Turkmenistan law on the legal protection of inventions
Entered into force on November 13, 2017
This Law regulates relations arising in connection with the legal protection and use of inventions.
CHAPTER I. GENERAL PROVISIONS
Article 1. Basic concepts
The following basic concepts are used in this Law:
1) 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;
2) Patent Cooperation Treaty (PCT) - Patent Cooperation Treaty of June 19, 1970 (PCT - Patent Cooperation Treaty), amended on October 2, 1979 and amended on February 3, 1984;
3) international preliminary examination body - an office that, on the basis of an Agreement with the International Bureau of the World Intellectual Property Organization (WIPO), performs the functions of international preliminary examination in accordance with the Patent Cooperation Treaty (PCT);
4) Eurasian Patent Convention - the Eurasian Patent Convention for the Protection of Inventions, which entered into force on August 12, 1995;
5) objects of industrial property - in relation to this Law - inventions;
6) invention - a technical solution to a problem that is new, has an inventive step and industrial applicability;
7) Turkmenpatent - State Intellectual Property Service of the Ministry of Finance and Economy of Turkmenistan;
8) person - a natural or legal person;
9) applicant - a person who has filed an application and is applying for a patent or a limited patent;
10) application - a set of documents required to obtain a patent or limited patent;
11) divisional application - an application repeating part of an earlier 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 of unity of invention in the early application;
12) first application - an application filed with the appropriate body of a state party to the Paris Convention, according to the filing date of which the convention priority is established;
13) conventional application - an application claiming conventional priority;
14) international application - an application filed in accordance with the Patent Cooperation Treaty (PCT);
15) Eurasian application - an application filed in accordance with the Eurasian Patent Convention;
16) priority of an invention - primacy in time in the implementation of the filing of an application;
17) convention priority - the priority of an invention established by the date of filing the first application with the appropriate body of a state party to the Paris Convention;
18) claims of an invention - a set of features of an invention that express its essence and determine the scope of its legal protection. The claims may consist of independent clauses describing independent objects of patenting, and dependent clauses containing the development and (or) clarification of the set of features of the invention, given in the independent clauses;
19) patent or limited patent - a title of protection of Turkmenistan, certifying the priority, authorship and exclusive right of the patent holder to an invention;
20) patent holder - the owner of a patent or a limited patent who has the exclusive right to a patented invention;
21) service invention - an invention created by an employee in connection with the performance of his official duties or a specific task of the employer;
22) assignment of a patent or limited patent - transfer of rights to an invention by its owner to another person on the basis of an agreement;
23) license for an invention (hereinafter referred to as a license) - a permit to use an invention, issued by the patentee to another person under a license agreement;
24) bulletin - official periodicals of Turkmenpatent intended for publication of information about inventions registered in Turkmenistan and submitted applications for obtaining patents and limited patents for inventions;
25) counterfeit goods - goods in which a patented invention is used illegally;
26) 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 property;
27) 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 patent holders, as well as other issues within the competence of this commission.
Article 2. Legislation of Turkmenistan on the legal protection of inventions
The legislation of Turkmenistan on the legal protection of inventions 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 inventions
1. State regulation in the field of legal protection of inventions is carried out by Turkmenpatent.
2. Turkmenpatent, in accordance with its competence:
1) accepts applications for inventions for consideration, conducts an examination of them;
2) maintains the State Register of Inventions;
3) grants patents or limited patents of Turkmenistan; 4) registers license agreements and agreements on the assignment of inventions;
5) makes changes to the registration of inventions;
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 inventions;
8) develops proposals for improving the legislation of Turkmenistan and concluding international treaties in the field of legal protection of industrial property objects;
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 obligations assumed by Turkmenistan in accordance with international treaties on the legal protection of industrial property.
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 43 of this Law. The powers of a representative or patent attorney are certified by a power of attorney. The Ministry of Finance and Economy of Turkmenistan determines the procedure for attestation and registration of patent attorneys.
Article 4. State incentives for the creation and use of inventions
In order to develop scientific and technological progress, strengthen the intellectual potential of Turkmenistan and promote the development of technical creativity, the state provides patent holders and persons using an invention under a license agreement, as well as persons assisting in obtaining and protecting rights to an invention, benefits in accordance with the legislation of Turkmenistan.
CHAPTER II. FUNDAMENTALS OF LEGAL PROTECTION OF INVENTIONS
Article 5. Scope of legal protection of inventions
1. The right to an invention is protected by the legislation of Turkmenistan and is confirmed by a patent or a limited patent. A patent is issued after a patent examination and registration in the State Register of Inventions. A limited patent is issued after a limited patent examination and registration in the State Register of Inventions. The exclusive right to an invention arises after its registration in the State Register of Inventions and the issuance of a patent or limited patent.
2. The scope of legal protection provided by a patent or limited patent is determined by the claims. The description and drawings of the invention are used to interpret the claims.
3. Legal protection of inventions recognized as secret shall be regulated in accordance with the procedure established by the legislation of Turkmenistan.
