Turkmenistan law on the legal protection of industrial designs
Entered into force on November 13, 2017
This Law regulates relations arising in connection with the legal protection and use of industrial designs.
CHAPTER I. GENERAL PROVISIONS
Article 1. Basic concepts
The following basic concepts are used in this Law:
1) Turkmenpatent - State Intellectual Property Service of the Ministry of Finance and Economy of Turkmenistan;
2) Paris Convention - the Paris Convention for the Protection of Industrial Property of March 20, 1883, revised in Stockholm on July 14, 1967 and amended on October 2, 1979;
3) industrial design - an artistic and design solution that determines the appearance of an industrial product, which is new, original and industrially applicable;
4) Geneva Act (1999) - The Hague Agreement Concerning the International Registration of Industrial Designs, formalized by this Act;
5) International Bureau - a subdivision of the World Intellectual Property Organization (WIPO), to which an application for an international registration of an industrial design is filed and which maintains an International Register containing official information on international registrations of industrial designs;
6) international registration of an industrial design (hereinafter - international registration) - registration of an industrial design in accordance with the filed international application for registration of an industrial design, carried out in accordance with the Geneva Act (1999) and received protection in Turkmenistan;
7) international application for registration of an industrial design (hereinafter - international application) - an application for international registration filed in accordance with the Geneva Act (1999);
8) person - a natural or legal person;
9) applicant - a person who has filed an application for an industrial design and is applying for a patent for an industrial design or an international registration;
10) an application for an industrial design (hereinafter referred to as an application) - a set of documents required to obtain a patent for an industrial design or international registration;
11) a divisional application for an industrial design (hereinafter referred to as a divisional application) - an application repeating a part of a previously filed application of the same applicant, filed with Turkmenpatent on the applicant's own initiative or at the request of an examination due to a violation of the requirement for the unity of an industrial design in an early application;
12) the first application for an industrial design (hereinafter referred to as the first application) - an application filed with the appropriate authority of a state party to the Paris Convention, according to the filing date of which the convention priority is established;
13) a conventional application for an industrial design (hereinafter referred to as a conventional application) - an application claiming conventional priority;
14) convention priority - the priority of an industrial design established by the date of filing the first application with the appropriate body of a state party to the Paris Convention;
15) priority of an industrial design - primacy in the time of filing an application;
16) patent for an industrial design (hereinafter - patent) - a title of protection of Turkmenistan, certifying the priority, authorship and exclusive right of the copyright holder to the industrial design;
17) rightholder - a person who has the exclusive right to an industrial design patented in Turkmenistan or the international registration of an industrial design that has received protection in Turkmenistan;
18) service industrial design - an industrial design created by an employee in connection with the performance of his official duties or a specific task of the employer;
19) assignment of rights to an industrial design - the transfer of rights to an industrial design by its rightholder to another person on the basis of an agreement;
20) a license for an industrial design (hereinafter referred to as a license) - a permit for the use of an industrial design, issued by the rightholder to another person under a license agreement;
21) Bulletin - official periodicals of Turkmenpatent intended for publication of information on industrial designs registered in Turkmenistan and filed patent applications;
22) counterfeit goods - goods in which a protected industrial design is illegally used;
23) patent attorney - a citizen of Turkmenistan permanently residing on its territory, certified and registered in Turkmenpatent and representing on a professional basis the interests of individuals and legal entities in the acquisition and protection of rights to industrial designs;
24) Appeal Commission - a commission established under Turkmenpatent to consider applications for violated or disputed rights, including pre-trial consideration of disputes related to the protection of the rights of authors, applicants and rightholders, as well as other issues within the competence of this commission.
Article 2. Legislation of Turkmenistan on the legal protection of industrial designs
The legislation of Turkmenistan on the legal protection of industrial designs is based on the Constitution of Turkmenistan and consists of the Civil Code of Turkmenistan, this Law and other regulatory legal acts of Turkmenistan.
Article 3. State regulation in the field of legal protection of industrial designs
1. State regulation in the field of legal protection of industrial designs is carried out by Turkmenpatent.
2. Turkmenpatent, in accordance with its competence:
1) accepts applications for industrial designs for consideration, conducts an examination on them;
2) maintains the State Register of Industrial Designs;
3) issues patents of Turkmenistan for industrial designs;
4) registers assignment agreements and licensing agreements in relation to industrial designs;
5) makes changes to the registration of industrial designs;
6) carries out the publication of the Bulletin;
7) consider objections of interested parties about violated or contested rights in the field of legal protection of industrial designs;
8) develops proposals for improving the legislation of Turkmenistan and concluding international treaties in the field of legal protection of industrial designs;
9) conducts certification and registration of patent attorneys.
3. The Ministry of Finance and Economy of Turkmenistan, within the powers granted to Turkmenpatent by this Law, other regulatory legal acts of Turkmenistan, ensures the fulfillment of the obligations assumed by Turkmenistan in accordance with international treaties on the legal protection of industrial designs.
4. Interested persons have the right to conduct business with Turkmenpatent directly, through representatives, as well as patent attorneys registered with Turkmenpatent, taking into account the provisions provided for in part two of Article 42 of this Law. The powers of a representative or patent attorney are certified by a power of attorney. The procedure for attestation and registration of patent attorneys is determined by the Ministry of Finance and Economy of Turkmenistan.
