An application for registration of intellectual property does not always go through the so-called “smooth” registration. Generally, the reason is in the filing of an application for intellectual property that does not meet the protection criteria.
Conditions of eligibility
Below are general eligibility criteria:
– Trademark – must be original and not confusingly similar to registered or filed for registration trademarks;
– Invention – novelty, inventive step and industrial applicability;
– Utility model – novelty and industrial applicability;
– Industrial design – novelty and originality.
Refusal in registration
The decision to register or to refuse registration of the intellectual property is made based on the results of a substantial examination. For trademarks, the term for taking a decision takes 7 months, for patents – from 4 to 13 months.
Once the preliminary decision on the refusal to register a trademark is issued, the applicant has the right to file a reasonable objection within 3 months. In the result of consideration of the objection, the Kazakh Patent Office issues a final decision on registration or refusal in registration.
As opposed to trademarks, in case of a refusal to grant a patent, an objection is submitted with the Board of Appeals, not to the Patent Office.
Board of Appeals
The Board of Appeals is a participatory body under the Ministry of Justice of the Republic of Kazakhstan dealing with the pre-trial consideration of the applicants’ objections. The Board of Appeals consists of at least five members.
In terms of trademarks, the Board of Appeals considers the following objections:
– to the final decision of the Patent Office to the refusal in trademark registration;
– against the registration of a trademark.
In terms of patents – decisions of the Patent Office to patent grant refusal.
Timing
– an objection to the final decision to the refusal in trademark registration is filed within 3 months from the date of sending the refusal, the term for consideration by the Board of Appeals is 4 months;
– the term for considering an objection against the registration of a trademark is 6 months;
– an objection to a refusal to grant a patent for an invention is filed within 3 months from the date of sending the refusal, the term for consideration by the Board of Appeals is 4 months;
– an objection to a refusal to grant a patent for a utility model is filed within 3 months from the date the refusal was sent, the term for consideration by the Board of Appeals is 2 months;
– an objection to a refusal to grant a patent for an industrial design is filed within 3 months from the date of sending the refusal, the term for consideration by the Board of Appeals is 2 months.
Decisions of the Board of Appeals
The Board of Appeals issues one of the following decisions: