PATENT EXAMINATION IS A PUBLIC AFFAIR

Tolbashi Sh. Shatmanov
the Head of Examination Department

In conditions of a market economy industrial property subject matters are the commodity, so in this connection the questions of the state registration and legal protection become very important.

Historically one of the first patenting system has emerged in England during the directorate of Elizabeth I. The practice of technology transfer and creation of new branches of industry is not new, it’s development begun since XII century, and form XIV century by the king’s authority special privileges are provided for those people who was involved in the process of creation of new branches of industry based on import tehnologies, in order to support them in this activities. This kind of support had the form of exclusive rights granting to the person, to use that technology for certain appropriate period of time, who was involved in the implementation of a new technology.

Such temporary rights was fixed in a document, called "Letters Patent" i.e. "open award" since it has the stamp on the bottom, and was not sigillated by the stamp as the letter.

Patenting and registration system of industrial property subject matters has emerged as the tool that regulates technology transfer and creation of new industrial branches. Fair and perfect patenting system, providing to author the recognition and material advantage, stimulate creative and innovative activity.

The term industrial property can be determined as a result of a human intellectual creativity, as well as the different indications of a business activity. Industrial property subject matters are the inventions, utility models, industrial designs, trade marks, and trade names.

Basic functions on provision of legal protection to the said subject matters is the execution of determination by Kyrgyzpatent expertise.

Tasks, resulting from the Patent Law of the Kyrgyz Republic on provision of legal protection to inventions and utility models, that entered into the force on February 4, 1998 and regulates economic and personnel moral rights, legal protection and usage, emerging with their creation, are imposed upon the inventions and utility models examination division.

The main function of division is the execution of the state examination of applications on inventions and utility models for granting the titles of protection. Legal protection of inventions begins from the moment when it is meet the requirements as to patentability, namely to the world novelty, inventive step and industrial applicability.

The term an invention can be understood as the process of creation of something new, unusual that requires creativity and secondly the result of such creative process.

Devices, methods, substances, cultures of microorganisms, plant and animal cells as well as their new application according to the particular utilization and any other achievements in different fields of technique and technics and technology.

As for the utility models to which only the structures are related, requirements are not so high and include only the local novelty and industrial applicability.

Inclusion to the list of protected industrial property subject matters, utility models, with their conditions of patentability and terms of protection in 5 years, with possible extension for 3 years is advantageous to small, average enterprises for which it is always important to have operative, but sufficiently reliable legal protection of their developments. Statistic data on titles of protection granted on utility models shows that such kind of protection is typical for small firms that produce the goods of a wide utilization.

Legal protection to inventions and utility miodels is provided only upon the filling of a properly filled application to Kyrgyzpatent and execution of an extertise as for the conditions of patentability.

In consequence of the existing objective reality, namely non fullness of a patent fund and lack of experienced patent experts, examination of inventions and utility models at present is "coming-checking". This means that applicant is entitled to make a request on patent granting with the execution of substantive examination, or preliminary patent granting that has the same power, but shorter term of action, on available materials of application upon his or her own responsibility according to the world novelty criteria. Introduction of a such kind of extertise system is a temporary measure. In future only the checking system will remain.

The basic part of patented by national applicants inventions consists of applications related to the chapter A in the International Patent Classification, - satisfaction of a human living needs. Broadly patenting new chemical compounds, methods of reception, new medicines and so on.

A big portion in total amount of applications are from foreign applicants that gives a clear understanding on advantage in providing of a patent protection in Kyrgyzstan and characterize the fair patent situation in republic and reflect the results of conducted state economic and scientific-technical policy.

The titles of protection granted after the examination positive passage has the territorial and temporary restrictions. In other words they are active only on the territory of the Kyrgyz Republic and valid during the certain period of time, and then becomes the state property. During the action of a title of protection, however, patent owner has the exclusive rights on his invention, utility model, including the right to prohibit the use by other persons. Any person, different from the the patent owner, cannot to use the invention without authorization of a patent owner on the basis of a licensing agreement. It should be noted that it is in the sphere of a public interests that the invention will be used, if it is not used during 3 years, subject to the mandatory licensing to third parties.

