Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Currently, there are no specialist IP courts in Kazakhstan in which a patent infringement lawsuit can be brought.

Patent infringement disputes are handled before civil courts. Civil cases are considered and resolved by district (city) and equivalent courts as well as by specialised, inter-district commercial courts. At the request of the patent holder, patent infringement is to be stopped, and the infringer is obliged to compensate the patent owner for the incurred losses. As an alternative, the patent holder can recover the income that the infringer received as a result of infringing activities.

Since 2014, administrative legislation does not provide for administrative liability for patent infringement. Instead, Kazakhstan introduced a new category of criminal offence – a misdemeanour, which is an action or inaction that does not constitute a ‘great public danger’, and that causes relatively minor harm or only poses a threat of harm to an individual, organisation, society or state. Misdemeanours are punished by a fine, arrest or correctional or community service. Since 2015, minor, less severe patent infringements began to be regarded as a misdemeanour.

If a criminal action has to be initiated, the patent holder should lodge a complaint with the police or the Economic Investigation Service (a law enforcement authority), who will then carry out a preliminary or pretrial investigation, after which the case is considered by the district, city or regional (and equivalent) court.

Trial format and timing

What is the format of a patent infringement trial?

While preparing a case for a trial, the judge considers the issues relating to documents, affidavits, live testimony and invites witnesses to the court. Cross-examination of witnesses is permitted. At the request of a party or on its own initiative, the court can appoint an expert and a translator.

Cases (civil and criminal) are decided by a single judge in the first instance, while cases reviewed by appellate or cassation instance courts are decided by a panel of at least three judges. The panel must include an odd number of judges. However, minor crimes can be considered by only one judge at the appellate or cassation stage, as well.

Civil cases are typically considered and resolved by the court within two months after the trial preparation was completed. However, depending on the circumstances of each case, the court can suspend or prolong a trial.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

To establish patent infringement, or invalidity and unenforceability, each party has to provide relevant and sufficient evidence for its claims and objections in a pretrial protocol when filing a claim to court.

The pretrial protocol reflects the actions of the parties and other persons participating in the case relating to disclosure, presentation or exchange of evidence, which parties intend to refer to as the basis of their claims or objections.

The parties may present evidence at the trial stage provided that the impossibility to present it during a preparation stage is justified by the persons who presented them.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patent holder or an exclusive licensee may sue for patent infringement. The alleged infringer may file a counterclaim against the patent holder within the same proceedings.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Patent legislation provides no provisions on inducement of infringement or contributory patent infringement. Generally, the Kazakh legislation includes provisions relating to joint liability. When considering a case against several defendants, the court may either indicate which actions each of the defendants must perform in favour of the plaintiff, or indicate that they are jointly liable. A joint obligation arises from an agreement, or if it is established that the joint obligation is indivisible. In practice, joint liability can be applied when obtaining compensation for damages or collecting the infringer’s profit obtained as a result of patent infringement.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all the defendants be accused of infringing all the same patents?

A lawsuit may be brought jointly by multiple plaintiffs against one or multiple defendants. Each of the plaintiffs or defendants in the lawsuit acts independently concerning the other side. Multiple defendants may be joined in the same lawsuit if:

• the general rights and obligations of multiple defendants are the subject of the same dispute;
• the rights and obligations of multiple defendants have a common basis; and
• the matter in the dispute relating to the rights and obligations of multiple defendants is identical.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Kazakhstan can support a charge of patent infringement if the evidence or activities are recognised by the court as relevant, which is evaluated on a case-by-case basis.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

There are no clear provisions in Kazakh law or judicial decisions that may support the doctrine of equivalents. However, the Supreme Court’s practical manual on IP disputes provides that the establishment of clear rules for the validity of a patent and the proof that the rights are infringed by a particular defendant are crucial in determining patent infringement. The scope of rights of the patent holder is determined by the claims. Patent rights are infringed if each feature of the invention included in an independent claim, or a feature equivalent to it, is used in a manufactured product or method.

To determine the equivalence between the claimed invention and the infringing invention, the court may appoint experts knowledgeable in the subject matter.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Unlike in common law jurisdictions, in Kazakhstan there are no pretrial procedures in a lawsuit, such as discovery of evidence.

When submitting the statement of claim, the plaintiff can file a motion with the court asking it to order the defendant or other parties possessing the information or evidence to provide it. If the defendant or the third party fail to submit the evidence within a specified time period for reasons recognised by the court as disrespectful, the court will conclude that this evidence is directed against the interests of the opponent or the third party and they may incur administrative or criminal liability.

