In 2021 a number of amendments and additions are slated to be introduced into the intellectual property legislation of Kazakhstan. The appropriate bills are already under consideration by the relevant working groups.
You can find the information on the planned changes in this review produced by Zhanna Abylkhanova, the senior lawyer at Legalmax and the Chairwoman of the Union of Patent Attorneys of the Republic of Kazakhstan.
- - There are plans to create a category of "Geographical Indication" (hereinafter "GI") as an independent category of IP objects. Under the current Trademark Law, foreign GIs can be registered in Kazakhstan as appellations of origin (hereinafter “AO”).
- - Applications for GIs will be preliminary published on the official website of the expert organization.
- - The bill introduces a formal procedure for filing an objection to an application for an AO and GI, which procedure is not regulated by the current legislation.
- - Due to the introduction of the procedure for filing objections to applications, there are plans to increase the period of preliminary examination of applications for AO and GI from thirty (30) business days to three (3) months.
- - The inclusion and use of a trademark in a domain name will be deemed to be the “use of the trademark” under the statutory definition, which is presently not the case.
- - The bill introduces a formal procedure for filing an opposition to a trademark application.
- - Due to the introduction of the procedure for filing objections to applications, there are plans to increase the period of preliminary examination of applications for trademarks from ten (10) business days to one (1) month.
- - It is planned to change the effective term of the patent for an industrial design (hereinafter “ID”). Currently, an ID patent is valid for 15 years from the date of application and can be renewed for no more than 5 years. The bill provides for a reduction in the initial term of the patent to 10 years, but with the possibility of renewal for 5 years up to 3 times. As a result of this, the total effective term of an ID patent is expected not to exceed 25 years.
- - The bill bans patenting of methods of human cloning, changes in the genetic integrity of the human germ line cells, as well as the use of human embryos.
- - Thebill provides for the possibility of patenting of the following objects (only as a direct part of a patentable technical solution) as an invention:
- scientific theories and mathematical methods; methods of organization and management of the economy;
- notation conventions, schedules, rules; rules and methods for performing mental operations, playing games;
- computers programs and algorithms as such; projects and layouts of structures, buildings, territories; proposals concerning only the visual appearance of products.
According to the current Patent Law, these objects are not recognized as inventions.
- - Granting protection to unregistered IDs for a 3-year period from the date when the ID was first published in the Republic of Kazakhstan. The current legislation does not provide for temporary protection of an ID.
- - There are plans to expand the list of circumstances in which the free use of copyrighted works is possible. For example, educational organizations will be allowed to use such works for educational, non-commercial purposes without the consent of the author or other copyright holder and without payment of royalties. This provision is absent in the current copyright law.
- - The degree of control over collective management organizations (hereinafter “CMO”) will be increased.
- - In case the authority for the collective management of rights is delegated to several CMOs, the delegated authority will have to differ in scope and/or territory and/or spheres of management. This provision is absent in the current copyright law.
- - The bill allows the use of the electronic format and EDS for the following: a) the provision of the CMO’s reports on the use of rights to users; and b) the conclusion of license agreements between CMOs and users.
- - The bill expressly stipulates that the accounting information (financial statements) of the CMOs will not be classified as confidential information.
- - The term of the preliminary examination of an application for a breeding achievement (hereinafter “BA”) is reduced from 2 months to 1 month.
- - Reduction of terms of some stages of consideration of an application for a BA: from ten (10) to five (5) business days.
Senior Lawyer, Patent Attorney of the Republic of Kazakhstan