CHAPTER II. FUNDAMENTALS OF LEGAL PROTECTION OF INDUSTRIAL DESIGNS
Article 4. Scope of legal protection of industrial designs
1. The right to an industrial design is protected by the legislation of Turkmenistan and is confirmed by a patent or international registration. The exclusive right to an industrial design arises after its registration in the State Register of Industrial Designs.
2. The scope of legal protection provided by a patent or international registration is determined by a set of essential features displayed in the product images.
3. The declared industrial design from the date of publication of information about the application or from the date of publication of the international application until the date of registration in the State Register of Industrial Designs shall be provided with temporary legal protection. The person using the declared industrial design during the period of its temporary legal protection shall pay the patent holder monetary compensation, the amount of which is determined by agreement of the parties. Temporary legal protection is considered not to have come if a decision is made to refuse to grant a patent or to grant protection to an industrial design under an international application.
4. An industrial design passes into the public domain upon expiration or early termination of the patent or international registration. An industrial design that has passed into the public domain can be freely used by any person without anyone's consent or permission and without payment of a fee for use.
Article 5. Term of validity of a patent and international registration
1. The maximum term for a patent and international registration is fifteen years.
2. The patent is initially valid for five years, starting from the date of filing the application with Turkmenpatent. An international registration is initially valid for five years from the date of filing an application with the International Bureau. The validity of a patent and an international registration may be renewed for an additional period of five years each, subject to the payment of the prescribed fee.
Article 6. Conditions of patentability of an industrial design
1. An object declared as an industrial design is granted legal protection if it is new, original and industrially applicable.
2. An industrial design is new if, prior to the filing date of the application for registration or the priority date, the totality of its essential features or an identical industrial design has not been publicly disclosed.
Industrial designs are recognized as identical if their essential features differ in insignificant details. The essential features of an industrial design include features that determine the aesthetic and (or) ergonomic features of the appearance of the product, in particular, the shape, configuration, ornament and color combination.
When establishing novelty, industrial designs patented in Turkmenistan and applications for industrial designs of other persons filed with Turkmenpatent with an earlier priority are also taken into account.
An industrial design is recognized as publicly disclosed if it has been published in connection with registration, exhibiting, used in commercial activities, or otherwise made available to the public.
It is not recognized as a circumstance affecting the patentability of an industrial design, public disclosure of information related to an industrial design, by the applicant, the author or any person who received this information from him directly or indirectly, in which information about the essence of the industrial design became publicly available if the application is filed with Turkmenpatent no later than six months from the date of disclosure of information. In this case, the obligation to prove this fact lies with the applicant.
3. An industrial design is recognized as original if its essential features determine the creative nature of the product's characteristics. An industrial design is recognized as complying with the condition of originality, if at least one of its essential distinctive features does not reveal artistic design solutions that have such a feature. The following artistic and design solutions are not recognized as industrial designs, which are:
1) taken separately the simplest geometric volume (prismatic, spherical, conical and other type of volume) or separately taken simple geometric shapes;
2) forms that are completely borrowed without creative processing;
3) products in which, in comparison with the prototype, only the dimensions and proportions are changed or the number of elements is changed.
4. An industrial design is recognized as industrially applicable if it can be reproduced many times. Products related to highly artistic handicrafts are subject to copyright protection.
Article 7. Grounds for refusal to grant a patent or international registration
1. It is not allowed to grant legal protection to industrial designs:
1) contrary to public interests, principles of humanity and morality;
2) capable of misleading the user of the product in relation to the manufacturer and (or) the place of manufacture of the product and (or) the product for which the product serves, in particular, a container, packaging, emblem, label;
3) due exclusively to the technical function of the product;
4) which are objects of architecture (except for small architectural forms), industrial, hydraulic engineering and other stationary structures, as well as objects of unstable form made of liquid, gaseous, bulk or similar substances.
2. It is prohibited to grant protection to industrial designs that reproduce or incorporate elements that are identical or give an overall impression that might lead to confusion: 1) with state emblems, flags and other state symbols and signs;
2) with abbreviated or full names of international and intergovernmental organizations, with their coats of arms, flags, other symbols and signs;
3) with official control, guarantee or assay marks, seals, awards and other distinctions. Such elements can be included in the solution of the appearance of the product, if this is agreed by the relevant competent authority;
4) with official names or images of especially valuable objects of cultural heritage of Turkmenistan or objects of world cultural or natural heritage, images of cultural values;
5) with elements, the state registration of which in Turkmenistan as industrial designs is not allowed in accordance with the international treaty of Turkmenistan.
3. It is also prohibited to grant protection to industrial designs that reproduce or incorporate elements that are identical or give an overall impression that might lead to confusion:
1) with the trademarks of other persons known on the filing date of the application, declared for state registration in relation to goods similar to the product and having an earlier priority, if the application for state registration of the trademark is not withdrawn or recognized as withdrawn;
2) with appellations of origin of goods protected in accordance with the legislation of Turkmenistan, except for cases when legal protection of an industrial design is requested by a person who has the exclusive right to such a name, and if the industrial design refers to the same product (goods) or to a product, to an employee, in particular, containers, packaging, emblems, labels of goods, for the individualization of which an appellation of origin is registered;
3) with trade names protected in Turkmenistan and known at the filing date of the application, names of breeding achievements registered in the State Register of Protected Breeding Achievements, in relation to goods and (or) goods homogeneous to the product and (or) goods for which the product serves, in particular, as a container, packaging, emblem, label;
4) with well-known names, pseudonyms or designations derived from them, with portraits or facsimiles of persons known in Turkmenistan as of the date of filing an application without the consent of these persons or their heirs.
