31(1) Section 59(5), Section 59(6), Section 59(8)
8. Please indicate whether your legislation provides for situations where the government is
allowed to revoke a patent.  If yes, please indicate what these situations are and how they comply with
the TRIPS Agreement.
Under Sections 46, 47 and 48 of the Patents Ordi nance, 2000, a patent may be revoked by the
High Court, the Controller or the Federal Government respectively.
Under Section 46, a patent may be revoked by the High Court on the petition of any interested
person, the Federal Government or in a counter claim in a suit for infringement, on one or more of the
grounds on which a patent can be refused.
Under Section 47, the Controller Patents may revoke a patent on application by an interested
person, on one or more of the grounds on which the patent could have been opposed.
Under Section 48 of the Patents Ordinance, 2000, the federal Government may revoke a
patent (after giving the patentee an opportunity of being heard) if the patent is being exercised in a
manner that is mischievous to the state or generally prejudicial to the public.
9. What term of protection does your legislation provide for patents, in particular for those filed
before 1995?
[No reply received]
10. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.IP/C/W/329/Add.1
Page 26
Pakistan is common law country and thereby court decisions have the status of law. In the
past, courts have placed the onus of proof on the defendant in cases involving infringement of a
process patent.  Citations can be provided on request.
D. PROTECTION OF UNDISCLOSED INFORMATION
11. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
a pharmaceutical or of an agricultural chemical product is protected against disclosure and against
unfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the first applicant, when applying subsequently for market
authorisation for a similar product.  Does your legislation provide for exceptions to this?  If yes,
under what conditions would such exceptions apply?  Does your legislation set a specific term ofprotection for undisclosed test or other data of the first applicant?
Pharmaceuticals and agricultural chemicals (pesticides) are required to be registered with the
Ministry of Health prior to their sale within the country. The protection of undisclosed data or
information submitted to obtain registration is provided through a number of laws:
- Section 18 of the Civil Servants (Conduct) Rules, 1964 requires that no government
servant shall communicate directly or indirect ly any official document or information
to a government servant unauthorized to receive it, or to a non-official person, or to
the press.
- Wilful communication of information (which a government servant has obtained or
has access to by virtue of his holding an office) to a person unauthorized to receive it,
is an offence under Section 5 of the Official Secrets Act 1923. Such an offence is
punishable with imprisonment, which may extend up to two years or with fine or
both.
- Rule 55 of the Federal Government Rules of Business, 1973 also prohibit the
communication of information obtained directly  or indirectly form official documents
or relating to official matter to non-officials, the press or government servants not
authorized to receive it. Any subsequent applicant would, therefore, not be given
access to data or information submitted by an earlier applicant.
The law does not provide for any specific term of protection.
E. E
NFORCEMENT
12. Please indicate remedies provided by your legislation which constitute effective deterrents to
infringements of intellectual property rights.
In any suit for infringement, in addition to provisional and border measures, the courts may
order the following remedies that may act as effective deterrents to infringements of intellectual
property:
Patents
Under the Patents Ordinance, 2000, section 61, the court, in any suit of infringement the
Court has the powers:
(i) to order to desist from infringement;IP/C/W/329/Add.1
Page 27
(ii) to prevent the entry into the channels of commerce of imported goods that
involve the infringement immediately after custom clearance of goods;
(iii) to order the infringer to pay to the right holder damages adequate to
compensate for the injury he has suffered because of infringement;
(iv) to pay the right holder expenses which may include appropriate attorney's
fee;
(v) in appropriate cases, to order recovery of profits, damages and
pre-established damages everywhere the infringer did not knowingly or with
reasonable ground to know, engage in infringing;
(vi) to order that goods found to be infringing be, without compensation of any
sought, disposed of outside the channels of commerce;
(vii) to order that material and implements the predominant use of which has been
in the creating of infringing goods be, without compensation of any sought,
disposed off outside the channels of commerce in such a manner as to
minimize risk of further infringement, and in considering such orders, the
need for proportionality between seriousness of infringement and remedies
ordered as well as interests of third parties shall be taken into account;
(viii) unless this would be out of proportion to the seriousness of infringement, to
order infringer to inform the right holder of the identity of third parties
involved in production and distribution of the infringing goods and of their
channels of commerce;  and
(ix) to order a party at whose request measures were taken and who has abused
enforcement procedure, to provide to a party wrongfully enjoined or
restrained, adequate compensation for injury suffered because of such abuse;
and
(x) to order the applicant to pay the defendant expenses, which may include
appropriate attorney's fee.
