Our tariffs include use of flexible system of discounts from the honorarium of the patent attorney. In particular, we grant special discounts at filing of three and more applications. In some cases, the discount can constitute up to 25%-35%-50% from total honorarium of patent attorney, subjected to the volume of work requested. This approach is applied by us also at execution of other IP procedures (change of a name or the address of the holder, assignment rights, grant of the license, conducting of search and etc.). We are also trying to understand and find solutions with the client who has the limited financial possibilities. For more detailed information on our tariffs pls. query on email: firstname.lastname@example.org or email@example.com
We are always at your disposal. Below, you will be able to find detailed information and size of official fees of Turkmenpatent (PTO) effective from 05th of July 2018 (Inventions and Industrial designs) and 13th of December 2019 (Trademarks).
The comments to new tariffs of Turkmenistan in sphere of intellectual property protection
At present the progressive reforms are taking place in sphere of science and education in Turkmenistan. These reforms will be able to raise Turkmen science and industry at the new level; it will allow accelerate the country motion towards the way of innovation development.
As an outcome the role of Turkmenpatent is become bigger. Important state functions in relation to protection of inventions, industrial designs, trademarks, service marks and the names of places of an origin are delegated to Turkmenpatent. All above mentioned state functions are playing vital part in innovational development of the country. Thus established by the nature of Patent service, that being not only the incubator but guide as well for innovative technical solutions in different spheres of science and industry.
The legislative base is a cornerstone that defines the effectiveness of Turkmenpatent performing its functions as all other elements of IP protection is closely tight with it. At the same time any Law works at full capacity only when it’s armored with relevant normative by-laws. Namely, the completion of different procedures in relation to IP is not possible without payment of relevant official fees, based on which those fees are presented as limitation factor. Just to remind, that in comparison with taxes (which is gratuitous payment) the official fees are obligatory payment and done in exchange where state bodies provides some services to the payer.
Strictly regulated, detailed list of official fees makes it easy to process established by Law procedures and that is why it is accounted as one of the important elements in a way to perfection of legislative base. Mentioned steps will allow Turkmenistan to enter into new level which responses to all world standards, safely protect interests of the patent owners, accelerate the expertise of IP objects, improve interaction between the international structures involved in sphere of IP business and attract to invention creativity the most talented part of Turkmen society.
As it known, in November 2017 and in June 2019 new Laws of Turkmenistan "About the Legal Protection of Inventions", "About the Legal Protection of Industrial Designs", "About Trademarks", "about Appellations of Origin of Goods" came into force. This allowed to erect a strong legislative base in relation to invention creativity, creating powerful stimulus to work for domestic scientists and inventors, encourage entrepreneur business activity and increasing the inflow of capital and modern technologies into the country.
Furthermore, after acceptance of above mentioned Laws the dissonance appeared between some independent points of Laws and existing at that moment tariffs on official fees for conducting IP procedures. It gave the base for introduction to the Laws updated independent provisions such as: Independent provision about official fees on inventions; Independent provision about official fees on industrial designs; Independent provision about official fees on trademarks; Independent provision about official fees on the name of origin of the goods with application of new tariffs on official fees. Those updated independent provisions shall remove the appeared dissonance and provide further development legislative base in sphere of IP in Turkmenistan. According to the aforementioned provisions, payment of official fees must be made in national currency by legal entities and citizens of Turkmenistan, as well as citizens of foreign states and stateless persons permanently residing in Turkmenistan, and other individuals and legal entities must pay duties in US dollars, there is an option where official fees can be paid in foreign currency if such option is stipulated by international agreements in which Turkmenistan has taken participation.
Furthermore, if international agreements in which Turkmenistan has taken participation do not consider other terms, official fees can be paid as by applicant as by other third party. In case if official fees were overpaid, or Turkmenpatent has not performed its legal duties, paid official fees may be reimbursed partly or in full back to applicant, or accounted as prepay for future payment of official fees. Petition about reimbursement of overpaid fees or accountability as prepay for future payments shall be filled by applicant or by his representative to Turkmenpatent not later than 3 years period starting from the date of payment. However, in case of termination of activities related to protection of IP by the guilt of applicant and in case when application is recognized as recalled, official fees paid in relation to that matter won’t be reimbursed. Decision about granting or rejection of reimbursement is taken by Turkmenpatent in period of 10 working days starting from the date of petition receipt. Applicant and Ministry of Finance of Turkmenistan get acknowledged about petition receipt subsequently after its receipt by Turkmenpatent, where the Ministry of Finance and Economy after decision of reimbursement was done and corresponded by Tuirkmenpatent, in 10 working days period shall pay back overpaid official fees to applicant, all expenditure in relation to bank transfer and etc. is bared by applicant. This only is the common feature between those two independent points. In all the rest they have got ground differences, it will be discussed below.
