INTELLECTUAL PROPERTY ORGANIZATION OF PAKISTAN

INTELLECTUAL INTELLECTUAL ORGANISATION OF PAKISTAN

23, STREET NO.87, ATATURK AVENUE (WEST) SECTOR G-6/3, ISLAMABAD
PH: 051-928581-2, FAX: 051-9208157,
Url: www.ipo.gov.pk, E-mail: newsletter@ipo.gov.pk
IPO-PAKISTAN
QUARTERLY NEWSLETTER
Engr. Aamir Hasan, a BS-21 officer of Secretariat Group (17th
Common) is a pro-active, progressive professional having vast
and diverse experience of more than 24 years in Civil Service. He
is an intellectual having about eight publications on different
topics e.g. A study of the Ombudsman in Pakistan, A report on the
human rights violations in the state of Kuwait, Operation
I
S
S
U
E

-
1
J
A
N
U
A
R
Y
-
M
A
R
C
H
,

2
0
1
4
Silence: Long term implications and policy options for Pakistan,
Traditional Politics of Khyber Pakhtunkhwa (KP): Perceived
Deprivation and its impact on Psycho-social Profile of KP,
Public Administration Reforms and Management Innovations:
The case of Karachi Port Trust, etc.
By qualification Mr. Aamir is a B.Sc. Engineer (Civil) from
University of Engineering & Technology (UET), Lahore. He
secured Chevening Scholarship for study in Britain through open
competition and completed his MA (Eco) in Development
Administration and Management from University of
Manchester, UK. He also holds a Certificate in Organizational
Culture and Management from Maastricht School of
Management, Netherlands.
After qualifying the CSS Examination in 1988, Mr. Aamir Hasan
served on various assignments including Section Officer,
Establishment Division; Manager (P&D), Pakistan Tourism
Development Corporation (PTDC); First Secretary, Embassy of
Pakistan, Kuwait; and Joint Secretary, Planning and
Development Division. Also, he remained an integral part of
Civil Services Academy and National Management College to
groom young officers for Civil Services of Pakistan. He was last
posted as Senior Joint Secretary in Ministry of Communication,
Islamabad.
On January 20, 2014, he assumed the charge of Director General
of a very technical and high profile organization Intellectual
Property Organization of Pakistan (IPO-Pakistan). Since then he
has been performing his duties, wholeheartedly
Engr. Aamir Hasan
Director General
IPO-Pakistan HQs Team of Officers
Introduction
Intellectual Property (IP) is critical for competitive economy
especially in the back drop of ongoing globalization as the
sustainable economic growth depends largely on hi-tech R&D
base of the country. The realization that IP is a powerful driver of
innovation and creativity for wealth creation is immensely
growing in Pakistan. The new concept of IP based nation is
internationally gaining ground because intellectual property
management is a significant enabler of technology creation,
technology transfer and creativity. Based on these considerations
the intellectual property management has been mainstreamed in
Intellectual Property
Intellectual property is creation of human mind. These are intangible goods that
hold value i.e. books, inventions, industrial designs, computer programs, music,
trade names, trade secrets, etc. Intellectual property protection is registered to be
given the same treatment and respect as we treat personal or real property. The
creators of intellectual property may grant the rights to buy, sell, license, and
transfer intellectual property like tangible goods.
Types of Intellectual Property Rights:
Intellectual property refers to the right of intangible assets in the following:-
1. Patents are the exclusive rights of innovators and researchers to exclude
others to commercialize their inventions fulfilling the criteria of novelty,
inventive step and industrial application. Patents protect and promote Research
& Development in a country's technological and scientific fields. Protection of
patents encourages the discovery of new and improved products and processes,
while ensuring public access to information regarding those new products and
processes.
2. Trade Marks are signs/words etc. which distinguish the goods and services of
one business from those of the others to protect them against unfair competition
through counterfeiting. Trademark laws encourage the development and
maintenance of high-quality products and services, and help companies promote
customer loyalty.
3. Copyright means the right over a copy which is exclusively available to the
creator of the work. It includes creation of literary & artistic works, music, films,
paintings, sculptures, computer programs, and data bases etc.
4. Geographical Indications protect a name or sign used for certain products or
services which possesses certain qualities or characteristics, or enjoys a certain
reputation essentially, due to their geographical origin. For example, Peshawari
Chapal, Kamalia Khadar, Qasuri Methi, Hala Ajrak, Balochi Sajji etc.
5. Industrial Designs are the ornamental or aesthetic aspects of an article which
make the article attractive & appealing. It may consist of three-dimensional
features or two-dimensional features. i.e. Designs of vehicles, pottery, textile or
any other industrial product.
6. Integrated Circuits and Lay Out Designs Integrated circuit are
microcircuits, microchips, silicon chips etc consisting mainly of semiconductor
devices, which are used in almost all electronic equipments in use today.
7. Plant Breeders Rights protect rights of breeders (researchers, scientists,
farmers) for development of new plant varieties to get improved farm yield.
8. Genetic Resources, Traditional Knowledge and Folklore (GRTKF)
Genetic Resources refer any material of plant, animal, microbial or other origin
containing functional units of heredity.
Traditional knowledge and Folklore refer to the long-standing traditions and
practices of certain regional, indigenous, or local communities. Traditional
knowledge also encompasses the wisdom, knowledge, and teachings of these
communities. In many cases, traditional knowledge has been orally passed for
generations from person to person. Some forms of traditional knowledge are
expressed through stories, legends, folklore, rituals, songs, and even laws.
