According to the Article 37 of the Patent Law of the Republic of Kazakhstan (hereinafter refer to as the Law), filing an application to foreign countries for an industrial property object created in the Republic of Kazakhstan can be made after 3 months from the date of filing an application to an expert organization or earlier –after the examination, according to the procedure established by the legislation, for presence of information classified as an official secret.
Citizens of the Republic of Kazakhstan residing on its territory, as well as legal entities of the Republic of Kazakhstan, apply for an industrial property object in an international patent organization through an expert organization, if this does not contradict the relevant international treaty. In the case of filing an application to foreign countries or international patent organization for an industrial property object created in the Republic of Kazakhstan with a violation of the procedure of specified article, a title of protection on this industrial property object in the Republic of Kazakhstan shall not be issued.
To obtain a patent in foreign countries, the most acceptable system is the filing of an international PCT application on the basis of the Patent Cooperation Treaty.
The Patent Cooperation Treaty (PCT) helps applicants to patent their inventions in many countries; promotes patent offices in making decisions on the grant of a patent and facilitates the access of the public to technical information relating to inventions. By submitting one international patent application under the PCT procedure, the applicant can provide protection for his invention in a large number of countries around the world.
The PCT Guidelines for applicants can be found here http://www.wipo.int/pct/en/appguide/
According to the subparagraph 1) of the paragraph 105 of the Rules, the expert organization RSE "NIIP" is the competent receiving office due to the international application for invention (hereinafter - the international application) if at least one of its applicants is a citizen of the Republic of Kazakhstan or a person, residing or having a place of performance in the Republic of Kazakhstan.
Any person who owns an operating industrial or commercial enterprise in the territory of the Republic of Kazakhstan is considered to be resident or having a place of performance in the Republic of Kazakhstan (Rule 18.1 (b) of the Regulations to the Treaty).
RSE "NIIP" as a competent receiving office receives international applications in Russian or English. If an applicant for the purposes of the Article 15 of the Treaty is selected the Federal State Institution "Federal Institute of Industrial Property of the Federal Service for Intellectual Property, Patents and Trademarks" as the International Searching Authority, the international application is filed in Russian, if the European Patent Office, the international application is submitted in English language.
The international application is submitted in 3 copies, each of which must be suitable for direct reproduction. PCT request form of the international application
Requirements for execution of documents of the international application by the applicant are regulated by the Treaty, the Instruction to the Agreement and the Administrative Instruction http://www.wipo.int/pct/ru/texts/index.html.
RSE "NIIP" checks the international application for compliance with the requirements of the Article 11 (1) and the Article 14 of the PCT.
For the international application, which was pass a test with a positive result, the date of its international filing is established.
RSE "NIIP" carries out the forwarding of the international application to the International Bureau of WIPO and the International Searching Authority specified in the application of the international application.
In order to obtain a patent, the applicant must, within the period established by the Treaty, transfer his international application to the national phase, i.e., submit the required documents and pay fees to the patent office of the country in whose territory he is interested in the availability of the title of protection. If in the international phase the actions regulated by the PCT regulations are committed due to the international application, then on the national phase the actions provided for by the national legislation of the selected foreign state are committed due to the international application.
Kazakhstani applicants can also obtain protection for their invention on the territory of most CIS countries, by filing a Eurasian application for a Eurasian patent, which is in force in the territory of 8 CIS countries - Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, the Russian Federation, Tajikistan and Turkmenistan. The regional patent issued this way is valid for 20 years from the date of application.
RSE "NIIP" in accordance with the Article 15 (1) (ii) of the Eurasian Patent Convention and the paragraph 2 of the Article 37 of the Patent Law of the Republic of Kazakhstan performs functions related to the receipt, verification and forwarding of the Eurasian application to the Eurasian Patent Office (hereinafter - the Eurasian Office).
Filing of the Eurasian application:
- in accordance with the Article 15 (1) (ii) of the Eurasian Patent Convention, a Eurasian application shall be filed to an expert organization if at least one of its applicants resides or has a place of performance in the Republic of Kazakhstan. Any person who owns an operating industrial or commercial enterprise in the territory of the Republic of Kazakhstan is considered to be resident or having a place of performance in the Republic of Kazakhstan;
- according to the rule 29 of the Patent Regulations under the Eurasian Patent Convention (hereinafter - the Patent Regulations) all documents of the Eurasian application are submitted in four copies;
- a Eurasian application shall be accompanied by a document confirming the payment of the tariff for the verification of the Eurasian application for compliance with the requirements for the examination of the application for formal signs and forwarding, as well as the power of attorney if the Eurasian application is filed by the applicant's representative;
- the application of the Eurasian application is submitted in Russian. The application form for issuing the Eurasian patent;
- other documents of the Eurasian application can be filed in Russian or another language.
Documents of the Eurasian application submitted in a different language are accompanied by their translation into Russian.
Pendency and forwarding of the Eurasian application:
- the expert organization in accordance with the Article 15 (1) (ii) of the Eurasian Patent Convention regarding the received Eurasian application checks:
- existence of documents required to determine the date of filing of the Eurasian application, as well as documents to be attached to it;
- compliance of the form and content of documents of the Eurasian application with the requirements of the Eurasian Patent Convention and the Patent Regulations (without an analysis of the essence of the claimed invention (inventions));
- the expert organization sends to the Eurasian Office three copies of the Eurasian application, according to which compliance with the requirements established by the Rule 33 of the Patent Regulations is provided, if the established fee for verifying the application for conformity with formal characteristics and forwarding are paid;
- if in the course of the examination it is established that the Eurasian application is filed with violation of the requirements for its documents, the expert organization sends a notification to the applicant specifying the deficiencies found and proposing to submit missing documents (information) within four months from the date of the notification;
if the applicant did not submit the requested documents (information) within the prescribed period, the Eurasian application is considered to be unfiled.
The applicant is notified accordingly. The Eurasian Office is notified of the impossibility of sending the Eurasian application;
in accordance with the Rule 34 (3) of the Patent Regulations, the Eurasian application shall be forwarded to the Eurasian Office within four months, and in case of a request for a Eurasian application of the Convention priority - within one month from the date of its receipt to the expert organization, if, respectively, in the Eurasian application or in the application on the basis of which priority is claimed, the content of information classified as state secret is not established.
The fourth copy of the Eurasian application is stored in an expert organization.
The applicant is notified of the forwarding of his Eurasian application to the Eurasian Office, as well as the need to pay a unified procedural fee to the Eurasian Office and submit to the Office a document confirming its payment within three months from the date of the notification.
Examination of the Eurasian application is carried out by the Eurasian Patent Office in accordance with the regulations of the Eurasian Patent Office of the Eurasian Patent Organization. https://www.eapo.org/en/documents/norm/.