Law on the Inventions, Utility Models and Industrial Designs

(new draft)

I. GENERAL PROVISIONS

Article 1. Aim of this Law

This law shall be designed to govern relations regarding the creation, legal protection and use of inventions, utility models and industrial designs (hereinafter – industrial property subject matter).

Article 2. Legislation on industrial property subject matter

The legislation on industrial property subject matter shall consist of this Law and other legislative acts.

If an international agreement to which the Republic of Uzbekistan is party establishes rules other than those provided for by the legislation of the Republic of Uzbekistan on industrial property subject matter, the rules of the international agreement shall apply.

Article 3. State Patent Office of the Republic of Uzbekistan

The State Patent Office of the Republic of Uzbekistan (hereinafter – the Patent Office) shall conduct State policy in the field of legal protection of industrial property subject matter.

The Patent Office shall consider applications for the grant of patents for industrial property subject matter (hereinafter – a patent application), carry out a State examination and State registration of such subject matter, grant patents for industrial property subject matter, publish an official gazette, adopt rules and give explanations concerning the application of legislation on industrial property subject matter, and carry out other functions in accordance with the Patent Office Regulations approved by the Cabinet of Ministers of the Republic of Uzbekistan.

Sources of funding for Patent Office activities shall include State Budget resources, patent fees, and also payment for services and materials supplied by the Patent Office.

Article 4. Patent Office Appeal Board

The Appeal Board (hereinafter – Appeal Board) shall be independent in its decision-making and shall be governed in its activities by this Law and other legislative acts.

The Appeal Board shall examine appeals:

- relating to the decisions of the Patent Office regarding claimed industrial property subject matter;

- by the natural and legal persons concerned against the grant of patents for industrial property subject matter;

- against the validity of patents for industrial property subject matter.

Within the limits of its powers, the Appeal Board may also examine other types of appeals.

The Appeal Board Regulations shall be approved by the Cabinet of Ministers of the Republic of Uzbekistan.

Article 5. Legal protection of industrial property subject matter

The right to industrial property subject matter shall belong to the inventor (joint inventors) or his legal successor(s) and shall be certified by a patent.

If several persons have created industrial property subject matter independently of each other, the right to the patent shall belong to the person who first filed an application for the grant of a patent with the Patent Office.

The inventor (joint inventors) of industrial property subject matter, for which an application has been filed or a patent obtained as a result of unlawful borrowing, shall have the right to challenge the grant of the patent or request the transfer of the patent to him, as the patent owner, by the courts.

A patent for industrial property subject matter shall be granted, once a State examination has been conducted.

A patent for an invention shall certify novelty, inventive step, its activity and the exclusive right of the patent owner to own, use and dispose of the invention.

A patent for a utility model shall certify novelty, its activity and the exclusive right of the patent owner to own, use and dispose of the utility model.

A patent for an industrial design shall certify the novelty and originality of the industrial design, its activity and the exclusive right of the patent owner to own, use and dispose of the design.

The obligation to prove the non-validity of a patent for industrial property subject matter, within the full scope of legal protection or only part thereof, shall lie with the party claiming the non-validity.

The exclusive right of a patent owner shall be considered valid from the date of publication of the information concerning registration of industrial property subject matter in the Patent Office official gazette.

A patent for an invention shall be valid for twenty years (ten years for an industrial design patent and five years for a utility model patent), from the filing date of the application for the grant of a patent with the Patent Office.

The validity of a patent for an invention in the cases provided for by legislation may be extended by the Patent Office at the request of the patent owner, but for a maximum period of five years. The procedure for extending the validity of a patent for such an invention shall be established by the Patent Office.

The validity of a patent for an industrial design and of a patent for a utility model may be extended by the Patent Office, at the request of the patent owner, for five years and three years respectively.

The scope of legal protection provided by a patent for an invention and a utility model shall be defined by their claims, and for a patent for an industrial design by all its essential features and/or the combination thereof (hereinafter – all its essential features), represented in images of the article (mock-up, drawing).

