(215) Regarding Industrial Property
Protection in Kazakhstan
The following announcement was furnished by the World Intellectual
Property Organization of Geneva, Switzerland.
ANNOUNCEMENT OF THE PROTECTION OF
INDUSTRIAL PROPERTY IN KAZAKHSTAN
The situation of industrial property protection in Kazakhstan is
summarized below.
I. Legislation
(1) On Aug. 5, 1992, the Patent Law of Kazakhstan entered into force.
This Law deals with preliminary patents and patents for inventions,
preliminary patents and patents for industrial designs and patents for
utility models.
(2) The Law on Trade Marks, Service Marks and Appellations of Origin
of Kazakhstan was adopted on Jan. 18, 1993. This said Law entered into
force on Feb. 23, 1993.
(3) The National Patent Office of Kazakhstan was established on June
23, 1992. It is under the supervision of the Cabinet of Ministers.
II. Membership in Treaties
(4) The Government of Kazakhstan deposited on Feb. 16, 1993, a
declaration to the effect that the Convention Establishing the World
Intellectual Property Organization, the Paris Convention for the
Protection of Industrial Property, the Madrid Agreement Concerning the
International Registration of Marks and the Patent Cooperation Treaty
continue to be applicable to Kazakhstan.
III. Applications for Industrial Property Rights Filed with the National
Patent Office of Kazakhstan
(5) Applications for the grant of patents for inventions, patents for
industrial designs and patents for utility models and applications for
the registration of marks and appellations of origin have been able to
be filed with the National Patent Office of Kazakhstan since Aug. 27,
1992.
IV. Industrial Property Rights Granted by the Patent Office of the
Soviet Union
(6) A patent for invention or inventor's certificate, an industrial
design patent or industrial design certificate, or a trademark
certificate, which was issued by the Patent Office of the Soviet Union
may be registered by the National Patent Office of Kazakhstan at the
request of the owner. Upon registration, such industrial property rights
will be considered as having the same effects as a patent for invention,
industrial design patent or trademark certificate issued by the National
Patent Office of Kazakhstan. The duration is 20 years from the filing
date of the application in the case of a patent for invention, 10 years
from the filing date of the application in the case of an industrial
design patent with the right to extend registration in the case of a
trademark certificate. The filing date and any Dec. 1, 1993, in the case
of inventions and industrial designs, and before Nov. 1, 1993, in the
case of trademarks. It must be accompanied by the original or a copy,
certified by a notary or any other competent authority, of the patent or
certificate issued by the Patent Office of the Soviet Union and evidence
that the prescribed fees have been paid to the National Patent Office of
Kazakhstan.
V. Applications for Industrial Property Rights Filed with the Patent
Office of the Soviet Union or with the Patent Office of the Russian
Federation Before Oct. 14, 1992
(7) The applicant of an application for a patent for invention or an
inventor's certificate, for an industrial design patent or an industrial
design certificate or for a trademark certificate which had been filed
with the Patent Office of the Soviet Union or with the Patent Office of
the Russian Federation before Oct. 14, 1992, may request the National
Patent Office of Kazakhstan before Dec. 1, 1993, in the case of an
application for a patent for invention or an inventor's certificate, or
for an industrial design patent or certificate, and before Nov. 1, 1993,
in the case of an application for a trademark certificate, that the said
application be further processed according to the Kazakh legislation.
The request for further processing by the National Patent Office of
Kazakhstan must be accompanied by a copy of the said application,
including a copy of the request part of the said application showing the
filing date as sent back to the applicant by the Patent Office of the
Soviet Union or by the Patent Office of the Russian Federation, by a
declaration that the said application is, to the best knowledge of the
applicant, still pending before the Patent Office of the Russian
Federation, and by an application filed according to the Kazakh
legislation.
