NAME : ASAD ULLAH

ROLL NO.: 03
CLASS : BS-6

Intellectual Property;
Patents, Trademarks and
Copyrights
Submitted to Ma’am Sadia Owais
Asad Ullah
11/4/2009

Entrepreneurs are not inventors, but all entrepreneurs are concerned with the protection of their ideas or protect
unusual brand names or established ownership of intellectual property. Therefore, entrepreneurs must have good
understanding about patents, trade marks and copyright.
 Intellectual Property; Patents, Trademarks and Copyrights 2

Contents
1-Intellectual Property Organization (IPO) - Pakistan ................................................................................... 4
1.1-Mainstreaming IP ................................................................................................................................ 4
1.2-IP Situation before 2005 ..................................................................................................................... 4
1.3-Out-of-the box Solution ...................................................................................................................... 4
1.4-Support Measures .............................................................................................................................. 4
1.5-Governance Structure......................................................................................................................... 5
1.6-IPO-Initiatives ..................................................................................................................................... 5
1.7-Vision .................................................................................................................................................. 5
1.8-Mission................................................................................................................................................ 5
1.9-Core Objectives ................................................................................................................................... 5
1.10-Initial Priorities.................................................................................................................................. 6
1.11-Enforcement Achievements ............................................................................................................. 6
1.12-Model of Excellence.......................................................................................................................... 6
1.13-Integration of IP Registries ............................................................................................................... 6
1.13.1-Joint Committee of IP Registries................................................................................................ 6
1.13.2-One Building Operation ............................................................................................................. 6
1.13.3- Automation ............................................................................................................................... 7
1.14-Public Awareness .............................................................................................................................. 7
1.15-Enforcement Approach..................................................................................................................... 7
1.16-Reform and Restructuring of IP Registries........................................................................................ 7
2-Patents ....................................................................................................................................................... 7
2.1-Definition ............................................................................................................................................ 7
2.2-What Can Be Patented? ...................................................................................................................... 8
2.3-Types of Patents ................................................................................................................................. 8
2.3.1-Utility Patents: ............................................................................................................................. 8
2.3.2-Design Patent ............................................................................................................................... 8
2.3.3-Plant Patents:............................................................................................................................... 8
2.4-Functions: ........................................................................................................................................... 8
2.5-Patenting System ................................................................................................................................ 8
2.6-Rights of Patents Owner ..................................................................................................................... 9
2.7-Should Inventions be patented?......................................................................................................... 9
 Intellectual Property; Patents, Trademarks and Copyrights 3

2.7.1- Broadcasting ............................................................................................................................... 9

2.7.2- Secret-working ............................................................................................................................ 9
2.7.3-Open-working .............................................................................................................................. 9
2.7.4- Patenting ................................................................................................................................... 10
2.8-Patentable Inventions in Pakistan .................................................................................................... 10
2.8.1- Manner Of Manufacture........................................................................................................... 10
2.8.2-Novelty....................................................................................................................................... 11
2.8.3- Inventive Step ........................................................................................................................... 11
2.8.4- Industrial Application ................................................................................................................ 11
2.8.5- Utility......................................................................................................................................... 11
2.8.6- Law Or Morality ........................................................................................................................ 11
2.9- Outline of the Procedure ................................................................................................................. 11
3-Trademark................................................................................................................................................ 12
3.1-Definitions......................................................................................................................................... 12
3.1.1-Trademark:................................................................................................................................. 12
3.1.2-Service mark: ............................................................................................................................. 12
3.2- Functions: ........................................................................................................................................ 12
3.3-Steps for Registration: ...................................................................................................................... 12
3.4- Chart of the Department: ................................................................................................................ 12
3.5-Trademarks Registry - A Service Oriented Organization: ................................................................. 13
3.6- Current Engagements: ..................................................................................................................... 13
3.7-Procedure for Registration: .............................................................................................................. 13
4-Copyright ................................................................................................................................................. 14
Bibliography ................................................................................................................................................ 16
 Intellectual Property; Patents, Trademarks and Copyrights 4

1-Intellectual Property Organization (IPO) - Pakistan

1.1-Mainstreaming IP
Intellectual Property (IP) is critical for competitive economy in the back drop of ongoing globalization. Sustainable
economic growth now depends largely on Hi-tech R&D base and efficient knowledge input. The new concept of IP
based nation is gaining ground because it is Intellectual Property which enables technology creation and
technology transfer by providing the necessary enabling environment. For these considerations Intellectual
Property was mainstreamed in Pakistan in 2005. IP was brought under the limelight of public policy by
simultaneously establishing IPO-Pakistan, empowering the Federal Investigation Authority (FIA) and activating
Pakistan Customs against IPR violations. The Government decision to establish IPO-Pakistan was particularly aimed
at addressing the institutional shortcomings that were impeding the effective management of intellectual property
in Pakistan. The other two parallel decisions were aimed at strengthening IPR enforcement in the country. It is by
definition an exponential change.