A patent for industrial property subject matter and also the right to obtain such a patent shall be inherited.

Article 6. Patentability requirements for an invention

Subject matter claimed as an invention shall be granted legal protection, if it is novel, involves an inventive step and is industrially applicable.

An invention shall be novel, if it is not known from the prior art.

An invention shall involve an inventive step, if it is not obvious from the prior art.

The prior art shall include any information made generally accessible in the world before the priority date of the invention.

In establishing the novelty of an invention, withdrawn applications for the grant of a patent, filed with an earlier priority, shall also be taken into account.

An invention shall be industrially applicable, if it may be used in industry, agriculture, healthcare and other sectors.

The public disclosure of information relating to an invention, by the inventor, applicant or any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance influencing the recognition of the patentability of the invention, if the application for the grant of a patent for the invention has been filed with the Patent Office not later than six months from the date of disclosure of the information. In that regard, the obligation to prove the fact in question shall lie with the inventor and the applicant.

The following shall be recognized as inventions:

- devices;
- methods;
- substances;
- strains of micro-organisms;
- plant and animal cell cultures;
- application of previously known devices, methods, substances and strains of micro-organisms for a novel purpose.

The following shall not be recognized as inventions:

- scientific theories and mathematical methods;
- organizational and management methods;
- agreed designations, schedules and rules;
- rules and methods for carrying out intellectual operations;
- algorithms and computer programs;
- plans and diagrams for buildings, constructions and land;
- decisions relating only to the external appearance of articles, intended to satisfy aesthetic requirements;
- topographies of integrated circuits;
- plant varieties and animal breeds;
- decisions contrary to public interests, principles of humanity and morality.

Article 7. Patentability requirements for a utility model

Subject matter claimed as a utility model shall be granted legal protection, provided that it is novel and industrially applicable.

A utility model shall be novel, if all its essential features are unknown from the prior art.

The prior art shall include all the information made generally accessible in the Republic of Uzbekistan concerning means for the same purpose as the claimed utility model and also information on their application.

A utility model shall be industrially applicable, provided that it can be used in practice.

The public disclosure of information relating to a utility model, by the inventor, applicant or any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance influencing the novelty of the utility model, if the application for the grant of a patent for the utility model has been filed with the Patent Office not later than six months from the date of disclosure of the information. In that regard, the obligation to prove the fact in question shall lie with the inventor and the applicant.

The constructive design of devices shall relate to utility models.

The subject matter indicated in part nine of article six of this Law shall not be protected as utility models.

Article 8. Patentability requirements for an industrial design

Subject matter claimed as an industrial design shall be granted legal protection, provided that it is novel and original.

An industrial design shall be recognized as novel, if all its essential features are unknown from the information made generally accessible in the world before the priority date of the industrial design.

In establishing the novelty of an industrial design, withdrawn applications for the grant of a patent, filed with an earlier priority, shall also be taken into account.

An industrial design shall be recognized as original, if all its essential features condition the technical character of the features of the article.

The public disclosure of information relating to an industrial design, by the inventor, applicant or any person who has received this information therefrom, either directly or indirectly, shall not be recognized as a circumstance hindering the recognition of the patentability of the industrial design, if the application for the grant of a patent for the industrial design has been filed with the Patent Office not later than six months from the date of disclosure of the information. In that regard, the obligation to prove the fact in question shall lie with the inventor and the applicant.

An artist or designer’s decision determining the external appearance of an article shall relate to industrial designs.

The following shall not be recognized as industrial designs:

- printed products as such;
- architectural subject matter (apart from small architectural forms), industrial, hydrotechnical and other stationary constructions;
- non-stable subject matter made of liquid, gaseous, friable or similar substances;
- decisions determined exclusively by the technical function of an article;
- decisions contrary to public interests, principles of humanity and morality.

