Basics of Intellectual property laws in Pakistan.

1. Saad Nusrullah
BE, LLM-IP(Italy)
saad@hamayuns.com
BASICS OF IP LAW

2. OUTLINE
 Intangible and tangibles Assets
 What is IP
 Different kinds of IP
 Registration requirements and procedure
 A few reasons of protecting IP
 A few statistics

3. Imagination is the beginning of creation.
(George Bernard Shaw)
Imagination is more important than knowledge
(Einstein)

4. Business Assets

5. INTELLECTUAL PROPERTY
Intellectual Property
IP refers to creations of mind
Result from, the intellect such as Ideas (intangible)
Everyone has an idea what sets people apart is
execution
Intellectual –Power of
mind to think/acquire
knowledge
Property-Something which
can be owned, possessed,
enjoyed, used, transferred

6. Inventors, Artists, writers convert
ideas into tangibles

7. INTELLECTUAL PROPERTY
 Innovative
product/process
 Literary and
Artistic work
 Creative Design
 Distinctive
signs/logos/word
 Trade secrets

8. Intellectual Creation Cycle

9. Kinds of IP

10. KINDS OF IP
Patent
Trade Secret
Trade Dress
Design
Trademark
Copyright
Product & /
Services
GI PlantVariety
TK
Semiconductor

11. TRADEMARKS
 signs
 distinguish goods/services
 one enterprise from those of other
enterprises

12. 12
Word Marks
Just do it

13. figurative marks
13

14. 3-D Marks
14

15. 15
COLOURS OR COMBINATIONS
(colour marks)

16. 16
SOUNDS (sound marks)
 

(Sound of tennis balls being hit)

(Tarzan yell)
 (Popping)

17. 17
Types of marks

18. TM registration requirements
Distinctiveness
- Inherent
- Acquired
Generic term
Descriptive term
Deceptive term
Against morality
Flags/hallmarks
Shape of the product
Identical/similar to
earlier marks

19. Similarity
Signs
Visual Oral conceptual
Goods/
services
Class Purpose consumers

20. TM Registration procedure
Search
Filing
Examination
Acceptance
Publication
Registration

21. “DESIGNS”
Functional /
utilitarian
Patents
Ordinance
Purely
artistic works
Copyright
Ordinance
Designs with
eye-appeal & capable of
Industrial application
Designs
Ordinance

22. Industrial Design
 2D or 3D features of shape, configuration,
pattern, ornament
 Applied to any article by any industrial
process or means
 The finished article appeals to the eye
“The Appearance of a Product”

23. 23
EXAMPLES

24. Examples

25. EXAMPLES
25

26. EXAMPLES
26

27. Are all designs registerable?
 No. Must meet certain requirements
Must be NEW and ORIGINAL
Must NOT be contrary to public order or
morality
Must NOT be dictated by technical
function

28. Novelty
Lace pattern
was held to
have been
infringed

29. Novelty

30. Novelty

31. Assessment of Public Order and/or
Public Morality

32. Procedure

33. Rights granted
 Right to exclude others from making,
using, selling, offering for sale,
importing
 Right to license, assign
 Right to initiate action against infringer
Territorial & for limited duration-30
years(10+10+10)
T

34. Copyright
Literary
works
Artistic
works

35. Copyright

36. COPYRIGHT
36

37. Copyright
37

38. Related Rights

39. COPYRIGHT
Copyright only protects the
expression of the idea, not the
idea itself.
39

40. CR registration requirements
Original
Fixed
Ideas
Facts
I. Designs

43. What are inventions
Necessity is the mother of invention
Generally speaking, an invention is
a solution to a technical problem
“invention” means any new and
useful product or process
 includes any new and useful improvement

44. Inventions
Most people think that
invention is a major
breakthrough made by R&D
laboratories or universities
44

45. Examples
45

46. Inventions
Most of the inventions are
incremental made by
individual inventors
46

48. Paper clip was patented by Norwegian,
Johan Vaaler in Germany, 1899

49. 49

51. Examples
51

52. Examples
52

53. Patents are all around us
Major discovery

54. INVENTION
INVENTIVE
STEP
(Not
obvious)
mere change
of size
NOVELTY
(not available/
known to
public)
INDUSTRIAL
APPLICATION
(Useful)
- Patentable subject matter
- Sufficient disclosure
compliances compliances

