Industrial Property Protection

The Patent Law of the Republic of Kazakhstan entered into effect in August, 1992. Amendments to the Patent Law have been made for the period of its validity. The last ones were made in April, 2015.

The rights to an invention shall be certified in Kazakhstan by a patent.

A patent shall certify the priority date, the authorship and the exclusive right to use the subject of the invention.

An invention patent shall be granted after the formal examination and the substantive examination of the application have been carried out. The term of an invention patent shall be twenty years from the date of filing of the application with the Patent Office of the Republic of Kazakhstan. Where the use of a patented invention requires, in accordance with legislation in force, the authorization of a competent authority (for example, in medicine), the term of the invention patent may be extended for a period not exceeding five years.

The subject matter of an invention may be a technical solution in any field relating to a product (a device, a substance, a microorganism strain, a culture of plant or animal cells), a process (a process of acting upon a material object by means of material instruments) and also the use of a known product or process for a new purpose or a new product for certain purpose.

The following shall not be recognized as patentable inventions:

• discoveries, scientific theories and mathematical methods;
• methods of economic organization and management;
• symbols, schedules and rules;
• methods for performing mental acts, regulations in playing games;
• algorithms and programs for computers;
• projects and plans for structures and buildings and for land development;
• proposals concerning solely the outward appearance of manufactured articles;
• proposals that are contrary to the public interest, humanitarian principles or morality.

The invention application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (unity of invention requirement).

The invention application shall contain:

• the request for the grant of a title of protection, stating the names of the inventor (or inventors) and the person (or legal entity) in whose name the grant of a title of protection is sought, and the addresses of their residences or places of business;
• the description, disclosing the claimed invention in sufficient detail for it to be carried out by a specialist in this field;
• the claims, stating the essential features of the invention and fully supported by the description;
• the drawings or other materials where indispensable for the understanding of the disclosure;
• the abstract;
• a power of attorney if the application is filed through a patent agent (certified with a seal or a stamp of the applicant, no notarization, no legalization);
• the certified copy of the first application (if conventional priority claimed).

The invention application shall be accompanied by proof of payment of the prescribed fee which may be either furnished together with the application or within two months following the date of its receipt.

The request for the substantive examination to have been carried out may be filed by the applicant (his patent agent) or any third party within three months from the date of sending the notification of the formal examination has been carried out or may be furnished together with the application.

The request for the grant of the title of protection shall be written in the Kazakh or Russian language. Where elements of the application are written in a language other than the Kazakh or Russian, the application shall be accompanied by a Kazakh or Russian translation of those elements. The applicant may furnish a required translation within two months following the receipt of the application containing elements written in another language by the Patent Office of the Republic of Kazakhstan.

The priority of an invention shall be determined:

• by the filing date of the invention application;
• by the filing date of the first application in any State party to the Paris Convention if the invention application has been filed within 12 months from the said date (the certified copy of the first application shall be furnished not later than six months from the date of receipt of the application by the Patent Office of Kazakhstan);
• by the date of receipt of additional documents by the Patent Office of the Republic of Kazakhstan since they are recognized as modifying the subject matter of the claimed solution;
• the priority of the invention based on a divisional application shall be determined by the date of filing with the Patent Office of the Republic of Kazakhstan of the initial application disclosing the invention by the same applicant.

After the two month following the date of receipt of the application have elapsed, the Patent Office of the Republic of Kazakhstan shall carry out a formal examination.

Natural persons having their residence outside the territory of the Republic of Kazakhstan and foreign legal entities shall be required to act through patent agents registered with the Patent Office of the Republic of Kazakhstan in all proceedings conducted for the purposes of obtaining titles of protection and maintenance thereof as well as for lodging an appeal with the Board of Appeal.

Entering the national phase for an International PCT application

An International PCT application which contains the indication of the Republic of Kazakhstan shall be entered into the national phase before thirty-one months from the priority date have elapsed.

For entering into the national phase in Kazakhstan the following documents as minimum shall be required: the request for the grant of a patent that shall be written in the Kazakh or Russian language or translation of the international PCT application into the Kazakh or Russian language.

Documents of the international PCT application and translation thereof may be furnished at the Patent Office of Kazakhstan no later than within two months from the date of the expiration of the time limit for entering the national phase.

The term of furnishing the translation may be extended for two months if the applicant has paid additional fees.

Patent Law of the Republic of Kazakhstan has entered into effect in August, 1992. Amendments to the Patent Law have been made for the period of its validity. The last ones were made in April, 2015.