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 of goods, including imported goods after custom
clearance
(ii) to preserve relevant evidence in regard to the alleged infringement.
Trademarks
Under the Trade Marks Ordinance, 2001, all such relief by way of damages, injunctions,
accounts or otherwise is available to the proprietor of a trademark, as is available in respect of the
infringement of any other property right.  Under Section 47 of the Trade Marks Ordinance, 2001 thecourt may also order the erasure, removal or obliteration of the offending trademark from the
infringing goods, and the destruction of the infringing goods.  The court may also pass an order that
the infringing goods, material or articles may be delivered up to the proprietor of the trademark.IP/C/W/329/Add.1
Page 28
Copyright
Under Section 6 of the Copyright Ordinance, 1962, in any suit of infringement of copyright,
the owner of copyright is entitled to all such relief by way of injunction, damages, accounts andotherwise, as are or may be conferred by law for in fringement of a right.  The owner of the copyright
may initiate proceedings for the recovery or conversion of all infringing copies of a work in which
copyright subsists and all plates used or intended to be used for the production of such infringing
copies.
Industrial designs
In a suit for infringement of a registered industrial design, under Section 8 the court may
order recovery of damages and or an injunction against the continuation of the infringement.
Integrated Circuits
In a suit for infringement of a registered layout design of an integrated circuit, under
Section 15 the court may grant an injunction to preven t infringement or an imminent infringement and
may award damages and grant any other remedy provided for in the relevant law in force.
13. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.
Pakistan has recently promulgated new legislations in the field of intellectual property rights
and is in the process of strengthening its Intellectual Property Rights regime.  With the help of WIPO,
Pakistan's intellectual property field offices i.e. the Trade Marks Registry, the Central Copyrights
Office and the Patents Office are being modernized in terms of facilities and working procedures.
Training sessions have been held on enforcement of intellectual property rights in major cities, whichwere aimed at government officers including customs authorities, lawyers and the general public.
Efforts are also being made to coordinate various areas of intellectual property rights, which are
expected to improve the enforcement situation of Intellectual Property laws in Pakistan.
UNITED STATES
A. G
ENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which national treatment and most
favoured nation treatment are provided to nationals of other WTO Members.
Under the Patents Ordinance, 2000, Trade Marks Ordinance, 2001, Registered Designs
Ordinance, 2000, and Registered Layout Designs of  Integrated Circuits Ordinance, 2000, national
treatment and Most Favoured Nation Treatment is extended in all cases, as there is no discrimination
as to the nationality of the right holders.  The fe es charged are also the same in all cases.  Thus no
difference has been maintained between local and foreign applicant.
A law to protect plant varieties is currently being drafted.  Under the draft Ordinance, an
applicant has been defined as the natural or legal person who has filed an application for the grant of
plant breeder's rights.  Thus no difference has been  maintained between local and foreign applicants
Under the Copyright Ordinance, 1962, Sections 10(2), and 54 read with the International
Copyright Order (issued by the Federal Government) accord national treatment to foreign "works" i.e.
original literary, dramatic, musical and artistic works, cinematographic works or records.  TheIP/C/W/329/Add.1
Page 29
relevant provisions also do not discriminate between countries members of the WTO. Section 10(2)
states that copyright does not subsist in any such work other than a work to which Section 54 applies,
unless:
(i) in the case of a published work, the work is first published in Pakistan, or
where the work is first published outside Pakistan, the author is at the date of
such publication, or in a case where the author was dead at that date, was at
the time of his death, a citizen of Pakistan or domiciled in Pakistan;
(ii) in the case of an unpublished work other than an architectural work of art, the
author is at the date of the making of the work a citizen of Pakistan or
domiciled in Pakistan;  and
(iii) in the case of an architectural work or art, the work is located in Pakistan.