(8) If the applicant has received from the Patent Office of the
Soviet Union or from the Patent Office of the Russian Federation in
respect of an application filed before Oct. 14, 1992, a decision on
grant of protection, the request needs only to be accompanied by a copy,
certified by a notary or any other competent authority, of the said
decision, as well as, in the case of inventions, by the description, any
drawings and the claims on which the decision is based and an abstract
of the invention or, in the case of industrial designs, by five
photographs, one of which must be certified by a notary or any other
competent authority, and any drawings. The filing date and any priority
date of the application filed with the Patent Office of the Soviet Union
or the Patent Office of the Russian Federation will be maintained.
VI. Effects in Kazakhstan of International Applications under the Patent
Cooperation Treaty (PCT)
(9) (a) On Feb. 16, 1993, Kazakhstan deposited a declaration of
continuation the effect of which is that the Patent Cooperation Treaty
(PCT) is applied by Kazakhstan. Nationals and residents of Kazakhstan
can therefore file international applications, and Kazakhstan can be
designated and elected in international applications filed, from the
date.
(b) On Sept. 29, 1992, the Assembly of the PCT Union adopted,
with effect on Oct. 1, 1992, new Rules 32.1 and 32.2 of the Regulations
under the PCT, concerning the extension of international applications to
certain successor States.
(c) For the purpose of determining the status of international
applications with respect to Kazakhstan, one has to distinguish between:
(i) international applications designating the Soviet Union
which were filed before Dec. 25, 1991 (see (d), below);
(ii) international applications--irrespective of the designations
they contain--which were filed between Dec. 25, 1991, and Apr. 16, 1993
(see (e) to (g), below);
(iii) international applications specifically* designating
Kazakhstan filed on or after Feb. 16, 1993 (see (h), below).
(d) As regards any international application whose
international filing date is before Dec. 25, 1991, and in which the
Soviet Union has been designated, the "national filing effect" of any
such application under Article 11(4) of the PCT will, pursuant to the
deposit by Kazakhstan of its declaration of continuation, be recognized
in Kazakhstan. The conditions under which any such international
application, or any patent or inventor's certificate resulting therefrom
and granted by the Patent Office of the Soviet Union or by the Patent
Office of the Russian Federation, may continue to have effect in
Kazakhstan are the following:
(i) if a patent for invention or an inventor's certificate has
been granted by the Patent Office of the Soviet Union or by the Patent
Office of the Russian Federation on the basis of international
application, the conditions referred to in paragraph (6) above, are
applicable;
(ii) if the applicant has entered the national phase before the
Patent Office of the Soviet Union or the Patent Office of the Russian
Federation but a patent for invention or an inventor's certificate has
not been granted by any of those Offices, the conditions referred to in
paragraph (7), above, are applicable, provided that the applicant must,
before Dec. 1, 1993, file with the National Patent Office of Kazakhstan
a request that the international application be further processed
according to the Kazakh legislation; the request must be accompanied by
a copy of the Russian translation of the international application
submitted to the Patent Office of the Soviet Union or the Patent Office
of the Russian Federation and a declaration that the application is
still pending before the Patent Office of the Russian Federation;
however where a decision to grant a patent has issued, only the
requirements referred to in paragraph (8), above, apply;
(iii) if the applicant has not entered the national phase before the
Patent Office of the Soviet Union or the Patent Office of the Russian
Federation and the time limit for entering the national phase had not
expired on Dec. 24, 1991, the applicant must, before Dec. 1, 1993, or,
if Kazakhstan is elected under Chapter II of the PCT within 19 months
from the priority date, before Dec. 1, 1993, or the expiration of 31
months from the priority date whichever is later, furnish to the
National Patent Office of Kazakhstan a translation of the international
application into Kazakh or Russian and evidence that the prescribed fee
(see paragraph (12), below) has been paid to the latter Office.