CHAPTER III. AUTHORS AND RIGHT HOLDERS
Article 8. The author of the industrial design
1. The author of an industrial design is a natural person whose creative labor it was created.
2. If several individuals participated in the creation of an industrial design, all of them are considered its co-authors. The procedure for using the rights belonging to the co-authors is determined by an agreement between them. An individual who has not made a personal creative contribution to the creation of an industrial design, who provided the author only with technical, organizational or material assistance, or only contributed to the registration of rights to it and its use, is not recognized by the author.
3. The right of authorship is an inalienable personal right and is protected indefinitely.
Article 9. Right to a Patent or International Registration
1. The right to a patent or international registration belongs to:
1) the author (co-authors) of the industrial design or his (their) legal successor (successors);
2) the employer or his legal successor in the cases provided for by the provisions of part two of this article.
2. The right to obtain a patent or international registration of an industrial design created by an employee in connection with the performance of his official duties or a specific legally formalized task of the employer (official industrial design) belongs to the employer, unless otherwise provided by the agreement between the employer and the employee.
If the employer, within four months from the date of notification by its author about the created industrial design, does not file an application with Turkmenpatent or does not officially notify the author about keeping the relevant object secret, then the right to obtain a patent or international registration passes to the author. In this case, the employer has the right to use the industrial design in his production with the payment of compensation to the copyright holder, determined on a contractual basis.
Article 10. Right of the author to remuneration
1. The author of an official industrial design, who does not own the right to obtain a patent or international registration, shall have the right to receive remuneration from the employer, paid in the amount and on terms determined on the basis of an agreement between them.
2. In case of failure to reach an agreement between the parties on the amount and procedure for payment of remuneration or compensation, the dispute shall be considered in court.
3. For late payment of remuneration or compensation determined by the agreement, the guilty employer is liable in accordance with the legislation of Turkmenistan.
4. The distribution between co-authors of remuneration for the use of an industrial design is carried out on the basis of an agreement or contract between them.
CHAPTER IV. EXCLUSIVE RIGHT TO INDUSTRIAL DESIGN
Article 11. Rights of the copyright holder
1. The copyright holder has the exclusive right to use, as well as to permit or prohibit other persons to use the industrial design. No one has the right to commit actions that are a violation of the exclusive right of the copyright holder, including the use of an industrial design without his permission, except for the cases provided for by this Law.
2. The rightholder may transfer to any person under a contract the right to a patent or international registration, issue a license to use an industrial design.
3. If the rightholder cannot use the patented industrial design or the international registration without violating the rights of another rightholder, he may require the latter to conclude a license agreement.
4. The relationship between the use of the industrial design between the rightholders is determined by the agreement between them. In the absence of such an agreement, each of them may use the industrial design at their own discretion, but they may not grant a license for it or assign the right to the industrial design to another person without the consent of the other rightholders.
In case of failure to reach an agreement between the rightholders on the granting of a license or on the assignment of the right to an industrial design, the dispute may be resolved in court.
5. The relationship between the rightholders of interrelated patents and (or) international registrations shall be governed by the conclusion of a license agreement between them. In case of failure to reach an agreement between the rightholders, the provisions of Article 29 of this Law shall apply. 6. The rights to obtain a patent or international registration are inherited.
Article 12. Actions recognized as a violation of the exclusive right of the copyright holder
An infringement of the exclusive right to an industrial design is recognized:
1) the use of a patented industrial design or international registration without the permission of the copyright holder;
2) manufacture, use, import, offer for sale, sale and other introduction into economic circulation or storage for this purpose of a product in which a patented industrial design or international registration is used (used), without the permission of the copyright holder;
3) encouraging third parties to carry out the above actions.
Article 13. Actions not recognized as a violation of the exclusive right of the copyright holder
It is not recognized as a violation of the exclusive right of the copyright holder:
1) the use of a product in which an industrial design is used in a design, in auxiliary equipment or in the operation of vehicles of foreign states (water, air, road, rail transport and space technology), provided that these means are temporarily or accidentally located on the territory of Turkmenistan and the specified product is used for the needs of the vehicle. Such actions are not recognized as a violation of the exclusive right of the rightholder in relation to vehicles of foreign states that provide the same rights in relation to vehicles registered in Turkmenistan;
2) the use of an industrial design in extraordinary circumstances (natural disasters, catastrophes, accidents) with the notification of the copyright holder within a month and the subsequent payment of proportionate compensation to him;
3) the use of an industrial design for the satisfaction of personal, family, household or other needs not related to entrepreneurial activity, if the purpose of such use is not to make a profit (income);
4) application, offer for sale, sale, other introduction into civil circulation or storage for these purposes of a product in which an industrial design is used, if this product was previously introduced into civil circulation in the territory of Turkmenistan by the rightholder himself or by another person with the permission of the rightholder.
Article 16. Submission of the application
1. The application is submitted to Turkmenpatent. The applicant may be the author (co-authors) of the industrial design, the employer or their legal successors.