II. PERSONS ELIGIBLE TO THE RIGHT TO INDUSTRIAL PROPERTY SUBJECT MATTER

Article 9. Inventor of industrial property subject matter

The inventor of industrial property subject matter shall be recognized as the natural person whose creative effort led to the creation of the subject matter.

If industrial property subject matter is created by the joint creative effort of more than one natural person, all such persons shall be recognized as its equal joint inventors, unless otherwise agreed by them.

The right of inventorship shall be an inalienable and non-transferable personal non-proprietary right.

Article 10. Patent owner

A patent for industrial property subject matter shall be granted to:

- the inventor (joint inventors) of industrial property subject matter or his (their) heir(s);

- the natural and/or legal persons (with their agreement) indicated by the inventor or his heir in the application for the grant of a patent or in the declaration of amendment of the applicant, filed with the Patent Office prior to registration of the industrial property subject matter;

- an employer in the cases provided for in this article.

The right to a patent for industrial property subject matter, created by an employee in connection with the fulfillment of his/her employment duties or a specific task of the employer, shall belong to the employer where this is provided for by agreement between the employer and employee.

If an agreement between an employer and inventor (joint inventors) does not contain the provisions of the second part of this article, in that case the inventor (joint inventors) shall be entitled to file an application and to obtain a patent for industrial property subject matter in his/her own name. In that regard, the employer shall be entitled to use the corresponding industrial property subject matter in his own production and shall pay appropriate compensation to the patent owner, as defined by agreement.

In cases where an employer keeps industrial property subject matter secret, he shall pay the inventor (joint inventors) appropriate remuneration, the level of which shall be fixed by agreement.

Article 11. The right of a patent owner to use industrial property subject matter

The right to use industrial property subject matter at his/her own discretion shall belong to a patent owner, provided that such use does not infringe the rights of other patent owners, including the right to prohibit the use of the subject matter in question by other persons, excluding the cases where such use in accordance with this Law does not constitute an infringement of the patent owner’s right.

The mutual relations concerning the use of industrial property subject matter belonging to more than one patent owner shall be defined by agreement between such persons. In the absence of such agreement, each patent owner may use the protected industrial property subject matter at his/her own discretion, but shall not be entitled submit an exclusive license therefor or transfer the patent to another person without the agreement of the remaining patent owners.

A patent owner may transfer the right, certified by a patent, to industrial property subject matter, to any natural or legal person(s), according to an agreement for assignment of the patent or the right to use industrial property subject matter according to a licensing agreement. The agreement on assignment of the patent or licensing agreement shall be registered with the Patent Office.

A patent owner may use preventive marking indicating that industrial property subject matter to be used have been patented.

Where industrial property subject matter is not used or is used insufficiently for a period of three years from the date of its registration, any person wishing and prepared to use the protected industrial property subject matter may, where the patent owner refuses to conclude a licensing agreement, request the courts to issue him/her with a compulsory non-exclusive license.

Article 12. Acts not recognized as an infringement of a patent owner’s exclusive right

The following shall not be recognized as an infringement of a patent owner’s exclusive right:

- the use of devices, containing industrial property subject matter protected in the Republic of Uzbekistan, on a means of transport of another State party to the Paris Convention of the Protection of Industrial Property, where the means of transport in question is temporarily or inadvertently located on the territory of the Republic of Uzbekistan, provided that these devices are used exclusively for the needs of the given means;

- the conduct of scientific research or an experiment on means containing industrial property subject matter protected by patents;

- the use of means of containing industrial property subject matter protected by patents, in cases of natural calamities, disasters, epidemics and other exceptional circumstances;

- the use of means containing industrial property subject matter protected by patents, where these means have been lawfully introduced into civilian circulation;

- the use of means containing industrial property subject matter protected by patents, for personal reasons without an income being obtained;

- the one-off preparation of medicines in chemists according to a doctor’s prescription.