Pakistan by (i) abolishing the age-old fragmented mode of IP
management and (ii) establishing IPO-Pakistan for integrated
management of intellectual property. The Government's decision
to establish a focal IP Organization namely Intellectual Property
Organization of Pakistan (IPO-Pakistan) on 8th April, 2005 and
placing it under the Prime Minister of Pakistan is particularly
aimed at effectively addressing the institutional shortcomings
that were previously impeding the efficient management of
intellectual property in the country.
IPO-Pakistan HQs, Islamabad
IPO HQ was established in Islamabad in April, 2005. As
a matter of fact Islamabad has always been the IP HQ of
Pakistan. The only difference is that previously the IP
management was fragmented into three different
Ministries namely, Ministry of Commerce for Trade
Marks, Ministry of Education for Copyrights and
Ministry of Industries and Production for Patents and
Designs. The Islamabad office receives applications for
grant of Copyrights, Trade Marks, Patents and Designs
etc
The Patent Office, Karachi
The Patents and Designs Office was established in
Karachi in March 1948 under section 55 of the Patent and
Designs Act, 1911. Its Branch Office has been
established in Lahore. The Patents and Designs Office,
Karachi deals with the applications of patents, industrial
designs, layout designs of integrated circuits, etc. The
Patents and Designs Office, Karachi has established an
IP Helpline to provide support services to the R&D
institutions as well as individual researchers in getting
their inventions and creations registered for protection
and commercialization.
Trade Marks Registry, Karachi
Trade Marks Registry was established in 1948 under the
Trade Marks Act, 1940. Its Branch Office was
established in Lahore in 1974. The Registry deals with
Trade Mark, Service Marks, Collective Marks,
Geographical Indication. It provides support services to
the commercial organizations.
Copyright Office Karachi
The Copyright Office was established in Karachi in 1963
under the Copyright Ordinance, 1962. Its branch office
was established in Lahore in 1984. The Office provides
support services to a variety of creative industry,
including literary work, publishing, artistic work,
cinematographic work, music, computer software etc.
IPO-Pakistan Regional Office Lahore
The Regional Office of IP Registries in Lahore has been
placed in one building in order to organize a One
Building Operation of Regional Offices of IP Registries
in Lahore. The Regional Office at Lahore is providing
invaluable services to the dealing public. The Lahore
office receives applications for grant of Copyrights,
Trade Marks, Patents and Designs etc
2
IPO-Pakistan Quarterly Newsletter January-March, 2014
Important Events
Mr. Aamir Hasan, a BS-21 Officer of the Secretariat Group
was appointed as the 5th Director General, IPO-Pakistan. He took
charge of his post on 20th January,2014. A Brief Presentation on
IPO-Pakistan was given by Mr. Meesaq Arif, Director (Admn/HR),
IPO-Pakistan 21st January, 2014 at the Committee Room of IPO-
HQs Islamabad for the briefing of D.G, IPO-Pakistan to acquaint
him with the functioning of this organization.
A meeting with IPR Enforcement Coordination Agencies
(FIA, Police & Custom) was held under the chairmanship of D.G,
IPO-Pakistan at the Committee Room of IPO-HQs Islamabad on
the 23rd January, 2014. In the meeting issues on IPR Enforcement
and challenges faced by Law Enforcing agencies were discussed in
detail. Following decisions were taken at the meeting:-
i. Active Coordination between IPO-Pakistan and IPR
Enforcement Agencies through regular quarterly meetings;
ii. Establishment of IPR Enforcement Coordination Committees
at other Business Centers in Pakistan (Committees at
Islamabad, Karachi and Lahore already operational);
iii. Establishment of Anti-Piracy and Anti-Counterfeiting Cells at
regional offices of FIA, Pakistan Customs and Provincial
Police Departments;
iv. Capacity building of Enforcement agencies' officials
working at operational level to deal with IP violations;
v. Establishment of specialized IP Tribunals under IPO Act,
2012;
vi. Public Awareness Campaign through electronic and print
media regarding respect for IP rights;
vii. Nomination of focal persons at IPO's offices in Islamabad,
Karachi and Lahore for coordination with Pakistan Customs
and other IPR Enforcement Agencies;
viii. Development of Booklets/Guidelines for operational level
officials of Police, FIA and Pakistan Customs.
A meeting with Director General, Federal Seed Certification
and Registration Department was held at the Director General
Office of IPO-HQs Islamabad on the 27th January, 2014.The draft
Plant Breeders Right Bill was discussed in the meeting. The
meeting was followed up with a briefing session on Draft PBR Law
and Proposed PBR Registry with Expert Mission ULC-Turkey and
officials of IPO which took place on 10th February, 2014 at IPO-
HQs Islamabad
A One Day consultative Session with Stakeholders was held to
discuss the Benefits of PBR System for Development of
Agriculture Sector and Case Studies of Turkey on 11th February,
2014 at the Committee Room of National Agriculture Research
Council Islamabad. Finally, a Wrap-up meeting to discuss the
Future Action Plan with Expert Mission of ULC-Turkey and
officials of IPO which was held on 13th February 2014 at IPO-HQs
Islamabad. On basis of above discussions a draft PBR ordinance
was prepared by IPO-Pakistan and sent to Cabinet Division. If
approved, this legislation would protect the rights of the plant
breeders in Pakistan.
D.G, IPO-Pakistan, Director Admin and D.D Law attended the
Ceremony on donation of Reference Books on Intellectual Property
Rights by European Union on 13th February 2014 at the Serena
Hotel, Islamabad. The books shall be a useful addition to the library
of IPO-HQs.