4. The claimed invention is granted temporary legal protection from the date of publication of information about the application until the date of registration in the State Register of Inventions. The person using the claimed invention during the period of its temporary legal protection shall pay the owner of the patent or limited patent after receiving the patent or limited patent, 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 a limited patent.
5. The invention passes into the public domain upon the expiration of the term or in connection with the early termination of the patent or limited patent. An invention that has passed into the public domain can be freely used by any person without anyone's consent or permission and without payment of remuneration for use.
Article 6. Term of Patent and Limited Patent
1. A patent is valid for twenty years from the date of filing an application for an invention with Turkmenpatent and subject to payment of the established fee for each year of the patent.
2. A limited patent is valid for ten years from the date of filing an application for an invention with Turkmenpatent and subject to payment of the established fee for each year of the limited patent.
3. For payment of the fee for the years of validity of a limited patent or patent, a grace period of six months is provided, subject to the payment of the established fee.
4. The filing date of the application is the date of receipt of the application with Turkmenpatent containing the application for the grant of a patent or limited patent, its description and drawings, if there is a reference to them in the description, or the date of receipt of the last of the above documents, if these documents are not submitted simultaneously.
Article 7. Conditions of patentability of an invention
1. A technical solution declared as an invention is granted legal protection if it is new, has an inventive level and industrial applicability. An invention is recognized as new if it is not part of a prior art. An invention has an inventive step if it does not clearly follow from the state of the art for a specialist. The prior art includes any information that became publicly available in the world before the priority date of the invention. When establishing the novelty of an invention, inventions patented in Turkmenistan and applications for inventions of other persons filed with Turkmenpatent with an earlier priority are also included in the level of technology. An invention is industrially applicable if it can be practically used in various fields of human activity.
2. It is not recognized as a circumstance that prevents the recognition of the patentability of an invention, such disclosure of information related to the invention by the author, applicant or any person who received this information from him directly or indirectly, in which information about the essence of the invention became publicly available if the application was not filed with Turkmenpatent. later than six months from the date of disclosure. In this case, the obligation to prove this fact lies with the applicant.
3. The objects of the invention can be a device, a method, a substance, a strain of a microorganism, cell cultures of plants and animals and other technical solutions, as well as their use for a new purpose.
4. Not recognized as inventions:
1) discoveries, scientific theories and mathematical methods;
2) methods of organization and management of the economy;
3) conventions, schedules, rules;
4) methods of performing mental operations;
5) algorithms and programs for computers; 6) projects and layouts of structures, buildings, territories;
7) decisions concerning only the appearance of products aimed at satisfying aesthetic needs;
8) topology of integrated circuits;
9) plant varieties and animal breeds;
10) decisions that are contrary to public interests, principles of humanity and morality, damaging the environment. It is not recognized as a circumstance affecting the patentability of an invention, the presence in its composition of algorithms and programs for computers, if they are part of the invention.
6. CHAPTER III. AUTHORS AND PATENT OWNERS
Article 8. Inventor
1. The author of an invention is a natural person whose creative labor it was created.
2. If several individuals participated in the creation of an invention, 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 invention, 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 Patent or Limited Patent
1. The right to a patent or limited patent belongs to:
1) the author (co-authors) of the invention or his (their) legal successor (successors);
2) the employer or his legal successor in the cases provided for by part two of this article.
2. The right to obtain a patent or limited patent for an invention created by an employee in connection with the performance of his official duties or a specific legally formalized task of the employer (service invention) 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 invention, 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 a limited patent passes to the author. In this case, the employer has the right to use the invention in his production with the payment of compensation to the patent holder, determined on a contractual basis.
Article 10. Right of the author to remuneration
1. The author of an employee's invention, who does not own the right to obtain a patent or a limited patent, 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 of remuneration for the use of an invention between co-authors is carried out on the basis of an agreement between them.
CHAPTER IV. EXCLUSIVE RIGHT TO THE INVENTION
Article 11. Rights of the patentee
1. The patentee has the exclusive right to use and also authorize or prohibit other persons to use the patented invention. No one has the right to commit actions that are a violation of the exclusive right of the patent holder, including to use the patented invention without his permission, except in cases provided for by this Law.
2. The patentee may transfer to any person by contract the right to a patent or limited patent, or grant licenses to use a patent or limited patent invention.
3. The relationship on the use of the invention between the owners of the patent or limited patent shall be determined by agreement between them. In the absence of such an agreement, each of them can use the patented invention at their own discretion, but have no right to license it or assign the patent to another person without the consent of the other owners. If no agreement is reached between the owners of the patent or limited patent on the grant of a license or assignment of the right to a patent or limited patent, the dispute may be resolved in court.
4. If the patent holder cannot use the patented invention without violating the rights of another patent holder, he may demand that the latter conclude a license agreement.
5. The relationship between holders of related patents or limited patents shall be governed by the conclusion of a license agreement between them. If no agreement is reached between the holders of related patents or limited patents, the provisions of Article 31 of this Law shall apply.
