Potter IP
Arnold & Siedsma May 2023
PART 1 PATENTS
§1.01 Summary
[A] Kinds of Patents
– National patent
[B] Duration of Patents
– 20 years from the filing date [C] Patentable / Not Patentable
[C] Patentable / Not Patentable
– An invention shall be granted legal protection if it is novel, involves an inventive step and is industrially applicable.
– The following shall not be recognized as inventions: (1) scientific theories and mathematical methods;
(2) organizational and management methods;
(3) agreed designations, schedules and rules;
(4) rules and methods for carrying out intellectual operations;
(5) algorithms and computer programs;
(6) plans and diagrams for buildings, constructions and land;
(7) decisions relating only to the external appearance of articles intended to satisfy aesthetic
requirements;
(8) topographies of integrated circuits; and
(9) plant varieties and animal breeds.
[D] Novelty
– Absolute novelty is required.
– A grace period of 6 months is available.
[E] Filing Requirements and Application Procedure
– Filing language: the claims must be in Russian or Uzbek, the description in any language
– Language of translation of the description: Uzbek or Russian
– Time limit for filing translation: 2 months from the filing date
– A patent is granted after substantive examination.
[F] Specific Aspects of Regional Patents
– Not applicable in this jurisdiction.
[G] Specific Aspects of International Patent Applications (PCT)
– Time limit for entering national phase: 31 months from the priority date
– Time limit for filing translation: the translation of the claims must be filed within 31 months from the priority date, and the translation of the description must be filed within
2 months from the filing date in Uzbekistan.
[H] Governmental Websites
– www.ima.uz
§1.02 Detailed Information
[A] Conventions and Legislation
[1] Conventions
– Patent Law Treaty, member since 19 July 2006;
– Paris Convention, member since 18 August 1993;
– Patent Cooperation Treaty, member since 18 August 1993;
– Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, member since 12 January 2002; and
– Strasbourg Agreement Concerning the International Patent Classification, member since 12 October 2003.
[2] Laws
– Law on Inventions, Utility Models and Industrial Designs of 1 October 2002, with the amendments of 30 July 2008.
[B] Kinds of Patents
– National patent.
[C] Duration of Patents
| Quick Answer: Duration | 20 years from filing date |
The duration of patents is twenty years from the filing date, provided that annuities are paid.
[1] Patent term extension / Supplementary protection certificate
| Quick Answer: Supplementary Protection Certificates (SPCs) or patent term extension for pharmaceuticals | Yes, extension of patent term for pharmaceuticals |
The term of a patent relating to a pharmaceutical product or a pesticide, for the use of which marketing approval shall be received from an authorized body, can be extended for the time period that passed between the date of filing the patent application and the date of issue of the first marketing approval, but not for more than five years.
The request for the extension of the patent term shall be filed within six months of the date of issue of the first marketing approval or the date of issue of the patent, whichever time period expires later.
[D] Requirements for Renewal
| Quick Answer: Due date maintenance fees | Annually on filing date |
| Quick Answer: Grace period for maintenance fees | Not applicable in this jurisdiction |
| Quick Answer: First due date for regular maintenance fees | 1 year from filing date |
Annuities are to be paid yearly and are due on the anniversaries of the filing date (international filing date for PCT applications). A grace period of six months is available.
If an annuity for a patent was not paid in time or during the grace period, a request for restoration of the patent can be submitted within three years after the missed due date. The annuity fee that was missed then incurs an extra 50% cost.
Annuities for patents granted before the regulations concerning new fees came into force (9 September 2008) shall be paid by the due date under the old law, that is, by the date of expiration of the part of the patent term already paid for according to the old rules, which date is either the end of the third year after the registration of the patent if the first to third annuities have been paid, or the end of the seventh year after the registration of the patent if the fourth to seventh annuities have been paid. By the mentioned date, it is necessary to pay either the annuity for the year in which the paid part of the patent term is over (if the next anniversary of the filing date/international filing date is within the period of six to twelve months after this date) or the annuity for the next year (if the next anniversary of the filing date/international filing date is within six months after this date). The next annuities will have to be paid annually on the anniversary of the filing date/international filing date. For the patents in respect of which the eighth to eleventh annuities were paid before 9 September 2008, no more annuities shall be paid.
[E] Patentable / Not Patentable
Subject matter claimed as an invention shall be granted legal protection if it is novel, involves an inventive step and is industrially applicable.
An invention is novel if it is not known from the prior art.
An invention involves an inventive step if it is not obvious from the prior art.
The prior art includes any information made generally accessible in the world before the priority date of the invention.
In establishing the novelty of an invention, Uzbek patent applications, filed with an earlier priority and not withdrawn, shall also be taken into account.
An invention will be industrially applicable if it may be used in industry, agriculture, healthcare and other sectors.
The following can be recognized as inventions:
– products, including devices, substances (including chemical compounds), strains of microorganisms, plant and animal cell cultures, and genetic constructs; and
– processes (consisting of operations performed on material objects with the use of material means).
The following shall not be recognized as inventions:
(1) scientific theories and mathematical methods;
(2) organizational and management methods;
(3) agreed designations, schedules and rules;
(4) rules and methods for carrying out intellectual operations;
(5) algorithms and computer programs;
(6) plans and diagrams for buildings, constructions and land;
(7) decisions relating only to the external appearance of articles intended to satisfy aesthetic
requirements;
(8) topographies of integrated circuits;
(9) plant varieties and animal breeds; and
(10) decisions contrary to public interests, principles of humanity and morality.
[1] Chemical compositions
Patentable.
[2] Pharmaceuticals
| Quick Answer: Patentability of pharmaceuticals | Yes |
Patentable.
[3] Second use
Patentable.
[4] Treatment of the human body
| Quick Answer: Patentability of the treatment of the human body | Yes |
Patentable.
[5] Biological materials
| Quick Answer: Patentability of gene sequences | Yes |
Strains of microorganisms, plant and animal cell cultures, and genetic constructs are patentable.
[6] Plant varieties
| Quick Answer: Patentability of plant varieties under regular patent law | No |
Plant varieties and animal breeds are not recognized as inventions.
[7] Software-related inventions
| Quick Answer: Patentability of computer programs as such | No |
Algorithms and computer programs are not recognized as inventions.
[8] Business methods
| Quick Answer: Patentability of business methods as such | No |
Business methods are not recognized as inventions.
[9] Immoral inventions or inventions contrary to public order
Decisions contrary to public interests, principles of humanity and morality are not patentable.
[10] Semiconductors
Topographies of integrated circuits are not recognized as inventions.
[F] Novelty
| Quick Answer: Novelty requirement | Absolute |
Absolute novelty is required.
An invention shall be novel if it is not known from the prior art. The prior art includes any
information made generally accessible in the world before the priority date of the invention. In establishing the novelty of an invention, Uzbek applications for the grant of a patent filed with an earlier priority and not withdrawn will also be taken into account.
[1] Grace period
| Quick Answer: Novelty grace period for filing after applicant’s own disclosure | Yes, 6 months preceding filing/priority date |
A grace period applies.
The public disclosure of information relating to an invention, by the inventor, applicant or
any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance influencing the recognition of the patentability of the invention if the application for the grant of a patent for the invention has been filed with the Patent Office not later than six months from the date of disclosure of the information. The obligation to prove the fact in question shall lie with the inventor and the applicant.
[G] Ownership and related rights
[1] Applicant
The inventor of industrial property subject matter shall be recognized as the natural person whose creative effort led to the creation of the subject matter.
If industrial property subject matter is created by the joint creative efforts of more than one natural person, all such persons shall be recognized as its equal joint inventors, unless otherwise agreed by them.
The right of inventorship shall be an inalienable and non-transferable personal non-proprietary right.
A patent for industrial property subject matter shall be granted to the following:
(1) the inventor (joint inventors) of industrial property subject matter or their heir(s);
(2) the natural and/or legal persons (with their agreement) indicated by the inventor or their heir in the application for the grant of a patent or in the declaration of amendment of the applicant, filed with the Patent Office prior to registration of the industrial property subject matter; and
(3) an employer in the cases indicated below.
The right to a patent for industrial property subject matter created by an employee in connection with the fulfilment of their employment duties or a specific task of the employer shall belong to the employer where this is provided for by the agreement between the employer and employee.
If such an agreement between an employer and inventor (joint inventors) does not exist, the inventor (joint inventors) shall be entitled to file an application and to obtain a patent for industrial property subject matter in their own name(s). In that regard, the employer shall be entitled to use the corresponding industrial property subject matter in their own production, and shall pay appropriate compensation to the patent owner, as defined by agreement.
In cases where an employer keeps industrial property subject matter a secret, they shall pay the inventor (joint inventors) appropriate remuneration, the level of which shall be fixed by agreement.
The mutual relations concerning the use of industrial property subject matter belonging to more than one patent owner shall be defined by agreement between such persons. In the absence of such agreement, each patent owner may use the protected industrial property subject matter at their own discretion but shall not be entitled to submit an exclusive license therefore or transfer the patent to another person without the agreement of the remaining patent owners.
[2] Assignment
| Quick Answer: Legalisation of assignment deed required | No (if no corporate seal then by notary) |
A patent owner can assign their exclusive right for the invention covered by the patent to any legal or natural person(s). Assignment is subject to registration with the Patent Office. The effective date of the assignment is the date of its registration by the Patent Office. Notarization (but not legalization) of the assignment is required for recordal.
An assignment of rights from the inventor(s) to the applicant is normally not required when a patent application is filed.
In the absence an agreement to the contrary, joint owners may use the protected industrial property subject matter at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the patent to another person without the agreement of the remaining patent owners.
[3] Licenses
License agreements are subject to registration with the Patent Office.
Any person who is not a patent owner shall be entitled to use industrial property subject
matter protected by a patent only with the consent of the patent owner on the basis of a licensing agreement.
A patent owner may submit to the Patent Office a request to grant any person the right to use industrial property subject matter (open license). In this case, the patent fee for maintaining the patent in force shall be reduced by 50% from the year following that of publication of information concerning such a request by the Patent Office.
A person who has expressed a desire to acquire an open license shall conclude with a patent owner an agreement to grant a non-exclusive license. Disputes relating to the conditions of an agreement shall be examined by the courts. A request by a patent owner for the grant of the right to an open license shall not be withdrawn.
In the cases provided for by legislation, the Cabinet of Ministers of the Republic of Uzbekistan may permit the use of industrial property subject matter without the consent of the patent owner but with the payment of appropriate compensation thereto.
If a patent owner is unable to use industrial property subject matter in connection with the fact that other protected subject matter, belonging to another natural or legal person, is used therein, they shall be entitled to demand from that person the grant of a license for the use of this subject matter on the conditions provided for by agreement.
In the absence an agreement to the contrary, joint owners may use the protected industrial property subject matter at their own discretion but shall not be entitled to submit an exclusive license therefore or transfer the patent to another person without the agreement of the remaining patent owners.
[4] Pledge and Seizure
Whilst the legislation does not expressly provide for the pledge and seizure of patents, legislation does allow for property rights to be the subject of a pledge. As such patents may be pledged and seized
[H] Filing Requirements
[1] Obligation to file first with national office
| Quick Answer: Obligation to file first with national office | Yes |
Natural and legal persons of the Republic of Uzbekistan can file a patent application for an invention containing no State secrets in other states by filing a foreign application, but not earlier than three months after a corresponding application is filed in Uzbekistan.
[2] Minimum requirements for obtaining filing date / Provisional applications
For obtaining a filing date, it is necessary to present with the patent office the following documents:
– a request to grant a patent in which the applicant's and inventor's names and addresses are indicated;
– a description of the invention, claims and, if necessary, drawings (in any language);
– claims in Russian or Uzbek language;
– power of attorney (for foreign applicants); and
– document confirming the payment of the basic filing fee.
Filing of provisional applications is not provided for by Uzbek law.
[3] Request for grant
An application for an invention shall contain a request for the grant of a patent with an indication of the title of the invention, the inventor (joint inventors) of the invention and the person in whose name the patent is requested, as well as their place of residence or location.
