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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The criteria for patentability in Kazakhstan are novelty, inventive step and industrial applicability. 

What are the limits on patentability?

The following will not be recognised as patentable inventions:

  • discoveries, scientific theories and mathematical methods;
  • methods of organisation and economical management; 
  • symbols, schedules and rules;
  • rules and methods for performing mental activities and playing games;
  • computer software and algorithms;
  • projects and plans for structures, buildings and territories;
  • solutions relating solely to the outward appearance of an object; and
  • solutions that are contrary to the public interest or the principles of humanity or morality.

To what extent can inventions covering software be patented?

Inventions relating to software are non-patentable per se. They are protected by copyright. That said, a computer program may be patentable if:

  • it is described as a set of actions executed by a computer while implementing a program; 
  • the actions in the claim are carried out using material means and for the purpose of obtaining a specific technical result; or
  • the independent claim of the application is not for software per se, but rather for the relevant method or system.

To what extent can inventions covering business methods be patented?

Inventions relating to business methods are not patentable. They are protected by know-how. Nevertheless, similar to software, a business method may be patented if:

  • it can be described as a set of actions executed using specific material means and for the purpose of obtaining a specific technical result; or
  • the independent claim of the application is not for a business method per se, but rather for technical means or a way of using technical means during execution of the method.

To what extent can inventions relating to stem cells be patented?

An invention is considered a technical solution if it relates to:

  • a product (eg, a device, substance, micro-organism strain or culture of plant or animal cells);
  • a method (eg, the process of affecting a material object using material resources);
  • the application of a known product or process with a new purpose; or
  • the use of a new product for a particular purpose.

Thus, inventions relating to stem cells are patentable, except where the invention is contrary to the principles of humanity or morality (eg, inventions that use human embryos). 

Are there restrictions on any other kinds of invention?

Patents will not be granted for:

  • inventions whose subject matter is contrary to public order or morality; and
  • plant and animal varieties and biological processes for the production of plants or animals.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

The Patent Law stipulates that the patentability of an invention will not be affected in the following circumstances, as long as an application is filed with the Patent Office within six months of disclosure:

  • The applicant, the author or a third party that obtained the information directly or indirectly from the applicant or author disclosed the invention.
  • The invention was disclosed during an official or officially recognised exhibition in any country that is a member of the Paris Convention.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

According to Article 29 of Title VI of the Patent Law, a patent may be invalidated entirely or in part at any time during its period of validity. To invalidate a patent, an opposition setting out the reasons for invalidation must be filed. The Appeals Board of the Patent Office will examine oppositions within six months of receipt. If the opposing party or rights holder wishes to contest the Appeals Board’s decision, it may do so within six months of receipt of the decision by lodging an appeal with the courts.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

There is no other way to challenge a patent outside the courts.

How can patent office decisions be appealed in your jurisdiction?

Under the Patent Law, oppositions against Patent Office decisions may be filed within six months of issue of the decision. The Appeals Board will examine oppositions within two months of receipt thereof.

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?

Patent registration in Kazakhstan usually takes three to four years. The cost of obtaining a patent is about $900. This estimate reflects official fees only (applicants should expect extra costs if the application has more than one independent claim), and does not include attorneys’ fees or translation costs.

Enforcement through the courts

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

Several options are available to enforce patent rights. The most effective way is to initiate proceedings before the civil courts, which generally order compensation for damages and impose injunctions.

However, patent infringement is also considered a criminal offence; therefore, a rights holder can file an application with the appropriate internal affairs body in order to initiate an official investigation. That said, criminal liability extends only to natural persons and damages must be recovered in separate civil proceedings. Apart from police investigations, few patent infringement cases take place.

Pre-trial measures (eg, sending a cease and desist letter to the infringer) are also recommended as a cost-effective method of early settlement without incurring litigation costs; however, the effectiveness of pre-trial measures is highly dependent on the infringer’s position.

What scope is there for forum selection?

According to the Civil Code, patent infringement cases must be heard in the district court (if at least one of the litigants is a natural person) or in a specialised inter-district economic court (if the case is between legal entities or entrepreneurs) at the place of the defendant’s domicile or the location of the defendant’s property (legal entity).

Litigants may agree to change the venue or submit the case to mediation or an arbitral tribunal of their choice. 

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

Patent litigation usually starts with the collection of evidence in support of the claim and other necessary documents (eg, an extract from the company register in respect of the defendant and an extract from the patent register).

If the dispute is subject to the jurisdiction of the specialised inter-district economic courts, the plaintiff must first complete a pre-trial settlement procedure.

After the claim is filed and court proceedings are initiated, the judge will prepare the case for consideration within seven days (in exceptional cases, preparation may be extended up to one month) of acceptance of the claim. At the end of this stage, the first court hearing will be scheduled.

At this stage, litigants may petition the court to impose a preliminary injunction and secure evidence, and the defendant may prepare and file a counterstatement.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

To delay proceedings, defendants may repeatedly file:

  • motions for recusal of a judge, secretary or other participant in the trial;
  • petitions to conduct various procedural actions, appoint court examiners or involve new participants (eg, licensees) in the case; or
  • petitions to transfer patent rights to third parties.