2. The application must relate to one industrial design or to a group of industrial designs that are so interconnected that they form a single creative concept (the requirement for the unity of the industrial design).
3. An application for the grant of a patent shall be submitted in the state language. Other documents of the application may be submitted in another language with the attachment of their translation into the state language. Documents submitted in another language are considered filed on the date of their receipt by Turkmenpatent if their translation was received within three months from the date of filing an application for an industrial design.
If the said translation is not submitted within three months from the date of filing the application for the industrial design, the established period may be extended at the request of the applicant for three months, subject to payment of the appropriate fee. If the translation is not submitted within the established time frame, the application is recognized as withdrawn.
4. The application must contain:
1) an application for a patent with an indication of the author (co-authors) of the industrial design and the person (s) in whose name (s) the patent is requested, as well as their place of residence or location;
2) a set of images of a product (products) suitable for reproduction, giving a complete picture of the appearance of an industrial design (samples);
3) a drawing of a general view of the product, an ergonomic diagram, a confection card, if they are necessary for disclosing the essence of the industrial design;
4) a brief description of the industrial design, if it is necessary to disclose its essence or features;
5) a document confirming the payment of the established fee. Photos, drawings, including those made by means of computer graphics, reproductions made in other ways, can be presented as images of a product that give a complete detailed idea of its appearance.
5. A power of attorney is attached to the application, if this application is submitted by a representative of the applicant. The power of attorney must be submitted to Turkmenpatent within three months from the date of receipt of the application.
If the power of attorney is not submitted within three months from the date of filing the application, the established period may be extended at the request of the applicant for three months, subject to payment of the established fee. If the power of attorney is not submitted within the established time frame, the application is recognized as withdrawn.
6. An application with a claim for conventional priority shall be additionally accompanied by a certified copy of the first application, which is submitted no later than four months from the date of receipt of the conventional application by Turkmenpatent.
If a copy of the first application is not submitted within four months from the date of filing the application, the established period may be extended at the request of the applicant for three months, subject to payment of the appropriate fee.
The Convention application must be filed no later than six months from the filing date of the first application. A petition to establish a convention priority can be filed within three months from the date of filing an application with Turkmenpatent.
7. Requirements for application documents are established by Turkmenpatent.
Article 17. Priority of industrial design
1. The priority of an industrial design is established by the date of filing an application with Turkmenpatent.
2. The priority may be established by the date of filing of the first application in a state party to the Paris Convention, subject to the provisions established by part six of Article 16 of this Law.
3. The priority can be established by the date of receipt of additional materials if they are drawn up by the applicant as an independent application filed before the expiration of three months from the date of sending the notification to Turkmenpatent about the impossibility of taking them into account as changing the essence of the declared industrial design.
4. Priority may be established by the date of receipt by Turkmenpatent of an earlier application of the same applicant disclosing an industrial design, if the application for which such priority is claimed is filed no later than six months from the date of filing of the earlier application, and if the earlier filed application is not an earlier priority was requested. In this case, the earlier application is considered withdrawn.
5. The priority of an industrial design for a divisional application is established by the date of filing with Turkmenpatent of an early application of the same applicant, which discloses its essence, if the divisional application was filed before the decision was made on the early application to refuse to grant a patent, the possibilities of appeal of which have not been exhausted, and if for the specified application of the decision to grant a patent - before the date of registration of the industrial design in the State Register of Industrial Designs.
6. If it is established that identical industrial designs have the same priority date, then a patent is issued for an application for which the earlier date of its sending to Turkmenpatent is proved, and if these dates coincide, for an application with an earlier registration number Turkmenpatent.
Article 18. Changes to application documents
1. The applicant has the right to make corrections and clarifications to the documents of the application without changing the essence of the industrial design until a decision is made on this application to issue a patent or a decision to refuse to issue it. Additional materials change the essence of the declared industrial design if they contain features that are absent in the product images at the date of filing the application.
2. A fee is charged for making changes to the application documents. If changes to the application documents are made at the initiative of the applicant within three months from the date of its filing, the fee for making such changes is not charged.
Article 19. Examination of the Application
Upon application, Turkmenpatent conducts formal and substantive examination.
Article 20. Formal examination
1. After three months from the date of filing the application with Turkmenpatent and in the presence of documents provided for by the provisions of parts two and three of Article 17, as well as taking into account the provisions of part four of Article 17 of this Law, a formal examination is carried out on the application.
At the request of the applicant and subject to the payment of the established fee, the formal examination may be started before the expiration of the specified period. In this case, from the moment of filing the application, the applicant is deprived of the right to amend the documents of the application on his own initiative without paying the fee provided for by the provisions of part two of Article 18 of this Law.
2. Formal examination is carried out within three months and includes verification of:
1) the availability of the necessary documents and compliance with the established requirements for them;
2) the conformity of the declared artistic and design solution of the objects to which legal protection is granted;
3) compliance with the requirements of the unity of the industrial design;
4) classification of an industrial design according to the International Classification of Industrial Designs;
5) compliance with the lawfulness and the order of claiming priority. If the application meets the requirements of the formal examination, then the applicant is notified of the acceptance of this application for consideration, indicating the date of its filing.
In the event of a discrepancy between the declared artistic and design solution to the objects that are provided with legal protection, or failure to make the necessary clarifications within the established time frame, or failure to submit documents that were absent on the date of receipt of the application, the applicant is sent a notification of the refusal to accept this application for consideration.