Under Section 54, national treatment is extended to  foreign works.  Section 54 states that the
Federal Government may by an order published in the official gazette direct that all or any of the
provisions of this Ordinance shall apply:
(a) to works first published in a foreign country to which the order relates in like manner
as if they were first published within Pakistan;
(b) to unpublished works, or any class thereof, the authors whereof were at the time of
making of the work, subjects or citizens of a foreign country to which the order
relates, in like manner as if the authors were citizens of Pakistan;
(c) in respect of domicile in a foreign country to which the order relates in like manner as
if such domicile were in Pakistan;
(d) to any work of which the author was at the date of the first publication thereof, or, in
a case where the author was dead at that date, was at the time of his death, a subject
or citizen of a foreign country to which the order relates in like manner as if the
author was a citizen of Pakistan at the date or time.
The International Copyright Order, 1968 issued under Section 54 lists countries comprising
members of the World Trade Organization, the Berne Union and the Universal Copyright Convention,
whereby foreign works of these countries are treated in a like manner as if they were Pakistani works.
Chapter IV of the Copyright Ordinance 1962 relates to rights of broadcasting organizations,
performers and producers of phonograms and confers rights irrespective of nationality obviating the
requirement for extension of national treatment through an explicit provision such as in the case of"works".
A law to provide protection to new plant varieties is in draft stages. The final draft provides
for national treatment and most favoured nation treatment to nationals of member countries of the
WTO.
B. C
OPYRIGHT AND RELATED RIGHTS
2. Please explain whether and how the copyright law of Pakistan complies with Article 9 of the
TRIPS Agreement requiring that Members comply with all Articles 1 through 21 of the Berne
Convention (1971), except Article 6bis, since Members do not have rights or obligations relating to the
latter Article under the TRIPS Agreement.IP/C/W/329/Add.1
Page 30
[No reply received]
3. Please explain how the copyright law of Paki stan protects computer programs as literary
works and compilations of data as required by Article 10 of the TRIPS Agreement.
Under Section 10 of the Copyright Ordinance, 1962, copyright subsists throughout Pakistan
in original literary works. "Literary Work" ha s been defined in Section 2 of the Ordinance as
including works on humanity, religion, social and physical sciences, tables, compilations of data or
other material in any form and computer programmes, that is to say, programmes recorded on any
disc, tape, perforated media or other information storage device, which if fed into or located in a
computer or computer-based equipment is capable of reproducing any information. However,
entitlement to copyright in compilation of data or other material shall not extend to data or other
material itself and shall be without prejudice to any copyright subsisting in data or other material, thatis to say, the copyright shall subsist to the extent of the compilation only. The law , thus protects them
as Literary Work and thus computer programmes enjoy similar protection under the law.
4. Article 11 of the TRIPS Agreement requires that rental rights for computer programs and
cinematographic works be available.  Please cite to the corresponding provision of the copyright law
of Pakistan.
Under Section 3(l)(a)(ix) of the Copyright Or dinance, 1962, the owner of the copyright has
the exclusive right to authorize the rental of computer programmes or cinematographic works, as the
case may be.  Infringement of such a right is punishable under Section 66 of the Ordinance. "Rental"
has been defined in section 2(z).
5. Please state the length and terms of protection the copyright law of Pakistan provides for a
work other than a photographic work or a work of applied art and cite to the relevant provision of
law.
In terms of Section 18 of Copyright Ordinance the length and terms of protection provided for
a work other than a photographic work, published within the life time of the author, lasts until 50
years from the beginning of the calendar year next following the year in which the author dies.
In the case of posthumous work, the term of copyright protection lasts until fifty years form
the beginning of the calendar year next following the year in which the work is first published.
6. Please describe the protection the copyright law of Pakistan  provides for performers, and the
term of the protection.
The performers are provided protection under the Pakistan Copyright Ordinance in terms of
Section 24A which gives them the right to do or to  prevent fixation of their unfixed performance and
reproduction of such fixation and broadcasting by wireless means and communication to public of
their live performance.  The protection is available for a period of 50 years computed from the end ofthe calendar year in which the fixation was made or the performance took place.
7. Article 14.2 of the TRIPS Agreement provides th at producers of phonograms are to enjoy the
right to authorize or prohibit the direct or indirect reproduction of their phonograms.  Article 14.2
requires that producers of phonograms are to have the right to authorize or prohibit the commercialrental to the public of originals or copies of their phonograms.  Please describe how the copyright
law of Pakistan implements these obligat ions and indicate the term of protection.
