Filing IP in Pakistan from the United States: A Guide for Instructing Counsel

• Pakistan is not a PCT contracting state. There is no national phase. A US applicant wanting patent protection in Pakistan files a direct application, and the Paris Convention priority window is the only bridge.
• Pakistan is single-class for trade marks. Rule 13 of the Trade Marks Rules 2004 confines every application to one class, and rule 14 treats the same mark in different classes as separate applications, each on Form TM-1 (rule 12(2)). A four-class US portfolio is four Pakistani applications and four sets of official fees.
• Pakistan has been a Madrid Protocol member only since 24 May 2021. Designating Pakistan through WIPO is available and often sensible, but it does not remove the need for local counsel — it usually defers it to the point where a provisional refusal issues.

The national route

A direct application is made on Form TM-1 at an official fee of PKR 3,000 for one mark in one class, or on Form TM-2 at the same fee where convention priority is claimed. Section 25(2) of the Trade Marks Ordinance 2001 gives a six-month priority window from the first convention application — not the twelve months that applies to patents. Where priority is validly claimed, section 25(3) fixes the relevant date for precedence as the date of the first convention application, and provides that registrability is not affected by use of the mark in Pakistan between that date and the Pakistani filing date.

IPO-Pakistan's filing guidelines state that a foreign applicant "should file application through their duly authorized attorney or advocate in Pakistan". Separately and independently, rule 9(1) of the Trade Marks Rules 2004 requires an address for service in Pakistan from every applicant, every opponent, every applicant for revocation, invalidation or rectification, and every proprietor whose mark is the subject of such an application. Rule 9(6) is the sanction: where no address for service is filed, the Registrar issues a notice, and if it is not answered within two months the application is treated as abandoned or the party is deemed to have withdrawn from the proceedings.

The Madrid route

Pakistan acceded to the Madrid Protocol with effect from 24 May 2021, so a US-based international registration can designate Pakistan through the USPTO as office of origin. IPO-Pakistan describes its own role as designated Contracting Party: the Trade Marks Registry records the international registration notified by WIPO's International Bureau, examines it under the Trade Marks Ordinance and Rules, publishes it in the Trade Marks Journal, and communicates a provisional refusal to the International Bureau where an objection arises on examination or where a third party opposes after publication. It then either withdraws or confirms that refusal, wholly or in part, before notifying protection.

The practical consequence for US counsel is that a Madrid designation of Pakistan runs through the same examination standard, the same Journal publication and the same two-month opposition window (section 28(2)) as a national filing. Where a provisional refusal issues, responding to it is a Pakistani prosecution matter requiring a Pakistani representative and a stamped, notarised Form TM-48 — at the point where the clock is already running.

Choosing between them

• Madrid is usually more efficient where Pakistan is one of several designations off an existing US basis, and where the goods and services specification is stable.
• The national route is usually preferable where the specification needs to be tailored to Pakistani classification practice before examination, where only Pakistan is in issue, or where the US basis is itself vulnerable during the five-year dependency period (Madrid Protocol, Art. 6(3)).
• Either way, budget for local counsel from the point a provisional refusal or an examination report issues, not from filing.

Pakistan is not a contracting state of the Patent Cooperation Treaty. WIPO's list of PCT contracting states does not include Pakistan, and WIPO Lex records Pakistan's WIPO-administered treaty memberships as the Paris Convention (in force 22 July 2004), the Berne Convention (5 July 1948), the WIPO Convention (6 January 1977), the Madrid Protocol (24 May 2021) and the Marrakesh Treaty (12 June 2024). There is no PCT entry.

A US applicant therefore cannot enter a Pakistani national phase. Protection requires a direct application in Pakistan, and section 2(c) of the Patents Ordinance 2000 defines a "Convention application" as one made in Pakistan within twelve months of the application in a Convention country, which section 2(d) defines as a WTO member or a country declared under section 86. Miss that window and the priority date is lost; a later filing is judged against everything published before it, including your own published application.

The Patent Office publishes an average of eighteen months to a first examination report, so the filing decision should be taken on the priority calendar rather than on expected grant timing.

Why there is no national phase, and what a convention application needs, is set out in our PCT guide. PCT national phase in Pakistan

Section 26(1) of the Patents Ordinance 2000 prohibits a person resident in Pakistan from filing, or causing to be filed, a patent application outside Pakistan without the Controller's written authority, unless an application for the same invention was filed at the Pakistan Patent Office not less than six weeks earlier and no secrecy direction under section 25 is in force.

Section 26(2) is the limb US counsel needs: the prohibition does not apply to an invention for which a patent application was first filed outside Pakistan by a person resident outside Pakistan. A US company with US-resident inventors is not caught. A US company with a Pakistan-resident co-inventor or employee-inventor may be, and the permission cannot be obtained retrospectively.