The rights to a utility model shall be certified in Kazakhstan by a utility model patent.

The term of a utility model patent shall be five years from the date of filing of an application with the Patent Office of the Republic of Kazakhstan. The term may be extended at the request of the patent owner for a period not exceeding three years.

A utility model shall be construed as an invention that imparts a new construction to means of production and consumer articles or parts thereof.

The subject matter of a utility model may be a technical solution in any field relating to a product (a device, a substance, a microorganism strain, a culture of plant or animal cells), a process (a process of acting upon a material object by means of material instruments) and also the use of a known product or process for a new purpose or a new product for certain purpose, with exception for diagnostic methods, therapeutic and surgical methods of treatment for people and animals.

The application for the grant of a utility model title of protection shall relate to one utility model only or to a group of utility models so linked as to form a single creative concept (unity of utility model requirement).

A utility model shall be granted protection if it is new and industrially applicable.

A utility model shall be new if the sum of its essential features is not anticipated by prior art.

A utility model shall be industrially applicable if it can be used in industry.

No verification of an inventive step of the claimed utility model shall be carried out.

The utility model application shall contain:

• the request for the grant of a title of protection, stating the names of the creator (or creators) and the person (or persons) in whose name the grant of a title of protection is sought, and the addresses of their residences or places of business;
• the description, disclosing the claimed utility model in sufficient detail for it to be made;
• the claims, stating the essential features of the utility model and fully supported by the description;
• the drawings;
• the abstract;
• a power of attorney if the application is filed through a patent agent (certified with a seal or a stamp of the applicant, no notarization, no legalization).

The request for the grant of the title of protection shall be written in the Kazakh or Russian language. Where elements of the application are written in a language other than the Kazakh or Russian, the application shall be accompanied by a Kazakh or Russian translation of those elements. The applicant may furnish a required translation within two months following the receipt of the application containing elements written in another language by the Patent Office of the Republic of Kazakhstan.

The utility model application shall be accompanied by proof of payment of the prescribed fee which may be either furnished together with the application or within two months following the date of its receipt.

The priority of a utility model shall be determined:

• by the filing date of the utility model application;
• by the filing date of the first application in any State party to the Paris Convention if the utility model application has been filed within 12 months from the said date (the certified copy of the first application shall be furnished not later than six months from the date of receipt of the application by the Patent Office of Kazakhstan);
• by the date of receipt of additional documents by the Patent Office of Kazakhstan since they are recognized as modifying the subject matter of the claimed solution;
• the priority of the utility model based on a divisional application shall be determined by the date of filing with the Patent Office of Kazakhstan of the initial application disclosing the utility model by the same applicant.

Natural persons having their residence outside the territory of the Republic of Kazakhstan and foreign legal entities shall be required to act through patent agents registered with the Patent Office of the Republic of Kazakhstan in all proceedings conducted for the purposes of obtaining titles of protection and maintenance thereof as well as for lodging an appeal with the Board of Appeal.

The Patent Law of the Republic of Kazakhstan entered into effect in August, 1992. Amendments to the Patent Law have been made for the period of its validity. The last ones were made in April, 2015.

The rights to an industrial design shall be certified in Kazakhstan by an industrial design patent.

A patent shall certify the priority date, the authorship and the exclusive right to use the subject of industrial design.

An industrial design patent shall be granted after the formal examination and the substantive examination of the application have been carried out. The term of an industrial design patent shall be fifteen years from the date of filing of the application with the Patent Office of the Republic of Kazakhstan. The term may be extended for a period not exceeding five years.

An industrial design shall be construed as an artistic and technical solution defining the outward appearance of a manufactured article.

An industrial design shall be granted protection if it is new, original and industrially applicable.

The industrial design application shall relate to one industrial design only or to a group of industrial designs so linked as to satisfy unity of industrial design requirement.

The request for the substantive examination to have been carried out may be filed by the applicant (his patent agent) or any third party within three months from the date of sending the notification of the formal examination has been carried out or may be furnished together with the application.

