The Preliminary Patent in Uzbekistan

The Uzbek Patent Law provides for the institution of the preliminary patent on two kinds of IP objects - inventions and designs. In accordance with Art. 3 ("Protection of IP Objects") of the Law of the Republic of Uzbekistan "On Inventions, Utility Models and Industrial Designs" of May 6, 1994 (hereinafter: Law of 94), the right on a IP object belongs to - the inventor(s) - or his/their legal successor(s) and is attested to by (...) a PRELIMINARY PATENT on the invention or industrial design. A Preliminary Patent is issued upon completion of the formal and the preliminary examination. A Preliminary Patent grants the exclusive right to the patent holder to own, dispose of and use an IP object. The exclusive right of the patent holder is valid from the date of publication of the information on the Preliminary Patent in the Official Bulletin of the Patent Office. The Preliminary Patent is valid for FIVE YEARS from the priority date. In order to receive a Preliminary Patent, a corresponding request for the grant of a Preliminary Patent has to be filed together with the application materials and the corresponding fees (cf. below) have to be paid. A patent on IP objects which are protected by a Preliminary Patent can be granted upon completion of the examination as to substance, if a corresponding REQUEST has been filed by the holder of the Preliminary Patent (at the latest on the last day of validity of the Preliminary Patent). If however a request for the grant of a Patent is filed and the corresponding fees (0.5 minimum wages for domestic applicants or $ 300 for foreign applicants) are paid already together with the application materials, formal examination is followed immediatedly by the examination as to substance (if the examination request has been filed in time, i.e. within 12 months from the application date). In this case, no Preliminary Patent is issued. The scope of protection granted by a Preliminary Patent on an invention is defined by its claim set, and that of a Preliminary Patent on an industrial design by the entirety of its essential features or (and) their combination (hereinafter: entirety of essential features), reflected on the photographs of the article (model, drawing). In accordance with Art. 5 ("Requirements for the Patentability of an Invention") of the Law of 94, an object which is applied for as an invention is granted protection if it is NOVEL and shows INVENTIVE STEP and INDUSTRIAL APPLICABILITY. In accordance with Art. 7 ("Requirements for the Patentability of an Industrial Design") of the Law of 94, an object which is applied for as a design is granted protection if it is NOVEL, ORIGINAL and INDUSTRIAL APPLICABLE. Art. 9 ("Patent Holder") of the Law of 94: A Preliminary Patent on an IP object is issued to: - the inventor(s) of an IP object or his/their legal successor(s); - the physical and/or juridical persons (in case of their consent) which are indicated by the author or his legal successor in the application for the grant of a Preliminary Patent or in a request filed at the Patent Office before the registration of an IP object; - the employer in cases stipulated by the present article. The right to obtain a Preliminary Patent on an IP object created by employees in the course of their regular duties, as a result of a concrete order given by the employer or with the help of technical know-how that constitutes a specific feature of the company, belongs to the EMPLOYER. The assignment of rights to an IP object is carried out by means of a contract between the inventor and the employer. The patent holder may assign his right to the use of an IP object protected by a Preliminary Patent to any physical or juridical person. The Preliminary Patent on an IP object as well as the right to the use thereof are heritable. Art. 14 ("Filing of an Application for the Grant of a Patent, Preliminary Patent or Certificate") (A certificate is issued only for utility models): An application for the grant of a Preliminary Patent is filed by the inventor, the employer or their legal successor (hereinafter: Applicant) at the Patent Office. Official fees to be paid when filing an application: 1. 1.5 minimum wages for domestic applicants or $ 900 for foreign applicants for one subject matter of the invention (i.e. one indepenent claim) and 0.25 minimum wages or $ 75 for each further subject matter. 