Article 13. Infringement of a patent owner’s exclusive right

Any person using industrial property subject matter protected by a patent, in contravention of the provisions contained in Articles 11 and 32 of this Law, shall be considered to have infringed the patent owner’s exclusive right.

An infringement of a patent owner’s exclusive right shall be recognized as the unauthorized preparation, application, import, offer for sale, sale, other introduction into civilian circulation or preservation for this purpose of an article prepared with the application of patented industrial property subject matter, and also the application of a method protectable by a patent for an invention, or the introduction into civilian circulation or preservation for this purpose of an article prepared by directly by the method protectable by the patent for the invention.

Persons using industrial property subject matter in violation of a patent owner’s exclusive right shall, at the request of the patent owner:

- cease the actions infringing the patent owner’s exclusive right;

- compensate the patent owner for the losses he has incurred, in accordance with legislation.

III. APPLICATION FOR THE GRANT OF A PATENT

Article 14. Filing of an application for the grant of a patent

An application for the grant of a patent shall be filed by the inventor, an employer or their legal successor (hereinafter – the applicant) with the Patent Office.

A document shall be attached to applications for the grant of a patent, confirming the payment of the patent fee at the prescribed level, the grounds for exemption from payment of the patent fee or the reduction in its amount.

The requirements for application documents for the grant of a patent shall be established by the Patent Office.

An application for the grant of a patent may be filed personally, or through a patent attorney or an agent.

Article 15. Application for the grant of a patent for an invention

An application for the grant of a patent for an invention (hereinafter – application for an invention) shall relate to one invention or group of inventions so linked as to form a single inventive concept (requirement of unity of invention).

An application for an invention shall contain:

- a request for the grant of a patent with an indication of the inventor (joint inventors) of the invention and the person in whose name the patent is requested, as well as their place of residence or business;

- a description of the invention disclosing sufficient information for it to be carried out;

- claims expressing the essential features of the invention and a fully compatible description;

- drawings and other materials, where required to understand the essential features of the invention;

- an abstract of the invention.

Article 16. Application for the grant of a patent for a utility model

An application for the grant of a patent for a utility model (hereinafter – application for a utility model) shall relate to one utility model or group of utility models, so linked as to form a single inventive concept (requirement of unity of utility model).

An application for a utility model shall contain:

- a request for the grant of a patent with an indication of the inventor (joint inventors) of the utility model and the person in whose name the patent is requested, as well as their place of residence or business;

- a description of the utility model disclosing sufficient information for it to be carried out;

- claims expressing the essential features of the utility model and a fully compatible description;

- drawings and other materials, where required to understand the essential features of the utility model;

- an abstract of the utility model.

Article 17. Application for the grant of a patent for an industrial design

An application for the grant of a patent for an industrial design (hereinafter – application for an industrial design) shall relate to one industrial design and may include alternatives to this design (requirement of unity of industrial design).

An application for an industrial design shall contain:

- a request for the grant of a patent with an indication of the inventor (joint inventors) of the industrial design and the person in whose name the patent is requested, as well as their place of residence or business;

- a series of images representing an article, a mock-up or drawing, providing a full detailed picture of the external appearance of the article;

- a drawing affording general views of the manufactured article, and its functional characteristics or an assembly diagram where indispensable for a clear understanding of the disclosure;

- a description of the industrial design including all its essential features.

Article 18. Priority of industrial property subject matter

The priority date of industrial property subject matter shall be established according to the date of filing with the Patent Office of an application for the grant of a patent.