6. A patent or limited patent and the right to obtain it shall be inherited.
Article 12. Actions recognized as violation of the exclusive right of the patent holder
The following actions are recognized as a violation of the exclusive right of the patent holder to the invention:
1) use of a patented invention;
2) manufacture, use, import, offer for sale, sale and other introduction into economic circulation or storage for this purpose of a product in which the patented invention is used;
3) manufacture, use, import, offer for sale, sale and other introduction into economic circulation or storage for this purpose of a product obtained directly by a method protected by a patent or a limited patent. In this case, a new product, in the absence of evidence to the contrary, is considered to be obtained by a patented method;
4) manufacture, use, import, offer for sale, sale and other introduction into economic circulation or storage for this purpose of a device, during the functioning (operation) of which, in accordance with its purpose, the patented method is automatically carried out;
5) implementation of the patented method or proposal for its application;
6) encouraging third parties to carry out the above actions.
Article 13. Actions not recognized as a violation of the exclusive right of the patent holder
It is not recognized as a violation of the exclusive right of the patent owner:
1) the use of a product or article in which the patented invention is used in the design, in auxiliary equipment or in the operation of vehicles of foreign states (water, air, road, railway transport and space technology), provided that these vehicles are temporarily or are accidentally located on the territory of Turkmenistan and the specified product or product is used for the needs of the vehicle. Such actions are not recognized as a violation of the exclusive right of the patent holder in relation to vehicles of foreign states that provide the same rights in relation to vehicles registered in Turkmenistan;
2) conducting a scientific research or experiment on a product, method or article in which the patented invention is used;
3) the use of a patented invention in extraordinary circumstances (natural disasters, catastrophes, accidents) with the notification of the patentee within a month and the subsequent payment of proportionate compensation to him;
4) the use of the patented invention 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);
5) one-time production of medicines in a pharmacy on prescriptions of doctors using a patented invention;
6) application, offer for sale, sale, other introduction into civil circulation or storage for these purposes of a product in which a patented invention is used, if this product or product was previously introduced into civil circulation in the territory of Turkmenistan by the patent holder or another person with the permission of the patent holder.
Article 14. Right of prior use
1. Any person who, prior to the priority date of the invention, conscientiously used on the territory of Turkmenistan an identical solution created independently of its author, or made the necessary preparations for this, retains the right to further use it free of charge without expanding the scope of such use.
2. The right of prior use may be transferred to another person only in conjunction with the production in which the use of the identical solution took place or the necessary preparations were made for this.
Article 15. Use of the invention
1. The use of an invention shall be deemed to be the introduction into economic circulation of a product (article) made with the use of a patented invention, as well as the use of a method protected by a patent or a limited patent.
2. An invention is recognized as used in a product or method if the product contains, and the method uses each feature of the invention given in the independent claim of the invention, or an equivalent feature.
3. If, when using a patented invention, all the features given in the independent claim of another patented interconnected invention are also used, the other interconnected invention is also recognized as used.
4. Any person wishing to use a patented invention is obliged to conclude a license agreement with the patentee.
CHAPTER V. OBTAINING A PATENT AND A LIMITED PATENT
Article 16. Submission of the application
1. The application is submitted to Turkmenpatent. The applicant may be the author (co-authors) of the invention, the employer or their successors.
2. An application for the grant of a patent or a limited 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 a different 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 the application.
If the said translation 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 the payment of the corresponding fee.
If the translation is not submitted within the established time frame, the application is recognized as withdrawn.
Article 17. Composition of the application
1. The application must relate to one invention or a group of inventions that are so related to each other that they form a single inventive concept, that is, they satisfy the requirement of unity of invention.
2. The application must contain: 1) an application for the issue of a title of protection of Turkmenistan for an invention indicating the author (co-authors) of the invention and the person (s) in whose name (s) the patent or limited patent is requested, as well as his (their) place of residence or location;
2) a description of the invention, revealing it with completeness sufficient for its implementation by a specialist in the relevant field of knowledge;
3) the formula of the invention, expressing its essence, completely based on the description and determining the scope of rights for which protection is sought;
4) drawings and other materials, if they are necessary to understand the essence of the invention;
5) an abstract containing a summary of the essence of the invention. A power of attorney is attached to the application, if this application is submitted by the applicant's representative or patent attorney, as well as a document confirming the payment of the fee in the established amount, or a document confirming the grounds for exemption from payment of the fee or reducing its amount, or postponing its payment.
The documents attached to the application must be submitted to Turkmenpatent within three months from the date of filing the application. If the aforementioned documents are 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 appropriate fee. If the documents are not submitted within the established time frame, the application is recognized as withdrawn.
3. 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 there are several first applications, then copies of all these applications are attached. A certified copy of the first application is not required when filing an international application with Turkmenpatent.
A convention application must be filed with Turkmenpatent no later than twelve months from the filing date of the first application. A petition for the establishment of a convention priority can be submitted upon filing an application or within three months from the date of filing an application with Turkmenpatent.
4. Requirements for application documents are established by Turkmenpatent.
Article 18. Priority of invention
1. The priority of an invention is established by the date of filing an application for an invention with Turkmenpatent.
2. The priority may be established by the date of filing the first application in a state party to the Paris Convention, subject to the provisions established by part three of Article 17 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 decision.