A meeting of Director General, IPO-Pakistan was held with
representatives of Commercial Law Development Programme of
US Government (CLDP) at IPO-HQs, Islamabad on 18th February,
2014. The coordinator of CLDP in Pakistan informed about their
activities in collaboration with NUST and Supreme Court of
Pakistan. He informed that under this Program they are developing
capacity of both public and private sectors in the field of
Commercial Law and Intellectual Property. Director General IPO-
3
IPO-Pakistan Quarterly Newsletter January-March, 2014
Important Events
Pakistan appreciated the efforts of CLDP team and advised that
IPO-Pakistan may be taken in loop in future initiates.
A Policy Roundtable on Intellectual Property Rights and
Information Technology: Fostering a Climate of Investment,
Entrepreneurship, and Employment in Pakistan with the U.S.
Delegates was organized on 19th February 2014 at the Competition
Commission of Pakistan Islamabad. D.G, US Delegates from
Commercial Law Division, US District Court Judge and Homeland
Security Investigations attended the roundtable. D.G, IPO
highlighted the role of IPO in strengthening the IP Regime in
Pakistan and shared his vision about the future.
D.G, IPO-Pakistan visited IPO Regional Office, Lahore to
look into the matters of functioning, structure and issues of IPO
Regional Office, Lahore on 21st February 2014. He gave a number
of directives for streamlining the working of this office.
A delegation of USTR visited IPO-HQs, Islamabad on 25th
February, 2014 to conduct a meeting with Director General IPO-
Pakistan. United States Trade Representative (USTR) issues
Special 301 Report every year which contains list of countries
where violation of Intellectual Property Rights (Copyrights,
Trademarks, Patents, Industrial Designs etc.) remains at high level.
Pakistan has been placed on the Priority Watch List in the year 2013
which indicates that Piracy (violation of copyrights) and
Counterfeiting (violation of Trademarks) is at high level in
Pakistan. The USTR delegation requested the IPO team to apprise
them of efforts being made by Pakistan to strengthen IPR Regime
in the country. The Director General, IPO-Pakistan emphasized
that Government of Pakistan is doing its level best to strengthen
IPR Regime in the country. IPO-Pakistan is in active coordination
with IPR Enforcement agencies and other stakeholders.
Specialized IP Tribunals are being established for speed justice in
IP cases. IP Strategy and future action plan is being developed for
effective and efficient IP management in the country.
A comprehensive presentation on Madrid system was given by
D.D(TM) at the office of D.G, IPO-Pakistan on 26th February
2014.
World Intellectual Property Day is celebrated every year on
26th April. Every year IPO-Pakistan celebrates this day with full
devotion zeal and zest. This year too the spirit for IP Day
Celebrations is high. In this regard a Meeting with proposed
Committee Members for celebration of World IP Day 2014was
held on 28th February 2014 at the office of DG at IPO-HQs
Islamabad. It was decided that a one-day seminar will be held on
April 24, 2014 on the theme of the year Movies A Global
Passion.
A meeting on enforcement of Intellectual Property Laws and
hearing of complaints by Stakeholders against infringement of IP
Rights was held at the Committee Room of IPO-HQs Islamabad on
5th March, 2014. The preparations for 7th TIFA Council Meeting
were also discussed in the subject meeting under the chairmanship
of Mr. Aamir Hasan, Director General, IPO-Pakistan. Senior
executives from Ministry of Commerce, Enforcement Agencies of
Pakistan i.e. Police, FIA, FBR, Pakistan Customs, PEMRA and
representatives of business community participated in the meeting.
Mr. Aamir Hasan, Director General, IPO-Pakistan took serious
notice of IP rights infringements. He advised representatives of IPR
Enforcement agencies to look into the matters proactively and
address issues of genuine right holders under intimation to IPO-
Pakistan. He said that Pakistan is already on Priority Watch List of
USA which may lead to trade sanctions on Pakistan from business
partners. The issue of IPR Enforcement will also be discussed with
US authorities in the upcoming Trade and Investment Framework
Agreement (TIFA) Council meeting. Officials from FIA, Police,
Pakistan Customs and PEMRA assured compliance for effective
enforcement of IP rights under laid down laws.
Following decisions were made for future course of action:-
i. In terms of unlawful copying of brand Honda CD Dream
Motorcycle, Messrs Atlas Honda Limited will file complaints
against infringers in the local Police Stations and updates of the
actions taken will be shared with IPO-Pakistan;
ii. The case of illegal use of EMI (Pakistan) song titled Keh
Dena Ankhon Sey by Alamgir in Lipton Tea Campaign by
Bulls Eye Advertising (Pvt) Ltd. will be handled by FIA and
updates will be shared with IPO-Pakistan;
iii. Copyright Infringement of Messrs Digital World by Messrs
Converge Technologies (Pvt) Ltd. will be handled by FIA and
updates will be shared with IPO-Pakistan;
iv. The case of illegal exploitation of Copyrighted / Licensed
content of Messrs Rockville Technologies by Messrs Evamp
& Saanga will be mutually settled between both the parties
within two weeks time. If there is no settlement, the case will
be forwarded to PEMRA for settlement;
v. Regarding preparation for 7th Trade and Investment Frame
Work Agreement (TIFA) Meeting, FIA and Pakistan Customs
will share elaborated IPR Enforcement data with
IPO-Pakistan. Mr. Umer Sheikh from EMI will forward Write-
up on copyr i ght i ssues t o be di scussed wi t h
US Authorities;
vi. In the next Meeting of IPR Enforcement Coordination
representatives from Pakistan Advertising Agency (PAS) and
Telecom Companies will be invited;
vii. Draft Rules of Directorate General of Customs will be shared
with IPO-Pakistan by Customs Intelligence for perusal and
suggestions;
viii. Inclusion of Trademarks enforcement in FIA schedule after
necessary amendments in Trademark law will be considered
by IPO-Pakistan;
ix. Recommendations will be forwarded to FIA and Police
Department to designate specialized officers to deal with IPR
Enforcement issues in the Regional Offices of FIA and IG
offices in all provinces.