Plaintiffs may object to motions and petitions by arguing that they are in bad faith and aimed at delaying the proceedings. Plaintiffs may also request preliminary injunctions in order to restrict a defendant’s ability to transfer patent rights. Judges have discretion to issue preliminary injunctions. 

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?

According to law, the validity of a patent can be challenged by filing a cancellation claim with the Appeals Board of the Patent Office based on non-compliance with patentability requirements or other legal requirements. Appeals Board decisions can be appealed to the courts.

There is precedent for challenging the validity of Eurasian Patent Organisation patents directly through the courts by filing a counterclaim of invalidity.

At trial
What level of expertise can a patent owner expect from the courts?

Judges have a certain degree of experience in patent litigation, although the overall number of patent cases is still small. 

Are cases decided by one judge, a panel of judges or a jury?

One judge decides all first-instance district court and economic court cases. One judge also decides all appeals before the regional courts. A panel of three judges hears cassation appeals in the regional courts.

The Supreme Court has supervisory authority and cases brought before it are heard by a panel of five judges. 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials are not stipulated for patent litigation.

What role can and do expert witnesses play in proceedings?

Court examinations are usually used to determine whether patent infringement has occurred (in infringement cases) or whether patentability requirements have been met (in invalidation cases). An authorised court examiner will conduct the investigation.

In practice, court examinations are often determinative in final court judgments, as they are usually based on the results of the examination.

The courts will consider other kinds of evidence, but these are mostly used by litigants to challenge the results of a court examination.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents is applied in patent infringement cases to establish the use of a patented invention. According to law, a product is considered to be manufactured using a patented invention if it contains all of the features stated in the independent patent claim or equivalent features.

To be equivalent, a feature must be known as an equivalent to the patented feature in the particular field of invention on the date of its use.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Plaintiffs may request preliminary injunctions if there is reason to believe that the execution of a court decision may be complicated or made impossible without an injunction. Preliminary injunctions include seizure of the defendant's property and a prohibition on performing certain activities.

The court can demand that the plaintiff provide a security deposit to prevent the abuse of preliminary measures.

How are issues around infringement and validity treated in your jurisdiction?

Infringement issues are typically considered in court proceedings, which offer rights holders a good chance to stop the infringement; however, the recovery of damages (in particular, substantiating the amount thereof) may be problematic. This is because the courts lack experience in patent infringement cases and thus rely heavily on the conclusions of court examiners. On the other hand, the Appeals Board of the Patent Office – which is comprised of experienced patent examiners – considers validity issues.

The courts will not suspend an infringement case because invalidation proceedings have been brought before the Appeals Board. However, in past cases the courts have suspended the consideration of infringement proceedings until the Appeals Board has either dismissed the case or determined the validity of the patent in the context of the defendant’s counterclaim.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The courts render decisions based on Kazakh law. Only Supreme Court rulings are recognised by the courts as a part of the national legislation and considered in other cases. 

Damages and remedies
Can the successful party obtain costs from the losing party?

According to the rules of the civil law court, the losing party may have to reimburse the winning party’s expenses at a rate proportional to the claim sustained by the court.

What are the typical remedies granted to a successful plaintiff?

In patent infringement cases, the following remedies are stipulated by law:

  • a prohibition on performing infringing activities;
  • seizure of infringing goods in public circulation and the means used to manufacture them;
  • publication in mass media of information about the infringement and the contents of the court judgment regarding the violation; and
  • recovery of damages or confiscation of revenue received by the infringer, or payment of a fixed sum (compensation).

In cases regarding patent validity, a decision may be rendered regarding the grant or invalidation of a patent, depending on the subject of the claim. 

How are damages awards calculated? Are punitive damages available?

Damages are usually calculated based on lost profits due to the unauthorised use of the invention. This amount also considers manufacturing volume and the volume of sales of the counterfeit goods. The basis of the calculation is that one counterfeit item replaces one genuine item in the market. However, in practice, the ability to recover damages is still limited. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are not addressed in Kazakh law per se. At the end of a trial, the court may:

  • restore the rights holder’s rights;
  • restore the situation that existed before the violation of the right;
  • order the cessation of activities which violate or threaten to violate the right;
  • award an obligation in kind;
  • order compensation for losses and damages;
  • recognise transactions as invalid;
  • order compensation for moral losses; and
  • terminate or alter legal relations as provided by legislative acts. 

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Not including court examination, first-instance proceedings take around two months. The parties to the proceedings may file motions to extend this period.

On average, depending on the litigants’ actions and the duration of court examination, first-instance proceedings take between four and six months. This process cannot be unilaterally expedited. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

Depending on the complexity of the case, total costs for a first-instance decision can vary significantly ($10,000 or more). 

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 parties may appeal first-instance decisions.

Appeal court decisions can be challenged by filing a cassation appeal to a regional court within six months of rendering of the decision.

As the appeal courts are not bound by the arguments presented in the appeal and can thus reconsider the case in full, appeals usually take between two and four months. Appeals before the Court of Cassation usually take two to three months.    

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

The parties to patent infringement disputes may avail of alternative dispute resolution methods (eg, mediation or arbitration) at their own discretion. Rights holders may request internal affairs bodies to initiate an official investigation in relation to an alleged infringement.