If it is difficult for the parties and other persons participating in the case to present evidence, or when the evidence is outside the country, the court of first instance assists the parties in collecting evidence upon their request.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically, civil cases are considered and resolved by the court of first instance within two months from the date of completion of preparation of the case for trial. The preparation of civil cases for trial should be carried out no later than 20 working days from the date of adoption of the statement of claim. The final decision must be made no later than five working days from the announcement of the operative part of the decision.

Cases in courts of appeal are considered within two months from the date of the case’s receipt by the court. However, it should be noted that the terms can be changed, suspended or prolonged by a court decision depending on the circumstances of each case.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical range of costs of a patent infringement lawsuit is, on the average, €10,000 to €50,000 in the first instance (pretrial and first instance), and for an appeal it ranges from approximately €5,000 to €20,000. Contingency fees are allowed, but this is subject to agreement between the lawyer and client before trial. These are only average amounts to expect and a lot will depend on the time spent on case analysis – this usually is the most time-consuming part and usually falls under the pretrial phase.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

In a patent infringement lawsuit, first-instance decisions that are not final may be appealed in appellate courts. First-instance decisions that are final and decisions of the specialised judicial board of the Supreme Court may be appealed in cassation before the Supreme Court.

New evidence that has not been submitted to the court of first instance is allowed at the appellate stage if it is proven that it was impossible to submit it to the court of first instance, which may be due to:

• the person in question not being involved in the first-instance case; or
• the petition for the investigation or reclamation of the evidence being dismissed at first instance.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

Generally, Kazakh law provides for sanctions against unfair competition acts. Enforcement of a patent can expose the patent owner to liability for a competition violation, unfair competition or a business-related tort only if such actions lead or may lead to the restriction or elimination of competition. In practice, these cases have been rare.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

According to patent law, arbitration or mediation can be used to resolve the following:

• violation of the exclusive right to use the patented invention;
• the conclusion and execution of licence agreements;
• the employee inventor’s remuneration; and
• compensation issues.

Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent for an invention is granted for technical solutions, in any field, related to a product (a device, substance, microorganism strain, plant or animal cell culture) or a method, as well as for the use of a known product or method in a new way, or a new product for a specific purpose. However, the following are not recognised as inventions:

• discoveries, scientific theories and mathematical methods;
• methods of economic organisation and management;
• symbols, observations and rules;
• rules and methods for performing mental acts and playing games;
• computer programs and algorithms;
• projects and plans for structures, buildings and territories;
• aesthetic effects of products; and
• inventions contrary to public order or the principles of humanity and morality.

The same restrictions apply to utility models, which in addition cannot cover diagnostic, therapeutic and surgical methods for treating humans or animals.

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The patent rights to an invention made by an employee in the course of employment or in connection with a specific task assigned by the employer belong to the employer unless otherwise specified in the employment agreement.

The ownership of rights to an invention created by an independent contractor, multiple inventors or a joint venture is determined by an agreement between the parties involved.

Defences

Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

A patent may be challenged during the whole period of its validity and invalidated either fully or partially on the following grounds:

• it does not comply with the patentability requirements;
• it extends beyond the content of the application as originally filed;
• it was not granted in accordance with the Patent Cooperation Treaty (PCT) or Eurasian Patent Convention rules; and
• the grant of a patent violates rights of a third-party inventor or patent holder.

The validity of a patent can be challenged by filing a civil action at a district, city or regional court. A patent can be invalidated either fully or partially only by a court decision and it should be revoked from the patent application filing date. If a patent is partially invalidated, a new patent will be granted or issued for the remaining part of the protected subject matter.

Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

Yes, a patent can be granted for an invention that is novel, involves an inventive step and is industrially applicable. However, public disclosure of information related to the invention, including the display of the invention at an international exhibition organised in a state party to the Paris Convention for the Protection of Industrial Property, will not affect its patentability, provided that the patent application is filed no later than six months from the date of public disclosure. The burden of proof lies with the applicant.

Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

The law states that an invention has an inventive step if it is not obvious to a person skilled in the art.

The assessment of inventive step involves identifying:

• the closest analogue to the claimed invention;
• the characteristics that distinguish the claimed invention from the closest analogue; and
• solutions from the prior art with characteristics that match the claimed invention’s distinguishing characteristics.

Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

The legislation does not set out any grounds on which a patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner. However, if a patent holder does not file a lawsuit against an infringer within three years from the infringement, he or she may lose the right to enforce the patent.

Additionally, any person who began using the invention or carrying out the necessary preparatory work for using it between the date of termination of the validity of the patent and the date of publication of the information on the reinstatement of patent rights retains the right to use it, provided that the scope of such use is not expanded (the right of subsequent use). In this case, the patent would be deemed unenforceable.

Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

The patent law separates prior use defence into the use before and after the patent filing date. The defence covers all types of inventions.