1.2-IP Situation before 2005

Before 2005, IP situation in Pakistan was being internationally perceived to be constantly deteriorating. Pakistan
was being blamed for export of pirated optical discs to a number of countries of the world. The deepening
deteriorating of IP situation was also considered within the country to be highly detrimental to the following:-

Rapid growth mode of Pakistan economy;

Enabling environment for investment attraction;
Market access requirement of Pakistan’s export-led growth strategy;
Fast track integration with global economy;
Market expansion for genuine businesses in Pakistan;
Consumer interest in terms of competitive quality and price;
Country’s business image as a whole.

1.3-Out-of-the box Solution

In order to redress the situation, Government of Pakistan found an out-of-the box solution for its IP problems and
took the following three parallel decisions on the 8th April, 2005; namely:-

Establishment of IPO-Pakistan as a focal organization for integrated management of intellectual property

and enforcement coordination;
Empowerment of FIA (FIA stands for Federal Investigation Agency which is Pakistan’s elite force for
control of white collar crime) to eliminate piracy by including the Copyrights Ordinance 1962 (as amended
in 2000) in the FIA Act, 1974;
Activation of Pakistan Customs to effectively interdict import and export of pirated optical discs etc.

1.4-Support Measures
The Government of Pakistan supported the aforesaid three parallel decisions with the following additional
measures, namely:-

The Honorable Prime Minister of Pakistan placed the new organization directly under his own supervision
by attaching it with the Cabinet Division rather than any of the old Ministries, namely Ministry of
Industries, Production and Special Initiatives, Ministry of Commerce and Ministry of Education which were
previously supervising the patents Office, Trade Marks Registry and the Copyrights Office respectively;
 Intellectual Property; Patents, Trademarks and Copyrights 5

Private sector was effectively involved in the governance structure of IPO-Pakistan by public-private
partnership in the IPO Policy Board. Chairmanship of IPO Policy Board was assigned to the Private Sector;
Shortly after the inception of IPO-Pakistan, the Honorable Prime Minister of Pakistan met twice with the
Chairman and the Director General of the new Organization to set up an IP vision for the new
Organization and to exhibit, at the highest level, the immense political will which had actually gone into
the making of IPO-Pakistan;
The new Organization was conceived to be fully autonomous with an independent IP Fund comprising the
following, namely:-
o Fee Collection by IP Registries;
o Government Grants; and
o Foreign Grants and Donations.
The status of the Director General IPO-Pakistan was upgraded to the rank of Federal Secretary which is
the highest level in Pakistan’s civil administration;
Sufficient funds were provided (Rs.113.00 million in 2005 against Rs.22.00 million in 2004) to meet the
initial setting-up requirements of the new Organization; and
A small start-up team of IP literate and experienced officers was put in place to kick-start the new
Organization.

1.5-Governance Structure
The IPO-Policy Board effectively symbolizes the spirit of Public-Private Partnership which, in fact, is the new
paradigm of participative governance in Pakistan. It also combines the finest expertise of public administration and
corporate management in the best national interest. The Deputy Chairman, Planning Commission and six Federal
Secretaries of the stake-holding Ministries represent the Public Sector and eleven Members including the
Chairman represent the Private Sector including top executives of the national and multinational companies in
Pakistan. Chairman Policy Board is a distinguished and widely experienced professional from the Private Sector.
The Director General is the Chief Executive Officer (CEO) of IPO-Pakistan and Secretary to the IPO Policy Board. He
is also a Federal Secretary (BS-22) which is the highest position in the civil service. Thus the Government of
Pakistan has invested its finest human capital in the governance structure of IPO-Pakistan.

