On November 11, 2017 a new law “On Legal Protection of Inventions” and on November 13, 2017 a new law “On legal protection of industrial designs” entered into force in Turkmenistan.
In addition, following the entry into force of the above laws, on November 13, 2017, the Law of Turkmenistan dated October 23, 2008 “On Inventions and Industrial Designs” became invalid.
With regard to the provisions of the Law of Turkmenistan “On Legal Protection of Industrial Designs“, the following has to be noted:
Formerly, the consolidated law contained the provisions on the granting of a limited patent for a validity period of 10 years or a patent for an industrial design for a validity period of 15 years.
Now the law provides for only one type of title of protection, namely a patent for an industrial design for a validity period of 15 years.
The strict requirements regarding the criterion of “international novelty” are now absent which greatly shortens the time of a patent granting and simplifies its granting procedure.
However, the examination of an industrial design according to the criteria of novelty, originality and industrial applicability is carried out in any case.
An industrial design is recognized as new unless prior to the filing date of the application or the priority date a combination of essential features or an identical industrial design has not been publicly disclosed for a person skilled in the art.
It is no longer required to prepare a special verbal description of an industrial design with a list of its essential features. It is sufficient to provide a brief description of an industrial design, if it is necessary for disclosure of its essence or features. It also simplifies the procedure and reduces the expenses for the granting of a patent, as there is no need of further correspondence with examination authority with regard to the wording of the verbal list of essential features.
Thus, a patent of Turkmenistan for an industrial design can be issued nine months after the filing date of the application, i.e. six to twelve months earlier compared with a timeframe provided by the former legislation.
Formerly, the consolidated law contained a requirement for the annual payment of maintenance fee for an industrial design patent. Now an industrial design patent is initially valid for five years, starting from the filing date of the application. The patent validity may be extended for two additional terms of five years each (renewal fee) subject to payment of the established fee.
According to the transitional provisions of the law, it is envisaged that a limited patent is to be transformed into a patent with a validity period of 15 years. In addition, the payment of patent maintenance fees (renewal fee) before the expiration of one of the three five-year periods is allowed for each year of validity or for the remaining term of the relevant period of the patent validity, at the discretion of the patent owner.
A first five-year term (1-5 annuities) USD 500 should be paid together with an Official fee of USD 400 for the patent registration.
The information on annuities, separately by years and by renewal periods for design patents as well, is already available for you.
Before the expiration of the 2-nd or 3-rd five-year period, Design annuities can be paid step by step. No extra annuity fees have been established by Legislation, as the so-called transitional payment procedure of the annuities is envisaged, and it is quite convenient for patentees.
An extract from the Design Law of Turkmenistan regarding transitional provisions.
- The provisions of this Law related to the transition to renewal periods of the industrial design period of five years each shall be applied in the following order:
1) for the action of limited patents and patents registered prior to the entry into force of this Law, the Official fee for an additional period of validity of five years each shall be paid before the expiration of the first or second five-year renewal period;
2) before the expiration of the relevant five-year period, the Official fee for the validity of limited patents and patents registered prior to the entry into force of this Law shall be paid for each year of their operation or for the entire remaining period of the corresponding period of validity.
Thus, the main thing when paying the annuities under the new Law is the following:
If the next annuity should be paid in the middle of one of the two five-year periods of the design patent, it can be paid for each year before the expiration of one of the five-year periods. I.e. if in December 2018 you should pay for the 8-th annuity, you can pay only for the 8-th annuity. In December 2019, the 9-th annuity should be paid, and in December 2020, the 10-th annuity.
Alternatively, on the basis of the transitional provisions, the patentees may pay the remainder of the annuities in full until the end of the relevant five year period.
Then, when the patent enters into the next five-year period, in December 2021 it will be necessary to pay immediately for the five years of the patent, i.e. the 11th and 15th annuities at the same time.