4. Priority may be established by the date of receipt by Turkmenpatent of an earlier application of the same applicant, disclosing the invention, if the application for which such priority is claimed is filed no later than twelve months from the filing date of the earlier application, and if the earlier filed application was not requested earlier priority. In this case, the earlier application is considered withdrawn.
5. The priority for a divisional application shall be established by the date of filing with Turkmenpatent of the first application for an invention disclosing the essence of the invention, if the divisional application was filed before the decision was made on an early application to refuse to grant a patent or a limited patent, the possibilities for appeal of which have not been exhausted, and if for the specified application of the decision to grant a patent or limited patent - until the date of registration of the invention in the State Register of Inventions.
6. If it is established that identical inventions have the same priority date, then a patent or a limited patent is issued for an application for which an earlier date of its sending to Turkmenpatent is proved, and if these dates coincide, for an application that has an earlier registration number of Turkmenpatent.
Article 19. Amendments to the documents of the application for an invention
1. The applicant has the right to make corrections and clarifications to the documents of the application without changing the essence of the invention until a decision is made on this application to issue a patent or a limited patent, or a decision to refuse to issue it. Additional materials are considered to change the essence of the claimed invention if they contain features to be included in the claims and are absent on the filing date in the description of the invention.
2. A fixed 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 20. Examination of an application for an invention
On an application for an invention, Turkmenpatent conducts formal examination, limited patent examination and patent examination.
Article 21. Formal examination
1. Formal examination is carried out upon the expiration of three months from the date of filing an application with Turkmenpatent in the presence of the documents provided for in part two of Article 17 of this Law. At the request of the applicant, a formal examination can 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 in part two of Article 19 of this Law.
2. Formal examination is carried out within a month and includes checking:
1) the availability of the necessary documents and compliance with the established requirements for them;
2) the conformity of the declared technical solution to the objects to which legal protection is granted;
3) compliance with the requirement of unity of invention;
4) the correctness of the classification of the invention according to the International Patent Classification;
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 sent a notice of acceptance of the application for consideration, indicating the established date of its filing. In case of inconsistency of the declared technical solution with the objects, which are granted 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 notified 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 the application is withdrawn or a decision is made on it to issue a patent or a limited patent or to refuse to issue it.
The volume of published information 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 the payment of the established 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 invention has the right to refuse to be mentioned as such in the published information about the application. The published application is subject to the fourth part of Article 5 of this Law.
4. Upon the application, executed in violation of the requirements for its documents, a motivated request is sent to the applicant with a proposal to submit corrected or missing documents within three months from the date of its sending.
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 deadline for the submission of the requested documents can be restored at the request of the applicant, subject to the payment of the appropriate fee.
A petition for the restoration of the missed time limit with the requested documents must be submitted by the applicant no later than six months from the date of expiry of the established time period. In case of failure to submit an application for the restoration of the term within six months, the application is recognized as withdrawn, of which the applicant is notified.
5. For an application filed in violation of the requirement of unity of invention, the applicant is invited, within three months from the date of sending him the appropriate notification, to inform which of the claimed inventions should be considered, and, if necessary, to make changes to the materials of the early application. Other claimed inventions may be formalized in divisional applications.
In the event that the applicant does not inform in due time which of the claimed inventions should be considered, and does not submit the relevant documents, if they are necessary, the invention is considered, which is indicated in the formula first.
Article 22. Limited patent examination
1. For applications that have passed formal examination, limited patent examination is carried out. Limited patent examination is carried out after eighteen months from the date of filing an application with Turkmenpatent and includes:
1) additional verification of the compliance of the claimed invention with the conditions of patentability specified in Article 7 of this Law;
2) verification of the compliance of the claims provided by the applicant with the established requirements;
3) verification of the compliance of additional materials with the established requirements;
4) verification of the claimed invention in relation to the state of the art, which includes patents, limited patents of Turkmenistan, applications for the grant of a title of protection filed with Turkmenpatent, as well as Eurasian applications and Eurasian patents, with a filing date earlier than the filing date of the application in question.
2. In the course of a limited patent examination, Turkmenpatent has the right to request from the applicant additional materials necessary for carrying out this examination. The requirements of the fourth part of Article 21 of this Law apply to the deadlines for submitting additional materials. In the course of a limited patent examination, it is checked whether additional materials presented at the initiative of the applicant or at the request of the examination do not change the essence of the claimed invention. Additional materials in the part that change the essence of the invention are not taken into account when considering the application and can be drawn up by the applicant as an independent application, of which the applicant is notified.
3. If, as a result of a limited patent examination, Turkmenpatent establishes that the claimed invention meets the requirements, the applicant is sent a notice of readiness to issue a limited patent with a proposal to submit his opinion on the claims contained in the notice within three months. The applicant's opinion is taken into account when making a decision to grant a limited patent.
If the applicant agrees with the claims given in the examination notification or leaves the notification unanswered, a decision is made to issue a limited patent with the claims as amended by the examination. The decision shall be made within one month after the expiration of the established time limit for the applicant to submit his opinion on the claims.