1.6-IPO-Initiatives
The new organization has undertaken a number of organizational, administrative and functional initiatives to
upgrade the institutional infrastructure; design a flat and lean service structure; provide attractive salary package
and afford necessary capacity building opportunities in order to reform, restructure and reorganize the intellectual
property management in Pakistan. IPO-Pakistan’s Enforcement Coordination Initiative has not only achieved
effective linkages with the public sector enforcement authorities but also with the private sector investigation
agencies engaged in detection of IP infringements. This coordination is deepening and expanding very fast. Once
this initiative finds synergy, the market space for piracy and counterfeiting will start shrinking. The growth of these
twin menaces has already been effectively arrested.

1.7-Vision
“To put Pakistan on the IP map of the world as a compliant and responsible country by promoting and protecting
intellectual property rights.”

1.8-Mission
“Integrating and upgrading IP infrastructure for improved service delivery; increased public awareness and
enhanced enforcement coordination for achieving the goal of being an IP based nation.”

1.9-Core Objectives
IPO-Pakistan has set the following functions as its core objectives namely:
Integrating IP management;
Improving service delivery;
 Intellectual Property; Patents, Trademarks and Copyrights 6

Increasing public awareness; and

Enhancing enforcement coordination

1.10-Initial Priorities
Being a new organization, the initial priorities of IPO-Pakistan are as follows:-

Consolidation of its inheritance from the past;

Putting in core capacities in the new organization; and
Achieving higher order professionalization;

1.11-Enforcement Achievements
The establishment of IPO-Pakistan in April 2005 has been received well in Pakistan as well as abroad. In a very
short period of time since April, 2005, the new organization has been able to establish its HQ in Islamabad; achieve
automation of the database of Trademarks Registry; recruit quality manpower for the patents Office and IPO HQ
and provide attractive salary package to its new staff; achieve ‘One Building Operation’ of the Regional Offices of IP
Registries in Lahore and launch a well designed and well coordinated public awareness campaign in the country.
However, its greatest success resides in its Enforcement Coordination Initiative with the following achievements
namely:-

Within the first month of IPO existence, FIA cracked down on the notorious piracy infrastructure to
demonstrate Government of Pakistan’s administrative firmness behind its IP initiative;
Pakistan Customs established Anti-Piracy Cells (APCs) at the country’s major international airports to
institutionalize government’s anti-piracy drive. This was only the second time in the history of Pakistan
Customs after Anti-Narcotic Cells (ANCs) that antipiracy drive was institutionalized in the form of APCs;
While FIA and Pakistan Customs were busy controlling the supply side of piracy, IPO launched a number of
demand control initiatives to curb local demand for pirated optical disc.

1.12-Model of Excellence
IPO-Pakistan is now fast developing into a model of excellence in integrated management of IP Registries
administering Patents, Trade Marks and Copyrights. Although the new Organization is constantly on the run ever
since its inception in April, 2005 to meet its initial setting-up requirements.

1.13-Integration of IP Registries
Getting three IP Registries in Karachi to work interdependently together after decades of independent and stand
alone existence is quite an uphill task. The following measures have been taken for effective integration, namely:-

1.13.1-Joint Committee of IP Registries

A joint committee of Heads of IP Registries has been constituted in Karachi for consensual management of
their common problems. The Committee meets regularly for finding corporate solutions to their
organizational problems.

1.13.2-One Building Operation

Location of IP Registries is being consolidated in one building for operating a “One Building Operation” of
IP registries for the convenience of dealing public. The objective has been achieved in Lahore where all IP
Offices have been located in one building and placed under one senior officer for unity of command.
Efforts are underway to locate all IP Registries of Karachi in the TMR Building after renovating,
refurbishing and upgrading it into a full-fledged IP House.
 Intellectual Property; Patents, Trademarks and Copyrights 7

1.13.3- Automation
Automation is critical for transformation of IP Registries into an accelerated service delivery mode.
Business Process Re-engineering (BPR), formulation of Standard Operating Procedures (SOPs), automation
and capacity building of the core staff constitute the fundamentals of IPO strategy to improve service
delivery. Accordingly automation of data base of Trade Marks Registry has been completed. patents
Registry has also initiated automation of patents data bases with the help of Electronic Government
Directorate (EGD) and World Intellectual Property Organization (WIPO), Geneva. Plans are in hand to
convert Copyrights Registry from manual to automation mode at the earliest. The ultimate objective is to
bring IP management online in Pakistan in the shortest possible time. EGD is preparing an overall
automation plan for IPO-Pakistan.