(e) As regards any international application whose
international filing date is later than Dec. 24, 1991, and earlier than
Apr. 17, 1993,** its effect may be extended to Kazakhstan
(irrespective of the designations it contains) through the performance
by the applicant of the following acts:
(i) filing with the International Bureau of the World
Intellectual Property Organization (WIPO) a request for extension;
(ii) paying to the International Bureau of WIPO an extension fee of
185 Swiss francs, payable in Swiss francs.
(f) The applicant in respect of each and every international
application to in (e), above, or his agent or common representative if
there is one, will receive a written notification form the International
Bureau of WIPO calling his attention to the fact that he can, by filing
a written request for extension, extend the effects of the international
application to Kazakhstan. The notification will, in particular, specify
the modes of payment of the extension fee of 185 Swiss francs. The
request for extension must contain the identification of the
international application by its international application number. A
form which may be issued for the purpose of requesting the extension to
Kazakhstan will be attached to the notification. The request for
extension must be English or French, and may be sent be telefax or
telex. The request for extension and the corresponding payment must
reach the International Bureau of WIPO before the expiration of three
months from the date of the notification sent by the International
Bureau of WIPO; if either the request or the fee is received later, the
request will be refused. It is recommended that applicants await the
notification from the International Bureau of WIPO and use the form
attached to it, but requests and payments may be made without waiting
for the notification from the International Bureau of WIPO.
(g) If the conditions described in (e) and (f), above, are fulfilled,
Kazakhstan will be considered as having been designated in the
international application on its international filing date. For entering
the national phase before the National Patent Office of Kazakhstan, the
applicant must furnish, within the following time limit, to that Office
both a translation of the international application into Kazakh or
Russian and evidence that the prescribed fee (see paragraph (12), below)
was paid:
(i) before Dec. 1, 1993, or the expiration of 21 months from
the priority date, whichever is later, if Kazakhstan is not elected
under Chapter II of the PCT before the expiration of 19 months from the
priority date and item (iii) does not apply;
(ii) before Dec. 1, 1993, or the expiration of 31 months from the
priority date, whichever is later, if Kazakhstan is elected under
Chapter II of the PCT before the expiration of 19 months from the
priority date;
(iii) before Dec. 1, 1993, or the expiration of 31 months from the
priority date, whichever is later, if a request for extension to
Kazakhstan is made after, but the demand was made before, the expiration
of 19 months from the priority date, and a later election of Kazakhstan
is made together with the request for extension or within three months
from the date of the request for extension.
(h) As regards any international application whose
international filing date is on or after Feb. 16, 1993, and in which
Kazakhstan is specifically designated, the applicant, in order to enter
the national phase before the National Patent Office of Kazakhstan, must
furnish, within the following time limit, to that Office both a
translation of the international application into Kazakh or Russian and
evidence that the prescribed fee (see paragraph (12), below) has been
paid to the said Office:
(i) before the expiration of 21 months from the priority date
if Kazakhstan is not elected under Chapter II of the PCT with 19 months
from the priority date;
(ii) before the expiration of 31 months from the priority date if
Kazakhstan is elected under Chapter II of the PCT within 19 months from
the Priority date.
VII. Effects in Kazakhstan of International Registrations under
the Madrid Agreement Concerning the International Registration of Marks
(10) (a) On Feb. 16, 1993, Kazakhstan deposited a declaration of
continuation the effect of which is that the Madrid Agreement Concerning
the International Registration of Marks is applied by Kazakhstan.
(b) on Sept. 29, 1992, the Assembly of the Madrid Union
adopted, with effect on Oct. 1, 1992, a new Rule 38 in Regulations under
the Madrid Agreement, concerning the effect of international
registrations in certain successor States.
(c) Pursuant to the deposit of the declaration of continuation and to
the decision of the Assembly, certain international registrations may
have effect in Kazakhstan subject to the conditions described below.
Those international registrations are those which have territorial
extensions to the Soviet Union effective from a date prior to Dec. 25,
1991.
(d) The conditions referred to above are the following:
(i) the filing with the International Bureau of the World
Intellectual Property Organization (WIPO) of a request;
(ii) the payment to the International Bureau of WIPO of a fee, the
amount of which is 62 Swiss francs per international registration.