Inventions and Industrial designs
We would like to inform you that in Turkmenistan based on the wish of applicant the patent or the limited patent could be claimed. The term for the patent compromises 20 years in relation to inventions and 15 years for industrial designs. In order to receive such patents, the expertise must be held, it is done using patent search through world sources of information and identification of protectability of technical solution by going through comparison analysis with identified prototype. The term period for limited patents on inventions compromises only 10 years (the issuance of limited patent for industrial design has been abandoned by the New Law About legal protection of industrial designs (2017)) and as an outcome of this, area of patent search is narrowed as well and it gets based only on sources available in Turkmenistan.
It shall be noted, that the Law of Turkmenistan ‘About legal protection of inventions’ does not consider the legal protection of such IP object as ‘Useful model’. Moreover, such IP object does not mentioned in any legislative acts of Turkmenistan. However, it does not mean that the applicants who would like to receive the patent of Turkmenistan on technical solution containing in useful model are devoiced of such opportunity. In order to receive a legal protection on useful model the applicant shall file an application for limited patent on invention. We assume that in future this gap will be filled in.
At the same time, the new Provisions and Tariffs contain a significant number of new legal norms and procedures that were absent in the previous Patent Law. These include fees for:
Following fees were missed out from ex-Patent law:
A special feature of the new Provision is the exclusion of the possibility of extending the validity period of patents related to such objects as chemicals, drugs, pesticides or agrochemicals for additional five years after the expiration of their 20-year term.
A certain relaxation is also the provision of an opportunity to pay annual fees not only during the period of the patent, but also during the first month of the coming year of its validity.
Trademarks, service marks and places of origin of the goods
In regards to above mentioned IP objects the size of fees on basic positions (application, registration, expertise and prolongation fees) has been increased. However, in comparison with inventions and industrial designs, the Provisions about trademarks, service marks and places of origin of the goods considers much stricter approach to the payment deadlines for IP procedures. It is required, that for initiation of majority of IP procedures the notification about payment of official fees shall be attached to relevant application or petition prior to document filing. It means that all filed applications or petitions have legal power only if relevant fees were paid or vice-versa.
Simultaneously, in comparison with ex-tariffs that considered a single fee for filing and expertise of application, in new tariffs this single fee was split into 2 fees, one for application filing and formal expertise ($30), the second is for initiation of expertise itself ($220). By this the opportunity appear for applicant to receive partly fee’s return or use it for payment of future IP procedures, such situation is possible if applicant prior to initiation of expertise itself has decided do not to register his trademark or has discovered based on search procedure that trademark application for identical trademark was already filed or such trademark or designation similar with filed trademark to the level of mixture has already been registered. Similar fee separation applied in tariffs related to applications on registration of the name of origin of the goods (application filing and formal expertise constitute -$30; initiation of expertise itself -$220). In summary, fees for this new IP object for the basic IP procedures are the same as for trademarks.
Similar requirements apply to the payment of fees for extending the deadline for responding to an expertise request or filing an objection to a provisional examination decision for an additional 6 months ($ 70 for each month of extension). A petition for an extension must be submitted before the expiration of the deadline set for the response (three months), and the payment of the fee must also be made before the expiration of the mentioned 3-months deadline.
If by any reason the applicant will not be able to file in the petition about prolongation of deadline term for provision of respond to expertise’s inquiry or opposition filing against the decision of expertise, in established deadlines, the legislation provides an opportunity of reinstatement of missed period, which subjected to petition filing with such request and which shall be filed not later than 6 months period starting from the date of expiry of established 3 months deadline and fee payment in amount of $100.
It is also necessary to note the change in the principle of payment of fees for the renewal of trademarks for the next 10 years, as well as the size of these fees themselves. With the new fee provision for trademark procedures, a trademark renewal fee was levied based on the number of classes required for renewal. Accordingly, the fee for renewing the validity of the mark in one class was $ 500, and for each subsequent class of this registration $ 250. If the rightholder expresses a desire to renew the required registration only in selected classes, then this option is accepted by Turkmenpatent, and the rightholder will have to pay the fee for renewing the registration only in respect of the requested classes, of course the registration action in relation to the classes for which the renewal fee was not paid will be canceled.
Following procedures are covered by new tariffs:
It is obvious, that life does not stay at one place, as far as legislation of Turkmenistan and other countries develops further in sphere of industrial property, new realias will come up that require adequate reaction towards harmonization between relevant Laws and gearing of legislative base by new, up to date Laws, such as ‘About unfair competition’ (the project of this Law was developed, but not published; the publication of Law will take place after its examination by Mejlis (Parliament) and signature verification by President of Turkmenistan); About firm-names; About protection of domain names; About commercial designations (the projects for last three Laws have not yet been prepared). At the same time with development and introduction into life above mentioned Laws, the creation of corresponding normative base is needed; this base shall provide rules and comments about Laws application, right understanding and usage. It also means, that discussed above Independent point about fees and tariffs payments will be needed an introduction of changes reflecting up to date situation in IP world business community.