Patents in Uzbekistan

Dec 24 2019 - 12:58

Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

According to the Patent Law, an invention is patentable if it:

  • is new;
  • involves an inventive step; and
  • is industrially applicable.

The essential criteria do not differ from those applied in most advanced patent offices worldwide.

Protection can also be granted to a utility model that meets the requirements of local novelty and industrial applicability.

What are the limits on patentability?

According to the Patent Law, the following cannot be patented:

  • scientific theories and mathematical methods;
  • methods of economic organisation and management;
  • conventional symbols, schedules and rules;
  • methods for performing mental acts;
  • algorithms and computer programs;
  • projects and plans for structures, buildings and land development;
  • solutions concerning only the outward appearance of products and aimed at satisfying aesthetic requirements;
  • topology of integrated circuits;
  • plant varieties and animal breeds; and
  • inventions contrary to the public interest and principles of humanity and morality.
To what extent can inventions covering software be patented?

Software per se cannot be patented. According to the Law on Legal Protection of Computer Programs and Databases, programs (algorithms) can be protected by copyright.

However, software expressed as a set of logical operations executable by a computer or a comparable technical device which is intended to achieve a technical effect is patentable. Further, a computer program may be expressed as a method with a set of logical operations.

To what extent can inventions covering business methods be patented?
Business methods per se cannot be patented. However, if they are described as a set of operations implemented by technical means and intended to achieve a technical result, a patent may be obtained.
To what extent can inventions relating to stem cells be patented?
There are no direct restrictions on patenting stem cells. However, such inventions could be considered contrary to moral principles (eg, solutions relating to human embryonic stem cells, for modifying the human germ line genetic identity or using human embryos for industrial or commercial purposes).
Are there restrictions on any other kinds of invention?
No.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?
Uzbekistan has a novelty grace period – information regarding an invention or utility model that became public knowledge within six months of the application filing date will not affect patentability if the information was disclosed by the inventor, applicant or any person who received, directly or indirectly, information from them. Applicants and inventors are responsible for proving the fact that the invention was disclosed.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?
Third parties can file an appeal with the State Patent Office Appeal Board after the patent application has been published and at any time before the grant. As a rule, the State Patent Office will publish an application 18 months after the filing date; however, applicants may request it sooner. The board’s decision can be contested in court within six months of being issued.
Apart from oppositions, are there any other ways to challenge a patent outside the courts?
Patents may be challenged before the State Patent Office Appeal Board first by filing an appeal during the patent’s term. The board’s decision can be further contested in court within six months of being issued.
How can patent office decisions be appealed in your jurisdiction?
Applicants can file an appeal against office actions before the State Patent Office Appeal Board within three months of publication or its date of issuance. The board’s decision can be further appealed in court within six months of being issued.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

In practice, a patent for an invention is usually granted within two to five years from the filing date and a utility model within one to two years. The official fees depend on the number of claims. For example, the official fee for prosecuting an application with one independent claim would fall between €2,040 and €2,270 for an invention (depending on the application type (ie, national or Patent Cooperation Treaty application)) and €1,900 for a utility model.

Additional independent claims would involve extra fees; translation costs and attorneys’ fees are also not included in the estimates. Applicants are advised to obtain accurate cost estimates from the patent attorneys handling the prosecution of their application(s).

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

In the absence of clearly outlined administrative and criminal liability for patent infringement in Uzbekistan, the only viable option for patent owners is to enforce their IP rights in commercial courts. However, the relative lack of experience of local courts and enforcement authorities in the IP field – as well as a certain degree of corruption – make it challenging to enforce patents in Uzbekistan.

As Uzbekistan may soon join the World Trade Organisation, the situation is expected to change for the better in the coming years.

What scope is there for forum selection?
The only viable option for patent owners is to enforce their IP rights in commercial courts.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

Collecting evidence of infringement (eg, making trap purchases) is the first recommended step, followed by analysing the purchased samples and collecting information on the infringer and the infringing product from public sources (eg, state registers, official publications and relevant state bodies). The following actions are not mandatory, but they are recommended:

  • arranging for a written expert opinion on the infringing product;
  • sending a cease and desist letter; and
  • sending educational letters to retailers and distributors regarding the infringing product.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Defendants can delay proceedings, to some extent, by:

  • failing to appear at court hearings;
  • failing to respond to plaintiffs’ claims;
  • filing counterclaims; and
  • requesting further examinations and expert opinions.