The cases on infringements of a patent owner rights, enforcements of licensing agreements and other disputes, designated in Article 35 of the patent Law, are considers in accordance with their competence by the Kyrgyzpatent Board of Appeals or Court. Like the inventions and utility models, industrial designs are also industrial property subject matters. It is natural to the whole mankind aspiration to the beauty. It’s best representatives creating pictures, sculptures, works of stage art, artistic and musical works and so on. But to mankind also natural to round them-selfs with beautiful thing in daily manner, rest, and in the work.

Industrial designs can be understood as the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features that forming human daily life environment (way of life, rest, work). Specialty of industrial design is that its aesthetic specialty connected with functional ones, i.e. industrial designs - are the necessary and useful that used in daily life.

In order to be protected as an industrial design an ornamental or aesthetic aspect of an article, has to meet the requirements provided for in the Patent Law of the Kyrgyz Republic.

First legal norms in Russia in the field of industrial designs protection were introduced by manifesto "On privileges for different inventions and discoveries in arts and handicrafts" in 1812. "Inventions in arts" can be understood as industrial designs, as for the "discoveries in arts" - works of arts. Thus, mankind realized the necessity of protection the results of intellectual creativity, long time ago.

Registration of trademarks, service marks as well as appellations of origin is carried out by the Trademarks Examination Division.

A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors. Trademark (service mark) is the strongest visual source indicating image of an enterprise.

Trademarks already existed in the ancient world. So from ancient times products, alongside with the anonymous goods on separate products there are the designations as the signatures addressed to the manufacturer. We were found an inscription on one vessel, made in Ancient Greece "Vase was made by Evtimid how could never make Evfony". This original advertising of the production was intended to affect on public opinion of the Athenian consumers. However in a slave-owning society the marks of the goods had casual character and never regulated by law.

During the period of socialism state principle of trademarks distribution among the manufacturers of similar production was mainly characteristic. At the same time in the markets of Soviet Union it was possible frequently to see under the one trademark similar confectionery products, softs and products of the different manufacturers. For instance, the vodka "Stolichnay" was produced not only in capital of the USSR, but also practically in all alcohol factories of the Soviet Union. And the consumers made the choice not on a trademark but on the manufacturers, from which quality of production depend. Such public trademarks distribution practically excluded confusion of these ones in the market.

Use of marks sharply grows in transition to market economy, that is caused by growth of manufacture, increase of trade turnover, intensification of a competition in manufacture and sales of the similar goods. The manufacturer is vitally interested that only his products to be bought by the consumers, instead of similar products of other manufacturers of the goods. Taking various measures in this respect (including investment of the capitals in increase of quality of the products, in their advertising etc.), manufacturers designate the products easily perceived, remembered signs allowing to the buyer to choose just his goods from all similar goods. Simultaneously, the manufacturer is interested that the competitors had not the rights to use on their goods of a designation, identical or even only similar with his one.

Trademark registration as well as legal protection issues are regulated by the Law of the Kyrgyz Republic "On Trademarks, Service marks and Appellations of Origin", which was put into force in January 28, 1998.

Pursuant to the law application should be filed with the Kyrgyzpatent for registration of trademark. After examination including search of similar designations trademark is regostered for 10 years. After the expiration of said period term of protection for trademark can be prolonged on the consent of trademark owner for the next 10 years.

In growing of competition in the market interest increased on the part of the businessmen to a trademarks as an instrument allowing to win a place in the market which conforms to quality of sold products.

This interest is expressed, on the one hand, number of the applications for registration of trademarks received with Kyrgyzpatent within last three years (for example, in 1995 - 1813 applications have been filed to Kyrgyzpatent according to the Madrid Agreement as well as 645 applications - according to the national procedure; in 1996 - 1775 applications according to the Madrid Agreement and 523 - according to the national procedure; in 1997 - 2545 applications according to the Madrid Agreement and 662 - according to the national procedure) on the other hand, as problems resulted from increasing a number of conflicts between owners of both investing and investing-oriented trademarks.

