On the Ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of September 9, 1994

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The Law of the Republic of Kazakhstan dated November 23, 2020 No. 377-VI SAM.

To ratify the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of September 9, 1994, signed in Nur-Sultan on September 9, 2019.

President of the Republic of Kazakhstan

K. TOKAEV

Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention dated September 9, 1994

(Entered into force on April 12, 2021, Bulletin of International Treaties of the Republic of Kazakhstan 2021, No. 1, Article 8)

The States Parties to this Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention of September 9, 1994 (hereinafter referred to as the Contracting States) represented by the Governments,

Taking into account the need to expand the Eurasian system of protection of industrial property,

Striving to create an interstate system for the protection of industrial designs on the basis of a single Eurasian patent valid on the territory of all Contracting States,

in order to develop the internal markets of the Contracting States and increase the attractiveness of their territories for the development of trade and investment activities

have agreed on the following:

PART I GENERAL PROVISIONS

Article 1 Status of the Protocol

(1) This Protocol is a special agreement in accordance with Article 19 of the Paris Convention for the Protection of Industrial Property of March 20, 1883 (hereinafter referred to as the Paris Convention).

(2) By this Protocol, the Contracting States extend the functions of the Eurasian Patent Organization (hereinafter referred to as the organization) in the field of protection of industrial property objects, provided for by The Eurasian Patent Convention of September 9, 1994 (hereinafter referred to as the Convention).

(3) This Protocol does not affect the right of any Contracting State to grant national patents or other protection documents in respect of industrial designs.

Article 2 The Eurasian Patent System

(1) The Eurasian Patent System established in accordance with Article 1(1) The Convention, and the Organization with all its organs established pursuant to article 2 (1) The Conventions function with respect to the protection of inventions granted in accordance with the Convention and with respect to the protection of industrial designs granted in accordance with this Protocol.

(2) For the purposes of the protection of industrial designs, the territory in which the Convention is in force is the territory of the Contracting States.

(3) An Organization may become a party to an international treaty providing for the international registration of industrial designs by a decision of the Administrative Council of the Organization adopted unanimously by the authorized representatives (their deputies) of all Contracting States. At the same time, the details concerning the procedures applied within the framework of the Eurasian industrial design protection system in relation to international registrations are being established. Patent Instructions to the Convention.

PART II SUBSTANTIVE RULES OF LAW IN RELATION TO INDUSTRIAL DESIGNS

Article 3 Patentable industrial designs

(1) An industrial design that is granted legal protection is recognized as a solution to the appearance of an industrial or handicraft product that is patentable in accordance with the Patent Instructions to the Convention.

(2) Legal protection as an industrial design is not granted to decisions:

(i) contrary to the public interest, principles of humanity and morality in at least one of the Contracting States;

(ii) including, reproducing or imitating official symbols (including state symbols and signs), abbreviated or full names of international and intergovernmental organizations without the consent of the relevant competent authorities of the States, organizations whose interests are affected by such decisions;

(iii) including, reproducing or imitating the official names or images of objects of cultural (including ethnic and religious) heritage, their recognizable parts without the consent of the relevant competent authorities of the Contracting States whose interests are affected by such decisions.

The list of other solutions and objects that are not legally protected as industrial designs is established. Patent Instructions to the Convention.

Article 4 Persons entitled to obtain a Eurasian patent for an industrial design

(1) The right to obtain a Eurasian patent for an industrial design belongs to the author of the industrial design, that is, to the natural person whose creative work created the industrial design, or to his legal successor.

The ownership of the right to obtain a Eurasian patent for an industrial design created by the author within the framework of labor or civil law relations is determined in accordance with the legislation of the state regulating such relations.

(2) For the purposes of the procedure before the Eurasian Patent Office (hereinafter referred to as the Eurasian Office), the applicant is considered eligible to obtain a Eurasian patent for an industrial design.

Article 5 Right of priority

The right of priority in respect of an industrial design is recognized in accordance with the Paris Convention.

Article 6 Eurasian patent for an industrial design

(1) The Eurasian patent for an industrial design certifies the authorship, priority and exclusive right to an industrial design.

(2) The Eurasian patent for an industrial design is valid simultaneously in the territory of all Contracting States, subject to the provisions of this Protocol.