It is difficult for plaintiffs to prevent such delays, unless they manage to prove that the delays are intentional. In such cases, plaintiffs may request the court to:

  • order the defendant to pay a fine; and
  • issue a ruling against the defendant.

However, the courts still rarely issue such rulings, even in cases where the defendant is obviously acting in bad faith. At the same time, courts have their own prescribed deadlines for reviewing cases on the merits and one court instance proceeding usually does not last for more than one-and-a-half to two months.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?
First, an invalidation action should be filed with the State Patent Office Appeal Board. This decision can then be challenged before an administrative court within six months of being issued. Filing a patent invalidation action with the board does not prevent the court from proceeding with the patent owner’s suit.

At trial

What level of expertise can a patent owner expect from the courts?
A low level of expertise and experience dealing with patent cases.
Are cases decided by one judge, a panel of judges or a jury?
A single judge in the first instance and a panel of judges at higher instances.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
Jury trials do not exist in this type of dispute.
What role can and do expert witnesses play in proceedings?
Expert witnesses and reports play a vital role in patent litigation cases in Uzbekistan because judges are mostly lawyers who do not usually possess scientific or technical expertise. However, the courts are more inclined to take into account opinions of experts from relevant state bodies, rather than the opinion of independent experts.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
Yes – Uzbekistan applies the doctrine of equivalents. However, as an ‘equivalent feature’ is not defined in the legislation, patent owners must prove that a certain feature of an infringing product is equivalent to the one in the patent claim. For this purpose, patent owners, experts and other professionals who have adequate experience in the field of patent law should provide the court with additional explanations.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
As a rule, preliminary injunctions are difficult to obtain. Judges are often hesitant to accept the responsibility linked with injunctive relief and prefer to remain neutral and avoid steps that may be considered too radical. The courts may issue a preliminary injunction in cases where enforcing the court’s ruling is proved to be impossible.
How are issues around infringement and validity treated in your jurisdiction?
Given the complexity of patent infringement and validity cases, patent owners spend considerable time and effort proving their positions. Patent invalidation and enforcement actions are not particularly frequent in Uzbekistan. Additional case law will be required before stable patterns are established in this regard.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
The courts are reluctant to consider decisions from other jurisdictions. However, patent litigants would be advised to include favourable decisions from other jurisdictions before the Uzbek courts.

Damages and remedies

Can the successful party obtain costs from the losing party?
Yes, but the successful party rarely recovers the claimed costs in full.
What are the typical remedies granted to a successful plaintiff?

The typical remedies include:

  • a ban on the manufacture, use, sale and distribution of infringing products;
  • the seizure and destruction of infringing products; and
  • recovering damages or income from the sale of infringing products.
How are damages awards calculated? Are punitive damages available?

Punitive damages are not available.

Damages (including real damages and lost profits) are usually calculated based on the evidence provided to or obtained by the court. Patent owners are usually required to prove a connection or association between the defendant’s activities and plaintiff’s damages. Damages may also be calculated by a licensed valuation professional.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Permanent injunctions are common in successful patent enforcement lawsuits. A permanent injunction is issued in case it is proved that the defendant’s product infringes the plaintiff’s patent.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?
Approximately one-and-a-half to two months. The process cannot be expedited.
How much should a litigant plan to pay to take a case through to a first-instance decision?

Attorneys’ fees as well as other costs (eg, translations and court expertise) will vary depending on the circumstances and complexity of the case.

If the patent owner wishes to claim damages, the court fees for filing a court claim will constitute 2% of the total amount of claimed damages; if no damages are claimed, the court fee will be approximately $250 per each non-material claim (ie, claims that do not require compensation for losses if the ruling is in favour of the patent owner).

On average, litigants should expect to pay between $10,000 and $30,000 to take a case through to a first-instance decision.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?
The losing party always has the right to appeal, without exception. On average, appeal proceedings take approximately one-and-a-half to two months.

Options outside court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?
The law provides for other forms of dispute resolution (eg, mediation and arbitration); however, these options are seldom used.

By Olga Kudoyar, Patent Consultant at PETOŠEVIĆ Ukraine and Djakhangir Aripov, Head of Office at PETOŠEVIĆ Uzbekistan

This patent guide first appeared on Lexology.

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