1.14-Public Awareness
IP awareness in Pakistan is very low. In order to improve public awareness, IPO has launched a Public Outreach
Program for link aging and leveraging internal and external constituencies i.e. Chambers of Commerce and
Industry, business enterprises, R&D institutions, universities, academia and general public. World Trade Review, a
fortnightly newspaper focused on WTO news is also regularly publishing IP news. Both Electronic Media and Print
Media are being increasingly used for enhancing general public awareness in IP. Pakistan National Commission for
UNESCO is providing financial support in organizing IP awareness Seminars in the country.

1.15-Enforcement Approach
A top down gradual and selective approach based on special and differential treatment principle of WTO is being
followed under which the developed regions like Karachi, Lahore and Islamabad of Pakistan have been prioritized
for IPR enforcement. The less developed areas of Pakistan will be focused later.

1.16-Reform and Restructuring of IP Registries

The existing organizational and administrative set-up of IP Registries requires extensive reform and restructuring. A
nine tier flat and lean administrative setup has been put in place. IPO HQ in Islamabad is being organized on
modern lines. The IP Registries and their Regional Offices will also be reformed and restructured accordingly. IPO-
Pakistan, its Registries and Regional Offices are being reorganized on competitive lines to put in capacity for
adequate response to convert the challenges of globalization in the 21st century into opportunities for Pakistan.
This however needs a lot of capacity building, vision, foresight and patience. There is no dearth of political will and
financial commitment on the part of Government of Pakistan. Lack of expertise and capacity problems constitute
the most major challenges for IPO-Pakistan.

2-Patents

Most entrepreneurs are not inventors, but all entrepreneurs are concerned with the protection of their ideas or
protect unusual brand names or established ownership of intellectual property. Therefore, entrepreneurs must
have good understanding about patents, trade marks and copyright.

2.1-Definition
The exclusive right, granted by the government, to make use of an invention or process for a specific period of
time, usually 20 years.
 Intellectual Property; Patents, Trademarks and Copyrights 8

Any thing that is patentable must be new and useful. Many applications fail one of these two criteria. Patents are
filled and later turned down

2.2-What Can Be Patented?

Processes
Machines
Manufactures
Composition of Matters

2.3-Types of Patents

2.3.1-Utility Patents: Granted for new processes, machines, manufactures and compositions not included
botanical creations with the protected period of 17 years.

2.3.2-Design Patent: Granted for any original ornamental design for an articles do manufacture with protected
periods of 3 ½, 7 or 14 years

2.3.3-Plant Patents: Granted for Botanical creations that have been asexually reproduced and do not exist in
nature with a protected period of 17 years

The patents office was an attached department of Ministry of Industries & Production established in 1948 under
the provision of section 55 of the Patents & Designs Act. 1911(the Act is amended as Patents Ordinance 2002 &
Designs Ordinance, 2000). The law of registration of Layout Designs of Integrated Circuits has also been
promulgated as “Registered Layout-Designs of Integrated Circuits Ordinance, 2000”.

The Patents Office currently is a part of IPO Pakistan (Intellectual Property Organization) under Cabinet Division.

2.4-Functions:
The Patents Office is an integral part of the progress of the country and of the development of its technological,
material resources and it also:
1. Administers the Patents Ordinance, 2000, Designs Ordinance, 2000 and Layout-Designs of Integrated
Circuits
Ordinance, 2000.
2. Grant the Patents to the new and novel inventions.
3. Register the new and novel Designs of an article.
4. Provide a sound legal and administrative framework for the promotion and protection of intellectual
property.
5. Formulate and review intellectual property policies and legislation.
6. Represent the government internationally on intellectual property matters.
7. Collaborate with other organizations and intellectual property offices or programmers’.
8. To encourage research and inventions.
9. To disclose new technological discoveries.
10. To disseminate technical information & know-how.
11. Endeavors to promote new inventions.
12. To foster and aid industrial development in Pakistan.

2.5-Patenting System
The basic theory of the patent system is simple and reasonable. It is desirable in the public interest that industrial
techniques should be improved. In order to encourage improvement and to encourage also the disclosure of
 Intellectual Property; Patents, Trademarks and Copyrights 9

improvements in preference to their use in secret. Any person devising any improvement in a manufactured article
or in machinery or methods for making it, may upon disclosure of his improvement at the Patent Office demand to
be given a monopoly in the use of it for a limited period. After that period, it passes into the public domain.