From the put into force the law Kyrgyzpatent has begun the registration of never protected in Kyrgyzstan before an intellectual property subject matter - appellations of origin which can not to be subject of exclusive rights for certain legal and natural entities as, for example, exclusive right for trademark. Therefore, nobody can monopolized use of any appellations of origin since any person within the region where registered appellation of origin is used can, under certain obligations, to get certificate for use of this one.

In the course of a free competition to each perspective businessman is necessary not only Kyrgyzstan market, but also markets of neighboring countries. How to get to these markets. If the businessman was decided get to any market, it is necessary to him to make investments for creation of the firm or its branches. Therefore, it is necessary to entitle this firm and to think out any trademark. Not each idea of trademark creator is automatically protected by the law. For example, VAZ had to refuse a trademark "Jiguli" on export automobiles because the word "jiguli" is identified with words "unreliable" in Arabic, "souteneur" in French and "scum" in Hungarian. Therefore, "Lada" is emerged. Thereof should pay special attention to the development and use it. The trademark should answer the high aesthetic requirements. For the progress in advertising the figurative trademark should be graceful, and verbal one - euphonical.

Sometimes, in business life the similar cases occurred with large firms as well. For example, the automobile company Mercedes-Benz AG has not protected its interests concerning a series of produced cars "E-Class". Originally, Mercedes Benz AG turn to the Germany Patent Office for the information concerning an opportunity of registration of this mark. When it was clear that chances for registration of a mark "E-Class" are not enough, the application have decided not submit. At the same time, Mr. Shele has submitted the application for registration of a mark "a Class Е" that is translation on French designations "E-Class" and has received protection on a declared mark. Moreover, the firm Mercedes-Benz AG has spent already 200 thousands DM to get the rights on this mark, but without any success. Keen-witted Mr. Shele has become to require 1000 marks for each sold machine with "E-Class" sign.

All happened taken place because the manufacturers wanted to save on money and have suffered the losses exceeding usual charges on reception of a mark. Not casually, that the global firms spend considerable efforts for the development and protection of the trademarks and hasten to register them as well as carefully preserve against any infringements. For example, the Coca-Cola firm has fixed cost of its trademark in 5 million USD, "Camel" - in 10 million USD, "Dodg" - in 74 million dollars.

Thus, all above-mentioned facts must convince Kyrgyz entrepreneurs to be far-seeing in protection of their primary intellectual property rights.

It is also necessary to note that for the purposes of obtaining the rights for trademark abroad and simplification of a procedure for such obtaining Kyrgyz Republic in 1991 has joined to Madrid Agreement concerning the International Registration of Marks. Within the framework of the said agreement the simplified procedure to the applicants of Member States, which are at present totaled 51, is given for obtaining legal protection in other Member States.

As an industrial property subject matter trade name should be protected. The main reason for the legal protection of trade names from illegal use is, that as they intended for distinguishing from other enterprises, in case of use similar or hardly distinctive trade names, the consumers can be misled thinking that their owners actually represent the same enterprise. Such confusion causes damage not only to the consumers, but also enables firm to get a part from volume of sales of the owner which previously registered trade name and due to the reputation of this name to take unfair benefit.

The trade names nominate the legal and natural entities carrying out commercial and business activities and serves for them as private name as well as inform the consumer on their status, origin, sphere of activity. In other words, the trade name individualizes the both legal or natural entities and is the warranty of their production and services. In accordance with the use the trade name gets business reputation as well as becomes large popular. Therefore, businessman is interested that his trade name did not use by other persons or unfair competitors. There are such trade names as "Ford", "Simens", "Xerox", "Kodak", "Adidas" etc.

Complete identity or similarity of the trade names can lead to the confusion of prestigious and commercial interests of firms and entrepreneurs, as well as cause them essential moral and material damage.