4
IPO-Pakistan Quarterly Newsletter January-March, 2014
A delegation of US-Pakistan Business Council headed by Mr.
Miles Young, Chairman of the Council visited IPO-HQs,
Islamabad on 17th March, 2014 for meeting with Director General
IPO-Pakistan and other senior officers. The delegation of US-Pak
Business Council submitted a Report which stated that
counterfeiting remains a major challenge in Pakistan, both for
government authorities and industry; as counterfeit and
substandard medicines have caused major tragic incidents claiming
patient lives in Pakistan over the recent years. We urge the
government to enhance coordination between IPO-Pakistan and
the Drug Regulatory Authority of Pakistan (DRAP) which can
enhance the sustainability of the country's healthcare system. Our
members are committed to working with government officials,
private sector, and stakeholders to contribute to strengthen
implementation of Intellectual Property laws and help promote an
innovative society in Pakistan.
The IPO team led by the Director General shared the following
developments with the U.S team:
i. Coordination with DRAP:- In the backdrop of above-
mentioned observations it is stated that IPO-Pakistan since its
establishment in 2005 has close collaboration with Drug
Regulatory Authority of Pakistan (DRAP). Representative of IPO-
Pakistan is regular member on the Drug Registration Board of
DRAP. Formerly Controller Patents and currently Assistant
Director (Patents) attended meetings of Drug Registration Board
regularly. IPO-Pakistan has actively coordinated the issue of 'data
protection' for new drugs with DRAP. However, there is need to
further strengthen coordination between IPO-Pakistan and DRAP
for early approval of 'Data Protection' rules/regulations by the
Federal Government to comply with Trade Related Aspects of
Intellectual Property Rights Agreement (TRIPS) of WTO.
ii. Amendment in IP Laws:- During the years 2000-2002 IP laws
of Pakistan (Patents, Trademarks, Copyrights, Industrial Designs
etc.) have been revised in consonance with TRIPS Agreement of
WTO. IPO-Pakistan was established in the year 2005 as an
integrated IP Organization and it has been given permanent status
by enactment of IPO Act, 2012. Currently IP legislation in Pakistan
is completely in line with its international obligations.
iii. Improvement in Service Delivery:- After establishment of
IPO-Pakistan in 2005 all types of Intellectual Property
management have been integrated under one umbrella
organization. Service delivery has been improved by digitization of
Important Events
5
IPO-Pakistan Quarterly Newsletter January-March, 2014
the data of IP Applications; automation of IP Registries; E-
Publication of Trademarks Journal; and Capacity Building of the
Officers of IPO-Pakistan at national and international level.
iv. Effective IPR Enforcement Coordination:- IPO-Pakistan has
close collaboration with IPR Enforcement agencies (Police,
Pakistan Customs, Federal Investigation Agency (FIA) etc.) for
effective enforcement campaign in the country. Periodic
Enforcement Coordination Committee meetings in Islamabad,
Lahore and Karachi are being held with the Enforcement Agencies
to address the infringement issues of IP right holders. IPR
Enforcement coordination is one of the key functions of the
Organization. IPR Enforcement has been meticulously structured
at the policy level, supervisory level and operational level. At the
operational level, enforcement coordination has been
institutionalized through the Enforcement Coordination
Committees, comprising all agencies in the enforcement chain. Its
membership comprises of IPO-Pakistan, FIA, Police, Pakistan
Customs, PTA and PEMRA. Private sector has also been taken into
loop at the forum of IPR Enforcement Coordination.
Representatives of Anti-Counterfeit and Infringement Forum
(ACIF); Pakistan Industrial & Intellectual Property Rights
Association (PIPRA); Federation of Pakistan Chambers of
Commerce and Industry (FPCCI) and Overseas Chamber of
Commerce and Industry (OICCI) are invited in the meetings of IPR
Enforcement Coordination Committees. Under Section-16 of IPO
Act 2012, Intellectual Property (IP) Tribunals will be established by
the Federal Government for speedy disposal of the infringement
suits pending in any court instituted under Intellectual Property
laws.
v. Future Strategy/Action Plan:- IPO-Pakistan is devising a
Strategy and Action Plan for strengthening IP regime in the country.
A holistic approach needs to be pursued for this purpose. After
extensive brainstorming sessions and utilizing techniques like
SWOT Analysis, STEEP Analysis etc. a comprehensive strategy
and action plan has been prepared which focuses on actions to be
taken in the short term, medium term and long term. It also
identifies the key actors/organizations who shall be responsible for
implementing each action, time frame and resource implications.
Since IPO is functioning under the Cabinet Division, which is
directly under the charge of the honorable Prime Minister, the
Strategy/Action Plan has been sent to the Cabinet Division and
once approved by the competent authority, shall be implemented by
IPO in collaboration with the concerned stakeholders/agencies.
vi. Recommendations:- On the basis of facts mentioned above,
the U.S team was requested to inform its members that IP friendly
environment has been set up in Pakistan during last decade since
establishment of IPO-Pakistan. Political will, administrative
firmness and efficient management of IPO indicates determination
of the Government of Pakistan to effectively address IP issues in the
country for development of genuine businesses and to curb twin
menace of piracy and counterfeiting.
