Abstract. The article briefly introduces the objects of intellectual property law, in particular, inventions, utility models, industrial designs, and sources of law in Kazakhstan in the field of industrial property. After the corresponding examination at the National Institute of Intellectual Property of the Ministry of Justice of the Republic of Kazakhstan, a patent is issued for these industrial property objects, therefore these objects are referred to as patent law. The exclusive rights to an invention, utility model and industrial design acquired in this way are under legal protection, the implementation of which on the basis of existing regulatory and legal acts in Kazakhstan shows the need for their improvement and detailed interpretation, respectively, for each of the objects of patent law.
The intellectual potential of society is a kind of unclaimed human capital, which exists, but requires the creation of conditions favorable for development and perfection. The level and completeness of such potential directly depend on and affect the economic and social components of society, and the degree of its legal protection determines the need and involvement of society in creative activity. The guarantor of the legal protection of intellectual creativity and its results is the legal system, each element of which requires constant monitoring, a productive solution and immediate implementation, subject to consideration, research and taking into account their mutual conditionality.
The institute of civil rights in the field of intellectual property considered in the article is patent law, the possession of objects of which is recognized worldwide as an irrefutable confirmation of high production potential, an indicator of innovative activity, and the profitability of the patent owner. The significance of an invention patent consists in a stable and long-term work for prestige, the image of any person possessing it. Large corporations and companies around the world consider it a rule to boast in front of competitors and the whole world with their patent portfolio, and the larger it is, the higher the status of the owner. This is understandable, because behind each invention patent is the many years of work of a large group of high-class creators of technical solutions, which, in view of their relationship to a specific highly specialized field of knowledge, require inventors to be as fully informed as possible of such technical solutions in the world and to constantly search for new ways resolving known and emerging technical issues.
The main regulators of the emerging relations regarding patent law in the Republic of Kazakhstan are the Civil and Criminal Codes, the general provisions of the Civil Code are specified by the specialized Patent Law [1] of July 16, 1999 No. 427, as well as the Rules for Examination of Applications for Intellectual Property objects [2] (further, the Examination Rules) and the Rules for the registration of industrial property objects in the State Register of Inventions, the State Register of Utility Models, and the State Register ofIndustrial Designs and issuing titles of protection and duplicate thereof, invalidation and early termination of patents [3] (further,Registration Rules).
Patent law requires the registration of an intellectual property object, implemented in the form of an invention, utility model or industrial design, in the corresponding State Register. In Kazakhstan, the registration of these intellectual propertyobjects is carried out by the National Institute of Intellectual Property of the Ministry of Justice of the Republic of Kazakhstan, which is an objective evidence of the occurrence, validity and feasibility of the patent right for an intellectual propertyobject, which can be presented in the form of a product, method for production or application thereof. It is customary to characterize each of the said objects of patent law with a set of certain technical features, which, being reflected in the invention or utility model claims or on the industrial designimages, determine the scope of protection of the intellectual propertyobject provided by law and give rise to the exclusive rights of its owner.
The acquisition of exclusive rights to an invention, utility model and industrial design involves the filing of a correctly prepared patent application, which in the case of an invention and utility model should include a description, a formula, an abstract and, if necessary, figures of drawings of the corresponding intellectual propertyobject, and in the case of an industrial design - images that allow you to fully and unambiguously establish the image of an industrial design, and a description of the images presented.
The following is an examination of intellectual propertyobjects with a view to their compliance with the criteria for granting protection in the form of a patent, carried out in accordance with the requirements of the Patent Law and the Examination Rules for each of the claimed intellectual property object.
Inventions are mandatory examined for industrial applicability or the possibility of using in the claimed field of technology, the absolute (world) novelty and inventive step or the non-obviousness of creating an invention from information constituting the prior art of the invention and excluding the simple addition of known facts without application of elements of creativity. In other words, the invention is examined for compliance with the conditions for patentability, recognition of compliance with these conditions means that this technical solution is an outstanding achievement in science or technology, and for this extraordinary inventor is encouraged by the monopoly right to own and dispose of his creation for 20 years. In the event that a decision, such as medicines or crop protection products, requires the permission of the competent authority before entering into civil circulation, the patent rights are extended for the period that the inventor needed to conduct tests to determine the effectiveness and safety of the invention, moreover, this period may not exceed 5 years.
