In brief: patent prosecution in Uzbekistan

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Under the Uzbekistan Patent Law, the following cannot be patented as inventions or utility models:

• scientific theories and mathematical methods;
• methods of organisation and management;
• conventional symbols, schedules, and rules;
• rules and methods for performing mental acts;
• algorithms and computer programs;
• projects and plans for structures, buildings and land development; and
• solutions concerning only the outward appearance of products and aimed at satisfying aesthetic requirements.

Software per se cannot be patented. According to the Law on Legal Protection of Computer Programs and Databases, a program (algorithm) can be protected by copyright. However, if a computer program is described as a method of performing actions with material objects by means of a computer program, or a system demonstrating a connection between certain devices by means of a computer program, intended to solve a technical problem, it can be, in theory, patented.

Business methods per se cannot be patented. However, if a business method can be described not only as a mental process, but also as a method involving certain material objects that solves a technical problem, it can be patented.

Medical procedures can be patented, but they cannot be contrary to the public interest and principles of humanity and morality.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The patent rights to an invention made by an employee within the scope of his or her duties, or as a result of a particular task, belong to the employer, but only if this is specified in an agreement between them. If the agreement does not include such clauses, the employee (inventor) can file an application to claim the ownership of rights. If the agreement does include the above-mentioned provision, the employer has to decide what to do with the invention (file a patent application, transfer the rights to a third party or inform the inventor that the invention will be kept secret) within four months after the employee informs him or her about the invention, in writing. If the employer fails to claim the invention and make a decision, the inventor (employee) can file a patent application and claim the ownership.

The ownership of rights to an invention created by an independent contractor, multiple inventors or a joint venture are determined by an agreement between the parties involved.

The patent owner is recorded in the letters patent and in the register of patents for inventions. To transfer the rights, the patent holder and the assignee have to sign an assignment deed and file it with the Uzbek Intellectual Property Office (IPO) If the documents meet the requirements for the transfer of rights, the IPO will publish information on the transfer of rights in the local IP bulletin and record the new patent owner in the register.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

A patent for an invention is usually granted within two to five years from the filing date and a utility model certificate within one to two years. A cost estimate is about €3,600 to €5,100 for an invention (depending on whether the application type is a national or a Patent Cooperation Treaty application) and about €3,500 to €4,500 for a utility model. This estimate covers official fees and average service fees for an application with one independent claim and up to 10 dependent claims, and up to 35 pages of specifications and claims. Additional independent and dependent claims and additional pages would involve extra fees. Translation costs and attorneys’ fees are not included in the estimates. Applicants are advised to obtain accurate cost estimates from the patent attorneys handling the prosecution of their application.

Are there any procedures to expedite patent prosecution?

The Patent Prosecution Highway is not available in Uzbekistan and neither is the expedited examination of patent applications. However, the Presidential Resolution dated 28 January 2021 envisages the introduction of an expedited examination procedure starting from 1 April 2021. 

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

Invention or utility models should be drafted according to the national rules on application drafting which give guidelines on the disclosure of each particular subject matter (substance, method, device, etc).

Must an inventor disclose prior art to the patent office examiner?

There is no such requirement.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

If a patent application is questioned on the ground of a lack of unity of invention, the claims that are allegedly not related to one invention can be filed within a divisional application that retains its parent application’s filing date and the same priority. This is the only case where filing a later application to pursue additional claims is possible under the legislation in force in Uzbekistan.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The decision of the Agency for Intellectual Property under the Ministry of Justice of Uzbekistan should first be appealed before the Board of Appeal, within three months from the date on which the decision was sent to the applicant. The Board of Appeal’s decision can further be challenged before an administrative court, within six months from the date the decision was issued.

Does the patent office provide any mechanism for opposing the grant of a patent?

Any third party may challenge a pending patent application by filing an appeal with the Board of Appeal, at any time after the application is published and up to the patent grant. As a rule, the IPO publishes an application 18 months after the application’s filing date, but it may be published earlier at the request of the applicant. The Board of Appeal’s resolution can be contested in court within six months following the date the resolution was issued.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Under the patent law, if several inventors independently created the same invention or utility model, the right to a patent belongs to the applicant whose application has the earliest filing date, or if priority is claimed, the earliest priority date. Priority disputes are to be resolved in courts.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Modifying a patent is possible only if technical mistakes have been discovered after the patent was granted. Re-examining a patent is not possible, while revoking a patent is possible under the legislation in force. The court cannot amend patent claims during a lawsuit, as patents can only be challenged before the Board of Appeal, and if the Board of Appeal’s ruling is challenged before the court, the court can only oblige the Board of Appeal to correct its ruling, if it was unlawful, but not the patent itself.

How is the duration of patent protection determined?

Patent rights take effect on the date of publication of the granted patent in the local IP bulletin and last for 20 years starting from the application filing date.

Law stated date

Give the date on which the information above is accurate.

24 February 2021.