At a glance: patent enforcement proceedings in Kazakhstan

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

At the moment there are no specialised IP courts in Kazakhstan in which a patent infringement lawsuit can be brought.

Patent infringement disputes are handled before civil courts. Civil cases are considered and resolved by district (city) and equivalent courts as well as by specialised, inter-district commercial courts. At the request of the patent holder, patent infringement is to be stopped, and the infringer is obliged to compensate the patent owner for the incurred losses. As an alternative, the patent holder can recover the income that the infringer received as a result of infringing activities.

Since 2014, administrative legislation does not provide for administrative liability for patent infringement. Instead, Kazakhstan introduced a new category of criminal offence – a misdemeanor, which is an action or inaction that does not constitute a ‘great public danger’, and that causes relatively minor harm or only poses a threat of harm to an individual, organisation, society or state. Misdemeanors are punished by a fine, arrest or correctional or community service. Since 2015, minor, less severe patent infringements began to be regarded as a misdemeanor.

If a criminal action has to be initiated, the patent holder should lodge a complaint with the police or the Economic Investigation Service (a law enforcement authority), who will then carry out a preliminary or pre-trial investigation, after which the case is considered by the district, city or regional (and equivalent) court.

What is the format of a patent infringement trial?

While preparing a case for a trial, the judge considers the issues relating to documents, affidavits, live testimony and invites witnesses to the court. Cross-examination of witnesses is permitted. At the request of a party or on its own initiative, the court can appoint an expert and a translator.

Cases (civil and criminal) are decided by a single judge in the first instance, while cases reviewed by appellate or cassation instance courts are decided by a panel of at least three judges. The panel must include an odd number of judges. However, minor crimes can be considered by only one judge at the appellate or cassation stage, as well.

Civil cases are typically considered and resolved by the court within two months after the trial preparation was completed. However, depending on the circumstances of each case, the court can suspend or prolong a trial.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

To establish patent infringement, or invalidity and unenforceability, each party has to provide relevant and sufficient evidence for its claims and objections within the time period established by the judge.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patent holder or an exclusive licensee may sue for patent infringement. The alleged infringer may file a counterclaim against the patent holder within the same proceedings.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Patent legislation provides no provisions on inducement of infringement or contributory patent infringement. Generally, the Kazakh legislation includes provisions relating to joint liability. When considering a case against several defendants, the court may either indicate which actions each of the defendants must perform in favour of the plaintiff, or indicate that they are jointly liable. A joint obligation arises from an agreement, or if it is established that the joint obligation is indivisible. In practice, joint liability can be applied when obtaining compensation for damages or collecting the infringer’s profit obtained as a result of patent infringement.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

A lawsuit may be brought jointly by multiple plaintiffs against one or multiple defendants. Each of the plaintiffs or defendants in the lawsuit acts independently concerning the other side. Multiple defendants may be joined in the same lawsuit if:

• the general rights and obligations of multiple defendants are the subject of the same dispute;
• the rights and obligations of multiple defendants have a common basis; and
• the matter in the dispute relating to the rights and obligations of multiple defendants is identical.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Kazakhstan can support a charge of patent infringement if the evidence or activities are recognised by the court as relevant, which is evaluated on a case-by-case basis.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

There are no clear provisions in Kazakh law or judicial decisions that may support the doctrine of equivalents. However, the Supreme Court’s practical manual on IP disputes provides that the establishment of clear rules for the validity of a patent and the proof that the rights are infringed by a particular defendant are crucial in determining patent infringement. The scope of rights of the patent holder is determined by the claims. Patent rights are infringed if each feature of the invention included in an independent claim, or a feature equivalent to it, is used in a manufactured product or method.

In order to determine the equivalence between the claimed invention and the infringing invention, the court may appoint experts knowledgeable in the subject matter.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Unlike in common law jurisdictions, in Kazakhstan there are no pre-trial procedures in a lawsuit, such as discovery of evidence.

When submitting the statement of claim, the plaintiff can file a motion with the court asking it to order the defendant or other parties possessing the information or evidence to provide it. If the defendant or the third party fail to submit the evidence within a specified time period for reasons recognised by the court as disrespectful, the court will conclude that this evidence is directed against the interests of the opponent or the third party and they may incur administrative or criminal liability.

If it is difficult for the parties and other persons participating in the case to present evidence, or when the evidence is outside the country, the court of first instance assists the parties in collecting evidence upon their request.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically, civil cases are considered and resolved by the court of first instance within two months from the date of completion of preparation of the case for trial. The preparation of civil cases for trial should be carried out no later than 20 working days from the date of adoption of the statement of claim. The final decision must be made no later than five working days from the announcement of the operative part of the decision.

Cases in courts of appeal are considered within two months from the date of the case’s receipt by the court. However, it should be noted that the terms can be changed, suspended or prolonged by a court decision depending on the circumstances of each case.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical range of costs of a patent infringement lawsuit is, on the average, €10,000 to €50,000 in the first instance ( pre-trial and first instance), and for an appeal it ranges from approximately €5,000 to €20,000. Contingency fees are allowed, but this is subject to agreement between the lawyer and client before trial. These are only average amounts to expect and a lot will depend on the time spent on case analysis – this usually is the most time-consuming part and usually falls under the pre-trial phase.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

In a patent infringement lawsuit, first instance decisions that are not final may be appealed in appellate courts. First instance decisions that are final and decisions of the specialised judicial board of the Supreme Court may be appealed in cassation before the Supreme Court.

New evidence that has not been submitted to the court of first instance is allowed at the appellate stage if it is proven that it was impossible to submit it to the court of first instance, which may be due to:

• the person in question not being involved in the first instance case; or
• the petition for the investigation or reclamation of the evidence being dismissed at first instance.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Generally, Kazakh law provides for sanctions against unfair competition acts. Enforcement of a patent can expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort only if such actions lead or may lead to the restriction or elimination of competition. In practice, such cases have been rare.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

According to the patent law, arbitration or mediation can be used to resolve the following:

• violation of the exclusive right to use the patented invention;
• the conclusion and execution of licence agreements;
• the employee inventor’s remuneration; and
• compensation issues.

Law stated date

Give the date on which the information above is accurate.

31 March 2020.