3. After six months from the filing date of the application or, if priority is claimed, from the priority date, Turkmenpatent publishes information about the application in the Bulletin, unless this application is withdrawn or a decision is made on it to issue a patent or refuse to issue it. The volume of published information about the application is determined by Turkmenpatent. After the completion of the formal examination, information about the application may be published before the expiration of the established deadlines, subject to payment of the fee.
The corresponding petition can be filed by the applicant with Turkmenpatent within three months from the date of sending the notification on the acceptance of the application for consideration. In this case, Turkmenpatent publishes information about the application in the next issue of the Bulletin. The author of the industrial design has the right to refuse to be mentioned as such in the published information about the application.
The published application is subject to the provisions of part three of Article 4 of this Law.
4. On the application, executed in violation of the requirements for its documents, provided for in part four of Article 16, the applicant is sent a request with a proposal to submit corrected or missing documents and information within three months from the date of its submission.
The deadline, at the request of the applicant, can be extended by six months, subject to the payment of the appropriate fee. In the event that the applicant fails to submit the requested documents or an application for its extension within the prescribed time limit, Turkmenpatent sends the applicant a notification of the expiration of the established period.
The period missed for the provision of the requested documents may be restored at the request of the applicant, subject to the payment of the established fee. An application for the restoration of the missed deadline with the attachment of the requested documents or information must be submitted by the applicant no later than six months from the date of expiry of the established deadline. In case of failure to submit an application for the restoration of the term within six months, the application is recognized as withdrawn, and the applicant is notified of this.
If the applicant does not inform in due time which of the declared industrial designs should be considered, and does not submit the relevant documents, if they are necessary, then the industrial design indicated in the images of the product is considered first.
Article 21. Examination on the merits
1. The examination on the merits is carried out after six months from the date of filing the application, subject to the completion of the formal examination.
2. During the substantive examination, the compliance of the claimed industrial design with the conditions of patentability provided for by the provisions of Article 6 of this Law is verified.
3. Upon an application filed in violation of the requirement for the unity of an industrial design provided for by the provisions of part two of Article 16 of this Law, the applicant is invited to inform him within three months from the date of sending him the corresponding notification which of the declared industrial designs should be considered, and, if necessary, make changes to materials of an early application for an industrial design. Other industrial designs contained in this application may be formalized as divisional applications, maintaining the priority and filing date in accordance with the earlier application.
4. Any interested person, subject to payment of the fee, may file a reasoned objection to Turkmenpatent against the possible grant of a patent or international registration before the examination decision is made. The applicant is notified of the receipt of the objection.
5. In the course of the substantive examination, Turkmenpatent has the right to request additional materials from the applicant, without which the examination is impossible. Additional materials are subject to the requirements of the fourth part of Article 20 of this Law.
6. If, as a result of the substantive examination, Turkmenpatent establishes that the claimed industrial design meets the conditions of patentability, then the applicant is sent a decision to grant a patent of Turkmenistan or a decision to register an industrial design in Turkmenistan under an international application.
7. If in the process of substantive examination the discrepancy of the industrial design with the conditions of patentability is established, the applicant is sent a notification of a possible refusal to issue a patent or international registration with a proposal to submit his arguments regarding the reasons given in the notification.
The arguments of the applicant, if they are submitted to Turkmenpatent within three months from the date of sending the notification, are taken into account when making a decision to refuse or a decision to grant a patent or international registration in Turkmenistan. The deadline for responding to the applicant's request may be extended by six months, subject to payment of the appropriate fee.
Article 22. Appealing against the decision of the examination of the application and restoration of missed terms
1. In case of disagreement with the decision of the formal examination or examination on the merits, the applicant has the right, within three months from the date of sending the decision, to file an objection to the Appeal Commission. The objection must be considered within four months from the date of its receipt. The term for consideration of the objection may be extended at the request of the person who filed the objection, but for no more than six months from the date of expiry of the originally appointed term. The procedure for considering appeals is established by Turkmenpatent.
The applicant has the right to appeal the decision of the Appeals Commission in court within six months from the date of its approval. 2. If the applicant missed the deadline for submission of documents or additional materials at the request of the examination, then the deadline for filing an objection to the decision of the examination may be restored.
The petition for the restoration of the missed deadline may be submitted by the applicant to Turkmenpatent no later than six months from the date of expiry of the established deadline, subject to payment of the appropriate fee.
Article 23. Registration of industrial design
1. After receiving a document confirming payment of the fee for registration and issuance of a patent, Turkmenpatent registers the industrial design in the State Register of Industrial Designs. The document confirming the payment of the fee must be submitted by the applicant within three months from the date of sending the decision on the grant of the patent.
If the payment of the fee is delayed, the applicant is granted a grace period of six months from the date of expiry of the established period, subject to payment of the corresponding fee for each missed month.
2. Registration of an industrial design is carried out within one month after receiving a document confirming payment of duties.
3. If a document confirming payment of the fee is not submitted within a grace period, the application is considered withdrawn, of which the applicant is notified.
4. For a registered industrial design, Turkmenpatent issues a patent to the applicant and publishes information about the issued patent in the Bulletin. If there are several persons in whose name the patent was requested, the patent is issued to the first person indicated in the application, unless otherwise stipulated in the agreement between them.
