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.
Can I get a patent term extension in Russia?
In case more than five years have lapsed between the filing date of an application for an invention related to a medication, pesticide or agrochemical product (if its use requires authorization) and the date of the first marketing authorisation, the term of the patent shall be extended upon request of the patent owner by the Russian Patent and Trademark office. The term shall be extended for the period computed from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.
The request for extension of the term should be submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, whichever comes last.
What is the process for validating a Eurasian patent in the respective countries?
One of the convenient features of the Eurasian patent system is the absence of a separate validation procedure. The patent holder chooses the countries in which the patent should be valid simply by paying the requisite annuities. The annuities are paid to the Eurasian Patent Office, and the patent is automatically valid in all the countries for which the payments have been effected.
And even if a patent is declared invalid in some countries due to non-payment of the annuities, it can be reinstated in any of the countries within three years.
Do I have to request a foreign filing license in Russia?
Although a foreign filing license as a separate notion does not exist in Russia, there is still a similar requirement.
In case the invention has been developed in the Russian Federation, the applicant is required by Russian law to file their first application in Russia (direct national filing or international application filed with the RUPTO as the International receiving office).
Any subsequent application can only be filed abroad after a six-month check performed by the Russian Patent Office. The check is meant to reveal state secrets the invention may eventually contain. Rospatent does not issue any special permission to file foreign applications (as compared to the US foreign filing license, when the US PTO issues a corresponding notification). The lapse of said six-month term automatically allows the applicant to file subsequent applications with foreign Patent offices. The term may be reduced by filing a request explaining that the application materials do not contain state secrets. Reduction of the term lies then within Rospatent’s discretion. It may normally be reduced to 3-4 months.
If, in breach of said rule, the applicant files the patent application with a foreign Patent office, Russian law stipulates administrative liability (monetary penalties). At the same time, if, after an unauthorized foreign filing, a state secret is revealed in the invention, both the applicant and the inventor become criminally liable.
I own a valid Russian patent. What happens if it turns out that somebody has used my invention before my filing the application?
According to Article 1361 of the Russian Civil Code, the person who has in good faith used a solution identical to the patented invention before its priority date, retains the right to use the same solution without increasing the scope of its use (the right of prior use). Therefore, the patent holder is entitled to request from the said person that the volume of use not be increased.
It is important to note that if the other party is able to prove that prior use de facto represented public prior use/open use (which means, in general terms, that the solution has been disclosed to the public in sufficient details), there is a threat of the patent’s invalidation on the grounds of lack of novelty.
What is the time limit for entering the Eurasian regional phase? Can this term be reinstated?
The time limit for entering the regional phase before the Eurasian Patent Office is 31 months from the priority date or the earliest priority date of several claimed priorities; if no priority is claimed, the time limit is 31 months from the filing date of the international application. The said time limits can be reinstated within 12 months on the applicant’s request in case the Patent office acknowledges the validity of the reason for the delay. The official fee for the reinstatement amounts to 25,000 RUR.
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