4. If the applicant intends to obtain a patent, the applicant must, within three months from the date of receipt of the notification about the readiness to issue a limited patent, file a petition for the suspension of its issuance with the attachment of a document confirming the payment of the established fee. In this case, the office work on the application is suspended until the filing of a request for a patent examination.
A petition for a patent examination must be filed within five years from the date of filing an application for an invention. Otherwise, Turkmenpatent, from the date of expiration of the established period, makes a decision to issue a limited patent based on the results of a limited patent examination.
5. If in the course of the limited patent examination it is established that the claimed invention does not comply with the conditions of patentability, the applicant, prior to making a decision, is sent a notification of a possible refusal to issue a limited patent 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 deciding on the refusal or grant of a limited patent. The deadline for responding to the applicant's request may be extended by six months, subject to payment of the appropriate fee.
Article 23. Patent examination
1. For applications that have passed a limited patent examination with a positive result, if there is an application for a patent, a patent examination is carried out taking into account the compliance with the requirements established by Article 22 of this Law. An application for a patent examination must be filed within five years from the date of filing of the application.
2. In the course of the patent examination, the compliance of the claimed invention with the conditions of patentability specified in Article 7 of this Law is verified. A patent examination is carried out after the applicant submits a request for a patent examination and on the basis of the evidence provided by the applicant of the patentability of the claimed invention.
As evidence confirming the patentability of the claimed invention, the applicant must attach to the application for a patent examination a copy of the opinion of one of the international preliminary examination bodies of the patentability of the claimed invention. Copies of a patent or a decision to grant it on a parallel application issued as a result of an examination carried out by one of the international preliminary examination bodies may also be submitted as documents confirming the patentability of an invention.
A document confirming the payment of the established fee must be attached to the application for a patent examination. The presented evidence of the patentability of the invention is considered within three months from the date of receipt of the request for a patent examination.
3. In the course of the patent examination, Turkmenpatent has the right to request from the applicant additional materials necessary for the examination. Additional materials are subject to the requirements of the fourth part of Article 21 of this Law.
4. If, as a result of the patent examination, Turkmenpatent establishes that the claimed invention meets the requirements, the applicant is sent a notice of readiness to issue a patent with a proposal to submit his opinion on the claims contained in the notice within three months. The applicant's opinion is taken into account when making a decision on the grant of a patent.
If the applicant agrees with the claims given in the examination notification or leaves the notification unanswered, a decision is made to issue a patent with the claims as amended by the examination. The decision shall be made within one month after the expiration of the established time limit for the applicant to submit his opinion on the claims.
5. If in the course of the patent examination it is established that the claimed invention does not comply with the conditions of patentability, then the provisions of part five of Article 22 of this Law shall apply.
6. Any interested person, subject to payment of the fee, may submit to Turkmenpatent a reasoned objection to the possible grant of a patent or a limited patent before the examination decision is made. The applicant is notified of the receipt of the objection.
Article 24. Conversion of a limited patent
1. A limited patent may be converted into a patent at the request of the patent owner if the invention meets the conditions of patentability specified in Article 7 of this Law. A conversion petition can be filed before the expiration of the limited patent. Verification of compliance of an invention with the conditions of patentability shall be carried out in accordance with the provisions of parts two and three of Article 23 of this Law.
2. If, as a result of the check, Turkmenpatent establishes that the invention meets the conditions of patentability, then the patent owner is sent a notification about the readiness to transform the limited patent with a proposal to submit his opinion on the claims contained in the notification within three months. The opinion of the patentee is taken into account when deciding on the transformation of a limited patent.
If the patent owner agrees with the claims given in the examination notification, or if the notification is left unanswered, a decision is made to transform the limited patent with the formula in the examination edition. The decision is made within one month after the expiration of the established time limit.
3. If, as a result of the inspection, it is established that the invention does not comply with the conditions of patentability, then a decision is made to refuse to transform the limited patent and to terminate its validity ahead of time.
Article 25. Appealing the decision of the examination on an application for an invention and restoration of missed terms
1. In case of disagreement with the decision of the formal, limited patent or patent examination, the applicant has the right, within three months from the date of sending the decision, to file an objection to the Appeals Commission. The objection must be considered within four months from the date of its receipt. The term for considering 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 established period.
The procedure for considering appeals is established by Turkmenpatent.
The applicant has the right to appeal in court against the decision of the Appeals Commission.
2. The deadline for submitting documents or additional materials at the examination request, the deadline for filing an application for a patent examination, the deadline for filing an application for the transformation of a limited patent, the deadline for filing an objection to an examination decision can 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 the payment of the corresponding fee.
Article 26. Registration of invention and amendments to registration
1. Turkmenpatent registers an invention in the State Register of Inventions after receiving a document confirming the payment of the fee for registration and issuance of a patent or limited patent, as well as annual fees for the operation of a patent or limited patent, starting from the first year of filing an application to the year of registration of the invention.
The document confirming the payment of the fee must be submitted by the applicant within three months from the date of sending the decision to grant a patent or limited patent. Registration of an invention is made within two months after receiving a document confirming the payment of fees.
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.