The priority of industrial property subject matter may be established:

- according to the filing date of the first application in another State party to the Paris Convention for the Protection of Industrial Property (convention priority), if an application for an invention and an application for a utility model have been received by the Patent Office within 12 months, and an application for an industrial design – within six months of the date in question. If for reasons beyond the applicant’s control an application requesting convention priority could not have been filed within the period indicated, this period may be extended by the Patent Office, but by not more than two months. An applicant wishing to take advantage of the right of convention priority shall indicate this accordingly when the application is filed and/or submit the requisite materials not later than three months from application filing date with the Patent Office;

- according to the filing date of additional documents, where such documents are compiled by the applicant as a separate application which is filed prior to the expiry of a three-month period from the date of receipt by the applicant of notification from the Patent Office of the fact that the additional documents may not be taken into account in connection with the recognition that they change the essential features of the claimed invention;

- according to the filing date with the Patent Office of the earliest application of the same applicant, disclosing this industrial property subject matter, if the application, for which such priority is requested, was received not later than 12 months from the date of receipt of the earliest application for an invention and application for a utility model, and six months – from the earliest application for an industrial design. In that regard, the earliest application shall be considered to have been withdrawn.

If in the process of a State examination, it is established that identical applications for the grant of a patent have one and the same priority date, the patent may be granted according to the application for which the earlier date of dispatch to the Patent Office has been proven and, where these dates coincide, for the application which has the earlier incoming Patent Office registration date.

The priority of industrial property subject matter may not be established according to the date on which a withdrawn application for the grant of a patent was received, for which earlier priority has already been requested.

The priority of industrial property subject matter according to a separate individual application for the grant of a patent shall be established as per the filing date with the Patent Office of the original application.

Article 19. Conversion of applications

An applicant shall be entitled to convert an application for an invention into an application for a utility model, and vice versa, prior to a decision being taken on the grant of a patent. In the case of such conversions, the priority of the first application shall be retained.

An appropriate patent fee shall be paid for the conversion of applications.

IV. EXAMINATION OF AN APPLICATION FOR THE GRANT OF A PATENT

Article 20. State examination of an application for the grant of a patent

The Patent Office shall conduct a State examination on an application for the grant of a patent, consisting of a formal examination, an examination of the application for a utility model, and a scientific and technical examination of the substance of the application for an invention or industrial model (hereinafter – substantive examination).

Within two months of the filing date of an application for the grant of a patent, the applicant shall be entitled to make amendments or clarifications thereto, or to include additional documents, without changing the essential features of the claimed industrial property subject matter.

In the case of an application for the grant of a patent, compiled in violation of the established requirements, the applicant shall be requested to provide, within three months of the date of dispatch, corrected or missing documents.

Where an applicant does not provide, within the period indicated, the requested documents or does not submit a request to extend the established period, an application for the grant of a patent shall be considered to have been withdrawn.

Corrections, clarifications or additional documents relating to an application for the grant of a patent may be submitted after the period in question has expired, but not once a decision has been taken to grant a patent, provided that the patent fee has been paid.

In the case of an application for the grant of a patent, filed in violation of the requirements of unity of industrial property subject matter, the applicant shall be invited, within three months of the date of dispatch to him of the corresponding request, to state which subject matter should be examined, and to clarify the application documents accordingly. The other subject matter forming part of the original application documents may be separated into individual applications. If an applicant does not state which subject matter should be examined, and does not provide clarified documents, a State examination shall be conducted of the subject matter indicated first in the claims for the invention or utility model, or in the description of the industrial design.

Deadlines missed by an applicant for the submission of materials following a State examination request may be re-established by the Patent Office, provided that the causes of the unavoidable postponement of the established deadline are confirmed and the patent fee is paid. A request to re-establish a missed deadline may be filed by the applicant not later than 12 months from the day on which the missed deadline expires.

Up to the time of State registration of industrial property subject matter in the appropriate State register, an applicant may withdraw an application for the grant of a patent at any stage of the State examination.

The information contained in documents for applications for the grant of a patent shall be kept secret by the Patent Office, and details thereof shall not be supplied without the consent of the applicant or patent owner. The dissemination of the information contained in application documents, prior to official publication of information on the registration of industrial property subject matter, shall give rise to liability in accordance with the law.

Applications for the grant of a patent, accepted for consideration by the Patent Office, shall not be returned to applicants.