The information about the inventor's name and address of residence shall be indicated in the request to grant a patent.
[4] Appointment of Representative
An application for the grant of a patent may be filed in person or through a patent attorney or an agent.
Applicants not residing in Uzbekistan must appoint a registered Uzbek patent attorney.
[5] Power of Attorney / Designation of inventor / Other documents
| Quick Answer: Power of attorney required for filing application | Yes, on filing date |
| Quick Answer: Legalisation of power of attorney required | No |
A power of attorney shall be filed at filing the application. Legalization is not required.
[6] Priority
| Quick Answer: Certified copy of priority application required | Yes, 3 months from filing |
| Quick Answer: Translation of priority application required | Yes, 3 months from filing |
| Quick Answer: Certification needed for translation of priority application | Yes |
Convention priority period is twelve months based on a filing in any Paris Convention country. If, for reasons beyond the applicant's control, an application requesting convention priority could not have been filed within the period indicated. This period may be extended by the Patent Office, but by no more than two months. An applicant wishing to take advantage of the right of convention priority shall indicate this accordingly when the application is filed and/ or submit the requisite materials (including a certified copy of the priority application and a certified translation of it) not later than three months from the application filing date with the Patent Office.
The priority can also be established as follows:
(1) According to the filing date with the Patent Office of Uzbekistan of the earliest application of the same applicant disclosing this industrial property subject matter, if the application for which such priority is requested was received not later than twelve months from the date of receipt of the earliest application. In that regard, the earliest application shall be considered to have been withdrawn.
(2) According to the filing date of additional documents, where such documents are compiled by the applicant as a separate application, which is filed prior to the expiry of a three- month period from the date of receipt by the applicant of notification from the Patent Office of the fact that the additional documents may not be taken into account in connection with the recognition that they change the essential features of the claimed invention.
The priority of industrial property subject matter may not be established according to the date on which a withdrawn application for the grant of a patent was received, for which earlier priority has already been requested.
The priority of industrial property subject matter in a divisional application for the grant of a patent shall be established as per the filing date (or the priority date if priority was claimed) of the parent application.
[7] Allowable language(s) upon filing / Language(s) of procedure
| Quick Answer: Allowable language(s) for specification upon filing to obtain filing date | Claims in Russian or Uzbek, description in any other language |
| Quick Answer: Language(s) of translation (language(s) of procedure) | Russian or Uzbek |
| Quick Answer: Time limit for filing translation | 2 months from filing date |
| Quick Answer: Certification needed for translation | No |
The language of translation for patent applications is Uzbek or Russian and should be filed within two months from the filing date. Claims in Russian or Uzbek shall be filed at filing the application.
[8] Description
A description of the invention disclosing sufficient information for it to be carried out must be filed.
[9] Claims
| Quick Answer: Multiple dependency of claims allowed | Yes |
| Quick Answer: Additional claims fees | Yes, for independent claims beyond the first |
Claims expressing the essential features of the invention and fully compatible with the
description must be filed. Multiple dependency of claims is permitted.
[10] Abstract
An abstract of the invention must be filed.
[11] Drawings
Drawings and other materials, where required to understand the essential features of the invention, must be filed.
[12] Payment of fees
The basic filing fee shall be paid at filing and shall be based on the number of independent claims.
[I] Application Procedure
| Quick Answer: Examination before grant | Formal and substantive examination |
[1] Filing Authority
| Quick Answer: Filing authority | www.ima.uz |
The filing authority is the Intellectual Property Agency of the Republic of Uzbekistan (the Patent Office).
[2] Online filing
| Quick Answer: Online filing possible | No |
Not possible.
[3] Formal examination
A formal examination shall be carried out by the Patent Office after the period of two months from the filing date. At the applicant's request, a formal examination may be undertaken before the period in question expires. In this case, from the time the request is filed, the applicant may not add, correct, and, refine the application documents at their own initiative, without the payment of an additional fee.
During the formal examination, the application will be examined as to whether it complies with the industrial property subject matter for which legal protection is granted. Based on the results of the formal examination, the Patent Office shall inform the applicant of the decision.
If an application for the grant of a patent is in violation of the established requirements, the applicant shall be requested to provide, within three months of the date of dispatch by the Patent Office of a corresponding notification, corrected or missing documents. Where an applicant does not provide within the period indicated the requested documents or does not submit a request to extend the established period, an application for the grant of a patent shall be considered to have been withdrawn.
[4] Search
| Quick Answer: Search before grant as part of official procedure | Yes, unless international search results available |
If the results of a search conducted in relation to an application by an international or foreign searching authority are not available, a search is usually ordered at the Russian Patent Office.
[5] Obligation to submit prior art, corresponding foreign search results and/or application numbers
| Quick Answer: Obligation to submit prior art | No |
Not applicable in this jurisdiction.
[6] Substantive examination
| Quick Answer: Time limit for requesting substantive examination | Within 3 years after filing date |
The Patent Office shall conduct a substantive examination upon the request of the Applicant or any other person, provided that the examination fee has been paid. A request for the substantive examination can be filed at filing the application or within three years after its filing date (international filing date for a PCT case).
The due date for filing a request for the substantive examination can be extended for up to two months upon the applicant's request.
Where the deadline in question is not met, an application shall be considered to have been withdrawn.
If, in the process of a substantive examination, it is established that identical applications for the grant of a patent have one and the same priority date, the patent may be granted according to the application for which the earlier date of dispatch to the Patent Office has been proven and, where these dates coincide, for the application that has the earlier incoming Patent Office registration date.
If, as a result of a substantive examination, it is established that a subject matter claimed as an invention expressed as claims proposed by the applicant, meet the established requirements, the Patent Office shall decide to grant a patent.
If the subject matter claimed as an invention fails to comply with the requirements of patentability, a decision shall be taken to refuse to grant a patent.
[7] Accelerated examination / grant
| Quick Answer: Accelerated examination/grant possible other than PPH | No |
| Quick Answer: PPH agreements (OFF/OSF- system) | No |
| Quick Answer: PPH agreements (MOTTAINAI, OEE/OLE-system) | No |
| Quick Answer: PCT-PPH agreements | No |
Not applicable in this jurisdiction.
[8] Amendments and corrections
Within two months of the filing date of an application for the grant of a patent, the applicant shall, without payment of official fee, be entitled to make amendments or clarifications thereto or to include additional documents, without changing the essential features of the claimed industrial property subject matter.
Corrections, clarifications or additional documents relating to an application for the grant of a patent may be submitted after the period in question has expired, but not once a decision has been taken to grant a patent, provided that the patent fee has been paid.
Obvious and technical errors shall, at the request of the patent owner, be corrected by the Patent Office in a patent granted for industrial property subject matter.
[9] Third party observations
| Quick Answer: Third party observations | Not applicable in this jurisdiction |
Not applicable in this jurisdiction.
[10] Grant
| Quick Answer: Average processing time from filing to grant | 2.5 - 4 years |
Following a decision to grant a patent, the Patent Office shall carry out the State registration of industrial property subject matter in the State Register of Inventions.
A patent for industrial property subject matter shall be granted by the Patent Office after the expiration of ten days from the date of publication of information on the registration of the subject matter in the Official Gazette.
A patent for industrial property subject matter shall be granted in the name of the Republic of Uzbekistan, and shall be signed by the Head of the Patent Office.
Where a patent has been requested on behalf of more than one person, a single patent shall be granted for industrial property subject matter.
The form of the patent for industrial property subject matter and the content of the information provided therein shall be established by the Patent Office.
[11] Opposition / Re-examination
| Quick Answer: Opposition / Re-examination (inter partes) | Yes, after grant |
An opposition can be filed any time after grant against a valid patent with the Appeal Board. The grounds of opposition are:
(1) non-compliance of the patented invention with the requirements of patentability; and (2) the presence in the claims of features that were absent from the original application documents.
[12] Appeal
An applicant may lodge an appeal with the Appeal Board concerning a decision of the Patent Office, within three months of the date on which the decision is dispatched.
An Appeal Board decision may be appealed in the courts within six months of the date of its adoption.
[13] Unity of invention
An application for the grant of a patent for an invention shall relate to one invention or group of inventions so linked as to form a single inventive concept (requirement of unity of invention). In the case of an application for the grant of a patent filed in violation of the requirements of unity of industrial property subject matter, the applicant shall be invited, within three months of the date of dispatch to them of the corresponding request, to state which subject matter should be examined and to clarify the application documents accordingly. The other subject matter forming part of the original application documents may be separated into divisional applications. If an applicant does not state which subject matter should be examined and does not provide clarified documents, a substantive examination shall be conducted of the subject
matter indicated first in the claims for the invention.
[14] Divisional applications / Continuation applications
A divisional application shall enter the Patent Office either before a rejection decision is issued on the original application, for which decision the possibilities of disputing have been exhausted, or if the patent is granted, before the registration date in the State Register of Inventions. The invention claimed in the divisional application shall be disclosed in the original application.
A divisional application retains the filing date and the priorities of the original application. Continuation applications are not applicable in this jurisdiction.
[15] Conversion
An applicant shall be entitled to convert an application for an invention into an application for a utility model, and vice versa, prior to a decision being taken on the grant of a patent. In the case of such conversions, the priority of the first application shall be retained.
An appropriate patent fee shall be paid for the conversion of applications.
[16] Publication / Public File Inspection
| Quick Answer: Online register | No website available |
The information contained in documents for applications for the grant of a patent shall be kept secret by the Patent Office, and details thereof shall not be supplied without the consent of the applicant or the patent owner. The dissemination of the information contained in the application documents, prior to official publication of information on the application, shall give rise to liability in accordance with the law.
When the application has passed formal examination, the application shall be published in the Official Gazette after the expiration of the eighteen-month term from the filing date of the application. The content of the published information shall be determined by the Patent Office.
After the publication of the application, any person can become familiar with the text of this application.
Public file inspection is not applicable in this jurisdiction.
[17] Withdrawal to prevent publication
To prevent publication, a request for withdrawal shall be filed before the preparations for publishing the application are completed.
[J] Nullity and Revocation
A registration of a patent for invention can be cancelled, fully or in part, as a result of an opposition that can be filed after the grant of the patent for invention on the following grounds:
(1) non-compliance of the patented invention with the requirements of patentability; and
(2) the presence in the claims of features that were absent from the original application documents.
The validity of a patent shall be terminated early:
(1) where the patent fees for maintaining the patent in force are not paid within the prescribed period; and
(2) on the basis of a request submitted by the patent owner to the Patent Office.
Information on the early termination of the validity of a patent for industrial property subject matter shall be published in the Patent Office Official Gazette.
A patent owner is entitled to cancel a patent.
In the case of multiple patent owners, the cancellation of a patent by one patent owner shall not lead to termination of the validity of a patent.
A cancellation of a patent shall come into force from the date on which the Patent Office receives a written request from the patent owner.
A patent owner shall inform the inventor of the intention to cancel a patent. In this case, the inventor shall have the right of priority to own the patent.
If a patent constitutes the subject of a licensing agreement, a cancellation of the patent is possible only with the consent of the license owner, unless otherwise provided for by agreement.
[K] Use Requirement
| Quick Answer: Use requirement including compulsory licensing provisions | Yes, within 3 years of registration |
Where industrial property subject matter is not used or is used insufficiently for a period of three years from the date of its registration, any person wishing and prepared to use the protected industrial property subject matter may, where the patent owner refuses to conclude a licensing agreement, request the courts to issue them with a compulsory non-exclusive license.
[L] Marking
| Quick Answer: Marking | Marked products have no implications for awarding compensation in case of past infringement |
Marking is not compulsory. Marked products have no implications for awarding compensation in case of past infringement
[M] Infringement
[1] Infringing acts / Non-infringing acts
| Quick Answer: Bolar provision (infringement exemption for pharmaceutical research) | No relevant legislation/jurisprudence in this jurisdiction |
An infringement of a patent owner's exclusive right shall be recognized as the unauthorized preparation, application, import, offer for sale, sale, other introduction into civilian circulation or storage for this purpose of an article prepared with the application of patented industrial property subject matter, and also the application of a method protected by a patent for an invention, or the introduction into civilian circulation or storage for this purpose of an article prepared directly by the method protected by the patent for the invention.