Registration of an invention is made within one month after receiving a document confirming payment of fees. If the document on payment of fees is not submitted within the established and grace period, the application is considered withdrawn, of which the applicant is notified.
2. For a registered invention, Turkmenpatent issues a patent or a limited patent to the applicant and publishes information about the issued patent or limited patent in the Bulletin. If there are several persons in whose name a patent or limited patent was applied for, they are granted one patent or limited patent, namely the first person indicated in the application, unless otherwise specified in the agreement between them.
3. An entry on the transformation of a limited patent into a patent for an invention shall be entered into the State Register of Inventions and into a limited patent after receiving a document confirming the payment of the established fee.
The requirements of the first part of this article apply to the terms of submission of the document on payment of fees and the terms of making an entry on the transformation of a patent in the State Register of Inventions.
If a document confirming payment of fees is not submitted within the established time frame, the patent is not converted.
4. Changes are made to the registration of an invention related to a change in the name and (or) address of the patent holder and other changes related to registration. The rules for amending the registration are established by Turkmenpatent.
5. The list of information entered into the State Register of Inventions, the form of a patent or limited patent and the composition of the information indicated in it are established by Turkmenpatent.
Article 27. Publication of information about a patent and a limited patent
1. Turkmenpatent publishes in the Bulletin information on the grant of a patent or a limited patent within six months from the date of its registration in the State Register of Inventions.
2. The author has the right to refuse to be mentioned as such in published information about a patent or a limited patent.
3. The composition of the published information is determined by Turkmenpatent.
4. Turkmenpatent publishes in the Bulletin all subsequent changes made to the State Register of Inventions:
1) on changing information about the patent holder;
2) on the transfer of rights to a patent or a limited patent;
3) on the transformation of a limited patent into a patent;
4) on the cancellation of a patent or limited patent;
5) on the termination or restoration of a patent or a limited patent and other changes.
5. Any person has the right to familiarize himself with the materials of the application, if this application is not recognized as withdrawn, after the publication of information about it or about a patent and a limited patent. The procedure for familiarization with the application documents is established by Turkmenpatent.
Article 28. Fees
1. Fees are levied for legally significant acts related to the filing, examination and grant of a patent or limited patent, maintaining it in force and other procedures in relation to applications and patents or limited patents. Fees are paid by the applicant, patent 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 FOR A PATENT AND LIMITED PATENT
Article 29. Assignment of a patent or a limited patent
1. A patent or a limited patent during the entire period of validity may be subject to a transfer of rights. A right based on a patent or a limited patent may be transferred in whole or in part.
2. The right to a patent or a limited patent may be transferred to any interested person under an agreement drawn up in any form and signed by the patent holder and assignee.
Article 30. License agreement for the use of invention
1. Any person who is not a patent owner has the right to use a patented invention only with the permission of the patent owner on the basis of a license agreement. Under the license agreement, the patent holder (licensor) undertakes to transfer the right to use the protected invention in the amount stipulated by the agreement to another person (licensee). The licensee assumes the obligation to make payments to the licensor stipulated by the agreement and to carry out other actions provided for by the agreement.
2. With an exclusive license, the licensee is transferred the right to use the invention within the limits stipulated by the agreement, with the licensor retaining the right to use it in the part that is not transferred to the licensee. With a non-exclusive license, the licensor, by granting the licensee the right to use the invention, retains all rights protected by the patent or limited patent, including the granting of licenses to third parties. With a full license, the licensee is given the exclusive right to use the invention without the licensor retaining the right to use it and granting a license to others.
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 invention. Responsibility to the licensor for the actions of the sublicensee is borne by the licensee, unless otherwise provided by the license agreement.
4. The patentee may submit to Turkmenpatent an application for granting any person the right to use the invention (open license). In this case, payment of fees for maintaining a patent or a limited 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 invention is obliged to conclude a payment agreement with the patent holder. The rights granted under an open license cannot exceed the amount of rights transferred under a non-exclusive license. The patent owner's application for granting the right to an open license cannot be revoked.
Article 31. Compulsory license
1. If the invention is not used or insufficiently used by the patentee or persons to whom the rights to it have been transferred within five years from the date of issue of the patent or limited patent, then any person willing and ready to use the invention, in case the patent owner refuses to conclude with this person of a 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 specified object.
If the patent owner does not prove that the use or insufficient use of the invention is due to valid reasons, then the court shall make a decision to grant the interested person a compulsory non-exclusive license, defining the limits of use of the invention, the amount, timing 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.
2. A patent holder who cannot use an invention without violating the rights of the owner of another patent or a limited patent, who has refused to conclude a license agreement on terms consistent with established practice, has the right to apply to the court for granting him a compulsory non-exclusive license to use the invention.
When granting the said license, the court must determine the limits of the use of the invention, the patent or limited patent for which belongs to another person, in the amount necessary for the use of the invention patented by the person requiring the provision of a compulsory license, as well as the amount, terms and procedure for payments. In this case, the amount of payments should be set not lower than the price of the license, determined in accordance with established practice.
3. In the interests of national security, as well as in extraordinary circumstances, the Cabinet of Ministers of Turkmenistan has the right to authorize the use of a patented invention without the consent of the patentee with the payment of monetary compensation to him, comparable to the market price of the license.