2. Additionally 3 minimum wages or $ 1,800 if the applicant requests expedited formal and preliminary examination, to be carried out within 2 months instead of 6 months. Art. 20 ("Formal and Preliminary Examination") of the Law of 94: Formal examination is carried out by the Patent Office upon expiration of two months from the filing date of an application for an IP object. Upon request of the Applicant, formal examination may be commenced before the expiration of the above term. In this case, the applicant, from the moment of filing this request, no longer has the right to correct and amend the application materials upon his own initiative without paying an additional fee. During formal examination of the application there is analyzed if what is claimed meets the requirements for IP objects which can be granted legal protection, and priority is established. The applicant is informed about the positive decision of the formal examination and the established priority. During preliminary examination there is analyzed whether the subject matter complies with the requirements of NOVELTY and INDUSTRIAL APPLICABILITY in comparison with the State of the Art indicated by the applicant in the application materials, or the patent documentation of the Republic of Uzbekistan. If as a result of the preliminary examination of the application it is established that the application materials for the IP object meet the requirements, the Patent Office issues a Decision on the Grant of a Preliminary Patent and provides for the official publication. Registration fees for One Preliminary Patent: For the official registration, publication, issuance of the letters patent and the first annuity of the Preliminary Patent: 3 minimum wages or $ 1,800 all together, payable within 2 months from the receipt of the Decision on the Grant of a Preliminary Patent. Terms during the formal and preliminary examination of applications stipulated by the present Article 20 which have been missed by the applicant may be restored by the Patent Office in case of good grounds having made inevitable the missing of the terms and upon payment of a fee (1 minimum wage or $ 600). A request for the restoration of a term may be filed by the applicant within 12 months from the expiration of the missed term. Art. 25 ("Issuance of a Patent, Preliminary Patent or Certificate") A Preliminary Patent is issued by the Patent Office three months after the date of the official publication of the information on the registration in the Official Bulletin. The annuities for the maintenance of the Preliminary Patent amounting to 1 minimum wage or $ 600 (for each year) are to be payed annually for 5 years within the last two months of each year of its validity. There is a 6-months grace period for paying the annuity with a surcharge of 50%, i.e. 0.5 minimum wages or $ 300. Art. 32 ("Government Incentives for the Use of IP Objects") Inventors and economic subjects using an IP object are granted preferential taxation and credit conditions and other privileges in accordance with the Law. In accordance with Art. 3 of the Law of the Republic of Uzbekistan "On the Income Tax of Citizens of the Republic of Uzbekistan, Foreign Citizens and Stateless Persons" (excerpt): "Art. 3: Income Exempt from Taxation. 1. Taxable income does not include: x) Income, including earnings in foreign currency, gained by a physical person as a patent holder (licensor) from the use of IP objects in his own production or from the sale of licences thereon, as well as by a licensee from the use of IP objects, from the date of first use, for: - inventions protected by a patent - 5 years; - inventions protected by a Preliminary Patent - 3 years; - industrial designs protected by a patent - 3 years; - industrial designs protected by a Preliminary Patent - 2 years; - utility models protected by a certificate - 2 years." In accordance with Art. 11 of the Law of the Republic of Uzbekistan "On the Taxation of Companies, Associations and Organisations" (excerpt): "Art. 11. Preliminary Exemption from Taxation. Exempt from taxation are: 1) Income, including earnings in foreign currency, earned by a juridical person: a) as a patent holder (licensor) from the use of IP objects in his own production or from the sale of licences thereon, from the date of first use within the term of validity, for: - inventions protected by a patent - 5 years; - inventions protected by a Preliminary Patent - 3 years; - industrial designs protected by a patent - 3 years; - industrial designs protected by a Preliminary Patent - 2 years; - utility models protected by a certificate - 2 years." b) as a licensee (a person who has obtained the right to use the object of a licensing contract) from the use of IP objects, from the date of first use, for: - inventions protected by a patent - 5 years; - inventions protected by a Preliminary Patent - 3 years; - industrial designs protected by a patent - 3 years; - industrial designs protected by a Preliminary Patent - 2 years; - utility models protected by a certificate - 2 years - trade marks or service marks - 1 year (if the licensor's goods are produced)."

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