A product (article) shall be recognized as being manufactured using a patented invention and a method protected by a patent for an invention as applied if each feature of the invention included in an independent claim or feature equivalent thereto is used therein .
The validity of a patent, granted for a method of obtaining a product, shall also be extended to the product directly obtained by this method. In that regard, a new product shall be considered to have been obtained by the patented method, in the absence of proof to the contrary.
The following shall not be recognized as an infringement of a patent owner's exclusive right:
(1) the use of devices, containing industrial property subject matter protected in the Republic of Uzbekistan, on a means of transport of another State party to the Paris Convention of the Protection of Industrial Property, where the means of transport in question is temporarily or inadvertently located on the territory of the Republic of Uzbekistan, provided that these devices are used exclusively for the needs of the given means;
(2) the conduct of scientific research or an experiment on means containing industrial property subject matter protected by patents;
(3) the use of means of containing industrial property subject matter protected by patents, in cases of natural calamities, disasters, epidemics and other exceptional circumstances;
(4) the use of means containing industrial property subject matter protected by patents, where these means have been lawfully introduced into civilian circulation;
(5) the use of means containing industrial property subject matter protected by patents, for personal reasons without an income being obtained; and
(6) the one-off preparation of medicines in chemists according to a physician's prescription.
Penalties
Infringement of the patent rights entails the imposition of a fine on legal entity in the amount from 100 to 200 times of amount (it is from USD 2,890 to 4,970). Penalties are determined separately for each type of violation.
Penalties are imposed by the Patent Office based on the results of inspection by the request of the patent holder.
Within five working days from the date of issuance of documents on the discovery of a violation, the Patent Office issues a decision to impose a fine. The infringer has a month for payment of the fine.
In case of non-payment by the infringer of the fine, the Patent Office within five working days sends a claim to the court for recovery of the fine.
The infringer is entitled to appeal the decision of the Patent Office before the administrative
court.
[2] Prior user rights
Any natural or legal person who, up to the established priority date of industrial property subject matter, who used an identical solution created independently of its inventor, or made the necessary preparations to use the solution, shall retain the right to further use thereof, free of charge, without the volume of production being expanded.
The right of prior use may be transferred to another natural or legal person only together with the production unit in which the identical solution was used or the preparations necessary therefore were made.
[3] Remedies
Persons using industrial property subject matter in violation of a patent owner's exclusive right shall be liable to:
(1) cease the actions infringing the patent owner's exclusive right; and
(2) compensate the patent owner for the losses they have incurred, in accordance with legislation.
[4] Penal provisions
The Criminal Code of the Republic of Uzbekistan does not contain provisions envisaging the responsibility for violation of patent rights, in particular, for the use of a patented object without the owner's permission. At the same time, the Criminal Code of the Uzbekistan contains the following provisions: assignment of authorship, forcing to co-authorship in intellectual property objects, as well as disclosure of information about these object without the consent of their author before their official registration or publication shall be punished by a fine of twenty-five to seventy-five minimum monthly wages or deprivation of a certain right up to five years, or correctional labour for up to three years or imprisonment for up to six months.
[5] Enforcement and Customs
Not applicable in this jurisdiction.
[N] Restoration after unintentional lapse
| Quick Answer: Restoration of unintentional failure to meet priority term | Yes, 2 months from expiration of the priority term |
| Quick Answer: Restoration of unintentional failure to meet priority term (Rules 26bis.3 and 49ter PCT) | Yes, as Receiving Office and in national phase |
| Quick Answer: Restoration of unintentional failure to meet a time limit | Yes, 1 year from missed due date |
| Quick Answer: Restoration of unintentional failure to pay maintenance fees | Yes, 3 years from the missed due date |
Deadlines missed by an applicant for the submission of materials upon the examination request may be re-established by the Patent Office, provided that the causes of the unavoidable postponement of the established deadline are confirmed and a fee is paid. A request to re- establish a missed deadline may be filed by the applicant not later than twelve months from the day on which the missed deadline expires.
If an annuity for a patent was not paid in time or during the grace period, a request for restoration of the patent can be submitted within three years after the missed due date.
A person who began to use the invention or made preparations necessary for such use in the period between the date of the lapse of the patent and the date of publication of the information about the restoration of the patent retains the right for further free use of the invention, without the volume of the production being expanded.
[O] Specific Aspects of Regional Patents
Not applicable in this jurisdiction.
[1] Filing Authority
Not applicable in this jurisdiction.
[2] Appointment of Representative
Not applicable in this jurisdiction.
[3] Validation
Not applicable in this jurisdiction.
[4] Authentic text
Not applicable in this jurisdiction.
[5] Amendments and corrections
Not applicable in this jurisdiction.
[6] Publication
Not applicable in this jurisdiction.
[7] Provisional protection
Not applicable in this jurisdiction.
[8] Simultaneous protection
Not applicable in this jurisdiction.
[9] Conversion
Not applicable in this jurisdiction.
[10] Payment of fees
Not applicable in this jurisdiction.
[P] Specific Aspects of International Patent Applications (PCT)
[1] Receiving Office
The Uzbekistan Patent Office.
[2] International Searching Authority
The Russian or European Patent Office.
[3] International Preliminary Examining Authority
The Russian or European Patent Office.
[4] National phase / Regional phase
| Quick Answer: National/regional phase possible | Yes |
| Quick Answer: Time limit for entering national/ regional phase | 31 months from priority date (extendible by 12 months) |
| Quick Answer: Time limit for filing translation | Upon entry |
| Quick Answer: Average processing time from entry national/regional phase to grant | 2.5 - 4 years |
The time limit for entering national phase including the translation of the claims is thirty-one months from the priority date. The translation (Russian or Uzbekistan) must be filed upon entry.
[5] Payment of fees
The basic filing fee shall be paid at filing the application and shall be based on the number of independent claims.
[Q] Fees
| Quick Answer: Small entity fee reduction possible | No |
A distinctive feature is very high official fees.
Patent fees shall be paid by an applicant, patent owner or other person concerned.
[1] Table of official fees
In force since 9 September 2008
| USD | |
Filing an application | 450 |
| – additionally, for each independent claim above 1 | 250 |
| – additionally, for each sheet of the disclosure above 35 | 0.6 |
| Filing a divisional application | 900 |
| Examination fee | 1,350 |
| (1,100 for PCT) | |
| – additionally, for each independent claim above 1 | 1,350 |
| (900 for PCT) | |
| – additionally, for each dependent claim above 10 | 90 |
| – additionally, for each dependent claim above 20 | 45 |
| Extension of term for filing the examination request (no more than for 2 months) | 250 |
| Granting fee, including the 3rd annuity | 950 |
| – additionally, for each sheet above 35 (including the disclosure, claims, drawings, abstract, etc.) | 9 |
| Annuities, for each year: |
| 4th to 6th year | 7th to 10th year | 11th to 14th year |
| 190 | 250 | 320 |
| 15th to 16th year | 17th to 20th year | 21st to 25th year (patent term extension) |
| 400 | 450 | 1,350 |
| – if paid within 6 months after the due date | + 50% |
| – making amendments in an application | 250 |
| Extension of term, for each month: | |
| – up to 6 months | 90 |
| – from 6 to 12 months | 450 |
| Registration of an assignment | 1,350 |
| – additionally, for each patent above 1 indicated in the assignment | 900 |
| – registration of a license | 900 |
| – additionally, for each patent above 1 indicated in the license | 450 |
| Reinstatement of the patent for invention | the amount of the annuity to be paid for the year in which the reinstatement request is filed |
[R] Transitional Provisions
Transitional provisions are in force for the payment of annuities. See ‘Requirements for renewal’.
[S] Specific Patent Issues
Not applicable in this jurisdiction.
[T] Governmental Websites
– www.ima.uz
PART 2 TRADEMARKS
§2.01 Summary
[A] Duration of Registration
PART 2 TRADEMARKS
– 10 years, indefinitely renewable with further 10-year periods. [B] Registrable / Not Registrable
– Registrable is any mark used to distinguish goods/services in trade.
– A mark may be comprised of words, slogans, letters, numbers, images, drawings, combinations of colours, three-dimensional shapes, combinations of such marks, as well as musical compositions, sound marks and fragrance marks.
[C] Application Procedure
– A mark is registered after examination as to whether the subject matter of the application may be registered or not and as to the identity or similarity with marks previously registered.
[D] Governmental Websites
– www.ima.uz
§2.02 Detailed Information
[A] Conventions and Legislation [1] Conventions
– Paris Convention for the Protection of Industrial Property, member since 18 August 1993;
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, member since 12 January 2002; and
– Madrid Protocol Concerning the International Registration of Marks, member since 27 September 2006. [2] Laws – Law of the Republic of Uzbekistan on Trademarks, Service Marks and Appellations of Origin, in force since 30 August 2001.
[B] Duration of Registration
A trademark is valid for ten years from the date of filing of an application at the Patent Office of Uzbekistan. The registration can be renewed unlimited times for periods of ten years.
[C] Requirements for Renewal
| Quick Answer: Due date for renewal | Every 10 years from filing date |
| Quick Answer: Grace period for renewal | 6 months from due date, fixed surcharge |
The renewal application can be filed at any time during the last year of validity. The trademark will be renewed upon the request of the owner and by the payment of the renewal fee. The registration can still be renewed within six months from the expiration date with a fine. There is no possibility of restoration after this grace period.
[D] Registrable / Not Registrable
Registrable is any mark used to distinguish goods/services in trade.
The following signs may be registered as trademarks:
(1) Words and word combinations such as groups of words, sentences, other language units and combinations thereof.
(2) Figurative signs such as pictures of living creatures, objects, natural or other objects and figures of any form, compositions of lines, spots, and figures on the flat.
(3) Three-dimensional signs such as three-dimensional objects, figures, and combinations of lines and figures.
(4) Combinations of different elements: figurative, three-dimensional, word elements, etc.
(5) Digital, letter, sound, light and olfactory signs.
(6) Signs consisting of a combination of digital symbols may be claimed as digital signs.
(7) Signs consisting of a combination of letters lacking verbal character and semantic content may be claimed as letter signs.
(8) Musical compositions, songs, accords, naturally occurring well-known and rare sounds, electronic sounds not occurring in nature, etc. may be claimed as sound signs.
(9) Signs purposed for light effect.
(10) Smells.
The following are not registrable:
(1) Signs that reproduce State emblems, coats of arms, flags and State awards.
(2) Official names of States, abbreviated or full names of international or intergovernmental organizations.
(3) Official control, guarantee, and hallmarks and seals.
(4) Illustrations of decorations and insignia of State services used in Uzbekistan.
(5) Signs that cannot be distinguished.
(6) Signs that have entered into common use as signs of goods of a particular type.
(7) Signs representing generally accepted symbols and terms.
(8) Signs used to characterize goods including types, qualities, quantities, features, purposes, values, and also the times and places of their production or sale.
(9) Signs that are false or likely to mislead the user with regard to goods or their manufacturer.
(10) Signs formally indicating the true place of production of goods but giving a mistaken perception that the goods come from another territory.
(11) Signs representing or containing geographical names identifying mineral waters, wines or strong spirits, for the designation of goods not originating in the place in question and also where they are used in translation or in combination with the words ’form’, ’type’, ’in the style’, and so on.
(12) Signs contrary to the interests of society, principles of humanity and morality.
(13) Signs identical or similar to the point of confusion with: (a) trademarks previously registered or filed for registration in Uzbekistan on behalf of another person and also protected without registration under the international agreements, to which Uzbekistan is a party or enjoying earlier priority in relation to goods of the same type;
(b) trademarks of other persons recognized as generally known in accordance with the established procedure, in relation to any goods;
(c) geographical indications and appellations of origin protected in accordance with the law, apart from the cases of their inclusion as an unprotected element in a trademark registered on behalf of a person who has the right to use such indication and appellation in relation to any goods; and
(d) certificated designations, registered in accordance with the established procedure.