A person who, prior to the patent filing date, has conscientiously used an identical solution created independently of the inventor or made the necessary preparations for this use in the territory of Kazakhstan, retains the right to use it free of charge without expanding the scope of the use.

A person who started using the method or device after the priority date, but before the patent publication date, is obliged to stop further use at the request of the patent holder. However, the person is not obliged to compensate the patent holder for losses incurred as a result of the use.

Remedies

Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damages awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?

The law provides for the following monetary remedies against a patent infringer:

• compensation for lost profits and non-pecuniary damages, from the patent publication date;
• recovery of the infringer’s profits instead of compensation for losses, from the patent publication date; and
• compensation of approximately €280,000, instead of the first two options, with the amount of compensation determined by the court.

Royalties are typically calculated in view of the current market situation.

Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

When considering the plaintiff’s application for an injunction, the court has the right to apply an injunction that is consistent with the declared claim. If a claim was made for the recognition of rights or for the restoration of the situation that existed before the infringement, the judge may, for example, prohibit the defendant from taking any actions to distribute the infringing product. If a claim was filed for any type of monetary remedy, the judge has the right to seize the infringer’s property.

Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Are there specific tribunals or proceedings available to accomplish this?

The customs authorities can prevent the importation of infringing goods into the country if the importation violates the local legislation or if the violation is the basis for a criminal case. Such cases are considered in district, city or regional courts.

Currently, the regulation on maintaining a unified customs register of intellectual property rights of the Eurasian Economic Union is applicable for copyright, neighbouring rights and trademark rights, but not for patent rights.

Attorneys’ fees

Under what conditions can a successful litigant recover costs and attorneys’ fees?

A successful litigant can recover all costs and attorneys’ fees if the claim is fully satisfied and if the litigant provides evidence on all incurred expenses. If the claim is partially satisfied, the costs are awarded to the plaintiff in proportion to the part of the claim that has been satisfied and to the defendant in proportion to the part of the claim that the plaintiff is denied.

Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?

Kazakh law does not provide for additional remedies applicable specifically against a deliberate or wilful infringer. There is no approved test or standard to determine whether an infringement is deliberate.

Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The total time limit for patent infringement lawsuits is three years from the date of knowledge of patent infringement.

Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

The law does not oblige patent holders to mark their patented products, but it is stated that the patent holder may mark do so. However, the law does not establish any rules on how the products should be marked or set out any consequences for the failure to mark patented products.

Licensing

Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are several rules that apply to licence agreements:

• they must be concluded in writing and registered with the Intellectual Property Office;
• if the validity term is not specified in the agreement, it will be five years from the date of registration;
• the agreement terminates when the patent expires; and
• clauses that prevent the parties from giving permission to other parties to use the patent must be included (eg, the licensor of an exclusive licence cannot licence the patent to other parties).

Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

If the patent has not been used for three years after its publication date and the patent holder refuses to conclude a licence agreement with acceptable commercial terms within 90 days from the date on which the agreement is requested, any person has the right to request from the court to grant him or her a compulsory non-exclusive licence. If the patent owner does not provide a legitimate reason for non-use, the court grants the licence and determines the scope of use, the term of use and remuneration.

A compulsory non-exclusive licence may also be issued if:

• the use of the patent is in the interest of public health, state defence and other public interests; or
• the patent holder abused his or her exclusive rights or enabled the abuse of his or her exclusive rights.

The court will cancel a compulsory non-exclusive licence if the circumstances that were the reason for its issuance are terminated.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It usually takes up to one-and-a-half to three years to obtain a patent for an invention and up to one year to obtain a utility model certificate. The total cost to prosecute an application for an invention (including official and patent agent fees) with one independent claim, 10 claims in total and 35 pages of specifications and claims (additional independent or dependent claims and additional pages will involve extra fees) ranges from €1,500 to €3,500 and from €1,500 to €2,500 for a utility model. Translation costs are not included in this estimate.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The expedited examination is reserved for inventions with favourable patenting conditions and entails an additional official fee. The list of such inventions is determined by the Ministry of Justice and currently includes the inventions in the field of:

• renewable energy sources (solar energy, wind energy, hydrodynamic energy and geothermal energy);
• anthropogenic sources of primary energy (biomass, biogas and other fuels from organic waste) aimed at reducing emissions of pollutants into the environment and used to produce electrical or heat energy (or both); and
• information and communication technologies.

The expedited examination is carried out within six months, provided that the requirements of the formal and substantive examination are met.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application must include:

• a description of the invention, which discloses it in a manner sufficiently clear and complete for it to be performed by a person skilled in the art;
• claims that define the scope of protection and the subject matter of the invention;
• a formula that is clear, accurate and based on the description;
• drawings and other materials, if necessary, for understanding the subject matter of the invention; and
• an abstract, which is a short summary of the invention and includes the title, the characteristics of the technical field to which the invention relates and the subject matter of the invention if it is not clear from the title.

