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Enforcement through the courts
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).
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