5. The list of information entered into the State Register of Industrial Designs, the form of the patent and the composition of the information indicated in it are established by Turkmenpatent.
Article 24. Amendments to the registration of an industrial design
1. The registration of an industrial design is subject to changes related to the change in the name and (or) address of the rightholder, as well as other changes related to registration.
2. Changes are made at the request of the copyright holder, subject to the payment of the appropriate fee. The rules for filing and considering applications for amending registration are established by Turkmenpatent.
3. Changes are made to the State Register of Industrial Designs.
Article 25. Publication of information about a patent
1. Turkmenpatent publishes in the Bulletin information on the grant of a patent within six months from the date of its registration in the State Register of Industrial Designs.
2. The author has the right to refuse to be mentioned as such in the published information about the patent.
3. The composition of published information is determined by Turkmenpatent.
4. Turkmenpatent publishes in the Bulletin all subsequent changes made to the State Register of Industrial Designs:
1) on changing information about the copyright holder;
2) on the transfer of rights to a patent;
3) on the cancellation of the patent;
4) on the termination or restoration of the patent;
5) other changes.
5. Any person has the right to familiarize himself with the materials of the application or patent after the publication of information about them. The procedure for familiarization with the materials of the application or patent is established by Turkmenpatent.
Article 26. Fees
1. For the commission of legally significant actions related to the filing of an application, examination, registration, extension of the industrial design for an additional period and other procedures, duties are levied. Fees are paid by the applicant, copyright holder or any third parties, unless otherwise provided by an international treaty to which Turkmenistan is a party. The list of actions for the commission of which duties are levied, their amounts, terms, procedure for payment and return are established by the Cabinet of Ministers of Turkmenistan.
2. Funds received from the collection of duties shall go to the State Budget of Turkmenistan. Some of these funds are used to develop the state system for the protection of industrial property objects, including technical equipment, the creation and use of an automated system; formation of the state patent and information base; wages, training and incentives for personnel; to pay dues and other payments required to ensure the participation of Turkmenistan in international agreements in the field of protection of industrial property.
CHAPTER VI. TRANSFER OF RIGHTS TO A PATENT
Article 27. Assignment of rights to an industrial design
1. A patent or international registration during the entire period of their validity may be subject to a transfer of rights. A right based on a patent or an international registration can be transferred in whole or in part.
2. The right to a patent or international registration may be transferred to any interested person under an agreement drawn up in any form and signed by the rightholder and assignee.
Article 28. License agreement for the use of an industrial design
1. Any person who is not the rightholder has the right to use a patented industrial design or international registration only with the permission of the rightholder on the basis of a license agreement. Under the license agreement, the copyright holder (licensor) undertakes to transfer the right to use the protected industrial design in the amount provided for by the agreement to another person (licensee). The licensee assumes the obligation to make payments to the licensor due to the agreement and to carry out other actions provided for by the agreement.
2. With an exclusive license, the licensee is given the right to use the industrial design within the limits specified in the agreement, with the licensor retaining the right to use it. With a non-exclusive license, the licensor, by granting the licensee the right to use the industrial design, retains all rights confirmed by the patent or international registration, including the granting of licenses to third parties. With a full license, the licensee is transferred the exclusive right to use the industrial design without the licensor retaining the right to use and issuing a license to other persons.
3. If the license agreement provides for the possibility of concluding a sublicense agreement, then the licensee (sublicensor) has the right to conclude a sublicense agreement with a third party (sublicensee) on the provision of a non-exclusive license to use the industrial design. Responsibility to the licensor for the actions of the sublicensee is borne by the licensee, unless otherwise provided by the license agreement.
4. The rightholder may submit to Turkmenpatent an application for granting any person the right to use an industrial design (open license). In this case, payment of fees for the validity of the patent is reduced by 50 percent from the year following the year when Turkmenpatent publishes information on an open license. A person who has expressed a desire to use the specified industrial design is obliged to conclude a payment agreement with the rightholder. The rights granted under an open license cannot exceed the scope of rights transferred under a non-exclusive license. The copyright holder's application for granting the right to an open license is not subject to revocation.
Article 29. Compulsory license for an industrial design
1. If the industrial design is not used or insufficiently used by the rightholder or persons to whom the rights to them have been transferred, within five years from the date of the patent or international registration, then any person willing and ready to use the industrial design, in case the rightholder refuses to conclude with this person of the license agreement, on terms consistent with established practice, has the right to apply to the court with a claim for the granting of a compulsory non-exclusive license to use the industrial design.
2. If the rightholder does not prove that the use or insufficient use of the industrial design is due to valid reasons, then the court grants to the interested person a compulsory non-exclusive license specifying the limits of use, the amount, terms and procedure for payments. The amount of payments should be set not lower than the market price of the license, determined in accordance with established practice.
Article 30. Registration of an agreement on the assignment of rights to an industrial design or a license agreement
1. An agreement on the assignment of rights to an industrial design or a license agreement for the use of an industrial design shall be registered with Turkmenpatent. An agreement on the assignment of rights to an industrial design or a license agreement for the use of an international registration in force in the territory of Turkmenistan is also subject to registration with Turkmenpatent.
An agreement on the assignment of rights to an industrial design or a license agreement comes into force from the date of registration in the State Register of Industrial Designs and information about it is published in the Bulletin. Without registration, the contract is considered invalid.