Article 32. Registration of an agreement on the assignment of a patent or a limited patent and a license agreement
1. An agreement on the assignment of a patent or a limited patent and a license agreement for the use of an invention are subject to registration with Turkmenpatent. The agreement comes into force from the date of registration in the State Register of Inventions and information about it is published in the Bulletin. Without registration, the contract is considered invalid.
2. The registered license agreement may be amended. Changes are also subject to registration with Turkmenpatent.
3. The rules for registering an agreement on the assignment of a patent or a limited patent and a license agreement, as well as on amending the license agreement, shall be determined by Turkmenpatent.
4. An agreement on the assignment of a patent or limited patent, a license agreement and changes under a license agreement are registered by Turkmenpatent at the request of any of the interested parties, subject to payment of the established fee.
5. An agreement on the assignment of a Eurasian patent for an invention valid in the territory of Turkmenistan is subject to registration with the Eurasian Patent Office. A license agreement for the use of an invention under a Eurasian patent for an invention, valid in the territory of Turkmenistan, is subject to registration with Turkmenpatent and enters into force from the date of its registration. Without proper registration, an agreement on the assignment of a Eurasian patent for an invention and a license agreement for the use of an invention under a Eurasian patent for an invention shall be deemed invalid.
CHAPTER VII. TERMINATION AND RESTORATION OF A PATENT OR LIMITED PATENT
Article 33. Contestation and invalidation of a patent or limited patent
1. A patent or a limited patent during the entire period of validity 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 invention with the conditions of patentability established by this Law;
2) the presence in the claims of features that were absent in the original materials of the application;
3) false indication in a patent or limited patent of the author of the invention or patent holder. The objection must be accompanied by a document confirming the payment of the established fee.
2. The validity of a patent or a limited patent recognized as invalid in accordance with the first part of this article shall terminate from the date of filing the application.
3. Objections to the grant of a patent or a limited patent on the grounds provided for in paragraphs 1 and 2 of the first part of this article are considered By the Appeal Commission within six months from the date of their receipt. The procedure for the creation and operation of the Appeals Commission is regulated by Article 37 of this Law.
Objections to the grant of a patent or a limited patent on the grounds provided for in paragraph 3 of part one of this article shall be considered by the court. In case of disagreement with the decision of the Appeals Commission on opposition to the grant of a patent or a limited patent, either party may challenge this decision it in court.
4. A patent or a restricted patent invalidated by a decision of the Appeals Commission or a court decision shall be revoked. In case of recognition of a patent or a limited patent partially invalid, a patent or a limited patent with a new invention formula is issued. Turkmenpatent publishes in the Bulletin information on patents or limited patents that have been invalidated in whole or in part.
5. Contestation of a Eurasian patent for an invention and its recognition as invalid on the territory of Turkmenistan, provided for in Article 13 of the Eurasian Patent Convention, shall be carried out in accordance with the provisions of parts one to four of this article.
Article 34. Early termination of a patent or limited patent
1. The validity of a patent or a limited patent shall be terminated early:
1) on the basis of an application filed by the patent holder with Turkmenpatent - from the date of receipt of the application. In the event that a patent or limited patent is issued for a group of inventions, the effect of the patent or limited patent is terminated only in relation to the inventions indicated in the application;
2) in case of non-payment of the fee for maintaining a patent or a limited patent in force, - from the date of expiry of the established period.
2. Turkmenpatent publishes in the Bulletin information about a patent or a limited patent, the validity of which has been terminated early.
Article 35. Restoration of validity of a patent or limited patent
1. The validity of a patent or limited patent, terminated due to non-payment of the maintenance fee, may be restored at the request of the patent holder. The petition is filed with Turkmenpatent within three years from the date of termination of the patent or limited patent. The application shall be accompanied by a document confirming the payment of the fee for the restoration of the validity of the patent or limited patent. A patent or limited patent cannot be reinstated after three years from the date of termination of the patent or limited patent.
2. Turkmenpatent enters into the State Register of Inventions and publishes in the Bulletin information on the restoration of the validity of a patent or a limited patent.
Article 36. Right of after-use
1. A person who, in the period between the date of termination of the patent or limited patent and the date of publication in the Bulletin of information on the restoration of the patent or limited patent, began to use the invention or made the necessary preparations for this during the specified period, retains the right to its further free use without expansion the amount of such use.
2. The right of post-use may be transferred to another person only in conjunction with the production in which the invention was used, or a solution identical to it, or the necessary preparations were made for this.
CHAPTER VIII. PROTECTION OF THE RIGHTS OF AUTHORS, APPLICANTS AND PATENT OWNERS
Article 37. 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 invention;
2) on the decision of the examination on the registration of an agreement on the assignment of a patent or limited patent, or on the registration of a license agreement for the use of a patented invention;
3) upon recognition of a patent or a limited patent as invalid in accordance with Article 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 submit to the Appeals Commission the objection provided for in part one of this article, within the time limits established by the legislation of Turkmenistan, subject to payment of the appropriate fee. The objections provided for in clauses 1, 2, 4 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 3 of part one of this article must be considered by the Appeal Commission within six months from the date of its receipt. The term for consideration of the opposition may be extended at the request of the person who filed the opposition, as well as the patent 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.