IPO-Pakistan's standard operating procedure states that foreign filing permission is obtainable within three weeks of applying. The request needs a brief description of the invention sufficient for the Patent Office to assess whether it touches atomic energy or defence technology, the title and any drawings, a declaration in respect of section 25, the countries in which filing is intended, particulars of the Pakistan-resident inventors, any assignment, and a power of attorney on Form P-28 where an agent is appointed.

The scenarios, documents and penalties are set out in our foreign filing permission guide. Foreign filing permission for patents in Pakistan

This is the question most often asked and most inconsistently answered online.

Rule 10 of the Trade Marks Rules 2004 provides that the authorisation of an agent — being either a legal practitioner or a person registered as a trade mark agent — shall be executed in the form set out in Form TM-48. Form TM-48 itself is expressed to be stamped under the Stamp Act 1899. IPO-Pakistan's filing guidelines state that an applicant applying through an advocate or agent "has to authorize an agent through Form TM-48 (Power of Attorney) duly stamped and notarized".

Neither the Rules nor IPO-Pakistan's published guidelines require consular legalisation of Form TM-48. Guides that assert a legalisation requirement should be treated with care; the published requirements are stamping and notarisation. Where a legalised or apostilled document is nonetheless called for in a particular matter, note that Pakistan acceded to the Hague Apostille Convention on 8 July 2022, with effect from 9 March 2023, so an apostille issued in the United States — itself a contracting state — replaces consular legalisation between the two.

There is no official fee for Form TM-48. The cost is the provincial stamp duty and the notarial fee.

For a trade mark filing, IPO-Pakistan's guidance and the Rules together call for:

• The mark, with eight clear reproductions in any colour, form or three-dimensional feature; a colour claim limits the proprietor to the claimed colours, and no colour claim leaves the mark usable in any colour.
• The applicant's full name, description and nationality; for a body corporate, the country of incorporation and nature of registration (rule 8(3)); for a firm, the full name and nationality of every partner.
• The full trade or business address, given as fully as possible.
• The goods or services, and the class or classes they fall in.
• Priority particulars, where a convention claim is made within the six-month window.
• Form TM-48, stamped and notarised.
• An address for service in Pakistan (rule 9).
• A transliteration and translation by affidavit where the mark is in a language other than English or Urdu.

Official fees are payable by pay order or bank draft in favour of the Director General, IPO-Pakistan. The Trade Marks Registry does not accept cash, which is why official fees are normally disbursed by local counsel and billed on.

• Convention priority — six months for trade marks (s.25(2), Trade Marks Ordinance 2001); twelve months for patents (s.2(c) and s.2(d), Patents Ordinance 2000).
• Reply to an examination report — two months from the Registrar's communication, failing which the application is deemed abandoned (rule 27(2)); restoration on Form TM-57 within two months of abandonment (rule 27(3)).
• Opposition window — two months from advertisement in the Trade Marks Journal, extendable to no more than two further months in the aggregate (s.28(2), rule 30(1)); rule 80(3) excludes this period from the Registrar's general extension power.
• Counter-statement — one month from receipt of the notice of opposition, extendable to two months in the aggregate, failing which the application is deemed abandoned (rule 30(2)).
• Completion of registration — twelve months from the application date is the backstop under s.33(5); the Registrar's notice under rule 32 specifies twenty-one days.
• Renewal — within the six months ending on the expiry date (rule 51); a further six months from advertisement of non-payment with an additional fee (rule 52(1)); restoration within six months of removal (rule 53).

Raza & Associates acts as Pakistan local counsel for overseas law firms and their clients. In a US-instructed matter that covers an initial conflict and scope review of the instruction; trade mark clearance searches, filing, prosecution of objections, opposition proceedings, renewals, assignments and licensing; patent filing, specification coordination, prosecution and renewals; and enforcement and litigation coordination.

As a statement of law rather than of the firm's practice: under section 18 of the Intellectual Property Organization of Pakistan Act 2012, the Intellectual Property Tribunals have exclusive jurisdiction over civil infringement suits and offences under the intellectual property laws.

The firm and its attorneys hold memberships of INTA, AIPPI, FICPI, APAA, MARQUES, ECTA, ITMA, CIPA and LES, and the firm maintains offices in Lahore, London and Singapore.

This page concerns Pakistan law and Pakistan proceedings and does not provide foreign-jurisdiction legal advice or United States representation.

For the relationship, terms and the US-facing service. Pakistan IP counsel for US companies and law firms

For the filing route and requirements in more detail. Pakistan trademark filing for foreign applicants

For patent-specific coordination. Pakistan patent filing for foreign applicants

For what a Pakistani filing actually costs. Trademark registration cost and timeline in Pakistan

For copyright work instructed from the United States. Pakistan copyright counsel for US clients

To instruct on a Pakistan matter. Pakistan IP local counsel