Managing Intellectual Property, Feb. 2013

 

ENHANCED PROTECTION FOR PROCESS INVENTIONS

 

 

Whilst product patent in Pakistan confers on its owner the exclusive right to make, use, offer for sale, sell or import for these purposes that product, the scope of protection under a process patent is also extended to acts done against “at least” the product directly obtained by that process provided, however, a claim drawn on a process for the production of X (direct product) is there to determine the extent of protection. Import is one among the acts against which the direct or immediate product of a patented process is protected.

The rationale behind providing this extent of protection is to cover the situations where there is no claim directed to product ‘per se’ and where the infringing process is carried out abroad in a territory where there is no patent but the product of that process is imported in Pakistan.

Though the exact bounds of the word “directly” in section 30(1)(b) of the 2000 Ordinance is uncertain yet the loss of essential identity and lack of essential characteristics  test as envisaged by the UK patent courts in Pioneer Electronics v Warner Music (SRIS C/5/95 noted IPD 18056) is helping to unfold its meaning to some extent.

In the ordinary sense of the words in chemical field, a product may be regarded as “direct” if it is the result of the final step of the process in a multi-step chemical synthesis or where further process does not cause the product to lose its identity. A product is not considered to lose identity if it retains essential characteristics even after further processing. According to the UK patent courts “directly” means “without intermediary”. Given this, for infringement to establish, the imported product, produced by the patented process carried off-shore, must retain either the essential identity or essential properties of the direct or immediate product of the patented process. This suggests that if the imported product has no identity with the direct immediate product of a patented process, and has properties different from that of the direct or immediate product, infringement of a process claim directed to the making of an intermediary product for the imported product is not established. However, the word “at least” in section 30(1)(b) extends the scope of protection provided by a process patent even further. “At least” sets the minimum level of protection from the direct product to the intermediate if the later is retaining the essential identity (structural) as well as essential characteristics (utility) of the former. Given the said facts, process invention are entitled to receive a comparatively stronger protection than elsewhere in Pakistan.