Section 24(2) of the Copyright Ordinance, 19 62 provides that producers of phonograms shall
have the right to do or prohibit the direct or indirect reproduction of their fixation or the rental thereof.IP/C/W/329/Add.1
Page 31
These rights subsist for period of fifty years computed form the end of the calendar year in which the
fixation was made.
C. TRADEMARKS
8. Please describe the subject matter that can comprise a trademark under the trademark law of
Pakistan.
Section 2(xlvii) of the Trade Marks Ordinance, 2001 defines a trademark to mean "any mark
capable of being represented graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings".  A mark includes, in particular, a device, brand,
heading, label, ticket, name including personal name, signature, word, letter, numerical, figurative
element, colour, sound or any combination thereof.
9. Please describe the procedure that must be followed to register a trademark in Pakistan,
citing the relevant provisions of the law, and descri be the rights that the owner of a registered mark
can exercise.
Procedure for Registration of Trademark
An application for the registration of a trademark under Section 22 of the Trade Marks
Ordinance, 2001 should be made to the Registrar trademarks in the prescribed manner.  The
application should contain the following items:
(a) a request for registration of a trademark;
(b) full name and address of the applicant;
(c) a statement of goods or services in relation to which it is sought to register the
trademark;
(d) international classification of goods or services;
(e) a representation of the trademark;  and
(f) full name, address and contact details of agent, in case the application, on behalf of
the applicant, if made by his agent.
Any prescribed fee is required to be paid at the time of the filing of the application.  A person
who has duly made a "Convention Application", and has applied to the registrar for registration of a
trademark in respect of some or all of the same goods or services, shall enjoy a right of priority for a
period of six months.
After the application is filed, it is subjected to examination under section 27 and may be
refused, through a written decision of the registrar (which shall state the grounds of the decision) if
not objectionable under section 14, 16, 17.  The order of the Registrar is appeal able before the High
Court.  After the acceptance of the application, the application as accepted is advertised in the Trade
Marks Journal.  Within two months of the date of advertisement, any person can file a notice ofopposition with the Registrar.  Grounds for opposition are enumerated in Section 29 of the Trade
Marks Ordinance, 2001.  The Registrar shall serve in the prescribed manner a copy of the notice on
the applicant, and within one month from the receipt by the applicant of such copy of the notice of
opposition, or within such further period not exceeding two months in the aggregate, as the Registrar,
on application made to him in the prescribed manner and on payment of the prescribed fee, mayallow, the applicant shall send to the Registrar in  the prescribed manner a counter-statement of theIP/C/W/329/Add.1
Page 32
grounds on which he relies for his application, and, if he does not do so he shall be deemed to have
abandoned his application . The counter-statement provided by the applicant, shall again be served on
the opponent who may send a rejoinder.  A copy of the rejoinder shall be sent to the applicant.
Relevant evidence is required to be submitted to the Registrar.  The Registrar shall give both
the applicant and the opponent an opportunity of being heard and then shall decide whether, and
subject to what conditions or limitations, if any, registration is to be permitted.
Where an application was accepted and either:(a) no notice of opposition was given within two months of the date of advertisement;  or
(b) all opposition proceedings have been withdrawn or decided in favour of the applicant,
the Registrar shall register the trademark, unless it appears to him having regard to matters coming to
his notice since he accepted the application that it was accepted in error.  The prescribed fee for
registration is required to be paid by the applicant.  A trademark is registered as of the date of filing of
the application.  The registration is again published and the applicant is issued a certificate of
registration sealed with the seal of the Trade Marks Registry.
Rights of the Owner of a Trademark
A registered trademark is personal property and the proprietor of the trademark has exclusive
rights which are infringed by the use of the trademark in Pakistan without his consent. Conditionsunder which a trademark is infringed are given in Sections 40 and 41 of the Trade Marks Ordinance,
2001.  An infringement is actionable in a court of law by the proprietor of the trademark.  The
proprietor of the trademark can also initiate proceedings for the seizure of infringing goods at the
border under Section 53 of the Trade Marks Ordinance, 2001.