Article 7 Scope of legal protection of an industrial design

The scope of legal protection provided by the Eurasian patent for an industrial design is determined by the totality of the essential features of the industrial design reflected in the product images.

Article 8 Validity period of the Eurasian patent for an industrial design

(1) The validity period of the Eurasian patent for an industrial design is five years from the date of filing the application for the grant of the Eurasian patent for an industrial design (hereinafter referred to as the Eurasian application for an industrial design).

(2) The period of validity of a Eurasian patent for an industrial design may be extended for five years each time at the request of the holder of the Eurasian patent for an industrial design in respect of the territory of all Contracting States in which the patent is valid. In this case, the total period of validity of the Eurasian patent for an industrial design should not exceed twenty-five years from the date of filing the Eurasian application for an industrial design.

The validity period of the Eurasian patent for an industrial design is extended subject to payment of the appropriate fee to the Eurasian Office.

Article 9 Industrial design rights

(1) The author (co-authors) of an industrial design in respect of which a Eurasian patent has been granted owns the right of authorship, that is, the right to be recognized as the author of the industrial design.

(2) The owner of the Eurasian patent for an industrial design owns the exclusive right, which means the right to use an industrial design, as well as to allow and prohibit other persons to use an industrial design.

The actions performed in relation to an industrial design and recognized by its use are determined in accordance with the laws of the Contracting States.

The owner of the Eurasian patent may dispose of the exclusive right to an industrial design during the period of validity of the patent, starting from the date of publication of information on its issuance in the official bulletin of the Eurasian Office.

Article 10 Disposal of the exclusive right to an industrial design. Transfer of the exclusive right

(1) The holder of a Eurasian patent for an industrial design has the right to transfer the exclusive right to an industrial design to another person, grant the right to use an industrial design under a license agreement, and pledge the exclusive right to an industrial design.

The transfer of the exclusive right certified by the Eurasian patent for an industrial design to another person is permitted only in respect of the territory of all Contracting States in which the patent is valid.

The holder of the Eurasian patent for an industrial design has the right to dispose of the exclusive right to an industrial design in another way in respect of a separate Contracting State, if such disposal is permitted in accordance with the legislation of the relevant Contracting State.

(2) The exclusive right to an industrial design may be transferred by inheritance or by way of other legal succession only as a whole.

(3) Registration of the transfer of the exclusive right to an industrial design, including in the case of its transfer under a contract, as well as the pledge of such exclusive right, is carried out by the Eurasian Office.

Registration of a license agreement, as well as an agreement concluded in accordance with the legislation of a Contracting State on the basis of part three of paragraph (1) of this Article, is carried out by the national patent office of the Contracting State (hereinafter referred to as the national office) in respect of whose territory the relevant agreement has been concluded.

Article 11 Invalidation of the Eurasian patent for an industrial design

(1) The Eurasian patent for an industrial design may be declared invalid by the Eurasian Office by way of administrative cancellation on the grounds and in accordance with the procedure provided for in this Protocol and The Patent Instructions to the Convention, or by judicial or other competent authorities of the Contracting States on the grounds provided for in this Protocol and the Patent instructions to the Convention, in accordance with the procedure provided for by the legislation of the relevant Contracting State.

An objection to the invalidation of a Eurasian patent for an industrial design by way of administrative cancellation may be filed, including by a national office, if the right of the national office to file an objection is provided for by the legislation of the relevant Contracting State.

(2) A decision of the Eurasian Office taken as a result of consideration of an objection to invalidate a Eurasian patent for an industrial design by way of administrative cancellation may be appealed in accordance with the procedure and time limits established by the patent regulations to the Convention.

The decision of the Eurasian Office on the recognition of the Eurasian patent for an industrial design as invalid comes into force after the expiration of the time limit for its appeal, established by The Patent Regulations to the Convention, and is valid in respect of the territory of all Contracting States.

(3) A decision to invalidate a Eurasian patent for an industrial design adopted by judicial or other competent authorities of a Contracting State may be appealed in accordance with the procedure and within the time limits established by the legislation of the relevant Contracting State. A decision adopted in accordance with this paragraph shall enter into force upon the expiration of the time limit for its appeal and shall apply to the territory of the Contracting State by whose judicial or other competent authorities it was adopted.

The Contracting State shall inform the Eurasian Office of the decision taken to invalidate the Eurasian patent for an industrial design.