2. On the basis of an agreement between the parties, amendments may be made to the registered license agreement within the term of its validity. Changes are also subject to registration with Turkmenpatent.
3. The rules for registering an agreement on the assignment of rights to an industrial design or a license agreement, as well as on amending the license agreement, shall be determined by Turkmenpatent.
4. An agreement on the assignment of rights to an industrial design or a license agreement and amendments to the license agreement shall be registered by Turkmenpatent, subject to the payment of the appropriate fee.
CHAPTER VII. TERMINATION AND RESTORATION OF LEGAL PROTECTION OF THE INDUSTRIAL DESIGN
Article 31. Challenging a patent. Invalidation of a patent
1. A patent during the entire validity period may be challenged and invalidated in whole or in part upon the objection of any person in the following cases:
1) non-compliance of the registered industrial design with the patentability conditions established by this Law;
2) false indication in the patent of the author of the industrial design or copyright holder. The person who filed the objection is obliged to motivate him, as well as submit a document confirming the payment of the established fee.
2. The validity of a patent recognized as invalid in accordance with the provisions of the first part of this article shall be terminated from the date of filing an application for an industrial design.
3. Objections to the grant of a patent on the grounds provided for by the provisions of paragraph 1 of part one of this article shall be considered by the Appeals Commission within six months from the date of their receipt. In case of disagreement with the decision of the Appeal Commission on opposition to the grant of a patent, any of the parties, within six months from the date of approval of the decision, may challenge it in court. Objections to the grant of a patent on the grounds provided for by the provisions of paragraph 2 of the first part of this article shall be considered by the court.
4. A patent for an industrial design declared invalid on the basis of a decision of the Appeals Commission or a court decision shall be canceled. If a patent is declared partially invalid, a new patent is issued. Turkmenpatent enters into the State Register of Industrial Designs and publishes in the Bulletin information on patents declared invalid in whole or in part.
Article 32. Contestation and invalidation of an international registration
Contesting an international registration and recognizing it as invalid on the territory of Turkmenistan, in whole or in part, is carried out in accordance with the provisions of Article 31 of this Law. If the international registration is recognized as invalid in whole or in part, Turkmenpatent shall notify the International Bureau of this.
Article 33. Early termination of a patent or international registration
1. The validity of a patent and international registration is terminated early:
1) on the basis of an application submitted by the rightholder to Turkmenpatent - from the date of receipt of the application;
2) in case of non-payment of the fee for the renewal of a patent or international registration for an additional period of validity - from the date of expiry of the established period.
2. Turkmenpatent enters into the State Register of Industrial Designs and publishes in the Bulletin information about the patent, the validity of which was terminated early.
Article 34. Restoration of validity of a patent and international registration
1. The validity of a patent or international registration terminated (terminated) due to non-payment of the fee for renewing it (her) for an additional period of validity may be restored at the request of the copyright holder. The petition is filed with Turkmenpatent within three years from the date of termination of the patent or international registration. The application shall be accompanied by a document confirming the payment of the prescribed fee for the restoration of the validity of this patent or this international registration.
2. Turkmenpatent enters into the State Register of Industrial Designs and publishes in the Bulletin information on the restoration of the validity of a patent or international registration. 3. After three years from the date of termination of the patent or international registration, the rights to an industrial design cannot be restored.
Article 35. Right of after-use
1. A person who, in the period between the date of termination of the patent or international registration and the date of publication in the Bulletin of information on the restoration of the patent or international registration, began to use the industrial design or made the necessary preparations for this during the specified period, retains the right to further use the industrial design free of charge. without expanding the scope of such use (post-use right).
2. The right of post-use may be transferred to another person only in conjunction with the production in which the industrial design or an identical solution was used or the necessary preparations were made for this.
CHAPTER VIII. PROTECTION OF THE RIGHTS OF AUTHORS, APPLICANTS AND RIGHT HOLDERS
Article 36. Appeals Commission
1. The Appeals Commission is competent to consider the following objections of persons:
1) for the decision of the examination on the application for an industrial design;
2) on the decision of the examination on the registration of an agreement on the assignment of a patent and a license agreement for the use of a patented industrial design;
3) on the recognition of a patent or international registration as invalid (invalid) in accordance with the provisions of Articles 31, 32 and 33 of this Law;
4) on the decision of the attestation commission for attestation of a candidate for patent attorneys and (or) admission to the qualification examination.
2. The Regulation on the Appeal Commission is approved by the Ministry of Finance and Economy of Turkmenistan.
3. The applicant has the right to file an objection with the Appeals Commission, subject to the payment of the appropriate fee. The objections provided for in paragraphs 1 - 3 of the first part of this article must be considered by the Appeal Commission within four months from the date of their receipt. The objection provided for in paragraph 4 of part one of this article must be considered by the Appeals Commission within six months from the date of its receipt.
The term for consideration of the objection may be extended at the request of the person who filed the objection, as well as the copyright holder, but for no more than six months, starting from the date of the expiration of the originally established date for the consideration of the case.
A petition to reconsider the decision of the Appeal Commission may be submitted to the chairman of the Appeal Commission of any of the interested parties within one month from the date of its receipt. Any of the interested parties can appeal the decision of the Appeals Commission in court within forty-five days from the date of its approval.
