Our tariffs

Our tariffs include use of flexible system of discounts from the honorarium of the patent attorney. In particular, we grant special discounts at filing of three and more applications. In some cases the discount can constitute up to 25%-35%-50% from total honorarium of patent attorney, subjected to the volume of work requested. This approach is applied by us also at execution of other IP procedures (change of a name or the address of the holder, assignment rights, grant of the license, conducting of search and etc.). We are also trying to understand and find solutions with the client who has the limited financial possibilities. For more detailed information on our tariffs pls. query on : ;

We are always at your disposal. Below, you will be able to find detailed information and size of official fees of Turkmenpatent (PTO) effective from 01st of January 2011.

 

The comments to new tariffs of Turkmenistan

in sphere of intellectual property protection

At present the progressive reforms are taking place in sphere of science and education in Turkmenistan. These reforms will be able to raise Turkmen science and industry at the new level; it will allow accelerate the country motion towards the way of innovation development.

As an outcome the role of Turkmenpatent is become bigger. Important state functions in relation to protection of inventions, industrial designs, trademarks, service marks and the names of places of an origin are delegated to Turkmenpatent. All above mentioned state functions are playing vital part in innovational development of the country. Thus established by the nature of Patent service, that being not only the incubator but guide as well for innovative technical solutions in different spheres of science and industry.

The legislative base is a cornerstone that defines the effectiveness of Turkmenpatent performing its functions as all other elements of IP protection is closely tight with it. At the same time any Law works at full capacity only when it’s armored with relevant normative by-laws. Namely, the completion of different procedures in relation to IP is not possible without payment of relevant official fees, based on which those fees are presented as limitation factor. Just to remind, that in comparison with taxes (which is gratuitous payment) the official fees are obligatory payment and done in exchange where state bodies provides some services to the payer. 

Strictly regulated, detailed list of official fees make it easy to process established by Law procedures and that is why it is accounted as one of the important elements in a way to perfection of legislative base. Mentioned steps will allow Turkmenistan to enter into new level which responses to all world standards, safely protect interests of the patent owners, accelerate the expertise of IP objects, improve interaction between the international structures involved in sphere of IP business and attract to invention creativity the most talented part of Turkmen society.

New Laws of Turkmenistan came into the power in November 2008 (Decree of the President dated 29.07.2011) namely: ‘The Law about inventions and industrial designs’, ’The Law about Trademarks, service marks and the names of origin of the goods’. This allowed to erect a strong legislative base in relation to invention creativity, creating powerful stimulus to work for domestic scientists and inventors, encourage entrepreneur business activity and increasing the inflow of capital and modern technologies into the country.

Furthermore, after acceptance of above mentioned Laws the dissonance appeared between some independent points of Laws and existing at that moment tariffs on official fees for conducting IP procedures. It gave the base for introduction to the Laws updated independent points such as: Independent point about official fees on inventions and industrial designs, Independent point about official fees on trademarks, service marks and the name of origin of the goods with application of new tariffs on official fees. Those updated independent points shall remove the appeared dissonance and provide further development legislative base in sphere of IP in Turkmenistan. According to above mentioned independent points the payment of official fees must be done in national currency, there is an option where official fees can be paid in foreign currency if such option is stipulated by international agreements in which Turkmenistan has taken participation.

Furthermore, if international agreements in which Turkmenistan has taken participation do not consider other terms, official fees can be paid as by applicant as by other third party. In case if official fees were overpaid, or Turkmenpatent has not performed its legal duties, paid official fees may be reimbursed partly or in full back to applicant, or accounted as prepay for future payment of official fees. Petition about reimbursement of overpaid fees or accountability as prepay for future payments shall be filled by applicant or by his representative to Turkmenpatent not later than 3 years period starting from the date of payment. However, in case of termination of activities related to protection of IP by the guilt of applicant and in case when application is recognized as recalled, official fees paid in relation to that matter won’t be reimbursed. Decision about granting or rejection of reimbursement is taken by Turkmenpatent in period of 10 working days starting from the date of petition receipt. Applicant and Ministry of Finance of Turkmenistan get acknowledged about petition receipt subsequently after its receipt by Turkmenpatent, where the Ministry of Finance after decision of reimbursement was done and corresponded by Tuirkmenpatent, in 10 working days period shall pay back overpaid official fees to applicant, all expenditure in relation to bank transfer and etc. is bared by applicant. This only is the common feature between those two independent points. In all the rest they have got ground differences, it will be discussed below.

 

Inventions and Industrial designs

We would like to remind you that in Turkmenistan based on the wish of applicant the patent or the limited patent could be claimed. The term for the first one compromises 20 years in relation to inventions and 15 years for industrial designs. In order to receive such patents the expertise must be held, it is done using patent search through world sources of information and identification of protectability of technical solution by going through comparison analysis with identified prototype. The term period for limited patents on inventions and industrial designs compromises only 10 years and as an outcome of this, area of patent search is narrowed as well and it gets based only on sources available in Turkmenistan.