2.6-Rights of Patents Owner

A patent owner has the right to decide who may or may not use the patented invention for the period in which the
invention is protected.

The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms.
The owner may also sell the right to the invention to someone else, who will then become the new owner of the
patent.

Once a patent expires, the protection ends, and invention enters the public domain, that is, the owner no longer
holds exclusive right to the invention, which becomes available to commercial exploitation by others.

2.7-Should Inventions be patented?

Any person who makes an invention may deal with it in any of the following ways: -

a. he may broadcast the invention for free use by the public or

b. he may work the invention in secrecy without patenting it ; or
c. he may work the invention openly without patenting it; or
d. he may exploit the invention on the basis of patents.

The merits and demerits of dealing with an invention in the above ways are briefly mentioned below:

2.7.1- Broadcasting
There are many inventors to whom the idea of enjoying a monopoly for their inventions is repugnant, and who,
therefore, broadcast their ideas, in the hope that by doing so they would confer the benefit of their inventions on
the largest possible section of the public. These inventors, however, overlook the fact that their inventions would
not come into wide use unless they are developed for manufacture on a mass-production scale, and that the
necessary capital for large-scale manufactures would not be forthcoming unless the manufacturers are assured of
protection against competition. Experience has shown that inventions, which are, broadcast for free use by the
public seldom come into use, and that a patent, judiciously used, would induce manufacturers to take up the
working of the invention on a commercial scale.

2.7.2- Secret-working
A large section of inventor’s desires to enjoy an exclusive right for the use of their inventions, and a question,
which generally confronts such inventors, is whether they should do so by working their inventions in secrecy, or
by protecting them by patents. Secrecy would enable an inventor to enjoy the exclusive right for the use of his
invention, so long as he succeeds in keeping in secret; but, if the secret leaks out, he would not be able to prevent
others from using his invention, even competitively against himself. Experience has brought home to inventors the
fact that under modern conditions, it is extremely difficult to work useful inventions in secrecy, and that unless the
inventions are patented, they would be obliged to face competition within a short period of working their
inventions for profit.

2.7.3-Open-working
Open working of the invention would expose the inventor to the same risks as those involved in secret-working,
but sooner than secret-working.
 Intellectual Property; Patents, Trademarks and Copyrights 10

2.7.4- Patenting
As against the disadvantages associated with the working of an unpatented invention either secretly or openly, or
with the mere publication of the invention for free use by the public, the method of exploiting the invention by
patenting it, has the following distinct advantages:-

o A patentee’s right to the exclusive use of his invention would not be prejudiced by the fact that his
invention is made known to others.
o The said exclusive right could be enforced legally.
o The protection enjoyed under the patents would enable the patentee to raise capital for working the
invention on a commercial scale.
o If the patentee were not himself in a position to work the invention commercially, he would be able to
make a profitable use of the invention by selling his patent, or by granting licenses to others permitting
the use of his invention.
o Even where the inventor does not desire to earn profits by the use of his invention, a patent would enable
him grant licenses judiciously, so as to secure on the one hand, sufficient inducement to manufacturers to
take up the working of the invention, and on the other hand, to confer the benefit of his invention on the
largest possible section of the public.
o A patent would enable the invention to establish an official record of his inventor ship.

Hence, for the standpoint of the inventor as well as of the public it is distinctly advantageous to adapt a policy of
protecting inventions by patents, instead of working them in secrecy, or working them openly or broadcasting
them without protection.

2.8-Patentable Inventions in Pakistan

In order to be patentable an invention should have the following characteristics:-

(I) the invention is new.

(ii) It involves an inventive step.
(iii) It is capable of industrial application.
(iv) It should not be contrary to law or morality.

Under the Patents Ordinance and Rules, the Patents Office is however chiefly concerned with (i) and (ii) and (iv)
only. These characteristics are briefly explained below.