A Meeting for discussion on Action Plan/ Strategy for IP
Protection in Pakistan was held on 17th March, 2014 at the DG
Office of IPO-HQs Islamabad. After extensive brainstorming the
Action Plan/strategy was finalized and sent to the Cabinet Division
for approval.
A Media Awareness Seminar on Copyright Laws violations in
Pakistan held on 25th March, 2014 at the Margalla Hotel
Islamabad. It was organized by the Oxford University Press. D.G,
IPO-Pakistan shared his ideas with the media persons during this
seminar.
A seminar on Enforcement of Copyrights Laws in Pakistan
was conducted. The statistics given by speakers showed that the
Government is losing Rs. 25 million annually due to copyrights
violations. Director General, IPO-Pakistan was the guest speaker
he stated that a summary for the establishment of IP Courts in the
country was sent to the government and once it is approved the
intellectual property cases would be resolved in time. He suggested
that IPR violations can only be curbed the punishments should be
enhanced to create effective deterrence and special IP Enforcement
squads be established to take quick and effective action against the
violators.

Important Events
6
IPO-Pakistan Quarterly Newsletter January-March, 2014
Capacity Building
Mr. Zahid Rasool, Assistant Registrar, Trademarks Registry,
Karachi attended the Training Course on Industrial Property
Examination (Basic Program) held in Tokyo Japan from 20/1/2014
to 31/1/2014.
Mr. Nasir Zahid, Assistant Director, IPO-HQs, Islamabad attended
the WIPO Training Course on IP Management and the Formulation
and Implementation of Result-Based IP Office Plans held in Tokyo
Japan from 29/1/2014 to 2/5/2014. Mr. Muhammad Ashfaq,
Deputy Secretary, Regulatory Authorities Wing (RA), Cabinet
Division, Government of Pakistan, Islamabad also accompanied
Mr. Nasir Mehmood Zahid.
Syed Nasrullah, Deputy Registrar, Trademarks Registry, Karachi
participated in the 9th Session of Advisory Committee on
Enforcement held in Geneva from 3/3/2014 to 5/3/2014.
Ms. Nadia Shah, Deputy Director, IPOHQs, Islamabad
participated in 31st Session of the Standing Committee on the Law
of Trademarks, Industrial Designs and Geographical Indications
(SCT) held in Geneva Switzerland from 17 to 21 March 2014
Ms. Humera Ihsan, Assistant Director, IPO-HQs, Islamabad
attended the 27th Session of the Intergovernmental Committee on
Intellectual Property and Genetic Resources, Traditional
Knowledge and Folklore (GRTKF) 24th March 2014 to 4th April,
2014 in Geneva Switzerland.
Mr. Aamar Latif, Assistant Director (Law) completed his Master of
Laws (LL.M.) in Intellectual Property from Turin School of
Development, University of Turin, Italy on 28th February, 2014 under
the European Union TRTA-II project. He conducted research on the
topic of Exploring the Provisions for Precluding Patent Ever
greening: Path Forward after the Glivec Saga wherein he analyzed
the provisions from Indian and Argentine patent laws and guidelines
for examination of pharmaceutical patents which creates balance
between monopoly on medicines and access to medicines in light of
famous Glivec case, a cancer drug whose patent was refused in India
on several grounds, inter alia, lack of novelty and efficacy under
Section 3(d).
7
IPO-Pakistan Quarterly Newsletter January-March, 2014
IP Statistics
8
Statistical Data Chart of Revenue Received at
IPO-Regional Office, Lahore in 1st Quarter of 2014
Statistical Data of Different IP Applications Received
at IPO-Regional Office, Lahore in 1st Quarter of 2014
Statistical Data of Different IP Applications Received
at IPO-Regional Office, Lahore in 1st Quarter of 2014
Statistical Data of Revenue Received
at IPO-Regional Office, Lahore in 1st Quarter of 2014

Statistical Data of Different IP Applications Received and granted at
Patent Office Karachi, in 1st Quarter of 2014

DESIGN APPLICATION EXAMINED
DESIGN APPLICATION PENDING
PATENT APPLICATION PENDING
DESIGN APPLICATION FILING & REGISTRATION
13
14
15
42
61
68
162
291
0
04
0
04
15
10
03
28
15
14
03
32
January
February
March
Total
Month
Patent Application Filed Patent Granted
Local Foreign Total Local Foreign Total
PATENT APPLICATION FILLING & GRANTED
PATENT APPLICATION EXAMINED
IPO-Pakistan Quarterly Newsletter January-March, 2014
Write-ups
Examination Practices Of Different
Patent Offices Globally
9
Globally, a new debate on how to reduce work load & eliminate
duplicated procedures for both applicants and IP offices is going
on these days. This is based on the fact that work products of other
national offices & dependence approach on Higher quality
international search reports (ISRs) should be thoroughly and
efficiently utilized for the patent applications which are based on
the same priority or which are filed in other conventional
countries. It is considered worldwide that sharing and utilizing the
results among a number of IP offices result in achieving higher
quality prior art searches and minimizing the examination time.
At the Meeting of International Authorities under the PCT in
February 2013, the issue of promoting linkage between the
international phase and the national phase was discussed in set of
proposals from the Japan Patent Office. Following a first round of
comments the International Bureau posted some follow-up
questions which were then answered by European Patent Office,
Canada, Japan, Australia, Philippines, Russia and Portugal.