Patents for utility models, which are commonly called small patents, are issued based on the results of checking the application materials for compliance with formal requirements, in other words, “for the applicant’s risk and responsibility” [1, Art. 23(1)]. Utility models, in accordance with the Patent Law, are understood as technical solutions in the form of a device, substance and method, which are minor improvements of known intellectual property objects.
It is regrettable to note that the absence of a legislatively established verification of utility models for local novelty and reality or the fact, that there are technical improvements, leads to abuse of the rights of utility modelpatent owners. In Kazakhstan, patents for utility models, which in essence should demonstrate the possession of intellectual property rights and propose adapting the invention through the necessary technical modifications to local operating conditions or to the needs and preferences of consumers, have become a tool for braking and interfering with other entities using their own similar developments but not registered with them their rights.
The article by AmireevDamirzhan, senior associate of Bolotov& Partners LLP [4], also contains a conclusion, confirming the opinion of the author of this work, about the need for a legally established verification of utility models for local novelty and the fact that there are technical improvements as a preventive measure of abuse of their rights on the part of utility modelpatentowners, as well as recognition by Kazakhstani judges of the lawfulness of going to court when identifying inconsistencies of a utility model with the condition for patentability “novelty”and “industrial applicability” for the implementation of the above measures. In the practice of adjudgments, such a free interpretation of the Patent Law by judges occurs when, taking into account the clause in the law that a utility model patent is issued “at the applicant’s risk and responsibility”, they refuse to consider cases concerning the legally established patentability standard for utility models. We believe that legislative consolidation of the corresponding amendment in the enforcement act will ensure the full implementation of the Patent Law, since the clause contained in the Law was adopted as a relief to Kazakhstani small and medium businesses in promoting their goods and services due to the short life of a utility model patent of five years, three of which may be spent on the examination of world novelty and industrial applicability.
Industrial designs, like inventions, are tested for absolute (world) novelty and originality. Under the industrial design means the unique image of the product, which should relate to the objectified results of intellectual creative activity. Owners of well-known brands, while remaining faithful to their trademark, use industrial designs to further promote, create and maintain an attractive image of their brand for consumers. For this reason, examining the world novelty of an industrial design involves conducting a search on international trademarkdatabases of images similar to the image of an industrial design, and vice versa.
Compliance with all the mentioned requirements of the Patent Law simultaneously ends with the issuance of a title of protection in the form of a patent for an invention, utility model and industrial design, or, in other words, recognition of the monopoly right to own an intellectual property objectand exclusive rights of the patent owner to use the invention, utility model and industrial design at its discretion by any means not contradicting the law.
So, in Kazakhstan, the invention and utility model protection are provided in the scope of the Claims, which should include only features that are necessary and sufficient for the implementation of the invention or utility model in order to achieve the technical result stated in the description. It is known that the most complete protection is provided to an invention or utility model represented in the Claims by the most common features in the least amount. We apologize for the tautology. Despite this, it should be recognized that this requirement does not always work with applicants, therefore, the Claims of the invention or utility model sometimes either do not contain the entire set of features without which it is impossible to realize or implement a technical solution, or, in addition to them, contains useless “aesthetic” features.
The objects of intellectual property examined and characterized in one way or another (works of creativity) are protected by the legislation of Kazakhstan, which prescribes certain steps to identify their violation and provides explanations on the methods of proving thereof and penalties in confirming the violation. However, everything that is easy on paper does not always work out in practice, here the true difficulties begin.