From the moment of entry into force of the decision on invalidation of the Eurasian patent for an industrial design, adopted by judicial or other competent authorities of a Contracting State, the unified legal protection of an industrial design is terminated. At the same time, the Eurasian patent for an industrial design remains valid in the territory of the Contracting States in respect of which such a decision has not been taken.

(4) Judicial and other competent authorities of the Contracting States considering disputes on the validity of the Eurasian patent for an industrial design have the right to request the submission of a translation of the Eurasian patent for an industrial design into the official language of the relevant Contracting State.

Article 12 Disputes related to the protection of rights

(1) Disputes related to the protection of rights granted in accordance with this Protocol and the Patent Regulations to the Convention, with the exception of disputes provided for in Articles 11 and 14 of this Protocol, shall be settled on the basis of substantive and procedural rules of the law of the Contracting State in whose territory protection of these rights is sought.

(2) Judicial and other competent authorities of the Contracting States considering disputes in accordance with paragraph (1) of this Article shall have the right to request the submission of a translation of the Eurasian patent for an industrial design into the official language of the relevant Contracting State.

PART III PROCEDURAL RULES OF LAW IN RELATION TO INDUSTRIAL DESIGNS

Article 13 Eurasian application for an industrial design

(1) A Eurasian application for an industrial design shall be filed with the Eurasian Office, except in the cases provided for in paragraph (2) of this Article.

(2) By applicants of a Contracting State, a Eurasian industrial design application is filed through the national office, if this is provided for by the legislation of that Contracting State. A Eurasian industrial design application filed through a national office has the same consequences as if it had been filed on the same day with the Eurasian Office, provided that it is forwarded by the national office to the Eurasian Office within the time limit set by Patent Instructions to the Convention.

(3) When submitting a Eurasian application for an industrial design directly to the Eurasian Office, a single procedural fee is paid to the Eurasian Office.

When submitting a Eurasian application for an industrial design through a national office, the national office is paid a fee for processing and forwarding the Eurasian application for an industrial design, if it is established by the legislation of the relevant Contracting State, while the single procedural fee is paid to the Eurasian Office.

(4) The right to obtain a Eurasian patent for an industrial design may be transferred to another person in accordance with the procedure and under the conditions provided for in the Patent Instructions to the Convention.

Article 14 Consideration of the Eurasian application for an industrial design

(1) In the case of a Eurasian application for an industrial design, the Eurasian Office shall conduct a preliminary examination, during which it is checked whether the requirements for the application, the conditions for determining the filing date of the application, the fulfillment of other conditions relating to the filing of the application provided for in the provisions of this Protocol and the Patent Instructions to the Convention, as well as whether the industrial design does not relate to decisions that contradict public interests, principles of humanity and morality in at least one of the Contracting States.

(2) The Eurasian Office, in accordance with the Patent Instructions to the Convention, publishes the Eurasian application for an industrial design, for which the preliminary examination has been completed with a positive result, and conducts a substantive examination on it.

(3) In respect of a published Eurasian application for an industrial design, an objection may be filed with the Eurasian Office, including by the national office, if this is provided for by the legislation of the relevant Contracting State, against the grant of a Eurasian patent for an industrial design on the grounds established by this Protocol and Patent Instructions to the Convention.

The procedure and time limits for filing and considering objections to the grant of a Eurasian patent for an industrial design are established by the Patent Instructions to the Convention.

(4) The decision to grant or refuse to grant a Eurasian patent for an industrial design shall be taken by the Eurasian Office, taking into account the results of consideration of objections to the grant of a Eurasian patent for an industrial design received by the Eurasian Office.

(5) Decisions of the Eurasian Office, including the granting or refusal to grant a Eurasian patent for an industrial design, may be appealed by the applicant by filing an objection with the Eurasian Office in accordance with the procedure and time limits established by the Patent Instructions to the Convention.

Article 15 Registration of an industrial design and issuance of a Eurasian patent for an industrial design

(1) On the basis of a decision to grant a Eurasian patent for an industrial design, the Eurasian Office registers the industrial design in the register of Eurasian patents for industrial designs.

(2) The composition of information entered in the register of Eurasian patents for industrial designs and the procedure for maintaining the said register shall be determined by Patent Instructions to the Convention.