2.8.1- Manner Of Manufacture

An invention in order to be patentable must relate to a new and useful “manner of manufacture”. The expression
“manner of manufacture” has received a special signification in relation to Patents Law as a result of judicial
interpretation of the term. In order to decide whether in a particular case the invention sought to be patented is a
“manner of manufacture” within the meaning of the definition one has often to apply certain tests or principles
laid down by courts. The most common of these tests is what is called the vendibility test. Accordingly, it is
essential that the process, apparatus or articles of manufacture should suggest an act to be done or an operation
to be performed, and that the result must be a vendible product.
Mere abstract principles, plants, arrangements, designs, or schemes which may be of a high order from the
standpoint of originality or utility-which do not involve the subjecting of materials to manual or mechanical other
operations, and which do not relate to the making of vendible products, are not considered to be within the scope
of this expression.
Examples of what constitutes a “manner of manufacture” are textile machines, power plants, agricultural
implements, domestic appliances, synthetic products, foodstuffs, dyes, chemicals, toilet preparations, processes
and devices for making the same, and an agricultural process, such as the rotation of crops or horticulture process,
such as the rotation of crops or horticultural process, such as treatment of plants or flowers.
 Intellectual Property; Patents, Trademarks and Copyrights 11

2.8.2-Novelty
For the purpose of patents in Pakistan, novelty is no more considered with reference to what is publicly known in
the territories of Pakistan and what is publicly used in the territories of Pakistan, prior to the date of the patent
application. The Public use or knowledge of an invention any where in the world before the date of the application
would prejudice the novelty of the invention. Applicants for patents should therefore, take particular care to see
that their inventions are not publicly used any where in the world, prior to the date of their patent applications.
Publication of the invention should, therefore, be avoided before applying for Patents.
Patent rights were denied to an inventor of an improved design of ball-point, pen, merely on the ground that the
inventor himself had published a description of making a ball point pens and had made two pens embodying the
invention available to the members of the public, before filling the patent application. A new method of producing
nylon with evenly distributed carbon black content was not granted patent of the prior publication the information
was disclosed through bulletins to the members of the public by the applicant’s salesman.
The public use or knowledge of publication of an invention even out side Pakistan would prejudice the novelty of
an invention.

2.8.3- Inventive Step

To be new in the patent sense, the novelty must show invention. It is not enough that the purpose is new or that
there is novelty in the application, so that the article produced is in that sense new. There must be novelty in the
mode of application. By that, it means that in adopting the old contrivance to the new purpose, there must be
difficulties to overcome, requiring what is called invention, or there must be sonic ingenuity in making the
adoption. In order to be patentable, the new subject must involve invention over what is old. A patent for new use
of a known contrivance, without any additional ingenuity in overcoming fresh difficulties is not an invention. If the
new use involves no ingenuity, but is in manner and purpose is analogous to the old use, although not quite the
same there is no invention. On the other hand a patent for a new use of a known contrivance is good and can be
supported if the new use involves practical difficulties which the patentee has been the first to see and overcome
by some ingenuity of his own. Invention, therefore, is to find out or discover something not found or discovered
before. It is not necessary that the invention should be anything complicated. The essential thing is that the
inventor is the first one to adopt it. Every simple invention so far as it is something new would be an invention.

2.8.4- Industrial Application

Industrial application is defined to include capability of the invention to be used in any kind of industry. The law
emphasizes that “the industry shall be understood in its broadest sense”. It covers in particular agriculture
handicraft fishery and services. The law clarifies 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 a method”.

2.8.5- Utility
No valid patent can be granted for an invention devoid of utility. Utility does not mean abstract utility or
comparative utility, or competitive utility, or commercial utility. Utility means having practical existence as a
manner of manufacture. If what is proposed by the invention is giving an option of a process or an apparatus,
which is better in some respects though not necessarily better in every respect, than what is previously known, the
invention will be deemed to possess utility.

2.8.6- Law Or Morality

A patent for an invention will be refused, if, in the opinion of the Controller, its use would be contrary to law or
morality. Thus, an apparatus for gambling, or an appliance for burgling houses or a method of adulterating food
would be regarded as an invention contrary to law or morality, and would not be a proper subject-matter for a
patent.

2.9- Outline of the Procedure

The following are the successive steps of the procedure for obtaining a patent
 Intellectual Property; Patents, Trademarks and Copyrights 12

Filing the “Application”, accompanied by either a Provisional or a Complete Specification.

Filing the Complete Specification, if the Specification filed with the Application was a Provisional
Specification.
Examination and Acceptance of application by the Patent Office.
Overcoming Opposition, if any, to the grant of patent.

3-Trademark
3.1-Definitions

3.1.1-Trademark:
is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and
distinguishes the source of the goods of one party from those of others.

3.1.2-Service mark:
is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a
product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service
marks.