Practical way - organization of registration of the trade names and keeping of the state register of the trade names of the Kyrgyz Republic.

At the same time, Draft of the Law of the Kyrgyz Republic "On Trade Names", worked out by Kyrgyzpatent, regulates the registration of trade names of the legal entities which are commerce organizations (economic institutions, public enterprises, industrial co-operative societies) as well as natural entities dealt with business activity.

Trade name is stable full or shorter name of any legal entity or entrepreneur which distinguishes themselves from other legal entities or entrepreneurs.

Moreover, pursuant to the Civil Code of the Kyrgyz Republic trade name should contain one private or nominal name with distinctive sense.

Legal protection of the trade name of the Kyrgyz Republic should be provided on the basis of the state registration according to the Draft Law on trade names or taking into account reputation of a trade name in view of its long use within the territory of the Kyrgyz Republic with regard to the decision of Council of Appeals if it did not lodge in courts.

Applications for registration of a trade name are to be filed by the any legal entity or entrepreneur with the Kyrgyzpatent (competent government authority).

Kyrgyzpatent is carried out examination of trade names to determine their conformity to the requirements of the law on trade names.

In conducting of an examination Kyrgyzpatent uses all dates of the state register of legal entities of the Ministry of Justice of the Kyrgyz Republic; unified state register of statistic units of the National Statistic Committee of the Kyrgyz Republic; state register of trademarks of the Kyrgyz Republic as well as other sources.

If the trade name satisfied to all necessary requirements of law and rules of compilation, filing and processing of an application for registration of trade name within the Kyrgyz Republic the decision is adopted for registration of trade name and fixing into the state register.

Title of protection is certificate of trade name registration which certifies priority and exclusive rights for registered trade name with regard to the all obligations said in certificate.

Exclusive right for trade name is economic right which is inalienable from legal entity or entrepreneur.

Infringement of the exclusive rights of legal entity or businessman on the trade name is use of the identical trade name or similar with the protected trade name in actions of other legal entity or businessman.

The trade name cannot be a subject of the purchase, grant or rent contracts. By sale (enterprise) the trade name can be separately estimated and is sold together with the enterprise, unconditionally or with the clause of its termination through certain time.

Our republic is the country with significant agrarian sector of economy, with an advanced infrastructure and certain achievements in the field of selection of plants varieties and breeds of the animals. Since, there is in Kyrgyz Research-and-Production Association on Agriculture by a department of wheat selection is created more than 10 varieties of a winter wheat for all agrarian zones of republic. These are "Eritrosperum 80"; "Eritrosperum 13", "Eritrosperum 42", "Lutenscenc 46", "Frunzenskaya 60" etc. The variety "Intensivnaya" - is facultative and successfully used in winter and in summer sowing in our and in the neighboring republics. In Chimkent area (Kazakhstan) this variety is sowing on the area more than 400 thousand hectares, in Uzbekistan about 100 thousands hectares.

Kyrgyz Republic is one of CIS countries establishing the animal industries at the expense of own genetic resources and is a native land of three breeds of sheeps (Kyrgyz fine-wooled, Tyan-Shan half-fine-wooled, Alay coarse-haired), two breeds of cattle, two breeds of goats (woolly and downy), New Kyrgyz breed of horses and Kyrgyz breed of hens as well as highly productive types and factory lines. Moreover, in high altitude regions of republic were kept aboriginal sheeps, cattle, horses and yaks adapted to a sharply continental climate, hypoxia of air, high solar insulation etc. This gene pool is national property of the Kyrgyz people, main genetic base for further development of animal industries and creation on their basis of new valuable cattle breeds.

Legal protection should be granted to all selective achievements in the course of the market relations and the owner of such rights should have the right to reasonable compensation from any person using selective achievement.