It shall be noted, that the Law of Turkmenistan ‘About Inventions and Industrial designs’ does not consider the legal protection of such IP object as ‘Useful model’. Moreover, such IP object does not mentioned in any legislative acts of Turkmenistan. However, it does not mean that the applicants who would like to receive the patent of Turkmenistan on technical solution containing in useful model are devoided of such opportunity. In order to receive a legal protection on useful model the applicant shall file an application for limited patent. We assume that in future this gap will be filled in.  

In order to develop inventive initiatives, a set of privileges have been introduced to newcomers of Turkmenistan by new Independent point ‘About Official fees on inventions and trademarks’. These fees are quite affordable for foreign applicants as well. For example, the size of fees on such basic positions as application, registration and annual fees are stay on the same level or even gone down.

At the same time New Independent point and tariffs contain significant number of new legislative norms and procedures, which have been missed out from ex-Patent law.

Following fees were missed out from ex-Patent law:

-     Consideration for examination of patent (limited patent) assignment application ($82)

-     Early publication of application’s information ($40)

-     Petition filing for suspension of issuance of limited patent ($40)

-     Petition filing to carry out accelerated limited examination procedure ($40)

-     Carrying out patent expertise about protectability ($245-invention; $163-industrial design)

-     Documents expertise, produced by one of the authorized expert’s bodies in regards to compliance of IP object in application to requirements of protectability ($82)

-     Application filing on object which has been outlined in initial application ($122)

-     Issuance of attested copy of priority application ($40)

-     Opposition filing against issuance of legal protection document prior expertise’s decision granting ($40)

-     Conversion of limited patent into a patent ($82)

-     Further processing of temporary patent into a limited patent ($82)

-     Examination of petition about patent granting-Turkmenistan (limited patent) on invention based on transformed Eurasian application ($40)

-     Examination of petition about granting of patent of Turkmenistan on invention based on Eurasian patent ($82)

-     Examination of petition about patent on invention legal-term prolongation related to medicine, pesticide or agrochemicals ($40)

-     Prolongation of the term of petition filing about conversion of limited patent into patent after restoration of missed time deadline ($40) (such procedure does not considered by Law, but introduced into tariffs for maximum compliance to the interests of patent owners) 

-     Restoration of missed term-deadline of petition filing about term prolongation of patent on invention related to medicine, pesticide or agrochemicals ($82)

-     Restoration of missed term-deadline of petition filing about conversion of limited patent into a patent* ($82)

-     Restoration of missed term-deadline on transition of international application on invention into national phase** ($40)

-     Issuance of patent’s duplicate (limited patent) ($82)

-     Issuance of attested copies of protective documents, extracts from a state register and other relevant documents ($16)

-     Examination of the statement of patent owner about ahead of time patent termination (limited patent) ($40)

-     Restoration of patent (limited patent) ($82)

-     Registration of International and Eurasian applications and further postage of registration exemplar to Eurasian Patent Organization or International bureau of WIPO ($50)

-     Restoration of conventional priority based on application on invention, after expiry of determined 3 months deadline given for addition of priority document to the application’s materials ($40)

-     Prolongation of filing deadline term of application on invention with conventional priority request ($40) (Rule 26bis.3 of Instruction to the PCT agreement, based on which the applicant’s petition about restoration of priority shall be filed subsequently with application and not later than 2 months prior to date of expiry of priority period and inclusion of written confirmation describing that delay in application filing was not intentional or was caused by special circumstances)

-     Opposition filing to Turkmenpatent against granting of the patent (limited patent) prior to expertise’s decision ($40)

-     Opposition filing against the decision of limited expertise on application on invention (industrial design) to the appeal commission ($286)

-     Opposition filing to appeal commission about recognition of the patent as invalid patent ($529)

-     Opposition filing against the decision of expertise in regards to registration of patent assignment agreement or licensing agreement inclusive introduction of changes into it ($203)

-     Examination of statement about transfer of established date of appeal commission meeting to later date ($40)    

 

Special feature of a new Independent point in comparison with the old one is payment of annual fees to Eurasian Patent Organization for keeping in power Eurasian patents in the territory of Turkmenistan. Above mentioned fee is higher than national patent fee on 25%.

Other differentiator is an opportunity to make a payment for the patent prolongation fee in regards to the chemicals components such as: medicine, pesticides and agrochemicals, for additional five years after expiry of their basic 20 years term. The size of annual fees for such patents in additional 5 years period is equal to $572 (per annum). 