3.2- Functions:
Trade Marks Registry is working under the administrative control of Intellectual Property Organization of Pakistan.
The main function of the Registry is to grant protection of trade marks relating to both goods and services through
registration under the Trade Marks Ordinance 2001 and Trade Mark Rules 2004. The Trade Marks Registry works
like a Civil Court. The Registrar of Trade Marks hears and decides the cases relating to registration, post
registration, opposition and rectification matters.

3.3-Steps for Registration:

1. Search before filing of Application.
2. Filing of Application.
3. Preliminary Examination.
4. Final order for Publication.
5. Printing in Trademarks Journal.
6. Opposition Procedure.
7. Issuance of Registration Certificate.
8. Renewal of the Registration.
9. Post Registration matters.
10. Rectification Procedure.

3.4- Chart of the Department:

Registrar is BPS-19 officer appointed under provisions of Trade Mark Act 1940 by Federal Government. who works
as Head of the Departments and also as a tribunal equivalent to District Court. Deputy Registrar BPS-18 officer is
also tribunal of the same status
 Intellectual Property; Patents, Trademarks and Copyrights 13

3.5-Trademarks Registry - A Service Oriented Organization:

As a service oriented department, the major objective of the Trade Marks Registry is to facilitate the general public
and trade marks owner/applicant in trade mark registration. A help desk is separately working along with the
reception where every one can get briefing/guidance on registration procedure and information related to any of
the function of Trade Marks Registry. All the officers including Registrar of Trade Marks are easily accessible during
the official working hours for any query or advice. Trade Marks Agents/Advocates have also been provided with a
separate waiting room. A library with all related law books is available to the lawyers and the trade mark officials.
The staff is provided with relevant training from time to time to update them on trade mark matters to achieve the
best results.

3.6- Current Engagements:

Computerization - Software Development:

In order to modernize the working of the department an automation plan has been charted out.
Implementation of the plan is being done phase by phase. In the first phase the database of the trade
marks has been created and Index, Search, Examination, Journal and Registration departments have been
fully automated.

Registration of Geographical Indications:

Globally Geographical Indications can be legally protected as Collective Marks, Certification Marks or
under a Stand-alone Geographical Indications Law. Presently the Trade Marks Ordinance, 2001 provides
for the registration of Geographical Indications under the ambit of Collective as well as Certification
Marks. However, in order to further strengthen the legal base of protection of National Geographical
Indications, consultations are under way with the respective stakeholders both from public and private
sectors. IPO-Pakistan have also been seeking valuable advice for experts of the World Intellectual
Property organization and other friendly countries. In this regard an international workshop, WIPO
National Workshop on Geographical Indications,” was organized by IPO-Pakistan with the assistance of
the EU and WIPO in July 2006.

International of Trademarks:
To facilitate international registration of Trade Marks of Pakistani exporters in the destination countries as
well as registration of foreign Trade Marks in Pakistan, an International Workshop, “WIPO National
Workshop on Trade Marks and the Madrid System,” was organized in December 2006 with the assistance
of EU and WIPO. Speakers, local as well as foreign, shed light on the needs and requirement of
international registration of trade mark under Madrid Agreement/Protocol.

Seminars and Workshops:

In its first year IPO-Pakistan arranged 3 training workshops, 2 high-level Roundtables and 1 conference on
IP Judiciary with the assistance of WIPO, EU and the USPTO. Apart from organizing these events, IPO-
Pakistan has also lend assistance to various organizations in arranging seminars, workshops, conferences,
training sessions etc

3.7-Procedure for Registration:

1. It is advisable that a search may be made of the Trademarks Register to ensure whether there are any
similar or identical marks on the Register. Search request can be filed on Form TM-55 with a Pay
Order / Bank Draft of Rs. 500 for search of one mark in one class only.
2. After the search of the Register, application is made on Form TM-1/TM-2 for one mark in one class
with pay order / Bank Draft of Rs.1000/-
3. Acknowledgement Receipt by the Trade Mark Registry is issued to the applicant within 10-15 days.
 Intellectual Property; Patents, Trademarks and Copyrights 14

4. Examination Report is generated after 3 months. If there are any objections on the applied
trademark, they are communicated to the applicant immediately in the form of Show Cause Notice.
The applicant is required to submit a reply within two months of the issue of Show Cause Notice.
5. If there are no objections application is published in the Trade Mark Journal. If no oppositions are
filed to the published application within two months of the publication date of the relevant
Trademark Journal, the application stands accepted, and s Demand Notice is then issued to the
applicant requesting him/her to submit registration fee so that the registration Certificate may be
issued.
6. On the receipt of the Registration fee, the Registration Certificate is issued .

