TURKMENISTAN: Changes to Patent 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 Law “On Legal Protection of Inventions” the following has to be noted:

All main provisions on inventions from the general (consolidated) law that became invalid were preserved, i.e. both a limited patent for a validity period of 10 years and a full patent for a validity period of 20 years can be granted. A limited patent is granted based on the results of a limited examination.

In this case, the claimed invention is examined with respect to the prior art which includes patents, limited patents of Turkmenistan, applications for inventions submitted in Turkmenistan, as well as Eurasian applications and Eurasian patents.

Formerly, the consolidated law contained the provisions on the conduct of a patent examination for international novelty. Now the patent examination is not carried out independently. To obtain a patent for a validity period of 20 years, it will be necessary to provide evidence of the patentability of the invention.

As an evidence supporting the patentability of the claimed invention, the applicant shall attach to the request for a patent examination a copy of an opinion of one of the international preliminary examination authorities on the patentability of the claimed invention.

As documents confirming the patentability of the invention, the copies of a patent or a decision on its granting for a parallel application, granted as a result of an examination conducted by one of the international preliminary examination authorities, may also be submitted.

According to the law, an office which, on the basis of the Agreement with the International Bureau of the World Intellectual Property Organization (WIPO), performs the functions of the international preliminary examination in accordance with PCT is recognized as the international preliminary examination authority. The list of countries with offices that carry out the above examination is given on the relevant WIPO website.

Also, one of the provisions of the law provides for the possibility to obtain a patent on the basis of an application filed with the Eurasian Patent Office for which a decision to grant a patent was made.

The maintenance fees for the limited patents and patents are required to be paid annually.

Formerly, the consolidated law contained the provisions on the possibility to extend the patents related to medicines, pesticides or agrochemicals for additional five years. New law does not provide the possibility of patent extension for additional five-year period.

The protection of utility models is not envisaged by the legislation of Turkmenistan.

If the applicant is keenly interested in obtaining protection of the utility model, he can expect to obtain a limited patent.