Article 21. Formal examination

A formal examination shall be carried out by the Patent Office after a period of two months from the filing date of an application for the grant of a patent. At the applicant’s request, a formal examination may be undertaken before the period in question expires. In this case, from the time the request is filed the applicant shall be deprived of the rights to add to, correct and refine the application documents at his own initiative, without the payment of an additional patent fee.

During a formal examination, it shall be examined whether the claimed proposal complies with the industrial property subject matter for which legal protection is granted. Based on the results of the formal examination, the Patent Office shall inform the applicant of the decision.

An applicant may lodge an appeal with the Appeal Board concerning a decision of the Patent Office, within three months of the date on which the decision is dispatched. The appeal shall be examined by the Appeal Board within two months of the date of its receipt.

An Appeal Board decision may be appealed in the courts within six months of the date of its adoption.

Article 22. Examination of an application for a utility model

The Patent Office shall examine an application for a utility model, provided that the patent fee has been paid. The patent fee may be paid within three months of the date of dispatch to the applicant of a decision to conduct a formal examination on the acceptance of an application for consideration. Where the deadline in question is breached, the application shall be considered to have been withdrawn.

Provided that an examination is conducted, it shall be verified whether the claimed subject matter meets the requirements of patentability, established by Article 7 of this Law.

If, as a result of an examination, it is established that an application has been filed for a proposal which does not relate to subject matter protected as utility models, a decision shall be taken to refuse to grant a patent and the applicant shall be informed accordingly.

If, as a result of an application examination, it is established that the application documents for a utility model comply with the stated requirements, the Patent Office shall take a decision to grant a patent for a utility model and the applicant shall be informed accordingly.

In establishing that subject matter claimed as a utility model fails to comply with the requirements of patentability, a decision shall be taken to refuse to grant a patent for a utility model and the applicant shall be informed accordingly.

An applicant may lodge with the Appeal Board an appeal concerning a decision of the Patent Office within three months of the date of its dispatch. The appeal shall be examined by the Appeal Board within two months of the date of its receipt.

An Appeal Board decision may be appealed in the courts within six months of the date of its adoption.

Article 23. Substantive examination

The Patent Office shall conduct a substantive examination provided that the patent fee has been paid. The patent fee may be paid within three months of the date of dispatch to the applicant of the decision for a formal examination concerning the acceptance of an application for the grant of a patent for consideration. Where the deadline in question is not respected, an application shall be considered to have been withdrawn.

If, as a result of a substantive examination, it is established that subject matter claimed as an invention, expressed as a formula proposed by the applicant and subject matter claimed as an industrial design, expressed in terms of all its essential features, as proposed by the applicant, meet the established requirements, the Patent Office shall decide to grant a patent.

In establishing that subject matter claimed as an invention or an industrial design fails to comply with the requirements of patentability, a decision shall be taken to refuse to grant a patent.

An applicant may lodge with the Appeal Board an appeal concerning a decision of the Patent Office within three months of the date of its dispatch. The appeal shall be examined by the Appeal Board within four months of the date of its receipt.

An Appeal Board decision may be appealed in the courts within six months of the date of its adoption.

V. OBTAINING A PATENT FOR INDUSTRIAL PROPERTY SUBJECT MATTER AND THE TERMINATION OF ITS VALIDITY

Article 24. State registration of industrial property subject matter

Following a decision taken to grant a patent, the Patent Office shall carry out the State registration of industrial property subject matter accordingly in the State Register of Inventions, the State Register of Utility Models or the State Register of Industrial Designs.

Article 25. Official publication of information on the registration of industrial property subject matter

The Patent Office shall publish an Official Gazette containing information on the registration of industrial property subject matter. A full list and the content of the information shall be defined by the Patent Office.

Article 26. Grant of a patent for industrial property subject matter

A patent for industrial property subject matter shall be granted by the Patent Office after a period of three months from the date of publication of information on the registration of the subject matter in the Official Gazette.

A patent for industrial property subject matter shall be granted in the name of the Republic of Uzbekistan and shall be signed by the Head of the Patent Office.