(14) Signs reproducing company names (or part thereof) known in the territory of Uzbekistan and belonging to other persons who have obtained the right to these names prior to the date on which a trademark application in relation to goods of the same kind is received.
(15) Industrial designs the rights to which, in Uzbekistan, belong to other persons.
(16) Names of works of science, literature, and art known in Uzbekistan, characters therefrom or quotations, works of art or fragments thereof without the agreement of the copyright holder or their legal successors (heirs).
(17) Family names, first names, pseudonyms and derivatives thereof, portraits and facsimiles of famous persons without the consent of such persons, their heirs or the authority, if these designations are part of the history and culture of Uzbekistan.
The signs indicated in paragraphs (1)-(4) may be included as unprotected elements in a trademark if agreement thereto has been given by the corresponding State authority or their owner. The signs indicated in paragraphs (5)-(7) may be included as unprotected elements in a trademark if they do not occupy a dominant position therein.
The registration of the signs indicated in paragraphs (5)-(7) may be permitted, provided that these signs have become distinctive through use.
The registration of a sign, similar to the point of confusion with a trademark indicated in sections 2 and 3 of paragraph 13 may be permitted, provided that the trademark owner has given their consent to the registration of this sign.
A trademark may be registered in any colour or colour combination.
[1] Colour marks
| Quick Answer: Registrability of colours as such | No relevant legislation/jurisprudence in this jurisdiction |
There is no relevant legislation/jurisprudence in this jurisdiction concerning the registration as a trademark of a colour or a colour combination as such.
[2] Three-dimensional marks
| Quick Answer: Registrability of three-dimensional marks | Yes |
Three-dimensional signs such as three-dimensional objects, figures, and combinations of lines and figures may be registered as trademarks.
[3] Collective marks
| Quick Answer: Registrability of collective marks | Yes |
Trademarks may be also registered as collective marks.
[4] Certification / guarantee marks
| Quick Answer: Registrability of certification/ guarantee marks | No |
Not applicable in this jurisdiction.
[5] Associated marks
| Quick Answer: Registrability of associated marks | No |
Not applicable in this jurisdiction.
[6] Series of marks
| Quick Answer: Registrability of series of marks | No |
Not applicable in this jurisdiction.
[7] Other marks
| Quick Answer: Registrability of tastes | No |
| Quick Answer: Registrability of fragrance | Yes |
| Quick Answer: Registrability of music notes/ sound marks | Yes |
Fragrances and music notes are registrable. Tastes are not registrable.
[E] Ownership and related rights
[1] Applicant
A trademark may be registered in the name of a legal entity or natural person.
[2] Establishment of rights ”first-to-file / first-to-use”
First-to-file jurisdiction
[3] Assignment
| Quick Answer: Legalisation of assignment deed required | Yes, by notary public |
The exclusive right to a trademark may be assigned by its owner to another person by agreement. Notarization (but not legalization) of the assignment is required for recordal.
An agreement to assign the right to a trademark is subject to registration with the Patent Office.
Assignment of the right to a trademark shall not be permitted, where this may mislead a consumer as to the goods or their manufacturer.
A collective mark and the right to use it may not be assigned to other persons.
[4] Licenses and Registered Users
The right to use a trademark may be granted by the trademark owner to another person based on a license agreement.
The license agreement must contain a condition that the quality of the licensee's goods shall be not lower than the quality of the licensor's goods, and that the licensor shall monitor compliance of this condition.
An agreement to assign the right to a trademark or a license agreement is subject to registration with the Patent Office.
[5] Pledge and Seizure
Whilst the legislation does not expressly provide for the pledge and seizure of trademarks, legislation does allow for property rights to be the subject of a pledge. As such trademarks may be pledged and seized
[F] Filing Requirements
[1] Request for registration
The requirements for registration are as follows:
(1) a request for registration of the trademark, including the applicant's name and their place of residence or business;
(2) a list of goods grouped in accordance with the classes of the International Classification of Goods and Services, for which registration of the mark is claimed;
(3) a proof of payment of the official fee for filing the application and carrying out an examination; and
(4) in case of a collective trademark, the regulations for the collective mark.
[2] Classification
| Quick Answer: Classification | Nice classification |
Uzbekistan adheres to the International Classification of Goods and Services (Nice, 11th edition).
[3] Multi-class applications
| Quick Answer: Multi-class applications | Yes |
Multi class applications are acceptable
[4] Appointment of Representative
An application for the registration of a trademark may be filed in person or through an agent. Applicants not residing in Uzbekistan must appoint an Uzbek agent.
[5] Power of Attorney
| Quick Answer: Power of attorney required for filing application | Yes, 2 months from filing date |
| Quick Answer: Legalisation of power of attorney required | No |
A document confirming the authority of a patent attorney (power of attorney) must be filed within two months of filing the application, if an application is filed through such an attorney. Legalization is not required.
[6] Priority
| Quick Answer: Certified copy of priority application required | Yes, 3 months from filing date |
Convention priority is six months.
The priority of a trademark displayed as an official exhibit or at officially recognized international exhibitions, organized in the territory of one of the States that have acceded to the Paris Convention for the Protection of Industrial Property, may be established according to the starting date of the open display of the exhibit at the exhibition (exhibition priority), if the application for registration of the trademark has been received by the Patent Office within six months of the date in question.
An applicant requesting the right of convention or exhibition priority shall be obliged to indicate this, when filing an application for the registration of a trademark or within two months of the Patent Office receiving the application, together with the necessary documents confirming the legality of such a requirement, or to submit these documents not later than three months after the Patent Office receives the application for registration of the trademark.
Where an application for registration of a trademark is divided, the priority for each of the applications shall be established according to the priority date of the original application.
[7] Graphical representations
An image of the claimed mark and its description, as well as the colour and colour combination, must be filed.
[G] Application Procedure
[1] Filing Authority
| Quick Answer: Filing authority | www.ima.uz |
The filing authority is the Intellectual Property Agency of the Republic of Uzbekistan (the Patent Office).
[2] Online filing
| Quick Answer: Online filing possible | Yes |
Online filing is possible.
[3] Search
| Quick Answer: Search before registration as part of official procedure | Yes |
In the course of examination of a trademark application, the Patent Office conducts a search for existing identical and similar trademarks on the Register.
[4] Examination
| Quick Answer: Examination before registration | Examination on absolute and relative grounds |
A full examination of an application for registration of a trademark is carried out by the Patent Office and includes absolute and relative grounds for registration.
During the examination process, the Patent Office is entitled to request additional documents from the applicant, without which the examination cannot be carried out.
Additional materials requested for an examination must be submitted within three months of the date on which the request is sent to the applicant. At the applicant's request, the period in question may be extended by the maximum of six months.
A formal examination of an application for the registration of a trademark is carried out within thirty days of the date on which the application is filed with the Patent Office.
As part of a formal examination, the content of the application for registration of a trademark, as well as the presence of the necessary documents and also their compliance with the established requirements, shall be verified. On the basis of the results of the formal examination, the applicant shall be informed of the decision of the Patent Office to accept the application for examination or its refusal to do so. After the formal examination, the Patent Office conducts a full examination, which takes about seven months. In the event of information search for protectability, carried out by agreement of the parties, the examination takes one month from the date of decision of accept the application for consideration.
An application for registration of a trademark, which lists several goods, may be divided at the request of the applicant into two or more parts, and the filing date of the original application shall be retained. During the period in which the examination of an application for registration of a trademark is conducted, prior to a decision being taken thereon, the applicant is entitled, at their own initiative, to correct, clarify or supplement the application documents with information that does not modify the substance of the application.
[5] Registration
On the basis of the results of an examination, the Patent Office shall decide to register the trademark or to refuse such registration, whereupon the applicant shall be informed accordingly.
[6] Opposition / Observations
| Quick Answer: Opposition / Observations | Yes, opposition after registration |
After publication of information on the trademark application, any interested person can file an opposition to the Patent Office against application filed with bad faith.
Any person may file an opposition against a trademark registration at the Board of Appeals on absolute grounds during the entire period of its validity or within five years from the date of publication of information relating to the registration of the trademark on relative grounds.
[7] Appeal
An applicant is entitled to appeal the outcome of the examination to the Board of Appeals within three months of the date on which a decision is taken.
An applicant may appeal the decision of the Board of Appeals at the Court within six months of the date on which the decision was taken.
[8] Alteration after Registration
The owner of a trademark shall inform the Patent Office of any changes as to any owner details, list of goods, trademark itself, or other changes relating to the registration of the trademark that do not modify its substance.
Details of the changes are entered by the Patent Office in the appropriate register.
[9] Publication / Public File Inspection
| Quick Answer: Online register | www.ima.uz |
After filing a trademark application, the PTO publishes the information on the application within one business day. Any interested parties may submit written comments on the bad faith of the filed application.
Information on the registration of a trademark is published in the Official Gazette of the Patent Office. The content of the published information is determined by the Patent Office.
[H] Nullity and Revocation
The validity of a trademark registration can be cancelled on the basis of the following:
(1) a decision of the Appeal Board;
(2) a request submitted by the owner to the Patent Office; and
(3) a court decision.
A trademark registration may be recognized as completely or partially invalid on absolute grounds during the entire period of its validity or within five years of the date of publication of information relating to the registration of the trademark on relative grounds.
[I] Use Requirement
[1] Before registration
| Quick Answer: Use requirement before registration | Not applicable in this jurisdiction |
Use before registration is not required.
[2] After registration
| Quick Answer: Use requirement after registration | Yes, 5 years from registration date |
The validity of a trademark registration, either fully or in part, may be cancelled by a request of a third party by a court decision where the trademark has not been used for an interrupted period of any five years from its date of registration and also where agreements on the use of a collective mark are infringed.
The use of a trademark includes its application on the goods, for which the trademark is registered and/or their packaging by the trademark owner or a person to whom such a right is granted on the basis of a license agreement.
The use of a trademark in advertising, printed editions, on official forms, signs, and display of exhibits at exhibitions and fairs held in Uzbekistan may be recognized as sufficient use.
The validity of the registration of a trademark may not be cancelled in relation to all goods or part thereof if the trademark owner or licensee can prove that the non-use of the trademark is the result of circumstances that are beyond their control.
[J] Marking
| Quick Answer: Marking | Marked products have no implications for awarding compensation in case of past infringement |
The owner of a trademark may place, next to the trademark, preventive marking in the form of the Latin letter ’R’ or ®, indicating the fact that the designation applied on the goods or packaging is registered in Uzbekistan as a trademark.
[K] Infringement
The owner of a trademark has the exclusive right to use or dispose of the trademark, as well as the right to forbid using the trademark by third parties. The exclusive rights start from the registration date.
[1] Infringing acts / Non-infringing acts
An infringement of the exclusive right to a trademark is recognized in the case of unauthorized manufacture, application, import, offer for sale, sale, other introduction into public circulation or storage for this purpose of a trademark or goods designated by the mark, or of a designation similar to the point of confusion, in relation to goods of the same type.
Penalties
Illegal use of the trademark entails the imposition of a fine on legal entity in the amount from 100 to 200 times of amount (it is from USD 2,890 to 4,970). Penalties are determined separately for each type of violation.
Penalties are imposed by the Patent Office based on the results of inspection by the request of the trademark owner.
Within five working days from the date of issuance of documents on the discovery of a violation, the Patent Office issues a decision to impose a fine. The infringer has a month for payment of the fine.
In case of non-payment by the infringer of the fine, the Patent Office within five working days sends a claim to the court for recovery of the fine.
The infringer is entitled to appeal the decision of the Patent Office before the administrative court.
[2] Remedies
The trademark owner has, under the Arbitrate Code of Uzbekistan, the right to defend its legitimate rights and demand compensation of the damages at the Commercial Courts of Uzbekistan caused by the unlawful actions.
