Patents

Documents required for payment of annual fees, term prolongation for annual fees payment and patent reinstatement for inventions

A power of attorney is not required to maintain patents for an invention by paying annual fees. Payment of annual fees is made on an annual basis and can be made based on the instructions from the owner of a patent or his proxy (authorized person). A document confirming payment of the official fee is also required.

Payment of the annual fee must be made before the beginning of the new year of the patent. The grace period during which the annual fee can be paid is 6 months from the date of expiry of the payment period for maintaining a patent in force for the next year of validity, subject to payment of an additional fee.

The restoration of the validity period of a patent can be made within three years from the date of its termination due to non-payment of annual fees, subject to payment of the established fee.

Note: According to the Law of Turkmenistan about inventions and industrial designs the term of patent validity start counting from the date of its application filing.

Documents required for registration of assignment deed for use a patent

Powers of Attorney from Assignor and Assignee (legalization or notary public verification is not required)

The document which confirms the payment of the official fee  

Notary public certified Assignment deed, or

Notary public certified statement about assignment of a right on patent, or

Notary public verified Certificate of Assignment, or

Notary public certified document about Assignment of a right (in any free format) which contains all necessary information in regards to participating parties (assignor and assignee)

Verified by seals and signatures of participants the list of transferred patents, if more than one patent gets transferred (if such information is provided in assignment deed, the list of transferred patents is not required)

The legalization and postulation of above mentioned document is not required

The total time from filing the petition till registration of assignment deed takes no longer than 1 month.  

Documents required for registration of license agreement for provision of legal rights to use a patent

Following documents are required for registration of licensed agreement:

Powers of Attorney from the licensor and licensee (legalization, postulation or notary public verification is not required).

The document which confirms the payment of official fees 

Notary public certified copy of license agreement (minimum 1 original license agreement is required, or its notarized copy) (legalization or postulation is not required)

Copy of patent (patents)

Verified by seals and signatures of licensor and licensee the list of patents, transferred by assignment deed from one party to another 

The total time from filing the petition till registration of license agreement about transfer of patent (patents) to licensee in State Register of Turkmenistan takes no longer than 1 month. 

Note: No any special requirements are required for the content of a licensed agreement to be registered in Turkmenistan. The content of the licensed agreement is defined solely by parties themselves. Any standard form of licensed agreement can be used. It is allowed to spread behind the limitations of the standard licensed agreement and introduce to it all arrangements which will be necessary for business relations between parties.  

Required documentation for Patent realization

According to legislation and legal acts of Turkmenistan, following documents are required for filing national and regional application for invention: 

Description of invention, Claims, Abstract, Drawings, Priority data and number of first application (for conventional applications). If the priority is a multiple, then necessary to indicate the dates and conformable to them numbers of the first applications. The data concerning the author (s) and applicant (s); namely a full name and the address. All those documents must be presented in 2 copies.

Further documents have to be filed to Turkmenpatent within 2 months after application’s filing date:

1) The document which verifies the payment of official fees to Turkmenpatent for filing in the patent application

2) Power of Attorney (produced in simple written form, does not need legalization or verification by notary public)

3) At the time of application filing or in duration of not more than three months after application filing date the copy of the first application (attested by notary public or Patent Office) must be presented to Turkmenpatent (if conventional priority is claimed). However, it has to be taken into consideration that in order to maintain conventional priority the time period between the date of the first application and the date of parallel application shall not exceed 12 months.

If the applicant is the employer to whom the author has assigned the rights for receiving the patent under the contract or the applicant is simultaneously the inventor it needs to be indicated in the patent application.

For the international applications that have entered a national or regional phase in addition to defined above documents it is necessary to present following additions (except the copy of first patent application for confirming the conventional priority):

— Simple copy of title-page of WIPO publication;

— Simple copy of International Search Report (the form PCT/ISA/210);

— Simple copy of International Preliminary Examination Report (the form PCT/IPEA/409), if any;

In accordance with the Law of Turkmenistan About the legal protection of Inventions (2017), an applicant can obtain a limited patent with a validity period of 10 years or a patent with a validity period of 20 years. Upon receipt of a limited patent with a validity period of 10 years, an examination of the inventive step and novelty is carried out only on the basis of the data available in Turkmenistan. If the applicant wishes to obtain a patent for an invention with a validity period of 20 years, then in addition to the Turkmenpatent it will be necessary to provide a copy of the decision of patent granting or a copy of the issued patent under a parallel patent application by one of the countries that have been given the right to conduct an international preliminary examination (IPE), or a positive decision of the IPE.     