(e) The owner of each and every international registration
concerned, or his representative (if the owner has a representative
whose name appears in the International Register), will receive a
written notice from the International Bureau of WIPO calling his
attention to the fact that he can, by filing a written request, obtain
the continuation of the effect of the international registration in
Kazakhstan. The notice will, in particular, specify the modes of payment
of the fee. The request must contain the identification of the
international registration concerned by its international registration
number. A form (in French) will be attached to the notice and may be
used. The request must be in English or French, and may be sent by
telefax or telex. The request and the corresponding payment must reach
the International Bureau of WIPO before the expiration of six months
from the date of the notice sent by the International Bureau of WIPO; if
either the request or the fee is received later, the request will be
refused. Requests and payments may be made without waiting for the
notice of the International Bureau of WIPO.
(f) If the conditions described above are fulfilled, the
international registration concerned will, with respect to Kazakhstan,
have effect as from the effective date of the territorial extension to
the Soviet Union and benefit from any priority validly claimed in regard
such extension.
(g) For each international registration which has territorial
extension to the Russian Federation effective from a date prior to Apr.
17, 1993, the owner may request the National Patent Office of Kazakhstan
before Nov. 1, 1993, that the said registration be processed as an
application under the Kazakh legislation. The request must be
accompanied by an extract from the International Register established by
the International Bureau of WIPO, by a declaration that, to the best
knowledge of the owner, the international registration still has effect
in the Russian Federation, and by an application filed according to the
Kazakh legislation.
(h) For each international registration not covered by (c) or (g),
above, namely, for each international registration which has no
territorial extension to the Soviet Union or to the Russian Federation
or whose international registration date is later than Apr. 16, 1993,
protection in Kazakhstan can only be obtained by filing, through the
intermediary of the national Office of the country of the owner, a
request for territorial extension under Rule 20 of the Regulations under
the Madrid Agreement. It is noted that requests for territorial
extension to Kazakhstan are possible at present.
VIII. Procedural Provisions
(11) If an applicant does not have his ordinary residence or principal
place in business in Kazakhstan, he must authorize a representative in
Kazakhstan, and all requests, applications and other documents must be
filed through the intermediary of such a representative.
(12) The list of the persons who can act as representatives and the
official fees applicable to the procedures referred to under paragraphs
(5), (6), (7), (8), (9) and (10)(g) are available from the National
Patent Office of Kazakhstan.
(13) The request part of any application referred to under paragraph
(5), above, any request referred to under paragraphs (6), (7),
(9)(d)(ii) and (10)(g), above, and any declaration referred to under
paragraphs (7), (9)(d)(ii) and (10)(g), above, must be filed in Kazakh
or Russian. Other parts of any application referred to under paragraph
(5), above, may be presented in other languages, provided that a
translation into Kazakh or Russian is presented within two months from
the filing date.
(14) If an applicant, due to circumstances beyond his control, was
unable to observe a time limit applicable under paragraph (6), (7),
(9)(d), 10(g) or (13), above, the time limit may, upon request, be
extended by two months by the National Patent Office of Kazakhstan.
IX. Address of the National patent Office of Kazakhstan
National Patent Office
Ablai-khan avenue 93/95
480091 Alma-Ata
Kazakhstan
Telex: (064) 251244 orlan su
June 11, 1993 MICHAEL K. KIRK
Acting Assistant Secretary
and Acting Commissioner of
Patents and Trademarks
[1153 TMOG 23]
*in this announcement, an international application is regarded as
"specifically" designating Kazakhstan either if Kazakhstan has been
designated under Rule 4.9(a) of the Regulations under the PCT or if the
designation of Kazakhstan has been confirmed under Rule 4.9(c) of those
Regulations.
**With the exception of any such international application
international filing date is on or after Feb. 16, 1993, and in which
Kazakhstan is specifically designated:in such a case, the procedure
described in (e) to (g) is not applicable, and the procedure described
in (h) applies. It should be noted that Kazakhstan cab be specifically
designated only in those international applications filed on or after
Feb. 16, 1993.