10. Please provide the length and terms of protecti on that the trademark law of Pakistan provides
for a trademark.
Under Sections 34 and 35 of the Trade Marks Ordinance, 2001, a trademark is initially
registered for a term of ten years from the date of registration and thereafter can be renewed for
further terms of ten years each.
D. G
EOGRAPHICAL INDICATIONS
11. Please describe in detail how the laws of Pakistan provide for the recognition and protection
of geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications so protected.
The Trade Marks Ordinance, 2001 defines a geographical indication as in relation to goods
originating in a particular country or in a region or  locality of that country, means a mark recognized
in that country as a mark indicating that the goods a) originated in that country, region or locality; and
b) have a quality, reputation or characteristic attributable to their geographical region.  A geographical
indication cannot be registered as a trademark but can be registered as a collective mark under the
First Schedule of the Trade Marks Ordinance, 2001.  The provisions regarding infringement, border
measures etc contained in the Trade Marks Ordinance, 2001 can be invoked in the case of collectivemarks subject to the provisions of the First Schedu le.  Acts of unfair competition are also unlawful
under Section 67 of the Trade Marks Ordinance, 2001.  Such acts also include making of false or
deceptive statements in the course of trade and the use of indications, which in the course of trade are
liable to mislead the public.  A separate law is also being drafted to provide protection to geographical
indications.IP/C/W/329/Add.1
Page 33
12. Please describe in detail the manner in which the higher level of protection required for
wines and spirits under Article 23.2 of the TRIPS Ag reement is implemented, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications for such products.
[No reply received]
E. INDUSTRIAL DESIGNS
13. Please describe the procedure that must be followed to obtain protection for industrial
designs, citing to the provisions of the law of Pakistan, and describe the nature of the protection
provided.
[No reply received]
14. Please describe the procedure that must be followed to obtain protection for textile designs
and cite to the relevant provisions of law or regulation.
[No reply received]
F. PATENTS
15. Please describe in detail the way in which the patent law of Pakistan implements Article 27 of
the TRIPS Agreement, indicating any exceptions provided for, and including details regarding the
protection for micro-organisms and non-biological and microbiological processes and plant varieties.
Please cite to the relevant provisions of the law.
[No reply received]
16. Please describe in detail the rights provided to patent holders under the patent law of
Pakistan and cite to the relevant provisions of law.
Under Section 30 of the Patents Ordinance, 2000, exploitation of a patented invention in
Pakistan requires an agreement of the patent owner.  Exploitation of a patented invention means the
following acts:
(a) when patent has been granted in respect of a product:
(i) making, importing, offering for sale, selling and using the product;  or
(ii) stocking such product for the purposes of offering for sale, selling or using;
and
(b) when the patent has been granted in respect of a process:
(i) using the process;  or
(ii) doing any of the acts referred to in clause (a) in respect of a product obtained
directly by means of the process.
The owner of the patent has, therefore, the righ t to do or authorize the above acts.  The owner
of a patent, in addition to any other rights, remedies, or actions available to him, has the right to
institute court proceedings against any person who infringes the patent by performing without hisagreement any of the above acts or who performs acts which make it likely that infringement will
occur.IP/C/W/329/Add.1
Page 34
17. Please describe in detail any provisions in the laws of Pakistan permitting unauthorized use
of a patent, citing to the relevant provisions of law, and describe in detail the conditions under which
such use can occur.
Under Sections 58 and 59 of the Patents Ordinance, 2000, a compulsory licence may be
issued in respect of a patent without authorization of the patent holder.  The grounds for such a licencemay be based on:
(i) public interest, in particular, national security, nutrition, health or if the
development of other vital sectors of the national economy so requires;
(ii) anti-competitive practices;  or
(iii) non-working of a patent. (Importation is considered as working a patent).
The procedure/conditions to be followed are contained in subsection 2-10 of Section 58:
Any application for grant of a compulsory licence shall be considered on individual merits.Before taking any decision, the owner of the patent and any interested person shall be given
an opportunity of being heard if he wishes to be heard.
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 th e said owner of an adequate remuneration therefor,
taking into account the economic value of the authorization or the need to correct anti-competitive
practices.