      The term of patent issuing to the applicant in Turkmenistan constitutes from 12 months and over (the limited patent) till 1-5 years (the patent with validity of 20 years).

Remark: At the client’s request, the patent search procedure is available.

The patent search procedure can be done based on the applicant’s name, patent owner’s name or using the key words of invention’s title. The search result is presented as a report in Russian and/or English languages (at the client’s request). The name of the applicant or patent owner, application or patent number, priority dates, title of the invention, application’s filing dates, patent’s registration numbers and dates, author’s names also will be provided in a report. The search results will reflect only those inventions that will be filed in based on national procedure, inclusive that one’s which related to international non-patent denomination. The information about international non-patent denomination, which was not patented as invention in Turkmenistan but has been registered in Registration and Quality control center of Ministry of Health and Medical Science will not be included in a report.

Required documents for paying annual fees, extending the deadlines for paying annual fees and restoring the validity of patents for an industrial design

A power of attorney is not required to maintain design patents in force by paying annual fees. Payment of annual fees is made every five years (the fee for the first five years of maintaining the validity of the patent is paid simultaneously with the fee for granting the patent) and can be made on the basis of instructions from the patent owner or his authorized representative. A document confirming payment of the official fee is also required.

Annual fees are paid three times for the entire period of the patent, the first time in 1-5 years when the patent is issued, for 6-10 years within 5 years of the patent and for 11-15 years within 10 years of the patent. The grace period during which the annual fees can be paid is 6 months from the date of expiry of the payment period for maintaining the patent in force for the above years of validity, subject to the payment of an additional fee.

The restoration of the validity period of a patent can be made within three years from the date of its termination due to non-payment of annual fees, subject to payment of the established fee.

Note: According to the law of Turkmenistan on the legal protection of industrial designs, the term of a patent is calculated from the date of filing an application for its patent.

Structure of documentation for claiming patent for industrial design

The documents required for filing in the Design Applications: 

1. Drawings.

Drawings (images) must be provided in one copy. The Drawings must be executed in a way suitable for good quality reproduction. Hatching and dashed lines are permitted to be used in drawings.

2. Notary public certified copy of the first application is required in order to confirm the conventional priority. The conventional priority document can also be certified by a patent office. In this case the notary public verification is not needed. Design patent application with conventional priority shall be filed in to Turkmenpatent not later than in period of 6 months from the filing date of the first design application. Pls. note that the conventional document shall be presented to Turkmenpatent within 3 months from the filing date of Design application.
3. Assignment Deed (if any) shall be notary public certified (legalization is not required).
4. Following additional documents are required for filing design Patent application:
5. a) Complete set of photos in 4 copies, if they are necessary for clearer understanding of the essence of a design application
6. b) The ergonomic circuit, assembly card in 4 copies if they are necessary for better presentation of the essence of design application.
7. c) The Document which confirms the payment of application’s official filing fee. Such document shall be presented to Turkmenpatent together with application at the time of application’s filing.
8. d) Power of attorney in simple written form in 1 copy (legalization or notary public verification is not required).
9. e) Optional: In order to speed up the application’s examination process and reduce the official fee for holding the expertise it is recommended to provide a copy of positive decision about patent issuing or a copy of parallel patent given for requested design by one of Patent offices of following countries: Australia, Austria, China, Spain, EPO, Japan, South Korea, Russia, Sweden, Canada, Finland and USA.   

In accordance with the Law of Turkmenistan About the Legal Protection of Industrial Designs (2017), an applicant can only obtain a patent with a validity period of 15 years. A limited patent for an industrial design with validity period for 10 years has been abolished by this Law.