4. 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 38. 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) on the authorship of the invention;
2) on the establishment of the patent holder;
3) on the grant of a patent or limited patent;
4) on the issuance of a compulsory license;
5) on violation of the exclusive right to an invention and other property rights of the patent holder;
6) on the conclusion and execution of agreements on the assignment of a patent or limited patent and licensing agreements for the use of a patented invention;
7) on the amount of monetary compensation for the use of the invention during the period of its temporary protection;
8) on the right of prior use;
9) on the right of post-use;
10) on the amount, timing and procedure for payment of remuneration to the author of the invention by the employer in accordance with this Law;
11) on the amount, period and procedure for payment of compensations provided for by this Law;
12) other disputes related to the protection of the rights of patent holders.
Article 39. Liability for illegal use of an invention
1. Any person using a patented invention in violation of the provisions of this Law is considered a violator of the exclusive right of the patent holder and is liable in accordance with the legislation of Turkmenistan.
2. A person who illegally uses a patented invention, at the request of the patentee or a court decision, is obliged:
1) recognize the rights of the patent owner;
2) stop actions that violate the rights of the patent 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 patent holder. The court has the right to decide on the confiscation of counterfeit goods.
3. A claim for infringement of the exclusive right of the patent owner may be brought within three years from the date when the patent owner learned or should have learned about the violation of his right.
A claim for infringement of the exclusive right of the patentee is brought by the patentee.
A statement of claim on violation of the rights of the patent holder 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.
CHAPTER IX. THE INTERNATIONAL COOPERATION
Article 40. Patenting of inventions in foreign states and (or) international organizations
1. An application for an invention created in Turkmenistan may be filed with foreign states or an international organization after four months from the date of filing the corresponding application with Turkmenpatent, if during the specified period the applicant is not notified that the application contains information, constituting a state secret.
2. The filing of an international application is allowed without prior filing of the corresponding application with Turkmenpatent, if the international application for an invention created in Turkmenistan is filed with Turkmenpatent as the receiving office. The filing of a Eurasian application is allowed without prior submission of the corresponding application to Turkmenpatent, if the Eurasian application for an invention created in Turkmenistan is filed through Turkmenpatent.
3. The costs associated with the patenting of an invention in foreign states and international organizations shall be borne by the applicant or, by agreement with him, another person.
Article 41. Consideration of an international application for an invention.
1. An international application for an invention, in respect of which an international filing date is set, has the force of a correctly executed national application from the international filing date, which is considered as the date of actual filing in Turkmenistan, if the application for the grant of a title of protection is filed with Turkmenpatent before the expiration of thirty one month from the priority date of the international application. Turkmenpatent begins to consider an international application upon the expiration of thirty-one months from the date of the claimed priority or before the expiration of the specified period at the request of the applicant.
2. The missed time limit for the transition of the application from the international phase to the national phase can be restored at the request of the applicant within three months from the date of expiry of the established time period, subject to the payment of the appropriate fee.
3. Consideration of an international application by Turkmenpatent is carried out in accordance with the norms of this Law. The period established by part two of Article 19 of this Law for amending the documents of an application for an invention shall be calculated from the date of the commencement of consideration of an international application in accordance with paragraph two of part one of this Article.
Article 42. Grant of a patent or limited patent based on a Eurasian application
1. The grant of a patent or a limited patent may be carried out on the basis of a transformed Eurasian application in accordance with the Eurasian Patent Convention. Such an application shall be deemed to have been properly executed in accordance with this Law, a national application for an invention filed with Turkmenpatent with the same filing date and priority date as the Eurasian application. The application is considered starting from the date on which Turkmenpatent received a certified copy of the Eurasian application, provided that the applicant pays to Turkmenpatent the established fee for filing the application.
2. The grant of a patent or a limited patent may be carried out on the basis of a Eurasian application if the Eurasian patent issued on it expired ahead of schedule due to non-payment of the fee for its maintenance in force on the territory of Turkmenistan.
The owner of such a Eurasian patent shall have the right to apply to Turkmenpatent for a patent with a validity period of twenty years or a limited patent with a validity period of 10 years within five years from the filing date of the Eurasian application or within three years from the date of termination of the Eurasian patent, depending on whether what date is later.
An application for the grant of such a patent must be accompanied by an application, a copy of the Eurasian patent, a document confirming the payment of the corresponding fee, as well as a power of attorney, if the application for an invention is filed by a representative of the owner. An application for the grant of a patent with the documents attached thereto shall be considered in accordance with the provisions of the second part of Article 23 of this Law.
Article 43. 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.
Article 44. Customs control
Customs control in relation to the protection of the rights of patent holders or holders of an exclusive license to use patents protected in Turkmenistan or limited patents is carried out by the customs authorities in accordance with the customs legislation of Turkmenistan.
CHAPTER X. FINAL PROVISIONS
Article 45. 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.
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).