Where a patent has been requested on behalf of more than one person, a single patent shall be granted for industrial property subject matter.

The form of the patent for industrial property subject matter and the content of the information provided therein shall be established by the Patent Office.

Obvious and technical errors shall, at the request of the patent owner, be corrected by the Patent Office in a patent granted for industrial property subject matter.

Article 27. Recognition of a patent for industrial property subject matter as invalid

A patent for industrial property subject matter may be recognized as invalid, within the full scope of legal protection or only part thereof, at any time according to an appeal lodged with the Appeal Board, on the following grounds:

- non-compliance of protected industrial property subject matter with the requirements of patentability;

- the presence in the claims for an invention, utility model or all the essential features of an industrial design of characteristics missing from the original application documents.

The grant of a patent for industrial property subject matter may be suspended in connection with the lodging of an appeal with the Appeal Board.

An Appeal Board decision may be appealed in the courts within six months of the date of its adoption.

In cases where the courts examine a dispute, production of industrial property subject matter shall be suspended by the Patent Office until such time as the dispute is settled.

Article 28. Termination of the validity of a patent for industrial property subject matter

The validity of a patent for industrial property subject matter shall be terminated upon the expiry of its period of validity, as established by this Law.

The validity of a patent for industrial property subject matter shall be terminated early:

- where the patent fees for maintaining the patent in force are not paid within the prescribed period;

- on the basis of a request submitted by the patent owner to the Patent Office.

Information on the early termination of the validity of a patent for industrial property subject matter shall be published in the Patent Office Official Gazette.

Article 29. Refusal of a patent for industrial property subject matter

A patent owner shall, upon a written request, be entitled to refuse a patent for industrial property subject matter.

A refusal of a patent by one of a number of patent owners shall not lead to termination of the validity of a patent for industrial property subject matter.

A refusal of a patent for industrial property subject matter shall enter into force from the date on which the Patent Office receives a written request from the patent owner.

A patent owner shall inform the inventor of the intention to refuse a patent for industrial property subject matter. In this case, the inventor shall have the right of priority to own the patent.

If a patent for industrial property subject matter constitutes the subject of a licensing agreement, a refusal of the patent is possible only with the consent of the license owner, unless otherwise provided for by agreement.

VI. USE OF INDUSTRIAL PROPERTY SUBJECT MATTER

Article 30. Use of an invention, utility model and industrial design

A product (article) shall be recognized as being manufactured using a patented invention or utility model, and a method protected by a patent for an invention as applied, if each feature of the invention or utility model is used therein and is included in an independent claim, or feature equivalent thereto.

The validity of a patent, granted for a method of obtaining a product, shall also be extended to the product directly obtained by this method. In that regard, a new product shall be considered to have been obtained by the patented method, in the absence of proof to the contrary.

An article shall be recognized as being manufactured using a patented industrial design, if it contains all the essential features of the design.

Article 31. Right of prior use

Any natural or legal person who, up to the established priority date of industrial property subject matter, used an identical solution created independently of its inventor, or made the necessary preparations therefor, shall retain the right to further use thereof free of charge, without the volume of production being expanded.

The right of prior use may be transferred to another natural or legal person only together with the products on which the identical solution was used or the preparations necessary therefor were made.

Article 32. Provision of the right to use industrial property subject matter

Any person who is not a patent owner shall be entitled to use industrial property subject matter protected by a patent only with the consent of the patent owner on the basis of a licensing agreement.

A patent owner may submit to the Patent Office a request to grant any person the right to use industrial property subject matter (open license). In this case, the patent fee for maintaining the patent in force shall be reduced by 50 per cent from the year following that of publication of information concerning such a request by the Patent Office.

A person who has expressed a desire to acquire an open license shall conclude with a patent owner an agreement to grant a non-exclusive license. Disputes relating to the conditions of an agreement shall be examined by the courts. A request by a patent owner for the grant of the right to an open license shall not be withdrawn.