Infringement cases are considered within one month, and in exceptional circumstances, this term can be extended by the head of the Commercial Court but for not longer than one month. The decision can be appealed within ten days from the date of receipt. Civil and criminal cases are handled by the Commercial Courts of Uzbekistan.
During the proceedings, all possible pieces of evidence in the form of documents, reports of witnesses, or expert evidence can be submitted. At the request, the court may order the other party or a third person to disclose documents that may be of importance as evidence.
The following remedies are available:
(1) seizure and/or destruction of infringing goods;
(2) injunction relief, court order to discontinue the infringement;
(3) security measure;
(4) damage claim relief; and
(5) monetary relief.
By the request of the other party, the court may order preliminary or permanent injunction at any stage of the proceedings except if the injunction may prevent the execution of the court decision. The injunction request is considered by the Commercial Court within one day upon receipt.
[3] Penal provisions
The Criminal Code of the Republic of Uzbekistan does not contain provisions envisaging the responsibility for violation of trademark rights, in particular, for the use of a trademark without the owner's consent. At the same time, the Criminal Code of the Uzbekistan contains the following provisions: assignment of authorship, forcing to co-authorship in intellectual property objects, as well as disclosure of information about these object without the consent of their author before their official registration or publication shall be punished by a fine of twenty-five to seventy-five minimum monthly wages or deprivation of a certain right up to five years, or correctional labour for up to three years or imprisonment for up to six months.
[4] Enforcement and Customs
No relevant legislation/jurisprudence in this jurisdiction.
[L] Well-known and Reputed Marks
A request for acknowledging a trademark as well known is to be filed at the Appeal Board of the Patent Office of Uzbekistan.
The request and the evidence as follows must contain factual data confirming that the trademark is well known:
(1) the wide use of the trademark in Uzbekistan;
(2) a list of the local places where the goods under the trademark have been sold;
(3) the volume of sales of those goods;
(4) the way of use of the trademark including the advertising and presentation at fairs or exhibitions of the goods and/or services for which the trademark is used;
(5) the average annual number of consumers of the goods;
(6) the countries in which the trademark has acquired wide fame; and
(7) the results of a consumer poll conducted by a special independent organization taking into account the recommendations of the Patent Office.
Considered as evidence of the duration, continuity, intensity, and large volume of use of the trademark may be certificates of agencies controlling goods' quality, of commercial organizations, associations, and consumer societies, as well as quality declarations and certificates.
The request must contain the date on which the use of the trademark began and the date since which the trademark owner has considered their trademark to be well known in Uzbekistan.
The request is to be examined within four months from filing.
[M] Trademarks and Trade Names
Those signs cannot be registered as trademarks that reproduce company names (or part thereof) known in the territory of Uzbekistan and belonging to other persons who have obtained the right to these names prior to the date on which a trademark application in relation to goods of the same kind is received.
[N] Trademarks and Domain Names
No relevant legislation/jurisprudence in this jurisdiction.
[O] Trademarks and Appellations of Origin / Trademarks and Geographical Indications
A name of a country, population centre, locality or other geographical object, used to designate a good, the special features of which are exclusively or mainly defined by the natural conditions or other factors characteristic of the geographical object in question, or by a combination of natural conditions and these factors, shall be recognized as an appellation of origin.
Those signs cannot be registered as trademarks that are identical or confusingly similar to geographical indications or appellations of origin protected in accordance with the law, apart from the cases of their inclusion as an unprotected element in a trademark registered on behalf of a person who has the right to use such indication or appellation in relation to any goods.
[P] Restoration after unintentional lapse
| Quick Answer: Restoration of unintentional failure to meet a time limit | Yes, 2 months from missed time limit |
| Quick Answer: Restoration of unintentional failure to pay renewal fee | No |
Any deadlines missed by the applicant may be restored by the Patent Office at the applicant's request. A request must be filed not later than two months after the missed deadline has expired.
[Q] Specific Aspects of Regional Trademark Registration
Not applicable in this jurisdiction.
[R] Specific Aspects of International Trademark Registration
| Quick Answer: International registration | Madrid Protocol |
International trademarks (under the Madrid Protocol) may be registered in Uzbekistan.
[S] Fees
| Quick Answer: Small entity fee reduction possible | No |
[1] Table of official fees
| Filing fees | USD |
| One class of goods and services | 620.00 |
| Each additional class | 210.00 |
| Registration fees | 1,250.00 |
| Each additional class | 55.00 |
| Opposition fees | 1,350.00 |
| Appeal fees | 620.00 |
[T] Transitional Provisions
Not applicable in this jurisdiction.
[U] Specific Trademark Issues
Not applicable in this jurisdiction.
[V] Governmental Websites
– www.ima.uz
PART 3 UTILITY MODELS
§3.01 Summary
[A] Duration of Registration
– 5 years, extendible for an additional 3 years to a maximum of 8 years.
[B] Registrable / Not Registrable
– A utility model should be new and industrially applicable. Only an apparatus (device) can be protected as a utility model. A process (method) or substance cannot be protected as a utility model.
[C] Novelty
– Local novelty is required. A grace period of 6 months is available.
[D] Filing Requirements and Application Procedure
– Filing language: the claims must be in Russian or Uzbek, the description in any language
– Language of translation of the description: Uzbek or Russian
– Time limit for filing translation: 2 months from the filing date
– A utility model is registered after substantive examination.
[E] Governmental Websites
– www.ima.uz
§3.02 Detailed Information
[A] Conventions and Legislation
[1] Conventions
– Paris Convention, member since 18 August 1993;
– Patent Cooperation Treaty, member since 18 August 1993;
– Patent Law Treaty, member since 19 July 2006; and
– Strasbourg Agreement Concerning the International Patent Classification, member since 12 October 2003.
[2] Laws – Law on Inventions, Utility Models and Industrial Designs of 1 October 2002, with the amendments of 30 July 2008.
[B] Duration of Registration
| Quick Answer: Duration | 5 years from filing and extension for 3 years |
The duration of registration is five years and extendible for additional three years to a maximum of eight years upon payment of annuities.
[C] Requirements for Renewal
| Quick Answer: Due date maintenance fees | Annually on filing date |
| Quick Answer: Grace period for maintenance fees | Not applicable in this jurisdiction |
Annuities are to be paid yearly within three months before anniversaries of the filing date (or the international filing date for PCT applications). A grace period of six months is available. The request for extension of the five-year term of validity of a utility model can be filed within three months before the expiration of the term of validity of the utility model.
If an annuity for a utility model was not paid in time or during the grace period, a request for restoration of the utility model can be submitted within three years after the missed due date.
[D] Registrable / Not Registrable
Subject matter claimed as a utility model shall be granted legal protection, provided that it is novel and industrially applicable.
A utility model shall be considered industrially applicable if it can be used in practice.
Only technical solutions relating to an apparatus (device) can be protected as utility models.
The subject matter excluded from protection as an invention cannot be protected as a utility model.
[E] Novelty
| Quick Answer: Novelty requirement | Local |
A utility model shall be novel if it is not known from the prior art.
The prior art shall include all information made generally accessible in the Republic of Uzbekistan (local novelty).
[1] Grace period
| Quick Answer: Novelty grace period for filing after applicant’s own disclosure | Yes, 6 months preceding filing/priority date |
A grace period of six months is available.
The public disclosure of information relating to a utility model, by its creator, applicant or
any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance influencing the novelty of the utility model, if the application for the grant of a registration for the utility model has been filed with the Patent Office not later than six months from the date of disclosure of the information. In that regard, the obligation to prove the fact in question shall lie with the creator and the applicant.
[F] Ownership and related rights
[1] Applicant
The creator of a utility model shall be recognized as the natural person whose creative effort led to the creation of the utility model.
If a utility model is created by the joint creative efforts of more than one natural person, all such persons shall be recognized as its equal joint creators, unless otherwise agreed by them.
The right of authorship shall be an inalienable and non-transferable personal non-proprietary right.
A registration for a utility model shall be granted to the following:
(1) the creator (joint creators) of a utility model or their heir (heirs);
(2) the natural and/or legal persons (with their agreement) indicated by the creator or their heir in the application for the registration of a utility model or in the declaration of amendment of the applicant, filed with the Patent Office prior to registration of the utility model; and
(3) an employer in the cases indicated below.
The right to a utility model registration created by an employee in connection with the fulfilment of their employment duties or a specific task of the employer shall belong to the employer where this is provided for by the agreement between the employer and employee.
If such an agreement between an employer and creator (joint creators) does not exist, the creator (joint creators) shall be entitled to file an application and to obtain a registration of a utility model in their own name (names). In that regard, the employer shall be entitled to use the corresponding utility model in their own production and shall pay appropriate compensation to the registration owner, as defined by agreement.
In cases where an employer keeps a utility model a secret, they shall pay the creator (joint creators) appropriate remuneration, the level of which shall be fixed by agreement.
The mutual relations concerning the use of a utility model belonging to more than one owner shall be defined by agreement between such persons. In the absence of such agreement, each owner may use the protected utility model at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the utility model to another person without the agreement of the remaining owners.
[2] Assignment
| Quick Answer: Legalisation of assignment deed required | No, but notarisation is required |
The owner of a registration of a utility model can assign their exclusive right for the utility model to any legal or natural person (persons). Assignment is subject to registration with the Patent Office. The effective date of the assignment is the date of the registration of the assignment by the Patent Office.
An assignment of rights from the creator(s) to the applicant is normally not required when a utility model application is filed.
[3] Licenses
License agreement is subject to registration with the Patent Office.
Any person who is not a utility model owner shall be entitled to use the invention protected
by a utility model only with the consent of the utility model owner on the basis of a licensing agreement.
A utility model owner may submit to the Patent Office a request to grant any person the right to use a utility model (open license). In this case, the fee for maintaining the utility model in force shall be reduced by 50% from the year following that of publication of information concerning such a request by the Patent Office.
A person who has expressed a desire to acquire an open license shall conclude with a utility model owner an agreement to grant a non-exclusive license. Disputes relating to the conditions of an agreement shall be examined by the courts. A request by a utility model owner for the grant of the right to an open license shall not be withdrawn.
In the cases provided for by legislation, the Cabinet of Ministers of the Republic of Uzbekistan may permit the use of a utility model without the consent of the utility model owner but with the payment of appropriate compensation thereto.
If a utility model owner is unable to use industrial property subject matter in connection with the fact that other protected subject matter, belonging to another natural or legal person, is used therein, they shall be entitled to demand from that person the grant of a license for the use of this subject matter on the conditions provided for by agreement.
The mutual relations concerning the use of a utility model belonging to more than one utility model owner shall be defined by agreement between such persons. In the absence of such agreement, each utility model owner may use the protected utility model at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the utility model to another person without the agreement of the remaining utility model owners.
[4] Pledge and Seizure
Whilst the legislation does not expressly provide for the pledge and seizure of utility models, legislation does allow for property rights to be the subject of a pledge. As such, utility models may be pledged and seized.
[G] Filing Requirements
[1] Obligation to file first with national office
| Quick Answer: Obligation to file first with national office | Yes |
Natural and legal persons of the Republic of Uzbekistan can file an application for a utility model containing no State secrets in other States by filing a foreign application, but not earlier than three months after a corresponding application is filed in Uzbekistan.
[2] Minimum requirements for obtaining filing date
For obtaining the filing date, it is necessary to present to the Patent Office the following documents:
– a request to grant a registration for utility model in which the applicant's and creator's names and addresses are indicated;
– a description of the utility model, claims and, if necessary, drawings (in any language);
– claims in Russian or Uzbek language;
– power of attorney (for foreign applicants); and
– document confirming the payment of the basic filing fee. Filing of provisional applications is not provided for by the Uzbek Law.
[3] Request for registration
An application for a utility model shall contain a request for the grant of a registration for utility model with an indication of the creator (joint creators) of the utility model and the person in whose name the utility model is requested, as well as their place of residence or location, the priority data, if applicable, and the title of the utility model.