If the application does not meet these requirements, the Intellectual Property Office (IPO) will notify the applicant and suggest they submit the missing or corrected documents or information within three months from the notification date. If the applicant fails to submit the requested documents or information within the established time period, the application will be deemed not submitted.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

An applicant must disclose information about the claimed invention’s closest analogues (prototypes) known to the applicant in the ‘prior art’ section of the patent application. If prior art is disclosed in the text, the following should also be noted: bibliographic data of the source of information and the features characterising the prior art, highlighting those that coincide with the subject matter of the claimed invention, as well as reasons known to the applicant that impede the achievement of the required technical result.

For instance, if the invention relates to a method for producing a mixture of an unknown composition with a specific purpose or type of biological activity, a method for producing a mixture with the same purpose or the same biological activity should be indicated as an analogue.

If the invention relates to a method for producing a new chemical compound, information about the method for producing its known analogue should be disclosed.

If the invention relates to the use of a known product or method for a new purpose, then its prior art should include known products or methods for the same purpose.

In applications relating to a group of inventions, information about analogues of each individual invention should be provided.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?

If there is a violation of the unity requirement in an application filed for a group of inventions, the applicant may inform the IPO, within three months from the notification date, which of the inventions should be considered. The remaining inventions from the initial application may be submitted as divisional applications, whose priority date will be the same as that of the initial application.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The applicant may file an objection to the IPO’s refusal decision within three months from the decision notification date. The objection must be considered by the Board of Appeals of the IPO within four months of the date of its receipt. For utility models and design patents, the objection must be considered within two months from the date of receipt. The consideration of all objections is mandatory. The Board of Appeals is a collegiate body under the Ministry of Justice for pretrial consideration of applicants’ objections. The Board of Appeal’s decisions may be appealed in a court.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The IPO does not provide any mechanism for opposing the grant of a patent. It is not possible to file an opposition against a pending application. The IPO publishes information on the grant of a patent, after which anyone has the right to familiarise themselves with the application and the search report prepared by the IPO and file an objection with the court.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

If identical inventions have the same priority date, priority will be given to the applicant who can prove the earlier date of submitting his or her application. If these dates coincide, priority will be given to the application that has an earlier IPO registration number.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Patent law provides a procedure for amending a patent application – during the examination, the applicant may, on his or her own initiative or at the IPO’s request, correct, clarify or change the application materials, but without changing the subject matter of the invention. Additional materials or information that change the subject matter of the invention are not considered within the same application.

Before the IPO’s decision to grant a patent, the applicant can also change applicant information in the application as a result of transferring the patent rights to someone else.

Patent legislation also includes provisions allowing applicants and patent holders to revoke patent applications and patents by filing a revocation request with the IPO.

Patent duration

How is the duration of patent protection determined?

A patent for an invention is granted for 20 years from the application filing date. For inventions relating to medical products and pesticides, the use of which requires a marketing authorisation, the duration of patent protection may be extended at the request of the patent holder for up to five years from the initial application date, and for up to 20 years for divisional applications.

A utility model is valid for five years from the application filing date. Its validity may be extended for three years at the request of the patent holder, providing additional fees are paid.

Design patents are valid for 15 years from the application filing date. Their validity may be extended for an additional five years at the request of the patent holder providing additional fees are paid.

Update and trends

Key developments of the past year

What are the most significant developing or emerging trends in the country’s patent law?

Kazakhstan ratified the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention on 12 January 2021. The Protocol entered into force on 12 April 2021. The Protocol introduced the Eurasian system of protection for industrial design patents, along with the already existing regional protection for inventions. It was adopted by the Eurasian Patent Organization (EAPO) member states on 9 September 2019. The Eurasian design patent applications can be filed with the EAPO either directly or through an EAPO member state’s national patent office. All applicants follow uniform examination requirements, use only the official language of the EAPO – Russian – and pay a uniform procedural fee. Once granted, Eurasian design patents will be valid for five years, counting from the application filing date. They will be renewable for additional five-year periods up to four more times so that the maximum term of protection does not exceed 25 years from the application filing date. The relevant amendments to the national Patent Law relating to the term of protection are currently being considered and are expected to be adopted by the end of 2022.

By Aliya Madiyarova, Head of Office at PETOŠEVIĆ Kazakhstan

Reproduced with permission from Law Business Research Ltd. This article was first published in Lexology GTDT – Patents 2022. For further information, please visit: https://www.lexology.com/gtdt.