Growing new grades of plants requires significant knowledge, material resources and investments as well as certain exclusive rights for a new variety and creates opportunities for breeder in compensation of his charges and getting additional money resources for investments. Absence of legal protection system made these purposes difficult for implementation as there was no such law which forbade to carry out commercial sales of selective achievement without any recognition of authors efforts for this achievement. Anybody did not forbid to other persons to be busy in duplication of a seed and landing material as well as sale it with high market prices.

Special division dealt with the issues of legal protection for selective achievements was created in Kyrgyzpatent in January 1995. From that moment, jointly with breeders of the Kyrgyz Agrarian Academy as well as taking into account certain experience of legal protection for selective achievements of foreign countries the Law of the Kyrgyz Republic "On Legal Protection of Selective Achievements" have been developed and put into force in July 15, 1998.

Both moral and economic relations resulted from the creation, use and legal protection of selective achievements patented within the Kyrgyz Republic are regulated by the above-mentioned law.

This law consists of 9 sections and 40 articles where legal protection of selective achievements, government regulation in the field of legal protection, terms of patentability of selective achievement, rules of conducting examination, registration and granting patent for selective achievements, rights and obligations of patent owners and their protection are considered.

Above-mentioned Law is closely connected with the Law of the Kyrgyz Republic on seeds put into operation in July 1997 as well as series of Articles prohibited to sale and reproduce seeds material without observation of patent owners rights.

Similar to the rights for intellectual property subject matters patent owners rights are granted within the territory of the Kyrgyz Republic for limited term. At the same time, after its expiration all varieties and breeds protected by the law move on public doman.

The legal protection of selective achievements in many countries will be carried out at observance of the following conditions: the selective achievement should be a variety, clone, line, hybrid for plants. On the other hand, the vegetative culture should be brought into the state list of protected agricultural cultures (for example, specific kind of grain, technical or decorative plants).

In this connection according to the "list of botanical varieties and sorts which are subject to the protection by the Law of the Kyrgyz Republic "On Legal Protection of Selective Achievements" submitted by Ministry of an Agriculture and Water Resources, where is specified five sorts and kinds of plants: wheat soft, wheat firm, barley, oats, potato. It is supposed during two - three years to expand the present list.

According to the above-mentioned Regulation the Government of the Kyrgyz Republic in the "list of botanical varieties and kinds, sorts of which are permitted to grow during two years within the territory of an enterprise" has determined the List of protected varieties and kinds of plants authorized to grow by the farmers on their lands.

The affirmation by Government of this List solves a problem so-called "the privileges of the farmer". This rule of law is accepted by the International Convention on protection of new varieties of plants in 1991. The farmers have an opportunity during two years to reproduce and cultivate within his own territory, for example, for the purpose of reproduction and further industrial processing in meal, vegetative oil, silage etc, types of agricultural production, without sanction of the patent owner and thus not infringe his rights (" exceptions from the breeder rights"). However, on expiration of these two years, in case of sale these seeds the farmer is obliged to receive the sanction for sale from the patent owner. (Breeder).

Nowadays, the Government of the Kyrgyz Republic examines a question of accession to the International Convention for the protection of new varieties of plants the basic activity of which consists in assistance to development of an international harmonization and cooperation, mainly between the member-states of UPOV as well as in rendering assistance to the countries in preparation and drafting of legislation in the field of protection of plants varieties. Moreover, the comparable and similar laws, provisions and regulations are required for successful international trade.

At this moment, the Law of the Kyrgyz Republic for the Legal Protection of Selective Achievements for the conformity with the requirements of International Convention of 1991 is considered by the Council of UPOV.

Becoming the member of UPOV government declares the intention to protect the breeder rights on the basis of principles, received an international recognition and support. It represents to the national breeders an opportunity to get a legal protection in other member-states of UPOV and to save their resources and time since submitting application for the protection of selective achievement in one country breeder then can more cheaply to receive it in other countries of this Union without additional examination.

Membership in UPOV stimulates foreign breeders to make investments in national plants selection as well as in seeds production in our republic so that foreign breeders will be sure, that their rights are reliably protected by the Law on territory of the Kyrgyz Republic.