These countries emphasized in their answers on enhanced
utilization of work products, prior art search results and
examination results provided by foreign patent offices to
minimize unnecessary duplication of work & to allow an
improvement of the quality of patents. This sharing of work in not
only applicable to PCT Applications but also for any priority
based application or the patent application filed in any other
conventional country.
Japan:
In the examination of overseas-related applications including
national phase of PCT applications, in order to reduce the
examination workload and to improve the quality of the
examination, the Japan Patent Office considers it is important to
effectively use prior art search results and examination results
provided by foreign patent offices.
The practice of Taking into account the Results of Earlier
Searches can also be applied in the cases in which the
international application claims priority based on the earlier
international application.
Therefore, the JPO provides Guidelines for the Use of Prior Art
Search Results and Examination Results Provided by Foreign
Patent Offices and examiners follow prescribed procedures.
According to the guidelines, the examiner shall carry out a prior
art search through the following procedure (in case without search
results by a registered search agency).
The examiner is not required to carry out an additional
prior art search, if the examiner considers it possible to conduct an
examination precisely and efficiently by using the results
provided by a foreign patent offices.
The examiner shall carry out an additional prior art
search, if the examiner considers it impossible to conduct an
examination precisely and efficiently by using only the results.
The examiner may carry out an additional prior art
search before referring to the results, if the examiner considers it
possible to find relevant prior art documents more efficiently by
carrying out a prior art search rather than referring the results.
Philippines
The Intellectual Property Office of the Philippines (IPOPHL)
uses the International Search Report, written opinion of the
International Searching Authority (WO/ISA) and the
International Preliminary Report on Patentability (Chapter II)
(IPRP) as references during substantive examination of national
phase entry applications, and the search and examination works of
the Offices of First Filing (OFF) for an accelerated examination
under the Patent Prosecution Highway program.
The IPOPHL examiner determines whether the available search
results are enough to proceed with substantive examination. If
not, he/she may conduct a further search.
She/he may also use the Written Opinion/ISR and International
Preliminary Examination Report as foundation of his/her
examination strategy.
Another usual practice in the Philippines is to suggest to the
applicant whose earlier application filed in another country has
already been granted a patent, particularly by the USPTO, EPO &
JPO, to conform the claims of the Philippine application to the
allowed claims to obtain a direct allowance in the Philippines.
Russia
Russia uses a similar approach as one described by Japan for
reducing the search examination load and improving the quality
of the examination at the national phase, namely by utilizing to the
maximum extent the information products obtained at the
international phase of PCT.
Portugal
The Portuguese Institute of Industrial Property (INPI) also have a
similar procedure as JPO regarding the use of search products
provided by other offices. INPI always takes into account the
work done by other Patent Offices, both in search and
examination, in order to complement its own work. The
Portuguese Office has the possibility to consult search reports,
written opinions and other documents available in Epoline
Register Plus and PatentScope, as well as in other national offices'
websites. As an example, the Portuguese Office uses, when
available, the international reports and written opinions produced
by ISA authorities in the international phase of a PCT application,
for helping the production of its own examination in the national
phase of that PCT application. This documentation makes the
process of search easier for the national examiner since it provides
a correct classification and the most relevant state of the art
considered by the other office. We believe that document sharing
among offices, as well as sharing best practices, allow an
Tafseer Fatima
Patent Examiner
IPO-Pakistan Quarterly Newsletter January-March, 2014
10
improvement of the quality of patents.
Australia
IP Australia encourages its examiners to efficiently use the work
products from the international phase and the work products
established by other Offices in the national phase (Foreign
Examination Reports, or FERs). Where the search has been
limited in the international phase and a full search has not been
previously conducted IP Australia may conduct a further search.
However in general we endeavor to re-use work conducted in
another office to the maximum extent possible to minimize
unnecessary duplication of work.
Canada
To increase efficiency in examination, CIPO utilizes foreign
search results for the corresponding PCT application and patent
family members as part of our standard examination process and
we do not repeat the work of said foreign offices (ISA, EPO,
USPTO, etc). If foreign search results are available, the examiner
may conduct a further search, for example on subject matter
which was not part of the foreign search but is considered relevant
by the CIPO examiner. The extent of the scope of this further
search is generally at the examiner's discretion, with the minimum
search required is for relevant art which may not have been
available at the time of the foreign search. CIPO examiners
perform a comprehensive search of all available prior art only
when there is no foreign prosecution, the foreign search results
fails to reveal applicable prior art and the granted claims at the
foreign office are narrower than the pending Canadian claims, or
the independent claims in the pending Canadian application were
excluded from consideration by a foreign search authority.
EPO
The examiners at the EPO will take the search report and any
opinion into account when conducting a supplementary search for
the European phase. In doing so the examiner in charge is
considered to be the person best suited to decide, based on his/her
experience in the field, what can be used and what not. The
examiners would never "ignore" the report, but would at least take
it as a good starting point for the supplementary search.
Final Notes:
Based on the above, it is clear that the examination practices of
each of the Patent offices are based on utilizing search results
(ISR) conducted by International Search Authorities (i.e. ISA) or
on work done by other offices. This is a general practice for every
office. Similarly, the Pakistan Patent Ordinance also allows the
examiners to utilize the searches of other offices U/S 20 which
states that:
Power of Controller to require certain information and documents
relating to foreign application.-
(1) The applicant shall, when required by the Controller, furnish
him with the date and number of any application for a patent filed
by him abroad, hereinafter referred to as foreign application,
relating to the same or essentially the same invention as that
claimed in the application filed in Pakistan.