Article 37. Consideration of disputes in court
The courts, in the manner prescribed by the legislation of Turkmenistan, consider disputes related to the application of this Law, including:
1) about authorship of an industrial design;
2) on the establishment of the copyright holder;
3) on the issue of a patent;
4) on the international registration of an industrial design in Turkmenistan;
5) on the issuance of a compulsory license;
6) on violation of the exclusive right to an industrial design and other property rights of the rightholder;
7) on the conclusion and execution of agreements on the assignment of patents and licensing agreements for the use of a patented industrial design;
8) on the conclusion and execution of licensing agreements for the use of the international registration of an industrial design;
9) on the amount of monetary compensation for the use of an industrial design during the period of its temporary protection;
10) on the right of prior use;
11) on the right of post-use;
12) on the amount, timing and procedure for payment by the employer of remuneration to the author of the industrial design in accordance with this Law;
13) on the amount, time and procedure for payment of compensations provided for by this Law;
14) other disputes related to the protection of the rights of copyright holders.
Article 38. Liability for illegal use of an industrial design
1. Any person using a patented industrial design or international registration in violation of the provisions of this Law is considered a violator of the exclusive right to an industrial design and is liable in accordance with the legislation of Turkmenistan.
2. A person who illegally uses a patented industrial design or international registration, at the request of the rightholder or a court decision, is obliged:
1) recognize the rights of the copyright holder;
2) stop actions that violate the rights of the copyright holder;
3) compensate for losses, including lost profits, or pay compensation. The amount of compensation is determined by a court decision or by agreement of the parties;
4) compensate for moral damage;
5) publish the judgment in order to restore the business reputation of the copyright holder. The court has the right to decide on the confiscation of counterfeit goods.
3. A claim for violation of the exclusive right of the copyright holder can be brought within three years from the day when the copyright holder learned or should have learned about the violation your right. A claim for violation of the exclusive right to an industrial design is brought by the copyright holder. A statement of claim on violation of rights may also be filed by the owner of an exclusive license, unless otherwise provided by the license agreement, or by the owner of a non-exclusive license, if it is provided for by the license agreement.
Article 39. Customs control
Customs control in relation to the protection of the rights of rightholders or holders of an exclusive license to use industrial designs protected in Turkmenistan is carried out by the customs authorities in accordance with the customs legislation of Turkmenistan.
CHAPTER IX. THE INTERNATIONAL COOPERATION
Article 40. Consideration of an international application for registration of an industrial design in Turkmenistan
The consideration of an international application for registration of an industrial design in Turkmenistan is carried out by Turkmenpatent in accordance with the Geneva Act (1999) and the Regulations to the Geneva Act (1999), as well as taking into account the requirements of Articles 6, 7, part two of Article 16, Articles 21 and Article 22 of this Law.
Article 41. Patenting or registration of industrial designs in foreign states and international organizations
1. An application for patenting or registration of an industrial design created in Turkmenistan may be filed in a foreign state or in an international organization.
2. The costs associated with patenting or registration of an industrial design in a foreign state or international organization shall be borne by the applicant or by agreement with him another person.
Article 42. Rights of foreign persons
1. Foreign persons shall enjoy the rights provided for by this Law on an equal basis with persons of Turkmenistan by virtue of international treaties to which Turkmenistan is a party, or on the basis of the principle of reciprocity.
2. Foreign persons, as well as citizens of Turkmenistan residing or having permanent residence outside Turkmenistan, in relations with Turkmenpatent, exercise their rights through patent attorneys registered with Turkmenpatent, unless otherwise provided by international treaties to which Turkmenistan is a party.
CHAPTER X. FINAL PROVISIONS
Article 43. Entry into force of this Law
1. This Law comes into force from the moment of its official publication.
2. Until the normative legal acts of Turkmenistan are brought into conformity with this Law, they shall be applied insofar as they do not contradict this Law.
Article 44. Transitional Provisions
1. The provisions of this Law related to the transition to a single patent for an industrial design valid for fifteen years shall be applied in the following order: 1) for applications for industrial designs, for which a formal examination was carried out prior to the entry into force of this Law, an examination on the merits is carried out in accordance with the provisions of Article 21 of this Law;
2) for applications for industrial designs, for which, prior to the entry into force of this Law, a limited patent examination was carried out and a decision was made to issue a limited patent for an industrial design, a limited patent is issued.
2. A valid limited patent issued for a period of ten years may be converted into a patent at the request of the rightholder, subject to the payment of the established fee and the examination of the industrial design in essence in accordance with the provisions of Article 21 of this Law and in accordance with the procedures established by Turkmenpatent for these goals.
3. If the above request is not filed by the rightholder during the term of the limited patent, the limited patent shall continue to operate for the remaining term, subject to the payment of the prescribed fee.
4. The provisions of this Law related to the transition to periods of extension of the validity period of an industrial design of five years each are applied in the following order:
1) for the validity of limited patents and patents registered before the entry into force of this Law, the fee for an additional period of validity of five years each is paid before the expiration of the first or second five-year renewal period;
2) before the expiration of the corresponding five-year period, the fee for the validity of limited patents and patents registered before the entry into force of this Law shall be paid for each year of their validity or for the entire remaining period of the relevant period of validity.
President of Turkmenistan
Gurbanguly BERDYMUHAMEDOV
Ashgabat; November 4, 2017
(Kindly ask you to note that provided above translation is not an official translation of the document into English).