Term of the issuing of Turkmenistan patent for industrial design to the applicant can vary from 8-12 months (the limited patent) till 1-3 years (the patent with validity of 15 years). The acceleration of process of patent issuing is dependable on priority claiming.

Terms and procedures for claiming Eurasian patent

1   Filing in application to national Patent office (PTO). National PTO provides to applicant a reference about application receiving (inclusive with dates of its filing). This procedure plays a vital role in order to request conventional priority regarding to patent application.

2   Filing in Eurasian application to Eurasian Patent Organization (EPO) by Eurasian Patent Attorney:

Following documents/ papers are requested in order to file in Eurasian application:

written request to file in application, description of invention, claims, abstract, graphical and other materials required for clarification of nature of invention (presented in three copies), written request for establishing the priority, verified copy of first application (verified by PTO it was filed in or by notary public. It is important to note, that verified copy of first application shall be presented in a matter of three months after Eurasian application was filed in. Also, it must be remembered that the receiving date of requested materials must be in limit of twelve months from the filing date of first application, otherwise an applicant may lose his priority), the document confirming the payment of official fee (it can be presented in a period of three months from the application receiving date by EPO) and Power of Attorney for authority delegation to Eurasian Patent Attorney (it can be filed in to EPO in two months’ time from the date of application filing).

3   The time-frame for handling formal expertise of Eurasian application is up to 2 months after its receipt by EPO. Being on this stage the applicant is able to introduce elaborations, additions and corrections to the material of Eurasian application as based on applicant’s personal initiative or according to request made by Eurasian Patent Organization. In this case the time frame for handling the formal expertize will get prolonged. Deadlines, provided by EPO for completion of each procedure cannot be less than 2 months or more than 4 months. If a negative decision was made by formal expertise to grant Eurasian patent to applicant, the applicant in three months’ time from the EPO decision posting date has a right to file in for the appeal. The appeal is processed and looked through by appeal expert’s board; the appeal decision is granted in 3 months’ period from the date of its receipt and verified by the President of EPO.

4   The Patent search is based on the claim of invention with consideration of invention’s description and drawings (if such is available). If the breach of unity of invention will be identified during the patent search procedure, the applicant will be acknowledged and offered to identify the invention based on which the search shall be conducted (the time limit for applicant to make up his mind and identify the invention is three months after the acknowledgement/ notification dispatch date). The Patent Search Report will be directed to applicant.

5   Publication of Eurasian application and report about patent search are performed after completion of 18 months from the date of application’s filling, if the priority was claimed from the date of priority or patent attorney has filed in petition prior indicated deadline dates. The publication includes: title page which contains bibliographical data, abstract, description of invention, claims and patent search report.

6   The petition about initiation of Eurasian application expertise (inclusive with official fee payment confirmation document) has to be filed in by applicant to EPO (must be filed in a matter of 6 months from the publication date, but if patent search report is published separately, then the point of 6 months’ period starts from patent search report publication date. However, if petition was not filed in defined time frame, the applicant still has two months to file it, but it subjected to provision of explanatory (reasonable excuse ‘Why did the applicant misses filing deadline?’) documents to EPO and payment of additional official fee. The applicant will be notified about receipt of petition by EPO in a matter of one month after its delivery to EPO. The date of notification postage by EPO, will be accounted as starting point for conducting the Eurasian application’s expertise.

Regarding to international applications, which get transformed to regional level, the applicant’s petition about initiation of Eurasian application expertise has to be filed in by applicant to EPO (must be filed in a matter of 6 months from the search report publication date, as international search report and its publication replaces the Eurasian search report and its publication).      

In the most of the cases the publication of international search report or declaration in correspondence with article 17 (2) (a) PCT performed subsequently with publication of international application, which gets published after 18 months from the international application’s conventional priority date (if such priority was claimed in application’s material) or from the international application’s filing date. Therefore, the petition about conducting the expertise based on international applications, which gets transformed to regional level in EPO (until completion of 21 months from the priority date- Chapter I, PCT), has to be filed in until completion of 24 months from the date of conventional priority or from the international application’s filing date. Based on the Rule 46 (1) of the Patent instruction this petition filing time restriction can be extended further for 2 months period, but it subjected to provision of explanatory (reasonable excuse ‘Why did the applicant misses filing deadline?’) documents to EPO and payment of additional official fee.