(2) The applicant shall, when required by the Controller, furnish
him with the following documents relating to one of the foreign
applications referred to in sub-section (1), namely:-
(i) a copy of any communication received by the applicant
concerning the results of any search or examination
carried out in respect of the foreign application;
(ii) a copy of the patent granted on the basis of the foreign
application; and
(iii) a copy of any final decision rejecting the foreign
application.
(3) The applicant shall, when required by the Controller, furnish
him with a copy of any final decision invalidating the patent
granted on the basis of foreign application referred to in sub-
section (1).
IP offices are not only utilizing search results (ISR) conducted by
International Search Authorities but in addition to this another
kind of cooperation in case of Patent Examination among several
national patent offices began in the recent past which is called as
Patent Prosecution Highway (PPH).
The Patent Prosecution Highway (PPH) is a set of initiatives for
providing accelerated patent prosecution procedures by sharing
information between some patent offices. It also permits each
participating patent office to benefit from the work previously
done by the other patent office, with the goal of reducing
examination workload and improving patent quality.
So PPH is actually a work sharing agreement between two or
more patent offices which allows examiners of one patent office
to reuse search and examination results already conducted by
another patent office. The PPH is particularly desirable for
applicants looking for fast patent protection in a small number of
countries and/or for patent families with claims of identical scope.
All PPH agreements are currently bi-lateral and at present there
are 15 offices in the PPH network including the USPTO, JPO
(Japan Patent office) and the EPO, with China's SIPO set to join
the network having made a provisional agreement with the
USPTO. The IPO currently has three PPH agreements with the
USPTO, JPO and KIPO (Korean Intellectual Property Office).
In case of PPH, countries are not only allowed to use the search
results conducted by another patent office but they are even
allowed to access examination/ office actions already issued by
another patent office.
However; this is a search sharing (rather than mutual recognition)
initiative. The examiner in the Patent Office still ensures that an
application complies with the requirements of the national Patent
Ordinance, but utilizing the search results of ISR inevitably
reduces the burden of Patent Search and enhances the quality of
Patent Examination.

Write-ups Write-ups
IPO-Pakistan Quarterly Newsletter January-March, 2014
Pre-Requisites of Accession
To Madrid Protocol
Ch. Asfand Ali
Deputy Director (TM)
The Madrid Protocol is a part of the Madrid System for the
International Registration of Marks. Madrid System is composed of
two separate treaties namely Madrid Agreement concerning the
International Registration of Marks and Protocol relating to the Madrid
Agreement concerning the International Registration of Marks. Due to
the lengthy names, the former usually referred as the Madrid
Agreement or sometimes only Agreement and the latter usually
referred as the Madrid Protocol or sometimes only Protocol. The
Madrid System is administered by the World Intellectual Property
Organization (WIPO), a specialized agency of the United Nations for
developing a balanced and accessible International Intellectual
Property System.
The members of the Agreement and the Protocol forms a Madrid Union
and as on October, 2011, 92 countries are members of the Madrid
Union. Out of which 56 countries are members of the Madrid
Agreement and 91 countries are members of the Madrid Protocol.
Apparently, the total number of countries in the Madrid Union are less
as compared to the sum of number of countries members to the
Agreement and the Protocol, this is because of the fact that some
countries are members of the Agreement, some countries are members
of the Protocol and some countries are members of both the Agreement
and the Protocol.
Any state that is party to the Paris Convention for the Protection of
Industrial Property may become a party to the Madrid Protocol. In
addition to the states, an intergovernmental organization may also
become a party to the Madrid Protocol (but not the Madrid Agreement)
where the following conditions are fulfilled:
i. At least one of the Member States of the organization is a
party to the Paris Convention; and
ii. The organization maintains a regional office for the purposes
of registering marks with effect in the territory of the
organization.
The States that are party to the Madrid Protocol are referred as
Contracting States and the Organizations which are
party to the Madrid Protocol are referred as Contracting
Organizations. Collectively, the Contracting States and
Contracting Organizations are termed as Contracting
Parties. The Contracting Parties of the Madrid Protocol and
the Contracting States of the Madrid Agreement are members of the
Madrid Union that is a special union established under Article 19 of the
Paris Convention. Every member of the Madrid Union is a member of
its Assembly.
The applicant may file the application for the international registration
of mark in the National Trade Marks Office referred to as the Office of
Origin in the context of Madrid Protocol. The Office of Origin shall
certify that the particulars appearing in the international application
correspond to the particulars appearing in the basic application or basic
registration.
The International Bureau of WIPO is responsible for the international
registration of marks as well as all other administrative matters
concerning the Madrid Protocol. After receiving the international
application from the Office of Origin, the International Bureau of
WIPO establishes that the application has all the necessary
information, the international classes are properly mentioned and the
required fee has been paid. If the applications met the aforesaid criteria,
the International Bureau will register the mark to its international
register and publishes the mark in the WIPO Gazette of International
Marks. At this stage, the International Registration does not mean that
the mark is registered in all the designated Contracting Parties. Rather,
it means that the applicant for the international registration gains the
right to apply for registration in the Contracting Parties and if any
designated Contracting Party refuse to register the mark, the
international registration will remains in force and the applicant is
eligible to apply in other Contracting Parties of the Madrid Protocol. It
must be in the fitness of things to say that the applicant may only
designate that Contracting Party who is the member of the same treaty
as that of his Office of Origin. Therefore, if a country is a member of the
Agreement, it can only designate that Contracting State which is
member to the Agreement. Similarly, if a country is a member of the
Protocol, it can only designate that Contracting Party which is member
to the Protocol. Whereas, a country that is member of the Madrid
System has the liberty to designate both the Contracting State that is
member to the Agreement and the Contracting Party that is member to
the Protocol.
