Inventions and utility models

New, inventive and industrially applicable technical solution can be recognized as an invention and is granted legal protection.

Patentability criteria of an invention:

  • An invention is new provided it is unknown from prior art.
  • An invention has an inventive step provided it is not obvious for a specialist from existing prior art.
  • An invention is industrially applicable if it can be used in industry, agriculture, healthcare and other industries.

The scope of legal protection covered by a patent for an invention is determined by its claims.

Objects of an invention

Technical solutions in a form of inventions are protected in any field related to:

  • product (device, substance, strain of microorganism, plant seeds or animal cell culture);
  • method (a process of implementation of actions over material object with the help of material tools);
  • use of a known product or method for a new purpose or a new product for a specific purpose.

Non-protected objects:

  • discoveries, scientific theories and mathematical methods;
  • methods of organization and management;
  • conventional signs, schedules, rules;
  • rules and methods for performing mental operations, conducting games;
  • programs for computers and algorithms as such;
  • projects and figures of designs of constructions, buildings and territories;
  • proposals relating only to the appearance of products;
  • proposals contradicting public order, the principles of humanity and morality.

Term of validity

An invention patent is valid for 20 years from the filing date provided that fee for maintaining of the application is paid annually.

In respect of an invention relating to a medical product, a pesticide (chemical pesticide) for the application of which permits are required in accordance with the procedure established by the legislation of the Republic of Kazakhstan on permits and notifications, the period of validity of the exclusive right and confirming this right to a patent can be extended for not more than five (5) years upon patent holder’s request.

The above term is extended by the time elapsed from filing date for the granting issuing an invention patent to the date of receipt of the first permission to use an invention with deduction of five (5) years.

Documents for filing an application:

  • application for granting of a title document indicating the authors of an invention and individuals in whose name the patent is requested and their residence or location;
  • description of an invention disclosed in details sufficient for the implementation by a specialist in the relevant field of knowledge;
  • claims defining the object of an invention and reflecting its essence. Claims should be clear, accurate and based on the description;
  • drawings and other materials, if they are necessary to understand the essence of an invention;
  • abstract;
  • power of attorney, if correspondence and paperwork are made by a representative;
  • a document evidencing payment of fee for filing of an application.

Patenting procedure

Invention patent to the patent owner is granted upon finalizing procedure of formal examination and substantive examination. The substantive examination includes patent information search and review for compliance with patentability criteria industrial applicability, world novelty and inventive level. A notification is forwarded to the applicant based on the results of the formal examination. After payment of stipulated fee for issuance, the substantial examination of the application is conducted. The decision on issuance of a patent is based on the results of the substantive examination. After payment fee for issuing a patent, the owner is granted Kazakhstan invention patent. The term for reviewing patent application is approximately 1.5 years or more.

Exclusive right

The patent owner is exclusively entitled to use the invention protected by the patent. Other individuals and entities may not use an invention without the patent owner’s permission. The right of patent possession and the rights arising from the patent may be assigned by the patent owner to other individuals or entities in full or in part (disposal of the right).

The use of industrial property object shall be production, use, import, offer for sale, sale, other introduction into civil circulation or storage for this purpose of a product containing a protected industrial property object, as well as the use of a protected method. The product is recognized as comprising protected invention, and the protected method is recognized as applicable if a product comprises and the method uses every feature of an invention given in the independent claim, or its equivalent, known as such in the art at the date of start to use. The title document issued for the method of obtaining a product extends to a product directly obtained by this method. In this case, if not proven otherwise, a new product is considered to be obtained by a protected method.

Infringement to the exclusive right of the patent owner (infringement to a title document) is an unauthorized production, use, import, storage, offer for sale, sale and other introduction into civil circulation of a product created using a protected invention, as well as using a protected method or introduction into civil circulation of a product produced directly by protected method. At the same time, a new product is considered to be obtained in a protected manner.

UTILITY MODEL

New and industrially applicable technical solution can be recognized as utility model.

Patentability criteria of utility model:

  • Utility model is new when its aggregate amount of essential features are unknown from prior art.
  • Utility model is industrially applicable if it can be used in practice.