Based on this, until the term of expiry above described patent protection, analogs of early mentioned components shall not be used in Turkmenistan without agreement of patent owner. However, due to undersmooth mechanism of protection of patented and non-patented chemical components, the situation could appear, where prior to the term of expiry of their patent protection, analogs of those components could be introduced to public (ex: generics) that protected by patents for medicine. Such scenario is possible, in case of unfair activities (industrial espionage) by pharmaceutical companies where last one illegally have obtained the insider information in regards to the full cycle of clinical and preclinical research of patented medicines. In order to avoid such situations we recommend to our clients to inform the Centre of Registration and Quality Control of medicine under supervision of Ministry of Health and Medical industry of Turkmenistan about medicine being under the patent protection (with provision of official dates of legal protection period, official confirmation of payment of annual fees and request do not register analogs of patented medicine without the official agreement document from the patent owner.

Another new introduction is provision of substantial benefits, with purpose of stimulation of inventive activity to companies and entrepreneurs, foreign citizens and people without the citizenship who live on permanent basis in Turkmenistan, for such group of people the size of official fee is reduced by 90% from the established amount.

The independent point also provides full unconditional relief of fee payment for some IP activities (application filing, registration, annual and other fees) for participants of Second World War, participants of military combat operations on the territory of other countries, students and pupils of specialized establishments (deaf, blind and other physical limitations), orphans and children who lost parent’s guardianship. It also provided 95% reduction of fees for following categories: pensioners (unemployed), invalids, students, labor veteran and military veterans.

Some easing such as opportunity to pay annual fees not just in patent validity term, but during the first month of its new validity period has been introduced by above mentioned independent point.

Another benefit is an opportunity to pay filing application’s fee in a matter of three months after the patent application on invention was filed in, it also provides a number of other benefits related to prolongation and reinstatement of missed deadline terms.  

*initiation of this procedure is possible in a period of 6 months from the date of expiry of established deadline

**initiation of this procedure is possible in a period of 3 months from the date of expiry of established deadline

 

 

Trademarks, service marks and places of origin of the goods

In regards to above mentioned IP objects the size of fees on basic positions (application, registration, expertise and prolongation fees) stay with no change or even reduced. However, in comparison with inventions and industrial designs, the Independent point about trademarks, service marks and places of origin of the goods considers much more strict approach to the payment deadlines for IP procedures. It is required, that for initiation of majority of IP procedures the notification about payment of official fees shall be attached to relevant application or petition prior to document filing. It means that all filed applications or petitions have legal power only if relevant fees were paid or vice-versa.

Simultaneously, in comparison with ex-tariffs that considered a single fee for filing and expertise of application, in new tariffs this single fee was split into 2 fees, one for application filing and formal expertise ($40), the second is for initiation of expertise itself ($122). By this the opportunity appear for applicant to receive partly fee’s return or use it for payment of future IP procedures, such situation is possible if applicant prior to initiation of expertise itself has decided do not to register his trademark or has discovered based on search procedure that trademark application for identical trademark was already filed or such trademark or designation similar with filed trademark to the level of mixture has already been registered. Similar fee separation applied in tariffs related to applications on registration of the name of origin of the goods (application filing and formal expertise constitute -$40; initiation of expertise itself -$122). In summary, fees for this new IP object for the basic IP procedures are the same as for trademarks.

Sufficient increase of a number of IP procedures covered by fees, in comparison with ex-tariffs could be explained from one side by introduction of a new object of IP protection as ‘The name of origin of the goods’, and from another side by noticeable broadening of applicants’ potential in protection of their interests in sphere of individualization means protection on the market of Turkmenistan.

One of components of above mentioned potential became legally accepted the size of fee for conducting the procedure: ‘Examination of application about recognition of registered trademark as well-known trademark’ ($692). Analogical procedure also applied in relation to recognition of non-registered designation as well-known trademark, but official fees for conducting this procedure constitute ($1222), which is twice higher than for registered trademark. The result for this or that procedure is provision to applied trademark (non-registered designation) indefinite legal protection in Turkmenistan by further issuance of certificate and introduction of trademark (non-registered designation) to the list of well-known trademarks ($203).

New tariffs, as earlier ones, consider the payment of official fees for term prolongation in order to present documents which shall be attached to application, inclusive the document confirming the priority, for additional 6 months ($40 for each month of prolongation). However it must be noted that a petition about fee payment term prolongation shall be filed in not later that established by the Law no-fee document additions to application deadline term expiry (three months are given for priority document; and two months are given for other documents). Besides that, the payment of above mentioned fee shall be made not later than in duration of 3 months starting from the date of expiry of official deadline. The breach of requirements established by the Law may result in application being recalled.

Similar specifications are applied to the payment of fees for prolongation of deadline term to provide an answer for inquiry of expertise or opposition filing against preliminary decision of expertise for the additional six months period ($40 for each month of prolongation). Also the petition about prolongation shall be filed in prior to expiry of established for respond deadline (3 months), but the fee payment could be done in any time in duration of next 6 months after expiry of established deadline.