In case, if international application gets transformed to regional level in EPO in accordance with the Chapter II, PCT, after 31 months from the priority date or international application’s filing date, when the 6 months’ period given to file in the petition about conducting expertise procedure is actually passed over, the above mentioned petition must be submitted (subjected to additional official fees) when transformation of international application to regional level in EPO has taken a place (in accordance with rule 71 (2) of Patent instruction).

In summary, the petition about conducting expertise has to be filed in timeframe of six months from the date of publication of international search report (declaration in accordance with Article 17 (2) (a) PCT) by International Bureau or until the deadline defined in accordance with Articles 22 (3) and 39 (1)b PCT, depends on deadline which gets expired latest.

7     If the expertise of Eurasian application will detect the presence of identical inventions, with the same date of priority or filing date, then for applicants will be issued a single Eurasian patent (subjected to mutual agreement of applicants). In case, if applicants won’t come into agreement, the Eurasian patent won’t be issued.

8     Opposition (filed in by patent attorney) against of refusal decision of EPO to grant Eurasian patent must be filed in duration of three months from the date of refusal notification dispatch by EPO. The opposition is reviewed by the EPO board and it takes up to 4 months to produce a decision from the date of receipt of opposition notification. Patent attorney and applicant have a right to participate in opposition review.

9     Eurasian application may be recalled back by patent attorney based on the applicant’s petition which has to be delivered to EAHB prior to the Eurasian application’s publication date but not later than Eurasian patent registration date.   

Additional materials, based on expert’s request, must be presented by applicant to expertise in a period of 4 months from the date when the expert’s request was dispatched. This period can be prolonged further if applicant request so, but it is subjected to additional fee payment. If copies of materials which used to oppose Eurasian application requested by applicant in duration of 3 months period from the date of decision dispatch or application’s request dispatch, so the deadline for applicant’s response start counting from the dispatch date of copies of opposing materials

10 The publication of Eurasian patent will be made in duration of 6 months after the registration of Eurasian patent in the Register of Eurasian patents.

11 The patent issuance is initiated after payment of official fees in relation to this procedure. The official fee has to be paid in duration of 4 months from the date of EPO notification’s dispatch (about EPO readiness to issue a patent) to patent attorney. If official fees will not be paid in above mentioned timeframe, the applicant still can pay them in duration of next 2 months, but it will be subjected to additional delay fees payment. In case if official fees together with additional fees (fees for late submission if any) will not be paid, as a result the Eurasian patent issuance and publication will not be done by EPO. The application for Eurasian patent will be accounted invalid. The total time period from filing Eurasian application till getting Eurasian patent in average tafes from 1,5 till 3 years (based on practical experience)

12 The period of Eurasian patent being in power constitutes 20 years which starts from the date of Eurasian application filing, while the invention’s exclusive right starts from the Eurasian patent publication date. Eurasian patent experiencing legal power on the territory of all countries (members of Eurasian patent convention), subjected to annual payment of official fees to keep patent into power in territorial jurisdiction of countries-members. Mentioned fees are paid on annual basis after Eurasian patent being granted, the deadline payment date is fall annually on the date of filing of Eurasian application. For continuance of Eurasian patent’s power on the territory of each of the countries-members, the owner of the Eurasian patent shall point to the name of the country- member, where he would like to continue the Eurasian patent being in power. After Eurasian patent’s owner has defined in which countries-members he would like to extend the term of Eurasian patent, the legal patent rights of the owner will be regulated based on national legislation of those countries-members, by other word the unilateral Eurasian patent is get broken to the number of single national patents (based on the number of countries-members of Eurasian patent convention). The period for limitation of actions in cases where violation of Eurasian patent happens, constitutes 3 years and the starting point get counted from the date where the party get acknowledged or assumed being acknowledged about violation of its rights.