A request for such 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 licence, but
that person has been unable to obtain such a licence on reasonable commercial terms and conditions
and within a reasonable time.  This condition shall not apply in cases of:
(i) national emergency or other circumstantial urgency provided that in such
cases the owner of the patent shall be informed of the decision as soon as
reasonably practicable;
(ii) public non-commercial use;  and
(iii) anti-competitive practices determined as such by a judicial or administrative
body in accordance with the provisions of the Patents Ordinance, 2000.
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 pate nted invention, by the owner of the patent or his
licensee, is anti-competitive and if the Federal Gove rnment/controller is satisfied that the issuance of
the non-voluntary licence would remedy such practices.
The authorization shall exclude:(a) the conclusion of licence contracts by the owner of the patent;
(b) the continued exercise, by the owner of the patent, of his rights;  or
(c) the issuance of a non-voluntary licence.IP/C/W/329/Add.1
Page 35
Where a third person has been designated by the Federal Government/controller, the
authorization may only be transferred with the enterprise or business of the person or with the part of
the enterprise or business within which the patented invention is being exploited.
Where the exploitation of the invention by the government agency or third person designated
by the Federal Government/controller is authorized on grounds of public interest, it shall be
predominantly for the supply of the market in Pakistan.
Upon request of the owner of the patent, or of the government agency or of the third person
authorized to exploit the patented invention, the Fe deral Government/controller 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.
Upon the request of the owner of the patent , the Federal Government/controller shall
terminate an authorization if it is satisfied, after hearin g 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  it has failed to comply with the terms of the
decision.
The Federal Government shall not terminate an auth orization if it is satisfied that the need for
adequate protection of the legitimate interests of the Government agency or third person designated
by it justifies the maintenance of the decision.
An appeal lies to the High Court from a decision of the Federal Government or of the
Controller Patents.
18. What term of protection does the patent law of Pakistan provide for patents?  Please describe
any provisions for extension of the term of protection and cite to the relevant provisions of the law.
Section 31 of the Patents Ordinance, 2000 prov ides that the term of protection for patented
invention shall be twenty years form the date of filing.  There is no provision for the extension of the
term.
G. LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
19. Please describe in detail the protection for layout-designs of integrated circuits provided
under the laws of Pakistan, including the term of prot ection, and cite to the relevant provisions of law.
A layout design of an integrated circuit may be protected under the Registered Layout-
Designs of Integrated Circuits Ordinance, 2000 if the layout-design is original and has been a subject
of an application for registration as provided by section 4(1).  A layout-design is considered to be
original, if it is the result of the creator's own intellectual effort and is not common place among
creators and manufacturers of layout-designs of integrated circuits at the time of its creation.  Theright to protection under the ordinance belongs to the creator.
Under Section 6 of the Ordinance, the protecti on of layout-design of an integrated circuits
shall commence on the date of first commercial exploitation anywhere in the world and shall
terminate at the end of the tenth calendar year from the date of such commercial exploitation.
For a protected layout-design of an integrated circuit, under section 5 of the following acts
shall be unlawful if performed without the authorization of the right holder:
(i) reproducing, whether by incorporation in an integrated circuit or otherwise,
the registered layout-design in its entirety or any part thereof, except the actIP/C/W/329/Add.1
Page 36
of reproducing any part that does not comply with the requirement of
originality;  and
(ii) importing, selling or otherwise distributing for commercial purpose the
registered layout-design, or an integrated circuit in which the registered
layout design is incorporated or an article incorporating such an integratedcircuit in so far as it continues to contain an unlawfully reproduced layout
design.
H. P
ROTECTION OF UNDISCLOSED INFORMATION
20. Please describe in detail how the laws of Pakistan provide for the protection of undisclosed
information as required by Article 39.2 of the TR IPS Agreement and provide citations to the relevant
provisions of law.
[No reply received]
21. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical products submitted to the government in order to obtain
marketing approval in Pakistan and cite to the relevant provisions of law.
[No reply received]
22. Are other applicants for marketing approval for their own versions of a previously approved
pharmaceutical or agricultural chemical products permitted to rely on data submitted by the earlier
applicant?  If so, how long a period of exclusivity is given the earlier applicant before such reliance
becomes possible.
