Information on granting a Patent on an Invention
According to the Turkmen Patent Law, the applicant can get two kinds of patents: a limited patent valid for 10 years and a patent valid for 20 years from the filing date of the application.
The limited patent on inventions which is valid for 10 years is issued on the basis of an examination on local novelty, taking into consideration invention patent applications that were filed in Turkmenistan and granted Turkmen patents as well as Eurasian applications and patents valid on the territory of Turkmenistan.
The patent which is valid for 20 years is issued on the basis of a patent examination (substantive examination). Although a corresponding fee is fixed, the Patent and Trademark Office of Turkmenistan (Turkmenpatent) is not able to carry out a full-scale patent examination yet.
To obtain a patent which is valid for 20 years the applicant has to submit a copy of the patent or a decision to grant a patent on a parallel application issued by one of the authorities which conduct an examination on the patentability of an invention, for example, in Russia, the USA, Australia, Great Britain, Japan, European Patent Office.
Such document will be taken by Turkmenpatent as proof of the patentability of the invention.
In case of a PCT application with an International Preliminary Examination Report being positive, one can expect to obtain a patent valid for 20 years on this basis because the positive IPER is taken by Turkmenpatent as proof of the patentability of the invention also.
After six months from the date of conducting the formal examination of the application Turkmenpatent carries out a limited examination of the application and issues a notification on the readiness to grant a limited patent quoting the set of claims. The fee for conducting a limited examination is included in the fee for filing the application.
As a reaction to the notification of Turkmenpatent the applicant can:
– agree to the proposed set of claims and apply for the issuance of a decision on the granting of a limited patent valid for 10 years.
– apply for the adjournment of a decision on the granting of a limited patent in order to submit proofs on the patentability of the invention. Proofs on the patentability of the invention have to be submitted within five (5) years from the filing date of an application with Turkmenpatent.
If no patentability proofs are submitted within the a.m. five-year period, Turkmenpatent will issue a decision on the granting of a limited patent.
The limited patent obtained, which is valid for 10 years, can be converted into a patent valid for 20 years at any time during the term of validity of the limited patent. This means that the patent owner has the possibility to convert a limited patent into a (proper) patent within the 10 year period of validity of the limited patent.
The limited patent grant decision can be issued after 12 months from the application filing
date. To convert the limited patent into a patent the above-mentioned proofs on the
patentability of the invention have to be submitted.
The 1-st and 2-nd annuities (50+75) is paid simultaneously with the patent granting fee.
The above annuities are paid according to the patent grant decision, if it is received.
Application for an invention (abstract or claims) are published in the official gazette of Turkmenpatent within 18 months from the filing date of the application.
The fee for keeping the patent in force is counted from the first year of the filing date (International filing date) of the application and is paid only in case a patent is issued.
The Turkmenpatent gives out all certificates on the industrial property, including the patent on an invention in three languages: Turkmen in national alphabet, Russian and English.
The law stipulates the possibility to prolong a patent valid for 20 years by another 5 years if the patent object is a new medicinal substance, an agrochemical or a pesticide. For this, the period from the filing date of the application to the decision to grant a patent or to the permission to use the medicinal substance, agrochemical or pesticide does not count.
Requirements for a patent application:
If it is a conventional application, a properly certified copy of the first application is required. For keeping the invention in force a copy of the first application has to be submitted within three months from the date of filing the application in Turkmenistan.
A PCT application can be filed within 31 months from the priority date. To file the application two copies of the application set in the original language are needed. Additionally, two copies of PCT documents according to Chapter I or Chapter II are required.
Other documents or forms signed by the applicant or by the inventor are not required.
It is also necessary to submit a Power of Attorney. The Power of Attorney must bear a corporate seal or a formal stamp of the applicant. Notarization is required only in case the corporate seal or formal stamp is missing. Legalization is not required.
The Turkmen law does not envisage protection of utility models. If an applicant wants to obtain protection for a utility model, it is possible to file an application not for a utility model, but for an invention with the perspective to obtain a limited patent only. The priority of the invention can be claimed in accordance with the filing date of the utility model application, if the application is filed with Turkmenpatent within 12 months from the filing date of the first utility model application.