Uzbekistan has the biggest population among all the post-Soviet Asian countries and therefore constitutes an important market for consumer goods. Moreover, the country has rich natural resources, including gold, uranium, copper, and gaz.
Uzbekistan is not a member of the Eurasian Patent Convention, therefore the only way to protect an invention is to apply for a national patent. Uzbek patent applications are filed with the Agency on Intellectual Property at the Ministry of Justice of the Republic of Uzbekistan (www.ima.uz). The prosecution is conducted in the Uzbek or Russian language. NB! The possibility to file the application in the Russian language allows saving costs when filing parallel applications with other PTOs that accept filings in Russian: Eurasian Patent Office, Russian, Belorussian, or Kazakhstani Patent and Trademark Offices.
Uzbekistan participates in the main international IP conventions/agreements, such as the Paris Convention and the Patent Cooperation Treaty (PCT). Therefore, patent filing limitations and requirements in Uzbekistan are consistent with generally accepted international practices.
UZBEK INVENTION PATENT
The patentability criteria include: novelty, an inventive step, and industrial applicability.
An Uzbek patent examination consists of formal examination (2 months from the filing date) and substantive examination (to be requested within 3 years of the filing date). Prosecution of an Uzbek patent application takes on average 2 - 3 years depending on the volume and complexity.
The patent validity term is 20 years. Uzbek inventions related to pharmaceuticals or pesticides may obtain an additional 5-year extension supported by an officially issued certificate.
Deadlines for filing a patent application in Uzbekistan are:
Exception to lack of novelty (the novelty grace period) in Uzbekistan is 6 months before the filing date. A disclosure made during this period by the inventor or any other person receiving the information from the inventor or the applicant does not destroy novelty. The burden to prove the circumstances of disclosure lies within the applicant’s responsibility.
UZ patent costs depend on the volume of a patent application, namely the number of independent and dependent claims over 10, and the complexity of prosecution. Please provide us with the application particulars so we can calculate the filing costs.
Uzbek non-resident applicants are to be represented by local agents who are registered Uzbek patent attorneys. The power of attorney must be submitted in original:
Legalization is not required.
Patent filling requirements in Uzbekistan:
UZBEK UTILITY MODEL PATENT
A utility model patent protects mechanical devices that are novel and industrially applicable. The patent prosecution takes on average 1-2 years. The patent term of 5 years is calculated from the filing date; an additional 3 years of legal protection can be obtained upon request on condition that official fees are paid.
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 Uzbekistani 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 deadline for filing a divisional application in the Russian and Eurasian Patent Offices?
A divisional application can be filed with the Russian PTO:
A divisional application can be filed with the EAPO:
Do I have to prove the legal interest for filing a nullity action against a Russian patent?
According to Russian patent legislation, any person who became aware of violations of patent law can file an invalidation action to the Russian Patent office (or to the court in case the violation relates to the list of the inventors/applicants) during the term of validity of the patent. However, only a person having legal interest in invalidating the patent can file an invalidation request after the expiry of the patent.
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
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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