The International Bureau of WIPO will forward the international
application to the designated Contracting Parties that are mentioned in
the international application. The Trade Marks Office of the designated
Contracting Party will treat the international application in the same
manner as it treats its national applications. In other words, the
international application for the registration of a mark will be examined
according to the National Trade Marks legislation of the designated
Contracting Party. The Trade Marks Office of the designated
Contracting Party is under obligation to the Madrid Protocol to issue a
statement of grant of protection, if it decides to extend protection to the
mark, within twelve months after receiving the notice from the
International Bureau or eighteen months, if declared separately, which
may be further extended in case that the Trade Marks Office of the
designated Contracting Party inform the International Bureau that
oppositions might be filed with respect to the international registration
or sent a notification of refusal based on an opposition, but not more
than seven months after the beginning of the opposition period. If
office of the designated Contracting Party is not been able to register
the mark within 12 or 18 months, as the case may be, then it must issues
a notice of provisional rejection to the applicant within the prescribed
period as mentioned above. It should be noted that if a provisional
rejection is not issued to a mark within the prescribed period, the mark
will be granted the same protection as given to an application filed
directly to the Trade Marks Office of the designated Contracting Party.
All proceedings after the provisional refusal are between the right
holder of the international registration and the Trade Marks Office of
the designated Contracting Party.
Write-ups
11
IPO-Pakistan Quarterly Newsletter January-March, 2014
The international registration depends on the national registration of
the mark for the first five years. If during this time period, the national
registration of a mark is lapsed by any means then the international
registration will be automatically cancelled. Similarly, if the basic
registration of the mark is cancelled as a result of any type of action that
was started within the period of five years then again the mark will be
revoked from the international register and consequently in the
designated Contracting Parties.
But, after the period of five years, the international registration is
independent to that of the national registration of the mark provided
that no adverse action taken during the first five year period that could
still result in cancellation of the national registration of the mark.
However, if the international registration is cancelled through the
Central Attack, the owner of the international registration may apply
for the registration of the same mark with the offices of all the
designated Contracting Parties where the registration had effect and
whose designation was governed by the Madrid Protocol within three
months after the international registration is cancelled by Central
Attack. The national applications that results from the aforesaid
procedure are known as Transformations and are given the date of
the original international registration. It should be noted that the
mechanism of transformation of international registration in to
national or regional applications is not available where the owner
himself opted to cancel the international registration.
The international registration of a mark may be renewed for a period of
ten years from the end of the preceding period by submitting the
relevant form for renewal of international registration and paying the
necessary fee to the International Bureau of WIPO. There are three
acceptable languages in which the international registration of marks
can takes place in Madrid Protocol. These languages are English,
French and Spanish. The members of the Madrid Protocol are bound to
use any of the three languages mentioned above otherwise the
members of Madrid Protocol will have to hire the services of
translators who will translate from one of the official languages of
Madrid Protocol to the official language of their own countries.
The application for the international registration of a mark under
Madrid Protocol is filed in the Office of Origin then the application is
forwarded to WIPO that subsequently forward the application to the
designated Contracting Parties. At the first stage, the Office of Origin
may collect the following fees:
Fees for the international registration of a mark from the
applicant;
Fees for the renewal of the international registration from the
right holder of the mark.
Fees for transformation of international registration in to
national applications;
Fees to record replacement of registered Trade Mark with
international registration;
Fees for filing of address for service/agent; etc.
For the second and third stages of the application, the applicant must
pay fee in advance to the International Bureau of WIPO prescribed as
under:
i. A basic fee of 653 Swiss francs for filing the international
application or 903 Swiss francs where the mark is in colour;
ii. A supplementary fee of 100 Swiss francs for each class
(exceeding more than 3 classes) of the International
Classification that is the Nice Classification of goods and
services beyond three classes; and
iii. A complementary fee of 100 Swiss francs for the designation
of each designated Contracting Party.
There is a concession in the basic fee for the applicant for international
registration whose Office of Origin belongs to a Least Developed
Country in accordance with the list established by the United Nations.
The basic fee is reduced to 10% of the prescribed amount. In such case
the basic fee is reduced to 65 Swiss francs for filing the international
application or to 90 Swiss francs where the mark is in color.
At the end of each year, the annual product of the various receipts from
International Registration shall be divided equally among the
Contracting Parties by the International Bureau after deduction of the
expenses and charges necessitated by the implementation of the
Madrid Protocol. The International Bureau of WIPO will also divide
the supplementary and complementary fees among the Contracting
Parties in proportion to the number of marks for which the protection
has been applied for in each Contracting Party during the year.
However, any Contracting Party has the right to receive an Individual
Fee instead of a share in the revenue generated by the supplementary
and complementary fees whose amount shall be indicated in the
declaration and can be changed in further declarations. It should be
noted here that the individual fee fixed by the Contracting Party may
not be higher than the equivalent amount which the assumed
Contracting Party will receive from an applicant for a ten year
registration or from the holder of a registration for a ten year renewal of
that registration.
INTELLECTUAL PROPERTY ORGANIZATION OF PAKISTAN
23, STREET NO. 87, ATATURK AVENUE (WEST) SECTOR G-6/3, ISLAMABAD
PH: 051-9208581-2, FAX: 051-9208157
URLhttp;//www.ipo.gov.pk,
IPO-Pakistan Newsletter Committee
Kashif Latif Malik
Assistant Director
Humaira Shakeel
Assistant Director
Aamar Latif
Assistant Director
Write-ups