55. Patentable subject matter
 Discoveries and scientific theories
 Aesthetic creations
 Schemes, rules and methods for performing
mental acts
 Inventions that affect public order, morality or
health
 Diagnostic, therapeutic and surgical methods of
treatment for humans or animals
 Plants and animals other than microorganisms;
and
 Computer programs

56. How to get a patent
 For Filing
Prescribed
form
Specification
Fees

57. Structure of the description
 Prior art
 Teapot with one spout
 Drawback of prior art
 Time-consuming
 Problem to solve
 Reduce filling time
 Solution
 Provide a second spout
 Advantage of the invention
 The time needed to fill multiple
cups is reduced

58. Rights granted by a patent
 Right to prevent or stop others from making,
using, offering for sale, selling or importing a
product or process;
 Right to assign, transfer, grant license;
 Right to institute court proceedings against
anyone who uses invention without consent.

59. The "social contract"
Reveal
invention
Get
exclusivity
… so that others can learn from it
and improve upon it!

60. What not to do when considering filing a patent
application
• No publication prior to filing
e.g. no article, press release, conference
presentation/poster/proceedings or blog entry
• No sale of products incorporating the invention
prior to filing
• No lecture or presentation prior to filing
except under a non-disclosure agreement
(NDA)
• Seek professional advice soon!
• File before others do!

61. 25% of all R&D efforts ...
… are wasted each year on inventions that have already
been invented.
Don't start your R&D until you have
done a search!

62. Much information only available in
patents
Published
elsewhere
Published
in patents
80% found only in patents!

63. Solutions found in patent documents
10%
Protected
90%
Free to use
You can find many great solutions for free!

64. IP LAWS
-TM ORDINANCE, 2001
-TM RULES, 2004
-CR ORDINANCE, 1962
-CR RULES, 1967
-PATENTS ORDINANCE,
2000
-PATENT RULES, 2003
-REGISTERED
DESIGNS ORDINANCE,
2000

65. IPRS
Exclusive right-Prevent others from
making, using, offering for sale, selling
or importing not right to use
Granted for a limited period(10, 20,
30)
by the government/state (Hence
territorial)

66. Enforcement of IPRs
 OWNER OF IS RESPONSIBLE
 MONITORING THE USE
 IDENTIFYING ANY IMITATOR/COUNTER-
FEITER
 DECIDE WHETHER, HOW, WHEN TO
TAKE ACTION
 Arbitration/mediation
 civil(Injunction, damages)
 criminal (imprisonment, fine or both)

67. Protection abroad
National Route
•with national Offices
•different procedures
•different languages
•fees paid in local
currency
•(usually) through
a local agent
VS International
Route
 with WIPO only
 one procedure
 one language
 fees paid in
Swiss francs
local agent not
necessary
67

68. Importance Of Learning and
protecting IP
 IP is every where
 Valuable- Everything worth copying is
worth protecting
 Promote creativity
 Avoid Infringement

69.  Author J.K. Rowling
converted her
imagination to the true
intellectual property
magic (she earned
approximately EUR 750
Million from her
COPYRIGHT).
69
Harry Potter

70. 70

71. Most Valuable Brands
Trademark Brand Value ($bil)
104.3
56.7
54.9
50.7
47.3
Sources: Thomson Reuters Fundamentals via FactSet Research System;
Forbes.

72. Patent applications per year worldwide
Year in which application filed
Number
of
inventions
for
which
patent
protection
sought

73. Patent Applications by Top Fields of Technology

74. Patent Applications in Pakistan

75. Filing rates at selected patent offices

76. Design Applications in Pakistan

79. 79

81. Thank you
HAMAYUNS Legal & IP Consultants
105-C, GOR V, Faisal Town, Lahore.
www.hamayuns.com