RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/329
6 December 2001
(01-6219)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Pakistan to questions posed by Canada and Switzerland
By means of a communication from the Permanent Mission of Pakistan dated 26 November
2001, the Secretariat has received the following responses to questions posed by Canada and
Switzerland as circulated in documents IP/C/W/314 and 315, respectively.
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CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement and
throughout) have been implemented.
Enforcement obligations as contained in Articles 41-61 of the TRIPS Agreement have been
implemented through various provisions of the Pakistani law.  Details have been provided in
Pakistan's response to the Checklist of I ssues on Enforcement (document IP/N/6/PAK/1).
2. What protection does your Copyright le gislation afford to "foreign works"?
Sections 10(2), and 54 of the Copyright Ordinance 1962 read with the International Copyright
Order accord national treatment to foreign "works" i.e. original literary, dramatic, musical and artistic
works, cinematographic works or records.  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(ii) in the case of an unpublished work other than an architectural work of art, the author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 of 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:IP/C/W/329
Page 2
(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(b) to unpublished works, or any class thereof, the authors whereof were at the time of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,
and thereupon subject to the provisions of this Chapter and of the order, this Ordinance shall
apply accordingly.
The International Copyright Order issued under Section 54 lists countries 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".
SWITZERLAND
A. TRADEMARKS
1. Please explain how your legislation implemen ts 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 ta compliance with reasonable procedures and formalities.
Section 33 of the Trade Marks Ordinance, 2001 provides that "a trade mark shall be registered as ofthe date of filing of the application for registration and that date shall be deemed to be, for the
purposes 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 trade marks.The definition of the term "service" under Section states that service means service of any description
which is made available to users or potential users and includes the provision for services in
connection with business of any industrial or co mmercial nature, and without limitation, includes
banking, retailing, communication, including telecommunication, education, law, financing,IP/C/W/329
Page 3
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. INDUSTRIAL 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 the
prescribed format and should be filed at the Patent Office in the prescribed manner.  An industrialdesign 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.
C. P
ATENTS
4. Does your legislation grant patent protection for Inventions relating to products and
processes in ail fields of technology?  Are there any exceptions?  If so, please explain what these
exceptions are and how they comply with 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 1st 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 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 to micro-
biological processes or products 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
authorisation of the right holder. Please cite the relevant provisions of the law and describe in detail
the 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 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;IP/C/W/329
Page 4
(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
licencee, 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 both 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 be
predominantly for the supply of the market in Pakistan.IP/C/W/329
Page 5
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.
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(l) 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 provision 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:
TRIPS Agreement Patents Ordinance 2000
Article 31(a) Section 58(4) read with Section 58(2),  Section 59(10)
Article 31(b) Section 58(4), Section 59(10)
Article 31(c) Section 58(3), Section 58(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), and Section 69
Article 31(k) Section 58(3), Section 58(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.IP/C/W/329
Page 6
Under Sections 46, 47 and 48 of the Patents Ordinance 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 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 response 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 provision of law.
[No response received]
D. PROTECTION OF UNDISCLOSED INFORMATION
11 Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by the applicant to  a 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 use by a competitor, for example by prohibi ting a second applicant, from relying on or from
referring to the original data of the first applicant when applying subsequently for market
authorisation of a similar product.  Does your legislat ion provide for exceptions to this?  If yes, under
what conditions would such exceptions apply?  Does your legislation, set as a specific term of
protection for undisclosed test or other data of the first applicant?
[No response received]
E. ENFORCEMENT
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, the court, in any suit of infringement has the powers:
(i) to order to desist from infringement;IP/C/W/329
Page 7
(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;
(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 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.
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 trade mark, 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 trade mark from the
infringing goods, and the destruction of the infringing goods.  The court may also pass an order thatthe infringing goods, material or articles may be delivered up to the proprietor of the trade mark.
Copyright
Under Section 6 of the Copyright Ordinance, 1962, of any suit of infringement of copyright,
the owner of copyright is entitled to all such relief by way all injunction, damages, accounts and
otherwise, 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.IP/C/W/329
Page 8
Industrial Designs
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.
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.
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 IPR regime.  With the help of WIPO, Pakistan's intellectualproperty field offices 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 which were 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 enforcementsituation of IP laws in Pakistan.
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