Scope and Ownership of Patents
Types of Inventions Protectable
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
Under patent law, the following cannot be patented as inventions or utility models:
- scientific theories and mathematical methods;
- organization and management methods;
- conventional symbols, times and rules;
- rules and methods for performing mental acts;
- algorithms and computer programs;
- projects and plans for works, buildings and land development; and
- solutions concerning only the external appearance of the products and aimed at satisfying aesthetic requirements.
Software itself cannot be patented. According to the law on the legal protection of computer programs and databases, a program (algorithm) can be protected by copyright; however, if a computer program is described as a method of performing actions with material objects by means of a computer program, or a system demonstrating a connection between certain devices by means of a computer, which is intended to solve a technical problem, it can, in theory, be patented.
Business methods per se cannot be patented; however, if a business method can be described not only as a mental process, but also as a method involving certain material objects that solves a technical problem, it can be patented.
Medical acts can be patented, but they cannot be contrary to the public interest and to the principles of humanity and morality.
Who owns the patent on an invention made by an employee of the company, an independent contractor, several 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 his duties or as a result of a particular task belong to the employer, but only if this is specified in an agreement between them. If the agreement does not contain such clauses, the employee (inventor) may file a claim to claim ownership of the rights. If the agreement does not include the aforementioned provision, the employer must decide what to do with the invention (file a patent application, transfer the rights to a third party or inform the inventor that the invention will be kept secret ) within four months after the employee informed him in writing of the invention. If the employer does not claim the invention and does not make a decision, the inventor (employee) can file a patent application and claim ownership.
Ownership of rights to an invention created by an independent contractor, multiple inventors, or a joint venture is determined by agreement between the parties involved.
The patent holder is registered in the letters patent and in the patent register. To transfer the rights, the patent holder and the assignee must sign a deed of assignment and file it with the Intellectual Property Agency. If the documents meet the requirements for the transfer of rights, the Agency will publish information about the transfer of rights in the local intellectual property bulletin and enter the new patent owner in the register.
Patent office procedures
Timing and costs of patenting
How long does it usually take and how much does it usually cost to obtain a patent?
A patent for invention is usually granted within two to five years from the filing date, and a utility model certificate is usually granted within one to two years.
A cost estimate is around €3,600 to €5,100 for an invention (depending on whether the type of application is a national application or a patent cooperation treaty request), and around €3,500 to €4,500 for a utility model. This estimate covers official fees and average service fees for an application with one independent claim and up to 10 dependent claims, and up to 35 pages of specifications and claims. Additional independent and dependent claims and additional pages incur additional charges. Translation costs and attorney’s fees are not included in the estimates. Applicants are advised to obtain accurate cost estimates from the patent attorneys handling their application.
Accelerated patent procedure
Are there procedures to expedite patent prosecutions?
The patent prosecution highway is not available in Uzbekistan. Accelerated examination of patent applications was introduced on April 1, 2021.
Content of the patent application
What must be disclosed or described about the invention in a patent application? Are there any particular guidelines to follow or pitfalls to avoid when deciding what to include in the application?
Invention or utility models must be drafted in accordance with national rules on the drafting of applications, which give guidelines on the disclosure of each particular object (substance, method, device, etc.).
Prior art disclosure obligations
Should an inventor disclose prior art to the patent office examiner?
There is no such requirement.
Pursuit of additional claims
Can a patent applicant file one or more subsequent applications to pursue additional claims to an invention disclosed in their previously filed application? If so, what are the applicable requirements or limitations?
If a patent application is challenged for lack of unity of invention, claims which are allegedly not related to an invention may be filed in a divisional application which retains the filing date of its parent application and the same priority. This is the only case where the filing of a subsequent application to pursue additional applications is possible under the current legislation in Uzbekistan.
Patent office appeals
Is it possible to appeal an unfavorable decision of the patent office in court?
The decision of the Intellectual Property Agency under the Ministry of Justice must first be appealed to the Board of Appeal, within three months from the date on which the decision was been sent to the applicant. The decision of the Board of Appeal can still be challenged before an administrative court, within six months from the date on which the decision was issued.
Oppositions or protests to patents
Does the patent office provide a mechanism to oppose the grant of a patent?
Any third party may contest a pending patent application by filing an appeal with the Board of Appeal, at any time after the publication of the application and until the grant of the patent. Generally, the IPO publishes an application 18 months after the filing date of the application, but it can be published earlier at the request of the applicant. The decision of the Board of Appeal can be challenged in court within six months of the date on which the decision was issued.
Priority of invention
Does the patent office provide a mechanism to resolve priority conflicts between different applicants for the same invention? What factors determine who has priority?
Under patent law, if several inventors have independently created the same invention or utility model, the right to the patent belongs to the applicant whose application has the earliest filing date or, if a priority is claimed, the earliest priority date. Priority disputes are resolved in court.
Amendment and re-examination of patents
Does the patent office provide procedures for amending, reviewing or revoking a patent? Can a court amend the patent claims during a trial?
Amending a patent is only possible if technical errors have been discovered after the grant of the patent. Re-examination of a patent is not possible, while revocation of a patent is possible under the current legislation. The court cannot amend patent claims during a trial, because patents can only be challenged before the board of appeal, and if the decision of the board of appeal is challenged in court, the court cannot compel the board of appeal to correct its decision only if it was illegal, but not the patent itself.
Duration of the patent
How is the term of patent protection determined?
Patent rights take effect on the date of publication of the granted patent in the local intellectual property bulletin and last for 20 years from the date of filing of the application.
Date declared by law
Indicate the date the above information is accurate.
February 17, 2022.