Utility model in Kazakhstan is funny but could be a useful thing (comparison with utility models in Russia)

(comparison with utility models in Russia)[1]

As well as in Russia, along with inventions and industrial designs, utility models in Kazakhstan (hereinafter also “UM”) are patentable objects.  Unlike inventions, procedure for patenting of utility model is simpler, faster and cheaper, however the validity term of UM patent is shorter.

As in the case of other IP objects, the authors of a UM are physical persons whose intellectual efforts created the UM, and can be both individuals and legal entities as applicants and patent owners.  In both countries, prior to issue of expert opinion regarding registrability of the UM a UM application may be transformed into an invention application? and vice versa.

In Kazakhstan (also referred to as “RK”) concept of UM is almost identical to the concept of invention.  In accordance with the Kazakhstani Patent Law, a utility model includes technical solutions in any field relating to:

• a product (device, substance, microorganism strain, culture of plant or animal cells);
• a method (a process of peRussiaorming actions on a material object with the help of material means); and
• use of a known product or method for a new purpose or a new product for a specific purpose, except for diagnostic, therapeutic and surgical methods of treatment of humans or animals.

Unlike in Kazakhstan, in Russia the concept of UM is much narrower and, according to the Civil Code of the RUSSIA, it is a technical solution relating only to a device. A UM patent in the Russian Federation is intended to protect any upgrade, enhancement of a device, machine designs, their mechanisms, parts, aggregates or implements. A device is characterized by the following features: structural elements, their interrelations and interposition, forms and details of elements or device and materials used for a device.

In Kazakhstan and in Russia, novelty and industrial applicability are taken into account when considering patentability of a UM. The presence an inventive level in a technical solution for a utility model is not required. The scope of legal protection of a utility model is determined by its claims, which are provided in the application materials.

In Kazakhstan UM application may cover one or several objects of protection, and with observance of the requirement of unity of the UM. That means that one object can be intended for obtaining, realization, use of another object or several objects of the same kind, however all objects should have the same technical result. For example, a substance of a device and a process for obtaining it, or a process and device for carrying it out, or a process and a substance for use in a process, options. In Russia an application for UM relates only to one object for one technical purpose and is also required to observe the unity of UM.

Requirements to the UM application materials in both Kazakhstan and Russia are almost identical. The terms of examination of the application in Kazakhstan and Russia are also approximately the same and it takes to examine the application materials about 5 to 6 months in Kazakhstan and 6 to 9 months or a bit more in Russia.

Procedure of patenting a UM in Kazakhstan and in Russia consists of preliminary information search and preparation of application materials by applicant or patent attorney.  Further in Kazakhstan there is a one-stage examination of the application, while in Russia examination includes formal and then substantive examination steps.  Without going into details, the steps can be specified as follows:

• conducting a preliminary information search to examine the prior art and determine novelty, identifying analogs, drafting the claims and indicating key features of the UM;
• drafting the description, claims, abstract, filling in the application form, paying the application fee and forwarding the application materials for registration, and receiving a document indicating the priority date and application number;
• at the stage of formal examination of availability of necessary documents and compliance with the requirements to their execution, including requirements to the unity of the UM, correctness of classification according to the International Patent Classification, the correctness of payment for filing the application are checked;
• substantive examination in the Russian Federation includes patent search, verification of patentability conditions, UM unity requirements, verification of sufficiency of disclosure of essence in the application documents, verification of UM claims.

During the examination of the application in Kazakhstan the experts of Kazpatent inspect availability of documents and compliance with the requirements thereto, establishment of the priority date, possibility of recognizing of the claimed utility model as the object protectable as utility models, and unity of the UM. Compliance of the UM with conditions of patentability is not checked, and patent is granted at the risk and responsibility of the applicant.

A UM patent issued in both Kazakhstan and Russia certifies its priority, the right of authorship and the exclusive right of the patent owner (the right to produce, use, sell, distribute, store, and the right to prohibit others from using without the patent owner’s permission, and use the patent).  A patent is valid only on the territory of the country of patenting, i.e., Russian patents are not valid in Kazakhstan and vice versa.

The rights of the patent owner in these countries have a number of limitations, for example, if the actions of the third parties are aimed at:

• use of a product or method on vehicles temporarily or accidentally located in the territory of the country,
• research work and experiments on the product or method,
• use under extraordinary circumstances, with notification of the patent owner and payment of appropriate compensation,
• personal use without profit,
• one-time production of medicines in pharmacies on prescriptions of doctors,
• if a product or method was previously introduced into business in the territory of the country by a patent owner or the third party with the authorization of a patent owner.

There are differences in terms of validity of title documents in Kazakhstan and Russia: the term of validity of UM patent in Kazakhstan is five years from the date of filing of the application with the possibility to extend this term for another three years, UM patent in Russia is valid for 10 years without possibility to extend this term.

In Kazakhstan a utility model is recognized as used by competitors if their product has and their method applies each feature of an independent claim or an equivalent feature known in the prior state of the art.

In Russia a utility model will be recognized as used in a competitor’s device if it contains each feature of an independent claim of the utility model.

The objects of a Kazakhstan utility model are the same as for an invention: products, methods, and their use for the new purpose.  In Russia the objects of utility model include only devices, their modification and improvement.

In Kazakhstan, several utility models can be put in one application providing that they form a single inventive concept, while in Russia only one object is allowed.

Contrary to Russia, in Kazakhstan only a formal examination of the application is conducted, there is no verification of compliance of UM with the conditions of patentability, and patent is granted at the risk and responsibility of the applicant.

It is a very important and essential difference: in Kazakhstan it is possible to patent works already known in other countries, while the procedure of patent revocation is costly and lengthy. During the whole period of court proceedings, the patent owner retains the “right to prohibit” the use of UM protected by the patent. Of course, revocation of patents is also possible in Russia, but patents are issued after a substantive examination and the number of unfair registrations is significantly limited.

Summarizing the above, we would like to note that if the patent protection is in fact needed for a period of not more than 8 years and if it necessary to obtain it in the shortest possible term, the patenting of a utility model is a good alternative to same of an invention.

[1] Prepared with reference to the article of Zhanar Sadetova and Olga Pastukhova, both of Bolotov & Partners, Jan. 2022.