The industrial design application shall contain:

• the request for the grant of a title of protection, stating the names of the creator (or creators) and the person (or legal entity) in whose name the grant of a title of protection is sought, and the addresses of their residences or places of business;
• the description of the industrial design including the totality of its essential features;
• a set of photographs of the manufactured article (or articles) or model providing full view (8 copies) and detailed view (2 copies each) of its outward appearance and capable of reproduction, and photographs of a prototype. The size of photographs depends on the size of the industrial design and may be 18×24, 13×18 or 9×12;
• the drawings, affording general views of the manufactured article, ergonomic scheme, or confection chart where indispensable for the understanding of the disclosure;
• a power of attorney if the application is filed through a patent agent (certified with a seal or a stamp of the applicant, no notarization, no legalization);
• the certified copy of the first application (if conventional priority claimed).

The industrial design application shall be accompanied by proof of payment of the prescribed fee which may be either furnished together with the application or within two months following the date of its receipt.

The request for the grant of the title of protection shall be written in the Kazakh or Russian language. Where elements of the application are written in a language other than the Kazakh or Russian, the application shall be accompanied by a Kazakh or Russian translation of those elements. The applicant may furnish a required translation within two months following the receipt of the application containing elements written in another language by the Patent Office of Kazakhstan.

The priority of an industrial design shall be determined:

• by the filing date of the industrial design application;
• by the filing date of the first application in any State party to the Paris Convention if the industrial design application has been filed within six months from the said date (the certified copy of the first application shall be furnished not later than six months from the date of receipt of the application by the Patent Office of Kazakhstan);
• by the date of receipt of additional documents by the Patent Office of Kazakhstan since they are recognized as modifying the subject matter of the clamed solution;
• the priority of the industrial design based on a divisional application shall be determined by the date of filing with the Patent Office of Kazakhstan of the initial application disclosing the industrial design by the same applicant.

Natural persons having their residence outside the territory of the Republic of Kazakhstan and foreign legal entities shall be required to act through patent agents registered with the Patent Office of the Republic of Kazakhstan in all proceedings conducted for the purposes of obtaining titles of protection and maintenance thereof as well as for lodging an appeal with the Board of Appeal.

Law of the Republic of Kazakhstan “On Protection of Selection Achievements” entered into force in 1999. The last amendments were made in 2015.

The right to selection achievement is protected by the legislation of the Republic of Kazakhstan and confirmed by a patent. The patent certifies the exclusive right of the patent owner to use the selection achievement, his priority and authorship of the breeder.
The extent of protection conferred by a patent for a selection achievement is determined by a set of characteristics included in the description of new plant variety, new animal breed.
The term of a patent for plant varieties is 25 years, animal breeds – 30 years, for vines, woody decorative, fruit and forest cultures, including their rootstocks, is 35 years from the filing date in the expert organization. The validity of a patent shall be extended by the authorized body at the request of the patent holder, but not more than for 10 years.
The plant varieties and animal breeds which have the novelty, distinctness, uniformity and stability are protected as a selection achievement.

The application for a title of protection is submitted by the author(s), their successors or the employer (when the achievement is created on the duty assignment). The application can be submitted through a representative acting on the basis of the power of attorney.

The application for a selection achievement shall contain:

1. the request for a title of protection, indicating the authors of the selection achievement and the persons for whom the title of protection is sought, as well as their place of residence or location;
2. the questionnaire of the selection achievement;
3. a power of attorney, in case of work through a representative.

The application shall be accompanied by a proof of payment of the application in the prescribed amount that can be submitted together with the application or within two months from the date of receipt of the application.

A request for the substantive examination is submitted by the applicant (his representative) or by a third party within three months from the date of notification of the formal examination result (5-6 months from the date of filing the application) or when applying.

A request for a title of protection is submitted in Kazakh or Russian. If other application documents are submitted in another language, their translation must be submitted within two months from the date of receipt of the application. The application and the questionnaire for selection achievement should contain information on the classification of the variety, breed in order to identify the selection achievement.
The questionnaire for the variety (breed) should contain:
name of the genus and species;
proposed name of the selection achievement and the selective number;
origin of the selection achievement, indicating the method of creation and the initial (parental) forms;
features of maintenance and reproduction of selection achievement;
signs of selection achievement characterizing the distinctive features;
names of similar selection achievements and characteristics by which the claimed selection achievement differs from similar ones;
special conditions for testing the selection achievement for distinctness, uniformity and stability (if any).

The table of characteristics of selection achievements for the relevant genera and species is attached to the questionnaire, where the applicant describes the plant variety or breed of animals according to the degree and of characteristics expression index.

The application is preliminary examined after two months from the date of its filing to the expert organization.