[4] Appointment of Representative
A utility model application may be filed in person or through a patent attorney or an agent. Applicants not residing in Uzbekistan must appoint a registered Uzbek patent attorney.
[5] Power of Attorney / Designation of creator / Other documents
| Quick Answer: Power of attorney required for filing application | Yes, on filing date |
| Quick Answer: Legalisation of power of attorney required | No |
A power of attorney should be filed at filing the application. Legalization is not required. The information about the creator's name and address of residence shall be indicated in the request to grant a registration for utility model.
[6] Priority
| Quick Answer: Certified copy of priority application required | Yes, 3 months from filing date |
| Quick Answer: Translation of priority application required | Yes, 3 months from filing date |
| Quick Answer: Certification needed for translation of priority application | Yes, within 3 months |
Convention priority is twelve months. If, for reasons beyond the applicant's control, an application requesting convention priority could not have been filed within the period indicated, this period may be extended by the Patent Office, but by no more than two months. An applicant wishing to take advantage of the right of convention priority shall indicate this accordingly when the application is filed and/or submit the required materials (including a certified copy of the priority application and a certified translation of it) not later than three months from the application filing date with the Patent Office.
The priority for a utility model can also be established as follows:
(1) According to the filing date with the Patent Office of Uzbekistan of the earliest application of the same applicant disclosing this utility model, if the application for which such priority is requested was received not later than twelve months from the date of receipt of the earliest application. In that regard, the earliest application shall be considered to have been withdrawn.
(2) According to the filing date of additional documents, where such documents are compiled by the applicant as a separate application, which is filed prior to the expiry of a three- month period from the date of receipt by the applicant of notification from the Patent Office of the fact that the additional documents may not be taken into account in connection with the recognition that they change the essential features of the claimed invention.
The priority of a utility model may not be established according to the date on which a withdrawn application for the grant of a utility model was received, for which earlier priority has already been requested.
The priority of a utility model in a divisional application for the grant of a utility model shall be established as per the filing date (or priority date) of the parent application.
[7] Allowable language(s) upon filing / Language(s) of procedure
| Quick Answer: Allowable language(s) for specification upon filing to obtain filing date | Russian or Uzbek |
| Quick Answer: Language(s) of translation (language(s) of procedure) | Russian or Uzbek |
| Quick Answer: Time limit for filing translation | 2 months from filing date |
| Quick Answer: Certification needed for translation | No |
The language of translation for utility model applications is Uzbek or Russian and should be filed within two months from the filing date. Claims in Russian or Uzbek shall be filed at filing the application.
[8] Description
A description of the utility model disclosing sufficient information for it to be carried out must be filed.
[9] Claims
| Quick Answer: Multiple dependency of claims allowed | Yes |
Claims expressing the essential features of the utility model and a fully compatible with the description must be filed. Multiple dependency of claims is allowed.
[10] Abstract
An abstract of the utility model must be filed.
[11] Drawings
Drawings and other materials, where required to understand the essential features of the utility model, must be filed.
[12] Payment of fees
| Quick Answer: Small entity fee reduction possible | Not applicable in this jurisdiction |
The basic filing fee shall be paid at filing and shall be based on the number of independent claims.
[H] Application Procedure
[1] Filing Authority
| Quick Answer: Filing authority | www.ima.uz |
The filing authority is the Intellectual Property Agency of the Republic of Uzbekistan (the
Patent Office).
[2] Online filing
| Quick Answer: Online filing possible | No |
Not possible.
[3] Examination
The Patent Office shall examine an application for a utility model, provided that the utility model fee has been paid. The utility model examination fee may be paid within three months of the date of dispatch to the applicant of a notification of the completion of the formal examination on the acceptance of an application for consideration. Where the deadline in question is breached, the application shall be considered to have been withdrawn.
Provided that an examination is conducted, it shall be verified whether the claimed subject matter meets the requirements for registration of utility models.
If, as a result of an examination, it is established that an application has been filed for a proposal that does not relate to subject matter protected as utility models, a decision shall be taken to refuse to grant a utility model and the applicant shall be informed accordingly.
If, as a result of an application examination, it is established that the application documents for a utility model comply with the stated requirements, the Patent Office shall take a decision to grant a utility model for a utility model and the applicant shall be informed accordingly.
In establishing that a subject matter claimed as a utility model fails to comply with the requirements for registration, a decision shall be taken to refuse to grant a registration for a utility model and the applicant shall be informed accordingly.
[4] Amendments and corrections
Within two months of the filing date of an application for the grant of a utility model, the applicant shall, without payment of official fee, be entitled to make amendments or clarifications thereto or to include additional documents, without changing the essential features of the claimed utility model.
Corrections, clarifications, or additional documents relating to an application for the grant of a utility model may be submitted after the period in question has expired but not once a decision has been taken to grant a utility model, provided that the fee has been paid.
Obvious and technical errors shall, at the request of the utility model owner, be corrected by the Patent Office in a granted utility model.
[5] Registration
Following a decision taken to grant a utility model, the Patent Office shall carry out the State registration of the utility model in the State Register of Utility Models.
A registration for a utility model shall be granted by the Patent Office after the expiration of ten days from the date of publication of information on the registration of the utility model in the Official Gazette. A registration for a utility model shall be granted in the name of the Republic of Uzbekistan and shall be signed by the Head of the Patent Office.
Where a utility model has been requested on behalf of more than one person, a single utility model shall be granted for industrial property subject matter.
The form of the registration for a utility model and the content of the information provided therein shall be established by the Patent Office.
[6] Accelerated registration
Not applicable in this jurisdiction.
[7] Opposition / Re-examination
| Quick Answer: Opposition / Re-examination (inter partes) | Yes, after registration |
An opposition can be filed any time after grant against a valid registration of a utility model with the Appeal Board.
The grounds of opposition are:
(1) non-compliance of the utility model with the requirements for grant; and
(2) the presence in the claims of features that were absent from the original application documents.
[8] Appeal
An applicant may lodge with the Appeal Board an appeal concerning a decision of the Patent Office within three months of the date of its dispatch. The appeal shall be examined by the Appeal Board within two months of the date of its receipt.
An Appeal Board decision may be appealed in court within six months of the date of its adoption.
[9] Unity of creation
An application for the grant of a utility model shall relate to one utility model or group of utility models, so linked as to form a single inventive concept (requirement of unity of utility model).
[10] Divisional applications
Divisional applications are not possible.
[11] Branched-off applications
Not applicable in this jurisdiction.
[12] Conversion
An applicant shall be entitled to convert an application for a utility model into an application for an invention, and vice versa, prior to a decision being taken on the grant of a utility model. In the case of such conversions, the priority of the first application shall be retained.
An appropriate utility model fee shall be paid for the conversion of applications.
[13] Publication / Public File Inspection
| Quick Answer: Online register | No website available |
The Patent Office shall publish information upon the registration of utility models. The content of the information shall be determined by the Patent Office.
Public file inspection is not applicable in this jurisdiction.
[14] Withdrawal to prevent publication
An applicant may withdraw an application for utility model up to the time of State registration of the utility model in the State Register of Utility Models.
[I] Nullity and Revocation
A registration of a utility model can be cancelled, fully or in part, as a result of an opposition that can be filed any time after the grant of the utility model on the following grounds:
(1) non-compliance of the granted utility model with the requirements of grant; and
(2) the presence in the claims of features that were absent from the original application documents.
The validity of a registration of a utility model shall be terminated early:
(1) where the fees for maintaining the utility model in force are not paid within the prescribed period; and
(2) on the basis of a request submitted by the utility model owner to the Patent Office.
Information on the early termination of the validity of a registration of a utility model shall be published in the Patent Office Official Gazette.
A utility model owner is entitled to cancel a utility model.
In the case of more utility model owners, the cancellation of a utility model by one utility model owner shall not lead to termination of the validity of a utility model.
A cancellation of a utility model shall come into force from the date on which the Patent Office receives a written request from the utility model owner.
A utility model owner shall inform the creator of the intention to cancel a utility model. In this case, the creator shall have the right of priority to own the utility model.
If a utility model constitutes the subject of a licensing agreement, a cancellation of the utility model is possible only with the consent of the license owner, unless otherwise provided for by agreement.
[J] Use Requirement
| Quick Answer: Use requirement including compulsory licensing provisions | Yes, within 3 years of registration |
Where a utility model is not used or is used insufficiently for a period of three years from the date of its registration, any person wishing and prepared to use the protected utility model may, where the utility model owner refuses to conclude a licensing agreement, request the courts to issue them with a compulsory non-exclusive license.
[K] Marking
| Quick Answer: Marking | Marked products have no implications for awarding compensation in case of past infringement |
Not compulsory. Marked products have no implications for awarding compensation in case of past infringement.
[L] Infringement
[1] Infringing acts / Non-infringing acts
A product (article) shall be recognized as being manufactured using a granted utility model as applied if each feature of the utility model included in an independent claim or feature equivalent thereto is used therein.
An infringement of a utility model owner's exclusive right shall be recognized as the unauthorized preparation, application, import, offer for sale, sale, other introduction into civilian circulation, or storage for this purpose of an article prepared with the application of a granted utility model.
The following shall not be recognized as an infringement of a utility model owner's exclusive right:
(1) The use of devices, containing a utility model protected in the Republic of Uzbekistan, on a means of transport of another State party to the Paris Convention of the Protection of Industrial Property, where the means of transport in question is temporarily or inadvertently located on the territory of the Republic of Uzbekistan, provided that these devices are used exclusively for the needs of the given means.
(2) The conduct of scientific research or an experiment on means containing a granted utility model.
(3) The use of means of containing a utility model in cases of natural calamities, disasters, epidemics and other exceptional circumstances.
(4) The use of means containing a utility model, where these means have been lawfully introduced into civilian circulation.
(5) The use of means containing a utility model, for personal reasons without an income being obtained.
Penalties
Infringement of the patent rights entails the imposition of a fine on legal entity in the amount from 100 to 200 times of amount (it is from USD 2,890 to 4,970). Penalties are determined separately for each type of violation.
Penalties are imposed by the Patent Office based on the results of inspection by the request of the patent holder.
Within five working days from the date of issuance of documents on the discovery of a violation, the Patent Office issues a decision to impose a fine. The infringer has a month for payment of the fine.
In case of non-payment by the infringer of the fine, the Patent Office within five working days sends a claim to the court for recovery of the fine.
The infringer is entitled to appeal the decision of the Patent Office before the administrative court.
[2] Prior user rights
Any natural or legal person who, up to the established priority date of a utility model, used an identical solution created independently of its creator or made the necessary preparations
therefore shall retain the right to further use thereof free of charge, without the volume of production being expanded.
The right of prior use may be transferred to another natural or legal person only together with the production unit in which the identical solution was used or the preparations necessary therefore were made.
[3] Remedies
Persons using a utility model in violation of a utility model owner's exclusive right shall be liable to:
(1) cease the actions infringing the utility model owner's exclusive right; and
(2) compensate the utility model owner for the losses they have incurred, in accordance with legislation.
[4] Penal provisions
The Criminal Code of the Republic of Uzbekistan does not contain provisions envisaging the responsibility for violation of patent rights, in particular, for the use of a patented object without the owner's permission. At the same time, the Criminal Code of the Uzbekistan contains the following provisions: assignment of authorship, forcing to co-authorship in intellectual property objects, as well as disclosure of information about these object without the consent of their author before their official registration or publication shall be punished by a fine of twenty-five to seventy-five minimum monthly wages or deprivation of a certain right up to five years, or correctional labour for up to three years or imprisonment for up to six months.
[5] Enforcement and Customs
Not applicable in this jurisdiction.
