New Laws on Inventions and Industrial Designs in Turkmenistan
A new law on inventions and a new law on industrial designs entered into force in Turkmenistan on November 11 and 13, 2017, respectively, repealing the former consolidated law on inventions and industrial designs.
The new law on inventions did not undergo major changes, but it introduces several amendments, the most notable of which are:
- The applicant has to provide a copy of an international preliminary examination report (under the Patent Cooperation Treaty) in order to obtain a full patent, valid for 20 years.
- A copy of a duplicate patent granted as a result of examination conducted by one of the international preliminary examining authorities may also be submitted as evidence of patentability.
- It is now possible to obtain a patent based on a grant decision issued by the Eurasian Patent Office.
- The time period to appeal the IPO Appeal Board’s decision in court has been shortened from six months to 45 days from the date the decision was issued.
- Under the old law, it was possible to extend the term of protection for patents related to medicines, pesticides or agrochemicals for an additional five years; this is not possible under the new law.
Limited patents are still valid for 10 years, and full patents for 20 years. The application for a limited patent undergoes a formal examination and a limited patent examination, during which an invention is subject to a prior art search of applications, limited patents and full patents filed before or granted by the Turkmen IPO and the Eurasian Patent Office.
The precondition for filing a full patent application is the positive outcome of a limited patent examination. Before filing a full patent examination request, the applicant should request the suspension of the limited patent grant within three months from the limited patent grant notification date and pay the relevant official fees. The full patent examination request should be submitted within five years from the initial patent application filing date (the law does not specify which application; therefore, the date can be interpreted as the filing date of both the limited and full patent application).
If a granted limited patent satisfies patentability requirements set by the law, the applicant can also request its conversion into a full patent within the limited patent’s validity period.
Turkmenistan does not recognize utility models. In case applicants wish to register a utility model, they should file a limited patent application.
The new industrial design law introduces a design patent that will initially be valid for five years, with a possibility to renew it every five years for a total of 15 years from the application filing date. This design patent replaces the two previously existing patent forms — the limited patent with a validity period of 10 years and the design patent with a validity period of 15 years.
This change in the design patent’s validity period is a result of Turkmenistan’s accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, in force in Turkmenistan as of March 16, 2016. Namely, Art. 17 (3) (a) of the Geneva Act of 1999 sets a 15-year design patent validity period from the date of international registration, meaning that Turkmen legislation had to provide for such a validity period for international, and hence all design patents.
The new law no longer requires an international novelty check as part of the substantive examination, which shortens and simplifies the granting procedure. Design patents are however still subject to a prior art search in relation to filed design patent applications and granted design patents in Turkmenistan.
According to the transitional provisions of the new law, a valid limited patent can be transformed into the new design patent provided that the prescribed fee is paid and the patent is examined in accordance with the provisions of the new law and the IPO’s procedures. If the right holder does not wish to transform the limited patent, it will be valid until the end of the term, provided that the prescribed fee is paid.
Another significant improvement is that the new industrial design law abolishes the lengthy verbal description requirement, thus simplifying and shortening the design patent registration process from the current 15-21 months to 9-12 months. The formal examination and the substantive examination are carried out upon the expiration of three and six months, respectively, from the design patent application filing date. The substantive examination is carried out automatically, as the law does not set specific requirements for filing a request.
The new industrial design law also reduces the overall design patent maintenance costs by abolishing the annual payment of maintenance fees. While the annuity amounts previously ranged from EUR 40 (USD 50) for the first year to EUR 325 (USD 400) for the 15th year, now there is only a EUR 406 (USD 500) fee every five years, which makes it much easier to monitor and maintain rights.
By: Tatjana Krivszka and Umida Solijonova
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