The scope of legal protection covered by a title document to utility model is determined by its claims.

Term of validity

Utility model patent is valid for 5 years from filing date. Upon appropriate request from the patent owner utility model patent may be renewed for not more than another 3 years.

Objects of utility model

Presently starting from April 7, 2015 in the Republic of Kazakhstan, the objects of utility model are the same as for inventions, with the exception of diagnostic, therapeutic and surgical methods of treating people or animals.

Non-protected objects

The same objects as for the invention.

Documents for filing an application for issuing a patent for a utility model:

  • application for granting a title document indicating the authors of utility model and individuals in whose name the patent is requested and their residence or location;
  • description of utility model disclosed in details sufficient for the implementation by a specialist in the relevant field of knowledge;
  • claims defining the object of utility model and reflecting its essence and fully based on the description;
  • drawings and other materials, if they are necessary to understand the essence of utility model;
  • abstract;
  • power of attorney, if correspondence and paperwork are made by a representative;
  • a document evidencing payment of fee for filing of an application.

Patenting procedure

The conclusion to issue a patent for a utility model is issued based on the results of an examination without checking for compliance with the patentability criteria industrial applicability and world novelty. After payment of stipulated fee for issuance, the substantial examination of the application is conducted. The decision on issuance of a patent is based on the results of the substantive examination. After payment fee for issuing a patent, the owner is granted utility model patent of Kazakhstan. Currently the term for reviewing patent application for utility model is approximately 1.5 years or more.

Exclusive right

The patent owner is exclusively entitled to use utility model protected by the patent. Other individuals and entities may not use utility model without the patent owner’s permission. The right of patent possession and the rights arising from the patent may be assigned by the patent owner to other individuals or entities in full or in part (disposal of the right).

The use of industrial property object shall be production, use, import, offer for sale, sale, other introduction into civil circulation or storage for this purpose of a product containing a protected utility model, as well as the use of a protected method.

The product is recognized as comprising utility model and the protected method is recognized as applicable if a product comprises and the method uses every feature of utility model given in the independent claim, or its equivalent, known as such in the art at the date of start to use. The title document issued for the method of obtaining a product extends to a product directly obtained by this method. In this case, if not proven otherwise, a new product is considered to be obtained by a protected method.

Infringement to the exclusive right of the patent owner (infringement to a title document) is an unauthorized production, use, import, storage, offer for sale, sale and other introduction into civil circulation of a product created using a protected utility model, as well as using a protected method or introduction into civil circulation of a product produced directly by protected method. At the same time, a new product is considered to be obtained in a protected manner.

Compulsory license

The patent owner is obliged to use utility model. The conditions for issuing a compulsory license are the same as for the invention.

We offer the following services in the field of protection of inventions:

  • Preparation, filing and maintenance of applications for industrial property objects up to the issuance of title documents in Kazakhstan and in other countries. Foreign patenting can be carried out either by filing an application directly to the country specified by the applicant, or within the framework of the Patent Cooperation Treaty (PCT), the Eurasian and European Patent Conventions and etc.;
  • Monitoring the terms of payment for maintaining patents in force, maintaining patents in force, as well as extending the term of patents in cases provided by patent legislation, renewal of patents, entering amendments to state registries and patents;
  • Preparation of expert opinions of experts on the facts of infringement to rights to industrial property objects;
  • Early termination of the patent;
  • Legal support in the assignment of patents, preparation and registration of license agreements and assignment agreements;
  • Assistance in prevention illicit use of industrial property objects under patents in Kazakhstan and abroad;
  • Representing clients in patent disputes, including challenging the granting of patents and patent infringement, including representation in the Board of Appels of the Ministry of Justice, in courts, in arbitration, and pre-trial dispute resolution.

In this section, information is published concerning the section PATENTS – INVENTIONS AND UTILITY MODELS

  • How to obtain patent in Kazakhstan;
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Olga Pastukhova

Patents

Questions relating to the section Patents – Inventions and Utility Models can be forwarded to e-mail address: info@bolotovIP.com marked for Olga Pastukhova.