There are many talks about the presence of patent litigations in Kazakhstan on the grounds partially stipulated in Article 33, “Judicial Adjudgments” of the Patent Law, but there are few publications. As one of the main causes of adjudgments, the operator’s unsuccessful attempt to come to an agreement with the patent owner on the use of the patented intellectual propertyobject. The refusal to obtain permission to use such an intellectual property object pushes the operator to attempt to remove the obstacle in the form of a patent by revoking it. The process of canceling a title of protection throughout the world is a very laborious, lengthy and costly undertaking.
Chapter 8 of the Registration Rules prescribing “the procedure for early termination, invalidation and cancellation of a patent for an invention, utility model, industrial design” in the amount of one paragraph, expressed in a hundred words, including unions and prepositions, prescribes only the sequence of invalidation and cancellation of a patent for an invention, utility model, industrial design. The specified procedure, in short, involves applying to the court; canceling a patent from the filing the patent application when it is recognized by the court’s decision to be fully invalid; the issuance of a new patent, if it is partially recognized as invalid; registration of the results of the trial in the relevant State Register; and publication relevant information in the upcoming Intellectual Property Newsletter.
The absence of provisions on enforcement procedures for protesting the grant and validity of patents in law enforcement acts shows an urgent need to supplement existing acts or issue new ones, where the procedure for declaring a patent invalid in full or in part with the timing, as well as actions and omissions of the parties to the consideration during the protest process a title of protection, including the procedure for amending the Claimsof an intellectual property object in order to exclude erroneous, intent or without the opinion that the title of protection may be initially recognized completely invalid, and changes in the Claimsof intellectual property object would made after the decision to cancel.
Adequate amendments to the acts will also help to eliminate the incorrect interpretation and application of the Examination Rules in terms of changing the patent Claims in case the intellectual property object is recognized as completely non-patentable. In such cases, the patent owners, for the most part, try to make adjustments and clarifications to the Claimsof the intellectual property object to the patent by including information from the description and drawings, which can lead either to the expansion of the scope of the previously granted protection or to the replacement of the intellectual property object of the patent by another, protection for which was not provided. Patent owners try to justify such actions by the presence of such additional information in the description and on the drawings, despite the generally accepted rule that all information remaining outside the protection in the Claims goes into the public domain. It is well known that to save a patent in case of recognition of an intellectual property object according to an independent claim, in which it is customary to characterize an intellectual property object with features that presuppose implementation in all cases of its realization, it is possible only by including features from the dependent claims that characterize particular cases of intellectual property object.
Further clarification of the characteristics of the intellectual property object in the Claims by the featuresfrom the description and drawings, even in the case of narrowing the scope of protection, should be carried out with extreme caution so as not to obtain an even more monopolist than was originally assumed. We should always remember the generally accepted judgment that any particular case leads to a lack of novelty in a more general case. Thus, accepting the request of the patent owner for making adjustments to the Claims in order to narrow the scope of protection provided, are we blocking the path to another technical solution that may turn out to be no less popular or more accessible?
We believe that additions to the enforcement acts on invalidation and cancellation of a patent for an invention, utility model, industrial design would make it possible to clarify and lead to a uniform consideration by the Appeals Board of the Department of Intellectual Property Rights of the Ministry of Justice of the Republic of Kazakhstan and the courts of relevant adjudgments.
- Patent Law of the Republic of Kazakhstan. 16.07.1999. № 427 (withamendments)
- Rules for Examination of Applications for Intellectual Property objects. // http://adilet.zan.kz/rus/docs/V1800017459
- Rules for the registration of industrial property objects in the State Register of Inventions, the State Register of Utility Models, and the State Register of Industrial Designs and issuing titles of protection and duplicate thereof, invalidation and early termination of patents. // http://adilet.zan.kz/rus/docs/V1800017415
- Patent litigation. Patent opposition and cancellation. Kazakhstan Pharmaceutical Bulletin. No.16(569), 19.08.2019. // https: //ru. bolotovip. com/company-news/publication/patentie-spori- osparivanie-i-annulirovanie-patenta/.