If in a result of examination, conducted by the State Commissions of the Ministry of Agriculture, it is established that the claimed selection achievement meets the conditions for patentability, an opinion is issued describing the species, breed based on which the authorized agency decides to issue the patent. The patent is issued after confirmation of payment for its registration simultaneously with publication in the official bulletin.

Priority of selection achievement can be established:

• by the date of filing the application;
• by the date of filing of the first application in the member state to the International Convention for Protection of the Selection Achievements, if the application has been submitted within twelve months from the said date (a certified copy of the first application must be submitted not later than 3 months from the date of receipt of the application by the Patent Office of Kazakhstan);

Individuals who live outside the Republic of Kazakhstan or foreign legal entities conduct business for obtaining protection documents, maintaining them in force, file objections to the Board of Appeal and take part in their consideration through patent attorneys of the Republic of Kazakhstan.

In accordance with the Code of the Republic of Kazakhstan “On Customs Regulation in the Republic of Kazakhstan” (2018), rights-holders have an effective opportunity to stop the inflow of counterfeit goods and products of “parallel” imports coming from abroad.

The legislation allows to include trademarks to the unified customs register of the Eurasian Economic Union (hereinafter – the Unified Customs Register) and the customs register of the Republic of Kazakhstan.

The Unified Customs Register includes the intellectual property objects protected in each state of the Eurasian Economic Union, i.e. simultaneously in Kazakhstan, Belarus, Russia, Kyrgyzstan and Armenia.

The protection of the rights-holders’ rights through the Unified Customs Register is carried out by the Eurasian Economic Commission under the approved regulations for maintaining the Unified Customs Register.

The customs register of intellectual property objects of the Republic of Kazakhstan (hereinafter – the Customs Register) is maintained by the Committee of State Revenues of the Ministry of Finance of the Republic of Kazakhstan. Its main functions are the protection of intellectual property rights by customs authorities and maintenance of the register.

The Customs Register protects trademarks (service marks), and the objects of copyright and related rights, as well as the appellations of origin of goods included in the national customs register.

The terms for protection of the intellectual property rights in the Customs Register are established by taking into consideration the period indicated in the application, as well as the validity periods of the documents, but cannot be more than two years from the date of entering in the register.

The following documents shall be attached to the application for intellectual property objects entering in the Customs Register:

1. Copies of protection documents confirming the existence and ownership the intellectual property right (certificate for trademark or the license contract for its use);

2. Information on the trademark owner (rights-holder). An extract from the trade register issued in the country of registration of the legal entity is required.

3. A power of attorney issued by the trademark owner (rights-holder) to the persons (individuals or legal entities) who will represent the rights-holder’s interests to protect the intellectual property rights in the Republic of Kazakhstan;

All of the documents above must be notarized and apostilled.

4. Commitment of the rights-holder or his representative to compensate any property damage that may arise in connection with the suspension of release of goods containing intellectual property objects, to the declarant and connected persons. Suspension of release may apply when the goods are presumed to be violation of rights to intellectual property objects – in cases, when it is established that the goods are not the goods with violation of the rights to intellectual property objects;

5. The applicant’s liability insurance contract for causing damage to other persons. At the same time, the sum insured cannot be less than 1,000-fold monthly calculation index established for the respective fiscal year by the law on the republican budget.

6. Samples and description of goods containing the intellectual property objects, and goods containing signs of violation of the rights to intellectual property objects allowing state revenue authorities to identify the goods with violation of rights to the intellectual property objects.

7. Documents confirming the movement of goods across the customs border of the Eurasian Economic Union with violation of rights to the intellectual property objects.

After entering the trademark in the Customs Register, the Committee sends relevant information to the directly subordinated regional customs, which communicate it to the subordinate customs authorities and interested persons.

Once the Committee identified the goods that violate the intellectual property rights of the trademark owner included in the Customs Register, the customs authorities shall suspend the release of such goods and notify thereof both the declarant and the trademark owner.

Custom suspends the release of goods for 10 working days, which can be extended for another 10 working days, until the rights-holder decides to bring the importer (violator of exclusive rights) to liability with the possibility of recovering losses or damage caused.

After the period of suspension of release of goods has expired, the release of such goods shall be renewed, except when the customs authority is provided with any documents confirming withdrawal, arrest or seizure of the goods, or the ruling of a judge to initiate a civil case on a lawsuit for violation of the right-holder’s rights to the intellectual property objects. When customs authorities receive the determination of a judge for instituting a civil case, the time limits for suspension of release of such goods, as well as the time limits of their temporary storage, are prolonged until the court decision comes into force.

