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 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.
To protect one’s technical solution, when is it more appropriate to file an application for an invention, and when for a utility model?
This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.
|Object of protection||Product (in particular device, substance, strain of microorganism, cell culture of plants or animals) or method||Device|
|Patentability criteria||Novelty, inventive step, industrial applicability||Novelty, industrial applicability|
|Term of protection||20 years (with a possible extension up to 5 years for inventions relating to such products as a drug, pesticide or agrochemical product, if their use requires a statutory authorization and more than five years have lapsed from the filing date of the patent application to the date of obtaining the first authorization)||10 years|
|Approximate time to obtain a patent||24 – 36 months||6 - 12 months|
As one can see from the table, only a device can be protected as a utility model. At the same time, invention patents grant protection to devices, chemical substances, strains of microorganisms, cell cultures of plants or animals, as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.
As far as a device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent, one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. An inventive step is not required in this case.
However, the extent of legal protection of an invention is somewhat broader than the one of a utility model because the assessment of infringement of IP rights includes equivalents doctrine.
When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions have to satisfy the additional patentability requirement of an inventive step (obviousness), possible invalidation actions can have additional grounds – lack of an inventive step. Therefore, in some cases, utility model patents can be considered as potentially more stable.
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.
Which countries are covered by a Eurasian patent?
Currently: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the basis of applications filed before that date, are valid.
Do foreign applicants need a Russian or Eurasian attorney?
It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is listed in the Russian Register of Patent Attorneys.
Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.
To be successfully guided through the intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.
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