New Patent Law in Kazakhstan

The new Kazak Patent Law was passed on July 16, 1999 and came into force on August 21, 1999. The new Law "On Trademarks, Service Marks and Appellations of Origin of Goods" was passed on July 26, 1999 and came into force on September 4, 1999. The most important changes and amendments in the new Patent Law are the following: 1. The term of validity of preliminary patents on inventions may be extended by not more than three years. Thus, the maximum term of validity of a preliminary patent is now eight years from the Kazak filing date (Art. 5 section 3). 2. The term of validity of patents on inventions whose working requires the permission of a competent authority may be exten­ded by not more than five years (Art. 5 section 3). 3. In view of Article 11 of the Paris Convention, temporary legal protection may be granted to objects of industrial property that have been exhibited at official or officially recognized international exhibitions provided that an application for the respective object is filed at the Kazak Patent Office not later than six months from the date of its exhibition (Art. 13 sections 3, 4). 4. The validity of a patent which has lapsed due to non-payment of maintenance fees may be reinstated within three years from the payment due date if convincing reasons are presented and the respective reinstatement fee is paid. At the same time, the right of continued use has been instituted. Please also note the following changes concerning procedural provisions: 5. The term for filing a response to an official action is three months (instead of two months) from the mailing date of the official action (Art. 22 sections 3, 8). 6. The term for submitting proof of payment of granting and accumulated annuity fees is three months (instead of two months) from the mailing date of the respective decision (Art. 22 sections 5, 9, Art. 23 section 2). 7. Requests for substantial examination may be filed after the publication of the grant of the preliminary patent, but not later than three years from the filing date of the application, and if the term of validity of the preliminary patent has been extended, not later than five years from the filing date of the application (Art. 22 section 7). This provision applies to applications filed or entered into the Kazak national phase after the new Patent Law came into force (Newsletter of Kazak Patent Office, published in Official Bulletin No. 9-1(40), 1999). 8. Information on the grant of preliminary patents on inventions or utility model patents is published after 18 months from the filing date of the application, and information on the grant of preliminary industrial design patents is published within 12 months from the filing date of the application (Art. 26 section 1). This provision as well applies to applications filed or entered into the Kazak national phase after the new Patent Law came into force. The most important changes and amendments in the new Law "On Trademarks, Service Marks and Appellations of Origin of Goods" are the following: I. The article on absolute grounds for refusal of registration as a trademark has been amended. Compared to the old law, the article has been re-structured, and the grounds listed have been regrouped and added to. Thus, the article now comprises the term "designations not having distinctiveness". In addition, grounds aimed at preventing the registration of false geographical indications and especially of false geographical indications used for wines, spirits and mineral waters have been added (Art. 6). II. The new law explicitly provides for protection of well-known trademarks (according to international treaties) without registration (Art. 4 section 1) with regard to any type of goods or services (Art. 7 section 1 item 2) (see item 6 below). III. A separate chapter has been devoted to the protection of trademark owners' rights and to the right to use appellations of origin of goods (Chapter 12). Please also note the following changes concerning procedural provisions: IV. The term for submitting additional materials and explanations in response to an official action is three months (instead of two months) from the mailing date of the official action (Art. 11 sec­tion 2). V. The term for filing an appeal against a decision of the examination department is three months (instead of two months) from the mailing date of the decision (Art. 12 section 4). VI. Protests against registrations carried out in violation of the requirements of Art. 7 section 1 items 1-3 of the Law (non-registrability of trademarks identical with or confusingly similar to trademarks registered or filed for registration earlier in the name of a third person for goods or services of the same type, or to well-known trademarks with regard to any type of goods or services) may be filed within five years from the registration date (Art. 23). The former law did not foresee a term for filing such protests. Please note especially that the term for filing an appeal against a provisional refusal of an Inter­national registration according to the Madrid Agreement is three months from the date of mailing of the decision by the Kazak Patent Office (instead of three months from the date of receipt of the decision by the applicant).

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