[M] Restoration after unintentional lapse
| Quick Answer: Restoration of unintentional failure to meet priority term | Yes, 2 months from expiration of the priority term |
| Quick Answer: Restoration of unintentional failure to meet a time limit | Yes, 12 months from missed deadline |
| Quick Answer: Restoration of unintentional failure to pay maintenance fees | Yes, 3 years from the missed due date |
Deadlines missed by an applicant for the submission of materials upon the examination request may be re-established by the Patent Office, provided that the causes of the unavoidable postponement of the established deadline are confirmed and a fee is paid. A request to re- establish a missed deadline may be filed by the applicant not later than twelve months from the day on which the missed deadline expires.
If an annuity for a utility model was not paid in time or during the grace period, a request for restoration of the utility model can be submitted within three years after the missed due date.
A person who started to use the utility model or made preparations necessary for such use in the period between the date of the lapse of the utility model and the date of publication of the information about the restoration of the utility model retains the right for further free use of the utility model, without the volume of the production being expanded.
[N] Utility Model Application Based on International Patent Application (PCT)
| Quick Answer: National/regional phase possible | Yes |
| Quick Answer: Time limit for entering national phase | 31 months from priority date (extendible by 12 months) |
| Quick Answer: Time limit for filing translation | 2 months from filing date |
Can be filed:
Yes
31 months from priority date (extendible by 12 months)
2 months from filing date
– Time limit for entering national phase: thirty-one months from the priority date. – The translation into Russian or Uzbek must be filed upon entry.
[O] Fees
[1] Table of official fees
USD | |
| Filing an application | 450 |
| – additionally, for each independent claim above 1 | 250 |
| Filing a divisional application | 900 |
| Examination fee | 900 |
| – additionally, for each independent claim above 1 | 900 |
| – additionally, for each dependent claim above 10 | 90 |
| – additionally, for each dependent claim above 20 | 45 |
| Granting fee, including the first annuity | 1,330 |
| – additionally, for each sheet above 35 (including the disclosure, claims, drawings, abstract, etc.) | 9 |
| Annuities, for each year: | |
| 2nd to 5th year | 6th to 8th year |
| 450 | 450 |
| – if paid within 6 months after the due date | + 50% |
| – making amendments in an application | 250 |
| Extension of term, for each month: | |
| – up to 6 months | 90 |
| – from 6 to 12 months | 450 |
| Registration of an assignment | 1,350 |
| – additionally, for each utility model above 1 indicated in the assignment | 900 |
| – registration of a license | 900 |
| – additionally, for each utility model above 1 indicated in the license | 450 |
| Reinstatement of the registration of a utility model | the cost is the amount of the annuity to be paid for the year in which the reinstatement request is filed |
[P] Transitional Provisions
No transitional provisions are in force at present.
[Q] Specific Utility Model Issues
Not applicable in this jurisdiction.
[R] Governmental Websites
– www.ima.uz
PART 4 INDUSTRIAL DESIGNS AND MODELS
§4.01 Summary
[A] Duration of Registration
– 10 years and extendible for an additional period of 5 years to a maximum of 15 years.
[B] Registrable / Not Registrable
– Subject matter claimed as an industrial design shall be granted legal protection, provided that it is novel and original.
– The following are not recognized as industrial designs:
(1) printed products as such;
(2) architectural subject matter (apart from small architectural forms), industrial, hydro technical, and other stationary constructions;
(3) non-stable subject matter made of liquid, gaseous, friable or similar substances; and (4) decisions determined exclusively by the technical function of an article.
[C] Novelty
– Absolute novelty is required.
– A grace period of 6 months is available.
[D] Application Procedure
– A design is registered after substantive examination. [E] Governmental Websites
– www.ima.uz
§4.02 Detailed Information
[A] Conventions and Legislation
[1] Conventions
– Paris Convention, member since 18 August 1993; and
– Locarno Agreement Establishing an International Classification for Industrial Designs, member since 14 March 2006. [2] Laws – Law on Inventions, Utility Models and Industrial Designs of 1 October 2002, with the amendments of 30 July 2008.
[B] Duration of Registration
| Quick Answer: Duration | 10 years from filing date and extension for 5 years |
The duration of registration is ten years and extendible for additional period of five years to a maximum of fifteen years. Annual fees are payable after grant, the third annuity together with the granting fee, with further annuities payable annually on the anniversary of the filing date.
[C] Requirements for Renewal
| Quick Answer: Due date maintenance fees | Annually on filing date |
| Quick Answer: Grace period for maintenance fees | Not applicable in this jurisdiction |
Annuities are to be paid annually within three months before anniversaries of the filing date. The request for extension of the ten-year term of validity of an industrial design can be filed within three months before the expiration of the term of validity of the industrial design.
A grace period of six months is available for the payment of annuities.
If an annuity for an industrial design was not paid in time or during the grace period, a request for restoration of the industrial design can be submitted within three years after the missed due date.
Annuities are payable after grant, the first annuity together with granting fee. Further annuities are payable every year on anniversary of filing date.
[D] Registrable / Not Registrable
Subject matter claimed as an industrial design shall be granted legal protection, provided that it is novel and original.
An industrial design shall be recognized as original if the set of its essential features determines the creativeness of specific aesthetic aspects of the manufactured article.
An artist's or designer's decision determining the external appearance of an article shall relate to industrial designs.
The following shall not be recognized as industrial designs:
(1) Printed products as such.
(2) Architectural subject matter (apart from small architectural forms), industrial, hydro technical and other stationary constructions.
(3) Non-stable subject matter made of liquid, gaseous, friable or similar substances.
(4) Decisions determined exclusively by the technical function of an article.
(5) Decisions contrary to public interests, principles of humanity and morality.
An application for the grant of a registration for an industrial design shall relate to one industrial design and may include alternatives to this design.
[E] Novelty
| Quick Answer: Novelty requirement | Absolute |
An industrial design shall be recognized as novel if the set of its essential features is unknown from the information made generally accessible in the world before the priority date of the industrial design.
In establishing the novelty of an industrial design, withdrawn applications for the grant of an industrial design, filed with an earlier priority, shall also be taken into account.
[1] Grace period
| Quick Answer: Novelty grace period for filing after applicant’s own disclosure | Yes, 6 months preceding filing/priority date |
A grace period of six months is available.
The public disclosure of information relating to an industrial design, by the creator, applicant
or any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance hindering the recognition of the registrability of the industrial design, if the application for the grant of an industrial design has been filed with the Patent Office not later than six months from the date of disclosure of the information. In that regard, the obligation to prove the fact in question shall lie with the creator and the applicant.
[F] Ownership and related rights
[1] Applicant
The creator of industrial property subject matter shall be recognized as the natural person whose creative effort led to the creation of the subject matter.
If industrial property subject matter is created by the joint creative efforts of more than one natural person, all such persons shall be recognized as its equal joint creators, unless otherwise agreed by them.
The right of authorship shall be an inalienable and non-transferable personal non-proprietary right.
A registration for industrial design subject matter shall be granted to the following:
(1) the creator (joint creators) of industrial property subject matter or their heir (heirs);
(2) the natural and/or legal persons (with their agreement) indicated by the creator or their heir in the application for the grant of an industrial design or in the declaration of amendment of the applicant, filed with the Patent Office prior to registration of theindustrial property subject matter; and
(3) an employer in the cases indicated below.
The right to registration for an industrial design subject matter created by an employee in connection with the fulfilment of their employment duties or a specific task of the employer shall belong to the employer where this is provided for by the agreement between the employer and employee.
If such an agreement between an employer and creator (joint creators) does not exist, the creator (joint creators) shall be entitled to file an application and to obtain a registration for an industrial design subject matter in their own name (names). In that regard, the employer shall be entitled to use the corresponding industrial design subject matter in their own production and shall pay appropriate compensation to the registered design owner, as defined by agreement.
In cases where an employer keeps industrial design subject matter a secret, they shall pay the creator (joint creators) appropriate remuneration, the level of which shall be fixed by agreement.
The mutual relations concerning the use of industrial property subject matter belonging to more than one industrial design owner shall be defined by agreement between such persons. In the absence of such agreement, each industrial design owner may use the protected industrial design subject matter at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the industrial design to another person without the agreement of the remaining industrial design owners.
[2] Assignment
| Quick Answer: Legalisation of assignment deed required | No, but notarisation is required |
The owner of an industrial design can assign their exclusive right for the industrial property subject matter covered by the industrial design to any legal or natural person (persons). Assignment is subject to registration with the Patent Office. Notarization (but not legalization) of the assignment is required for recordal.
The effective date of the assignment is the date of the registration of the assignment by the Patent Office.
An assignment of rights from the creator(s) to the applicant is normally not required when a design application is filed.
The mutual relations concerning the use of industrial property subject matter belonging to more than one industrial design owner shall be defined by agreement between such persons. In the absence of such agreement, each industrial design owner may use the protected industrial property subject matter at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the industrial design to another person without the agreement of the remaining industrial design owners.
[3] Licenses
License agreement is subject to registration with the Patent Office.
Any person who is not an industrial design owner shall be entitled to use a design protected
by a registration only with the consent of the industrial design owner on the basis of a licensing agreement.
An industrial design owner may submit to the Patent Office a request to grant any person the right to use a design (open license). In this case, the fee for maintaining the industrial design in force shall be reduced by 50% from the year following that of publication of information concerning such a request by the Patent Office.
A person who has expressed a desire to acquire an open license shall conclude with an industrial design owner an agreement to grant a non-exclusive license. Disputes relating to the conditions of an agreement shall be examined by the courts. A request by an industrial design owner for the grant of the right to an open license shall not be withdrawn.
In the cases provided for by legislation, the Cabinet of Ministers of the Republic of Uzbekistan may permit the use of a design without the consent of the industrial design owner but with the payment of appropriate compensation thereto.
If an industrial design owner is unable to use a design in connection with the fact that other protected subject matter, belonging to another natural or legal person, is used therein, they shall be entitled to demand from that person the grant of a license for the use of this subject matter on the conditions provided for by agreement.
In the absence of an agreement to the contrary, each industrial design owner may use the protected industrial design subject matter at their own discretion, but shall not be entitled to submit an exclusive license therefore or transfer the industrial design to another person without the agreement of the remaining industrial design owners.
[4] Pledge and Seizure
Whilst the legislation does not expressly provide for the pledge and seizure of registered designs, legislation does allow for property rights to be the subject of a pledge. As such, registered designs may be pledged and seized.
[G] Filing Requirements
[1] Request for registration
An application for an industrial design shall contain a request for the grant of an industrial design in Uzbek or Russian language with an indication of the creator (joint creators) of the industrial design and the person in whose name the industrial design is requested, as well as their place of residence or location, the priority data, if applicable, and the title of the design.
[2] Classification
| Quick Answer: Classification | Locarno classification |
International classification for industrial designs. Currently, the 12th edition of the Locarno classification is applicable.
[3] Appointment of Representative
A design application may be filed in person or through a patent attorney or an agent.
Applicants not residing in Uzbekistan must appoint a registered Uzbek patent attorney.
[4] Power of Attorney
| Quick Answer: Power of attorney required for filing application | Yes, on filing date |
| Quick Answer: Legalisation of power of attorney required | No |
A power of attorney should be filed at filing the application. No legalization is required.
[5] Priority
| Quick Answer: Certified copy of priority application required | Yes, 3 months from filing |
Convention priority is six months. If, for reasons beyond the applicant's control, an application requesting convention priority could not have been filed within the period indicated, this period may be extended by the Patent Office, but by no more than two months. An applicant wishing to take advantage of the right of convention priority shall indicate this accordingly when the application is filed and/or submit the requisite materials (certified copy of priority application) not later than three months from the application filing date with the Patent Office.
The priority can also be established as follows:
(1) According to the filing date with the Patent Office of Uzbekistan of the earliest application of the same applicant disclosing this industrial property subject matter, if the application for which such priority is requested was received not later than six months from the date of receipt of the earliest application. In that regard, the earliest application shall be considered to have been withdrawn.
(2) According to the filing date of additional documents, where such documents are compiled by the applicant as a separate application, which is filed prior to the expiry of a three- month period from the date of receipt by the applicant of notification from the Patent Office of the fact that the additional documents may not be taken into account in connection with the recognition that they change the essential features of the claimed invention.