If by any reason the applicant will not be able to file in the petition about prolongation of deadline term for provision of respond to expertise’s inquiry or opposition filing against the decision of expertise, in established deadlines, the legislation provides an opportunity of reinstatement of missed period, which subjected to petition filing with such request and which shall be filed not later than 6 months period starting from the date of expiry of established 3 months deadline and fee payment in amount of $82.

The positive side of new tariffs is: opportunity to file to Turkmenpatent the notification about fee payment for prolongation of the term period of state registration of trademark, service mark and the name of origin of the goods not only in last year of their existing term period, but in first month of the next 10 years prolonged term period.

 

Following procedures are covered by new tariffs:

-     Examination of application of right’s assignment to designation which has already been filed for registration ($82)

-     Issuance of attested copy of application (ex: for confirmation of conventional priority) ($40)

-     Opposition filing against provision of protection to international trademark in Turkmenistan, possible registration of trademark, collective mark, recognition of trademark as well-known, registration or provision of a right to use the name of origin of the goods until the decision of expertise will be known ($82).

-     Conversion of trademark application into collective mark application or vice-versa ($40)

-     Conversion of collective mark registration into trademark or vice-versa ($82)

-     Registration of application, extracted from initial trademark application ($122)

-     Introduction of changes into registration of trademark as a result of companies’ merger ($65)

-     Introduction of changes in a list of well-known trademarks in Turkmenistan ($65)

-     Separate registration of trademark, extracted from valid registration of trademark and issuance of certificate on that separate registration ($203)

-     Registration of trademark’s assignment deed only in relation to the some parts of the goods and issuance of certificate on trademark ($302 for each trademark provided in assignment deed)

-     Examination of application about conversion of national registration of trademark into international registration based on procedure established by Protocol (article 4bis) Madrid agreement about international trademarks registration ($65)

-     Registration of application, filed in based on procedure of Protocol to Madrid agreement about international trademarks registration and postage of its registered exemplar to International Bureau of WIPO ($120)

-     Conversion of international registration of trademark into national application based on procedure established by Protocol (article 9quinquies) Madrid agreement about international trademarks registration ($40)

-     Prolongation of the term of opposition filing against preliminary refusal of expertise to grant the legal protection to trademark in Turkmenistan based on procedure established by Protocol to Madrid agreement about international trademarks registration ($40)

-     Examination of application about trademark, service mark and collective mark repudiation by its owner or renunciation of right of usage of the name of origin of the goods by the certificate holder ($49)

-     Examination by appeal commission of application about recognition of registration of trademark, service mark, collective mark, the name of origin of the goods and/or issuance of certificate which gives legal right to use the name of origin of the goods not valid, or recognition of provision of legal protection to well-known trademark as not valid. ($529)

-     Examination by appeal commission of application about termination of legal protection given to trademark, collective mark, well-known mark, the name of origin of the goods and/or termination of validity of certificate which gives legal right to use the name of origin of the goods (ex: as a result of continuous non-usage of a trademark in a period of 3 years starting from the date of its registration) ($529)

-     Examination by appeal commission of application about pre-term termination of certificate validity which gave legal right to use the name of origin of the goods, trademark’s legal protection, collective mark, well-known mark in case of company liquidation, cessation of solo trader or partnership business- owner of trademark ($122) 

-     Filing opposition to appeal commission against decision of expertise about registration of trademark assignment deed, registration of license agreement or introduction of any changes into it ($203)

-     Examination by appeal commission of application about recognition of trademark’s owner activities as unfair competition ($286); comments: it shall be stressed that ‘unfair competition Law’ has not yet been passed in Turkmenistan. Based on this, it assumed that until the above mentioned Law will be passed through, all applications in respective to present procedure will be examined based on international common practice and own PTO’s precedent practice

-     Examination by appeal commission of application about prolongation of established deadline terms examination of opposition by Appeal commission ($40)

 

It is obvious, that life does not stay at one place, as far as legislation of Turkmenistan and other countries develops further in sphere of industrial property, new realias will come up that require adequate reaction towards harmonization between relevant Laws and gearing of legislative base by new, up to date Laws, such as ‘About unfair competition’ (the project of this Law was developed, but not published; the publication of Law will take place after its examination by Mejlis (Parliament) and signature verification by President of Turkmenistan); About firm-names; About protection of domain names; About commercial designations (the projects for last three Laws have not yet been prepared). At the same time with development and introduction into life above mentioned Laws, the creation of corresponding normative base is needed; this base shall provide rules and comments about Laws application, right understanding and usage. It also means, that discussed above Independent point about fees and tariffs payments will be needed an introduction of changes reflecting up to date situation in IP world business community.

Contact tel.: + (99312) 22-31-35; 22-31-34; Факс: + (99312) 22-41-69 / 22 31 35

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