The Counsel

Intellectual Property
by Sharmeen A. Khan
Director & General Counsel, Pfizer Laboratories

Traditionally, Pakistan has been viewed as a country with a weak Intellectual Property (IP) regime and that has been one of its biggest barriers to trade. In 2005, the Federal Government had indicated that it recognized this fact. Once Intellectual Property Rights (IPRs) are strengthened new economic players will automatically enter into our investment arena, such as innovative medicine makers, researchers and development in all sectors like IT and biotechnology, publication houses and similar industries that are predicated on the intellectual product. It appears that the Government has started active architectural work for broadening IPRs, enriching IPRs and making them accessible to everyone. The need for achieving the above is to amend the existing legislation and to enforce it accordingly. But prior to amending legislation, there is a need to build institutions which demonstrate the capacity and ability to develop, direct, promote, and primarily influence the IP environment of Pakistan. The existing scenario until recently was that our IP related offices (the Patent office, the Trademarks office, the Copyrights office), were understaffed, under resourced and lacked skilled personnel.  

The last building on G-6/3 street 87 in Islamabad, is a comfortable clean white structure, which houses the Intellectual Property Organization of Pakistan – commonly referred to as IPO Pakistan (www.ipo.gov.pk). The IPO Pakistan is the first of its kind and its inhabitants must be looked at as having broken new ground. IPO Pakistan initially came into existence due to the Intellectual Property Organization of Pakistan Ordinance, 2005 (IPO Pakistan Ordinance), re-promulgated several times and has now been placed before Parliament for ratification. IPO Pakistan comes under the administrative control of the Cabinet Division. The IPO Pakistan Ordinance brings the Trademark office, the Patent office and the Copyright office under the administrative control of  IPO Pakistan . These offices would continue working by their respective charters and laws, but IPO Pakistan would have the mandate to hear complaints against them, to enforce IP related laws upon them, to allocate budget or to coordinate their activities. This leads to one window operation and creates a tremendous facility for IP related issues.

An institution dedicated to IP promotion and IP resolution is a huge step towards an IP rich environment and it demonstrates that the Government is ready to change the face of the existing IP environment. IPO Pakistan is empowered to issue directives that would lead to a paradigm shift in the way IPRs were once enforced in Pakistan.

One of the mandates of this organization is to promote an IP rich environment in Pakistan by inter alia developing manpower, IT infrastructure, policies and advice to the government. With an independent budget, IPO Pakistan has the power to guide or direct other arms of the Government in order to enforce, protect and strengthen IPRs. Arguably, it can issue policy related directions to the Ministry of Health (MOH) prompting it to take steps to prevent the violations of patents or to adopt data exclusivity legislation. However, its power in this regard is still to be tested. It is noteworthy that the Board of IPO Pakistan has been empowered to regulate itself and to carry out its objectives by drafting and promulgating rules and regulations, as traditionally the Federal Government keeps such powers with itself.

Despite the fact that only IPO Pakistan has been mandated to enforce and enrich IP regime, multinationals and other stakeholders must also accept their responsibility in this monumental task. IPO Pakistan is after all not even a year old and needs all the support it can get from all stakeholders. The stakeholders may provide support in many ways: (i) by partnering with IPO Pakistan, they can highlight the ways in which the IPO Pakistan may advise the Government on IPRs and (ii) by providing policy papers or discussion papers and (indeed many multinationals already provide such support). These are especially required as one of the obligations on IPO Pakistan is to develop working manuals, references, materials and procedures in order to build capacity and improve the protection of IPRs.

This author recommends creating a national network and partnership forum which would bring together, IPO Pakistan, Government, MOH, IP researchers, NGOs and multinationals to identify priorities and promote coordination in effective prosecution of IP infringements. 

The Way Forward:
Apart from the abovementioned partnerships, another step that is proposed here is the creation of special courts for IP enforcement. The IPO Pakistan legislation may be amended to incorporate IP focused tribunals. This proposal is made in view of the fact that the Courts of Pakistan are already heavily burdened with dispute.

The Federal Government has always reserved the right to establish special courts under specific legislation to administer the provisions of legislations. These Courts would consist of specialist judges and would have such powers of administration as are given to District Courts. The next steps would be that the Federal Government amend the existing IP framework, inter alia, the Patents Ordinance, 2000, the Trademarks Ordinance, 2001 and the Copyright Ordinance, 1962, so that the infringement complaints under these acts are filed with the special IP court. Appeal against the decision of the IP courts would lie with the High Court and preferably with a Division Bench as in the case of other laws such as the Insurance Ordinance, 2000.  The appellate mechanism to address refusals of grants of patents, trademarks or copyright given under their respective legislation should, however, remain intact. The amendments in the IPO Pakistan Ordinance would have two objectives. Firstly, to provide effective enforcement of rights granted under the IP legislation and, secondly, to provide for a speedy and cost effective method for prosecution and disposal of cases involving IP infringements and matters falling under the domain of IPO Pakistan. It must be highlighted that a detailed institutional framework would have to be developed for the establishment of the IP courts for which prior consultations should be held with all stakeholders.

Regarding the jurisdiction of IP courts, it is reiterated that these should have the same powers conferred on a District Court by the Civil Procedure Code, 1908 (CPC) and any appeal against its decision should lie before of Division Bench of the concerned High Court. The proposed IP courts should also have jurisdiction over any other matter where IP issues are at stake. The principles which should be embodied in any legislation or amendments codifying the above proposal should be (1) to handle cases in strict compliance with the IP laws and in a timely manner but to ensure that the procedural provisions of the CPC are followed and that the courts guarantee a party its full right of action and (2) to appoint judges who are experts in IP matters so that they are better able to assess the merits of case.

If all other things remain equal, a strong IPO Pakistan with an effective mechanism for dispute resolution may single handedly change the environment of IP in Pakistan and in that regard, setting up IPO Pakistan can be considered as the most important architectural change carried forth by the Government.

The author is a corporate lawyer and is a Director and General Counsel at Pfizer Laboratories.  Comments may be directed to editors@counselpakistan@com.