TURKMENISTAN: Changes to Industrial Design Legislation

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.

The prerequisite for adoption of new laws is the fact that since March 16, 2016, Turkmenistan became a member of the Hague Agreement Concerning the International Deposit of Industrial Designs, in accordance with the Geneva Act of 1999.This caused the need to develop two separate above-mentioned laws, instead of consolidated one.

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.