I. ENFORCEMENT
23. Please describe in detail the manner in which the laws of Pakistan provide for effective action
against infringement of intellectual property rights as required by Article 41.1 of the TRIPS
Agreement.
[No reply received]
24. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order production
of evidence necessary to substantiate a party's claims where that party has been unable to obtain such
evidence from the opposing party.  Please describe how the laws or regulations of Pakistan provide
this authorization, citing to the relevant provisions of law or regulation.
[No reply received]
25. Please describe in detail all of the civil remedies that are available to right holders under the
laws of Pakistan, citing to the relevant provisions of law or regulation.
Please refer to part A of the response to question 23.
26. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of Pakistan, citing to the relevant provisions of law and regulation, and indicate any
condition under which a right holder may avail itself of those procedures and remedies.
Under the Code of Civil Procedure, 1908 (Order  39, rule 2) a court has powers to order
temporary injunctions.  A temporary injunction may be passed to restrain an infringement of anIP/C/W/329/Add.1
Page 37
intellectual property right.  In granting a temporary injunction, there has to be firstly, a prima facie
case, secondly, the accrual of irreparable loss or in jury and lastly, the balance of inconvenience in the
favour of the petitioner.  The court may require a security from the applicant. Before granting an
injunction, the court should normally give a notice to the opposite party, however, the court may
dispense with such notice if it thinks that the object of granting the injunction shall be defeated bysuch delay.  An interim injunction passed in the absence of the defendant should normally not last for
more than fifteen days but can be extended on a hearing to hearing basis or till recalled by the court.
Any interim injunction may be varied, discharged or set aside by the Court on application of any party
dissatisfied with the order.
Under the Code of Civil Procedure (Order 39, rule 7), the court has the authority to pass an
order for the preservation, detention or inspection of any subject-matter of the suit.  Such an order
may be passed on application by any party to the suit.  An application by the plaintiff for such anorder may be made after notice to the defendant at any time after the institution of the suit.
Under Section 61 of the Patents Ordinance, and Section 60 A of the Copyright Ordinance, the
Court has the powers to order prompt and effective provisional measures to prevent an infringement
and to preserve relevant evidence.
J. S
PECIAL REQUIREMENTS RELATED TO BORDER MEASURES
27. Please describe in detail the procedures under the laws of Pakistan that provide for border
enforcement at least for trademark counterfeiting and copyright piracy, identifying the competent
authority and citing to the relevant provisions of law or regulation.
[No reply received]
28. Please indicate if border enforcement is available to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
[No reply received]
29. Article 58 of the TRIPS Agreement specifies procedures to be followed where the competent
authorities can act ex officio.  Please explain whether the competent authorities in Pakistan are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
The draft Customs Rules for Enforcement of Intellectual Property Rights, have provided for
ex officio/suo motu  action by Customs Authorities in the case of import of pirated and counterfeit
goods.
K. CRIMINAL PROCEDURES
30. Please describe in detail how the laws of Pakistan implement Article 61 of the TRIPS
Agreement that requires Members to have criminal  procedures and penalties, including imprisonment
and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark
counterfeiting and copyright infringement on a commercial scale.  Please cite to the relevant
provisions of law and regulation.
Please refer to part B of the response to question 23.
31. Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of Pakistan thatIP/C/W/329/Add.1
Page 38
provide for such remedies, and describe the circumstances in which those remedies would be
imposed, citing to the relevant provisions of law or regulation.
[No reply received]
32. Article 61 also indicates that Members may provide for criminal procedures and penalties in
cases of wilful infringement of other forms of intellectual property.  Please describe any provisions of
the laws of Pakistan that provide for such procedures and remedies, citing to the relevant provisions
of law or regulation.
[No reply received]
L. STATISTICAL QUESTIONS
33. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for 2000, including the number of cases filed; injunctions issued; infringing products seized;
infringing equipment seized; cases resolved (i ncluding settlement); and the amount of damages
awarded.
Data on intellectual property enforcement is presently not being compiled. However, efforts
are underway for the establishment of institutional arrangements for the collection and compilation of
such data from multiple sources.
34. Please provide statistical information related to criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,convictions, and the amount of fines and/or jail terms (including whether the fines were paid and
whether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
The response to question 33 also relates to data on criminal enforcement.  No such data is
available.
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