In the cases provided for by legislation, the Cabinet of Ministers of the Republic of Uzbekistan may permit the use of industrial property subject matter without the consent of the patent owner but with the payment of appropriate compensation thereto.

If a patent owner is unable to use industrial property subject matter in connection with the fact that other protected subject matter, belonging to another natural or legal person, is used therein, he shall be entitled to demand from that person the grant of a license for the use of this subject matter on the conditions provided for by agreement.

Article 33. State encouragement of the use of industrial property subject matter

Inventors and economic subjects using industrial property subject matter shall be granted special taxation and credit conditions, as well as other privileges in accordance with legislation.

VII. FINAL PROVISIONS

Article 34. Patent fees

Patent fees shall be levied for the performance of legally significant acts connected with the grant of legal protection for industrial property subject matter. Patent fees shall be paid to the Patent Office.

The levels of and periods for payment of patent fees, grounds for exemption from payment thereof, the reduction in their levels and the reimbursement thereof, as well as the procedure for the use of patent fees, shall be paid by the Cabinet of Ministers of the Republic of Uzbekistan.

Patent fees shall be paid by an applicant, patent owner or other person concerned.

A patent owner shall be granted a preferential period of six months for the payment of a patent fee for maintaining a patent in force, provided that an additional patent fee is paid.

If a patent fee for maintaining a patent in force and an additional patent fee are not paid during the preferential period, the validity of a patent shall be terminated from the day of non-payment of the patent fee within the prescribed period.

Article 35. Patent attorneys

A patent attorney shall avail himself of the right to represent natural and legal persons before the Patent Office.

A citizen of the Republic of Uzbekistan, residing permanently on its territory, may be a patent attorney. The qualification requirements for patent attorneys, and procedure for their certification and registration shall be established by legislation.

Natural persons residing permanently outside the borders of the Republic of Uzbekistan, or foreign legal persons, shall conduct matters relating to the patenting of industrial property subject matter and perform legally significant acts connected therewith, through patent attorneys registered with the Patent Office.

Natural persons residing permanently in the Republic of Uzbekistan, but permanently located outside its borders, may conduct matters relating to the patenting of industrial property subject matter and perform legally significant acts connected therewith, without patent attorneys but with an indication of the address for correspondence within the borders of the Republic of Uzbekistan.

The powers of a patent attorney shall be certified by a power of attorney.

Article 36. Patenting of industrial property subject matter in other States

Natural and legal persons of the Republic of Uzbekistan shall be entitled to patent industrial property subject matter in other States, in accordance with the procedure established by legislation.

Article 37. Rights of foreign natural and legal persons

Foreign natural and legal persons shall enjoy the rights provided for by this Law, on an equal footing with natural and legal persons of the Republic of Uzbekistan or on the basis of the principle of reciprocity.

Article 38. Settlement of disputes

Disputes relating to the creation, legal protection and use of industrial property subject matter shall be settled in accordance with the procedure established by legislation.

Article 39. Liability for the infringement of legislation concerning industrial property subject matter

Persons who have committed infringements of legislation concerning industrial property subject matter shall assume liability in accordance with the established procedure.


LAW
of the Republic of Uzbekistan
on Amendments and Additions to the
Law of the Republic of Uzbekistan
on Inventions, Utility Models
and Industrial Designs

The Oliy Mazhlis (National Parliament) of the Republic of Uzbekistan hereby DECREES that:

Amendments and additions be made to the Law of the Republic of Uzbekistan on Inventions, Utility Models and Industrial Designs of May 6, 1994 (Gazette of the Supreme Soviet of the Republic of Uzbekistan, 1994, No.5, p.138; Gazette of the Oliy Mazhlis of the Republic of Uzbekistan, 1998, No.3, p.38), the new wording of which (attached) has been approved.

President of the Republic of Uzbekistan
I. KARIMOV
Tashkent, August 29, 2002

19.08.2009