The customs authorities have the right to disclose to the rights-holder that a decision has been made to suspend the release of goods, as well as to take specimens and samples of these goods.

Prolongation of the time limits for protection of the intellectual property rights is carried out upon application, which must be submitted not later than 15 calendar days before the time limits of protection expire.

Thus, the rights-holder, whose registered trademark is entered in the customs register, has the opportunity to track, through the customs authorities, the movement across the customs border of Kazakhstan of alleged counterfeit goods or products of “parallel” imports by unauthorized importers and work out each fact of suspension by the customs authorities of unauthorized import of products.

Kazakhstan legislation in the field of intellectual property allows to ensure its protection at an multiple levels. The established common standards of civil law, criminal and administrative procedures and other means enable effective protection of intellectual property rights in Kazakhstan.

Violation of the trademark owner’s exclusive right is an unauthorized introduction of a trademark or appellation of origin of goods or designations confusingly similar to them into civil circulation with respect to similar goods and services. The unauthorized use of a trademark in public telecommunications networks (Internet, etc.) is also recognized as violation of the trademark owner’s exclusive right.

Unauthorized manufacture, use, import, storage, offer for sale, sale and other introduction into civil circulation of a product created using a protected industrial property object, as well as the use of a protected method or introduction into civil circulation of a product manufactured directly using the protected method constitutes a violation of the patent owner’s exclusive right (violation of the protection document). Likewise, a new product is considered to be obtained using the protected method, unless evidenced otherwise.

In Kazakhstan, the protection of intellectual property rights can be implemented through administrative, criminal or civil legislation, but the administrative court can only consider cases related to the illegal use of a trademark.

Recognition of criminal liability for illegal use of someone else’s trademark depends on the amount of damages – damages must account for more than 2.5 million tenge. Also, criminal liability can be imposed for violations of rights to inventions, utility models, industrial designs, selection achievements, topologies of integrated microcircuits, or violation of copyright and related rights, where damages are more than 1.2 million tenge.

The rights-holder has the right to choose between administrative or civil proceedings.

In case of administrative proceedings, the offender is investigated, at the request of the rights-holder, by the justice authorities, who collect the evidence themselves, draw up a protocol on the administrative violation, which is sent to the regional (city) administrative court. If there is ground for further legal actions, the court initiates an administrative case, reviews it within a month, and makes a ruling regarding the guilty party. The administrative court ruling may be appealed to a higher appellate or cassation instances.

The protection of intellectual property rights can be carried out in civil law proceeding in a court where the rights-holder himself proves the fact of violation and illegal use of his intellectual property.

In Kazakhstan, there are two types of courts that deal with intellectual disputes: economic courts and courts of general jurisdiction. Parties’ status of individual or legal entities determines whether their dispute is setting in economic or general jurisdiction courts.

Disputes between legal entities and individual entrepreneurs occur in economic courts, whereas disputes between individuals or in connection with criminal offenses occur – in courts of general jurisdiction.

Protection of the exclusive rights of the rights-holder / patent owner begin from the settlement of dispute under the pre-trial procedure by means of compulsorily submitting the claim to the infringer with the requirement to stop the illegal use of the intellectual property object.

If the dispute has not been settled under the pre-trial procedure, the plaintiff pays the state fee and sues the court to initiate the proceedings. The amount of the fee depends on the subject matter of the lawsuit. In the courts of first instance, cases are considered by the judge alone, which initiates a civil case and prescribes preparation for the proceedings. Preparation for the proceedings is carried out within one month and can be extended for a month. During the preparation period, the respondent submits a response to the statement of claim or files a counterclaim. If necessary, the court may appoint an expert examinator on the case or invite an expert to a court session. After preparation, the court appoints the case to the court proceedings.

In general, the court proceedings take place within 3-6 months and end with a court decision that becomes available within a week from the date of its announcement.

The second judicial instance for intellectual disputes is the appellate judicial division of the regional (city) courts of the country, where an appellate (private) complaint may be submitted to within one month from the date of final decision. In the court of appellate instance, cases are considered by the judge alone, who reviews the case on its merits, usually without examining new evidences. After the appellate judicial division has issued the judicial decision, the decision of the court of first instance is considered to have entered into legal force and is subject to mandatory execution by all state and commercial bodies, officials and citizens of the Republic of Kazakhstan.

Judicial acts of the appellate judicial division may be appealed to the cassation judicial division located in the Supreme Court of the Republic of Kazakhstan.