With a population of almost 20 million, the highest per capita income in the region, and a wide territory rich in natural resources, Kazakhstan represents an attractive market for many international players.
In a vast majority of cases, international companies seeking patent protection in Kazakhstan file Eurasian applications and receive Eurasian patents covering, among others, the Republic of Kazakhstan.
However, for those applicants who
a good option is to file an application directly with the Kazakhstani PTO – the National Institute of Intellectual Property (Kazpatent). For applicants wanting to obtain IP protection quickly, the best solution might be to apply for a utility model patent, an option that is not available in the Eurasian Patent System.
Kazakhstan participates in the main international IP conventions/agreements; an applicant can claim a priority under the Paris Convention or enter the PCT national stage. Patent prosecution procedures within Kazpatent meet standard international requirements.
Prosecution is conducted in the Kazakh or Russian language. NB! Availability of prosecution in the Russian language helps to avoid extra costs related to translation into the national language in case there is at least one parallel case in another jurisdiction where the Russian language is used: Russia, Belarus, or Uzbekistan.
KAZAKHSTANI INVENTION PATENT
Patentable subject matter
A product (device, substance, microorganism strain, plant or animal cell culture) and method (performing actions on a material object with material means), as well as the use thereof for a specified purpose can be protected as an invention in Kazakhstan.
An invention must be novel, inventive and industrially applicable to satisfy the patentability criteria. Absolute novelty is checked for Kazakhstani patent applications. At the same time, Kazakhstan patent legislation provides for a six-month grace period after the first disclosure made before the filing date by the applicant (including disclosures made at exhibitions held in any of the Paris Convention member states) or by a person who received the information directly or indirectly from the applicant.
Economic or business methods, symbols, schedules, rules of gaming or mental operations, computer programs and algorithms as such, projects and arrangements of buildings, territories, structures, trade dress/appearance of product, immoral and inhuman technical solutions are not recognized as inventions in Kazakhstan.
Kazakhstani patent examination consists of preliminary examination (takes 4-6 months from the filing date) and substantive examination (to be requested within 3 months of the end of the formal examination). Prosecution of Kazakh patent applications takes on average 1.5 - 3 years depending on complexity.
The patent term is 20 years with an additional 5 years claimable for inventions on medicine and agrochemicals.
Deadlines for filing a patent application in Kazakhstan:
The costs of obtaining a Kazakhstani patent depend on the volume of the patent application. Please provide us with the application particulars so we can calculate the filing costs.
Patent filing requirements in Kazakhstan:
A KAZAKHSTANI UTILITY MODEL PATENT protects the same subject matter as inventions, i.e. a product (device, substance, microorganism strains, animal/plant cell culture), a process, or a new use thereof. Only formal examination is held within 2-3 months from KZ PTO filing date. Generally, obtaining a KZ utility model patent takes no longer than 1 year on average. The patent is valid for 5 years, extendable by an additional 3 years upon payment of prescribed fees.
A utility model patent (instead of an invention patent) can be requested by the applicant when entering the PCT national stage.
Sojuzpatent will help you to file your patent applications with the Kazakhstani Patent Office in any technical field with assistance of reliable local agents and will help you professionally through each step of the examination and granting. Our attorneys will take on all the substantive issues in every field of art, our state-of-the-art docketing system will help to keep track of the due dates, and our trusted agents will ensure that all the formalities within the Patent Office are fulfilled. We also provide after-grant guidance on annuities, licenses, assignments, recordation of changes, legal enforcement, litigation, negotiations, mediation, and dispute resolution.
What are possible ways of accelerating prosecution of patent applications in the Eurasian Patent Office?
There are three different ways of accelerating prosecution of patent applications in Eurasian Patent Office:
Can I use arguments for invalidity as a defense in an infringing action brought in Russia by the patent’s owner?
The defendant in a patent infringement case brought to a Russian court can challenge the patent validity. However, since the Russian patent system is bifurcated, the defendant cannot assert invalidity of the patent in question to the infringement court, but has to initiate a separate proceeding at the Chamber for Patent Disputes in the Russian Patent and Trademark Office. Accordingly, infringement and invalidity of the patent at issue will be examined in separate proceedings.
The court judgment on the infringement suit is appealable to a local court of appeals and the appeal decision comes into force immediately. The decision of the court of appeals can be challenged before the Court for intellectual property rights as a cassation instance.
The decision of the Chamber for Patent Disputes on the patent’s validity is appealable to the Court for intellectual property rights, and its decision can be challenged before the Presidium of the same Court as a cassation instance.
Therefore, a judgment by an infringement court may come earlier than that by the Chamber for Patent Disputes, and an injunction could be enforced by a patentee even if the patent is invalidated later on.
Is it true that the examination request should be filed with the Eurasian patent office on the date the application is filed?
This requirement (to file the request for substantive examination within the same time limit as the application) only applies to PCT Eurasian regional phase applications. For other types of applications, the examination request should be filed within 6 months of the date of publication of the patent application.
Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?
Patent infringement litigation and invalidation proceedings in Russia are totally bifurcated and therefore, if an infringement action is initiated, invalidity arguments are not considered in the proceedings and cannot be asserted as a defense in patent infringement cases.
Moreover, currently the courts do not normally suspend infringement litigation if an invalidation action is filed with the RUPTO after the infringement suit has been brought.
As to invalidation proceedings, there is no such grounds for invalidity as inequitable conduct. The applicant does not face any repercussions in terms of patent validity for not disclosing any information known to them that would contradict patentability of the invention.
What is the time limit for entering the national phase in Russia and neighboring countries?
The time limit for entering the national phase in Russia is 31 months from the priority date (the earliest priority date if several priorities are claimed), and, if no priority is claimed, 31 months from the filing date of the international application.
The time limit for other post-Soviet countries are as follows:
Time limit in months
As designated office
As elected office
There is no national phase, the application should enter the regional phase before EPO
There is no national phase, the application should enter the regional phase before EPO
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