4-Copyright
Copyright refers to laws that regulate the use of the work of a creator, such as an artist or author. This includes
copying, distributing, altering and displaying creative, literary and other types of work. Unless otherwise stated in a
contract, the author or creator of a work retains the copyright.

The rule of establishing a copyright is that the material must be copyrighted by an unequivocal
statement before the publishing material is offered for sale or made public.
A concept of fair use has been established through court interpretations so that copyright material
can be used within limitations. For e.g.: most scientific papers and textbooks build on previously
published and copyrighted work.

Copyrights are a form of protection provided to the authors of “original works of authorship,” including literary,
dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and
unpublished works. The owner of copyrights has the exclusive right to do and to authorize others to do the
following:

To reproduce the work in copies or phonorecords;

To prepare derivative works based upon the work;
To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or
by rental, lease, or lending;
To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and motion pictures and other audiovisual works;
To display the work publicly, in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion
picture or other audiovisual work; and
In the case of sound recordings*, to perform the work publicly by means of a digital audio transmission.

It is illegal for anyone to violate any of the rights provided by the copyrights law to the owner of copyrights. These
rights, however, are not unlimited in scope; the copyrights law establishes limitations on these rights. In some
cases, these limitations are specified exemptions from copyrights liability. One major limitation is of “fair use,” In
other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of
copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions.
For further information about the limitations of any of these rights, consult the copyrights law

Copyrights protection subsists from the time the work is created in fixed form. The copyright in the work of
authorship immediately becomes the property of the author who created the work. Only the author or those
deriving their rights through the author can rightfully claim copyrights.
 Intellectual Property; Patents, Trademarks and Copyrights 15

In the case of a work prepared by an employee within the scope of his or her employment; the employer and not
the employee is considered to be the author, if the parties expressly agree in a written instrument signed by them
that the work shall be considered a work made for hire.

The authors of a joint work are co-owners of the copyrights in the work, unless there is an agreement to the
contrary.

Copyrights protect “original works of authorship” that are fixed in a tangible form of expression. The fixation need
not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable
works include the following categories:

1. literary works;
2. musical works, including any accompanying words
3. dramatic works, including any accompanying music
4. pictorial, graphic, and sculptural works\
5. motion pictures and other audiovisual works
6. sound recordings
7. architectural works

These categories should be viewed broadly. For example, computer programs and most “compilations” may be
registered as “literary works”.

The following persons are legally entitled to submit an application form:

The author. This is person who actually created the work or, if the work was made for hire, the employer
or other person for whom the work was prepared.
The copyrights claimant. The copyrights claimant is defined in Copyrights regulations as either the author
of the work or a person or organization that has obtained ownership of all the rights under the copyrights
initially belonging to the author. This category includes a person or organization who has obtained by
contract the right to claim legal title to the copyrights in an application for copyrights registration.
The owner of exclusive right(s).Under the law, any of the exclusive rights that make up a copyrights and
any subdivision of them can be transferred and owned separately, even though the transfer may be
limited in time or place of effect. The term “copyrights owner” with respect to any one of the exclusive
rights contained in copyrights refers to the owner of that particular right. Any owner of an exclusive right
may apply for registration of a claim in the work.
The duly authorized agent of such author, other copyrights claimant, or owner of exclusive right(s). Any
person authorized to act on behalf of the author, other copyrights claimant, or owner of exclusive rights
may apply for registration.

There is no requirement that applications be prepared or filed by an attorney.

 Intellectual Property; Patents, Trademarks and Copyrights 16

Bibliography
[Online] / auth. WebSoftNET Technologies // IPO Pakistan - Intellectual Organiazation of Pakistan. - Govt
Org.. - 10 12, 2009. - http://www.ipo.gov.pk/.

INTERNATIONAL INTELLECTUAL PROPERTY ALLIANCE [Report] / auth. IIPA. - Islamabad : IIPA, 2007.

Wikimedia Foundation, Inc. [Online] // WIKIPEDIA. - 11 03, 2009. -

http://en.wikipedia.org/wiki/Copyright_protection_in_Pakistan.