The priority of industrial property subject matter may not be established according to the date on which a withdrawn application for the grant of an industrial design was received, for which earlier priority has already been requested.
The priority of industrial property subject matter in a divisional application for the grant of an industrial design shall be established as per the filing date (or priority date) of the parent application.
[6] Description
A description of the industrial design including a set of its essential features must be filed.
[7] Graphical representations
A series of images representing an article, a mock-up or drawing, providing a full detailed picture of the external appearance of the article, must be filed.
A drawing affording general views of the manufactured article and its functional characteristics or an assembly diagram where indispensable for a clear understanding of the disclosure must also be filed.
[8] Multiple deposits
| Quick Answer: Multiple deposits | Yes, unlimited |
It is possible to claim in one application several variants of the design of an article having a certain (single) purpose, but not several articles having different purposes, even if they belong to the same class.
Both a single article and a set or a kit of articles having a single purpose can be claimed.
[H] Application Procedure
[1] Filing Authority
| Quick Answer: Filing authority | www.ima.uz |
The filing authority is the Intellectual Property Agency of the Republic of Uzbekistan (the
Patent Office).
[2] Online filing
| Quick Answer: Online filing possible | No |
Not possible.
[3] Search
| Quick Answer: Search before registration as part of official procedure | Yes |
In practice, a search is usually carried out mainly among the designs registered in the Uzbekistan and Russia, and the designs disclosed in a special Russian periodical dedicated to designs registered abroad.
[4] Examination
| Quick Answer: Examination before registration | Formal examination and examination as to previous designs |
Both formal and substantive examinations are carried out on applications for industrial designs. The formal examination shall be carried out by the Patent Office after a period of two months from the filing date. At the applicant's request, the formal examination may be undertaken before the period in question expires.
During a formal examination, it shall be examined whether the claimed proposal complies with the industrial property subject matter for which legal protection is granted. Based on the results of the formal examination, the Patent Office shall inform the applicant of the decision.
In the case of an application compiled in violation of the established requirements, the applicant shall be requested to provide, within three months of the date of dispatch by the Patent Office of a corresponding notification, corrected or missing documents. Where an applicant does not provide within the period indicated the requested documents or does not submit a request to extend the established period, an application for the grant of an industrial design shall be considered to have been withdrawn.
The Patent Office shall conduct a substantive examination upon the request of the Applicant or any other person, provided that the examination fee has been paid. A request for substantive
examination can be filed within three months after the date of issuance of the notification on the completion of formal examination.
Where the deadline in question is not respected, an application shall be considered to have been withdrawn.
If, in the process of a substantive examination, it is established that identical applications for the grant of an industrial design have one and the same priority date, the industrial design may be granted according to the application for which the earlier date of dispatch to the Patent Office has been proven and, where these dates coincide, for the application that has the earlier incoming Patent Office registration date.
If, as a result of a substantive examination, it is established that the subject matter claimed as a design and expressed in the set of its essential features proposed by the applicant meet the established requirements, the Patent Office shall decide to grant an industrial design.
In establishing that the subject matter claimed as a design fails to comply with the requirements of registrability, a decision shall be taken to refuse to grant an industrial design.
[5] Registration
Following a decision taken to grant an industrial design, the Patent Office shall carry out the State registration of the design in the State Register of Designs.
An industrial design shall be granted by the Patent Office after the expiration of ten days from the date of publication of information on the registration of the design in the Official Gazette.
An industrial design shall be granted in the name of the Republic of Uzbekistan and shall be signed by the Head of the Patent Office.
Where an industrial design has been requested on behalf of more than one person, a single industrial design shall be granted for industrial property subject matter.
The form of the registered design and the content of the information provided therein shall be established by the Patent Office.
Obvious and technical errors shall, at the request of the industrial design owner, be corrected by the Patent Office in a granted industrial design.
[6] Opposition / Re-examination
| Quick Answer: Opposition / Re-examination (inter partes) | Yes, after registration |
An opposition can be filed any time after grant against a valid industrial design with the Appeal Board.
The grounds of opposition are:
(1) Non-compliance of the registered design with the requirements of registrability.
(2) The set of essential features of the design comprises features that were absent the original
application documents.
[7] Appeal
An applicant may lodge with the Appeal Board an appeal concerning a decision of the Patent Office within three months of the date of its dispatch. The appeal shall be examined by the Appeal Board within two months of the date of its receipt.
An Appeal Board decision may be appealed in court within six months of the date of its adoption.
[8] Publication / Deferred Publication / Public File Inspection
| Quick Answer: Online register | No website available |
The Patent Office shall publish information on the registration of designs. The content of the information shall be determined by the Patent Office. Deferred publication and public filed inspection are not envisaged by the Uzbek laws.
[I] Nullity and Revocation
A registration for an industrial design can be cancelled, fully or in part, as a result of an opposition that can be filed any time after the grant of the industrial design on the following grounds:
(1) Non-compliance of the registered design with the requirements of registrability.
(2) The set of essential features of the design comprises features that were absent the original application documents.
The validity of a registration for an industrial design shall be terminated early:
(1) Where the fees for maintaining the industrial design in force are not paid within the prescribed period.
(2) On the basis of a request submitted by the industrial design owner to the Patent Office.
Information on the early termination of the validity of a registration for an industrial design shall be published in the Patent Office Official Gazette.
An industrial design owner is entitled to cancel the industrial design.
In the case of more industrial design owners, the cancellation of an industrial design by one industrial design owner shall not lead to termination of the validity of an industrial design. A cancellation of an industrial design shall come into force from the date on which the
Patent Office receives a written request from the industrial design owner.
The industrial design owner shall inform the creator of the design of the intention to terminate an industrial design. In this case, the creator shall have the right of priority to own the industrial design.
If an industrial design constitutes the subject of a licensing agreement, a cancellation of the industrial design is possible only with the consent of the license owner, unless otherwise provided for by agreement.
[J] Use Requirement
| Quick Answer: Use requirement including compulsory licensing provisions | Yes, 3 years from grant date |
Where a registered industrial design is not used or is used insufficiently for a period of three years from the date of its registration, any person wishing and prepared to use the protected design, where the industrial design owner refuses to conclude a licensing agreement, request the courts to issue them with a compulsory non-exclusive license.
[K] Marking
| Quick Answer: Marking | Marked products have no implications for awarding compensation in case of past infringement. |
Not compulsory. Marked products have no implications for awarding compensation in case of past infringement.
[L] Infringement
[1] Infringing acts / Non-infringing acts
A product (article) shall be recognized as being manufactured using a registered design if it contains the set of essential features of such a design.
An infringement of an industrial design owner's exclusive right shall be recognized as the unauthorized preparation, application, import, offer for sale, sale, other introduction into civilian circulation, or storage for this purpose of an article prepared with the use of a registered design.
The following shall not be recognized as an infringement of an industrial design owner's exclusive right:(1) The use of devices, containing a design protected in the Republic of Uzbekistan, on a means of transport of another State party to the Paris Convention of the Protection of Industrial Property, where the means of transport in question is temporarily or inadvertently located on the territory of the Republic of Uzbekistan, provided that these devices are used exclusively for the needs of the given means.
(2) The conduct of scientific research or an experiment on means containing a design protected by a registration.
(3) The use of means of containing a design protected by an industrial design in cases of natural calamities, disasters, epidemics and other exceptional circumstances.
(4) The use of means containing a design protected by an industrial design, where these means have been lawfully introduced into civilian circulation.
(5) The use of means containing a design protected by an industrial design, for personal reasons without an income being obtained.
Penalties
Infringement of the patent rights entails the imposition of a fine on legal entity in the amount from 100 to 200 times of amount (it is from USD 2,890 to 4,970). Penalties are determined separately for each type of violation.
Penalties are imposed by the Patent Office based on the results of inspection by the request of the patent holder.
Within five working days from the date of issuance of documents on the discovery of a violation, the Patent Office issues a decision to impose a fine. The infringer has a month for payment of the fine.
In case of non-payment by the infringer of the fine, the Patent Office within five working days sends a claim to the court for recovery of the fine.
The infringer is entitled to appeal the decision of the Patent Office before the administrative court.
[2] Prior user rights
Any natural or legal person who, up to the established priority date of a design, used an identical solution created independently of its creator or made the necessary preparations therefore shall retain the right to further use thereof free of charge, without the volume of production being expanded.
The right of prior use may be transferred to another natural or legal person only together with the production unit in which the identical solution was used or the preparations necessary therefore were made.
[3] Remedies
Persons using a design in violation of an industrial design owner's exclusive right shall be liable to:
(1) Cease the actions infringing the industrial design owner's exclusive right.
(2) Compensate the industrial design owner for the losses they have incurred, in accordance with legislation.
[4] Penal provisions
The Criminal Code of the Republic of Uzbekistan does not contain provisions envisaging the responsibility for violation of patent rights, in particular, for the use of a patented object without the owner's permission. At the same time, the Criminal Code of the Uzbekistan contains the following provisions: assignment of authorship, forcing to co-authorship in intellectual property objects, as well as disclosure of information about these object without the consent of their author before their official registration or publication shall be punished by a fine of twenty-five to seventy-five minimum monthly wages or deprivation of a certain right up to five years, or correctional labour for up to three years or imprisonment for up to six months.
[5] Enforcement and Customs
Not applicable in this jurisdiction.
[M] Restoration after unintentional lapse
| Quick Answer: Restoration of unintentional failure to meet priority term | Yes, 2 months if failure to meet term due to reasons beyond the applicant’s control |
| Quick Answer: Restoration of unintentional failure to meet a time limit | Yes, 1 year from missed due date |
| Quick Answer: Restoration of unintentional failure to pay maintenance fees | Yes, within 3 years of the missed payment date |
Deadlines missed by an applicant for the submission of materials upon the examination request may be re-established by the Patent Office, provided that the causes of the unavoidable postponement of the established deadline are confirmed and a fee is paid. A request to re- establish a missed deadline may be filed by the applicant not later than twelve months from the day on which the missed deadline expires.
If an annuity for an industrial design was not paid in time or during the grace period, a request for restoration of the industrial design can be submitted within three years after the missed due date.
A person who began to use the design or made preparations necessary for such use in the period between the date of the lapse of the industrial design and the date of publication of the information about the restoration of the industrial design retains the right for further free use of the design, without the volume of the production being expanded.
[N] Specific Aspects of Regional Design Registration
Not applicable in this jurisdiction.
[O] Specific Aspects of International Design Registration
| Quick Answer: International registration (Hague Union) | No |
Not applicable in this jurisdiction.
[P] Design and Copyright Protection
No information available.
[Q] Fees
| Quick Answer: Small entity fee reduction possible | No |
[1] Table of official fees
| USD | |
| Filing an application | 450 |
| – additionally, for each article from 2 to 10 | 250 |
| – additionally, for each article above 10 | 450 |
| Filing a divisional application | 900 |
| Examination fee | 1,350 |
| – additionally, for each article from 2 to 10 | 450 |
| – additionally, for each article above 10 | 900 |
| Granting fee, including maintenance for the first three years | |
| – USD 1,100 of granting fee plus USD | 450 for maintenance per each year |
| Total sum including maintenance for first 3 years | 2,450 |
| additionally, for each sheet above 35 (including the disclosure, claims, drawings, abstract, etc.) | 10 |
| Annuities, for each year: |
| 4th to 7th year | 8th to 10th year | 11th to 15th year |
| 450 | 650 | 900 |
| Registration of an assignment | 1,350 |
| – additionally, for each design above 1 indicated in the assignment | 900 |
| Registration of a license | 900 |
| – additionally, for each design above 1 indicated in the license | 450 |
| Reinstatement of the patent for invention | the amount of the annuity to be paid for the year in which the reinstatement request is filed |
[R] Transitional Provisions
No transitional provisions are in force at present.
[S] Specific Industrial Design and Model Issues
Not applicable in this jurisdiction.
[T] Governmental Websites
– www.ima.uz