(3) The Eurasian Office shall publish information on the grant of the Eurasian patent for an industrial design in the official bulletin of the Eurasian Office. The composition of the published information and the date of publication are established by the Patent Instructions to the Convention.

(4) The Eurasian Office shall grant the applicant a Eurasian patent for an industrial design immediately after the publication of information on its grant.

(5) Registration of an industrial design, publication of information on the grant of a Eurasian patent for an industrial design and the grant of a Eurasian patent for an industrial design shall be carried out by the Eurasian Office on condition that the applicant pays the appropriate fee.

(6) Extracts from the register of Eurasian patents for industrial designs requested for the purpose of presentation in one of the Contracting States shall be exempt from any legalization.

Article 16 Representation

(1) Any person who has the right to be a representative before the national office and is registered with the Eurasian Office as a patent attorney may act as a representative before the Eurasian Office (hereinafter referred to as the patent attorney).

(2) The applicant, as well as the holder of the Eurasian patent for an industrial design, who do not have permanent residence or permanent location in the territory of any Contracting State, must be represented by a patent attorney.

(3) An applicant having permanent residence or permanent location in the territory of any of the Contracting States may file Eurasian applications for industrial designs, as well as conduct business with the Eurasian Office on such applications and Eurasian patents for industrial designs.:

(i) independently;

(ii) through patent attorneys;

(iii) through representatives who are not patent attorneys.

Article 17 Transformation of the Eurasian application for an industrial design into a national application

(1) Before the expiration of six months from the date on which the Eurasian Office sends to the applicant a decision to refuse to grant a Eurasian patent for an industrial design or a decision to refuse to satisfy an objection filed against such a decision, the applicant may file an application with the Eurasian Office indicating the Contracting States in which he wishes to obtain a patent for an industrial design under the national procedure..

(2) In each Contracting State so designated, a Eurasian industrial design application in respect of which such a decision has been taken and which is the subject of such an application shall be considered a properly executed national application filed with the national office with the same filing date and, if any, priority date as the Eurasian industrial design application. the sample, with all the consequences provided for by the national legislation of the relevant Contracting State, and is subject to further procedure at the national office, provided, that the applicant will pay the required national fees to the national office.

Article 18 Fees

(1) For carrying out legally significant actions performed in relation to the Eurasian application for an industrial design or the Eurasian patent for an industrial design in accordance with the provisions of this Protocol; and According to the Patent Instructions to the Convention, the Eurasian Office shall be paid the fees belonging to the Organization, taking into account paragraphs (2) and (3) of this Article.

(2) The fee for processing and forwarding the Eurasian industrial design application to the Eurasian Office referred to in Article 13(3) of this Protocol, is paid and belongs to the national office to which the Eurasian industrial design application has been filed.

(3) Duties payable to the Eurasian Office in accordance with Articles 8(2) and 15(5) of this Protocol, distributed between the Organization and the Contracting States in accordance with the decision of the Administrative Council of the Organization, adopted by a two-thirds majority of the plenipotentiaries (their deputies) participating in the vote Of the Contracting States. At the same time, at least one fifth of these fees must remain at the disposal of the Organization, the remaining part of which is transferred to the relevant national authorities.

PART IV PATENT INSTRUCTIONS FOR THE CONVENTION

Article 19 General provisions

Patent Instructions to the Convention, in addition to the details defined in articles 14 and 19 The Convention contains details concerning substantive and procedural rules of law in respect of industrial designs protected under this Protocol.

Article 20 Substantive rules of law

The Patent Instruction to the Convention contains details concerning the substantive rules of law established by Part II of this Protocol, in particular:

(i) requirements for an industrial design and conditions of its patentability;

(ii) circumstances that do not prevent the recognition of the patentability of an industrial design;

(iii) succession in respect of the Eurasian industrial design application;

(iv) transfer of the right to obtain a Eurasian patent for an industrial design;

(v) Priority rights;

(vi) temporary legal protection;

(vii) the scope of legal protection of an industrial design;

(viii) the exclusive right to an industrial design;

(ix) succession in respect of the Eurasian industrial design patent;

(x) an agreement on the transfer of the exclusive right to an industrial design, a license agreement and other agreements in the field of turnover of the exclusive right to an industrial design;

(xi) the validity of the Eurasian patent for an industrial design, and the grounds for invalidating it.

Article 21 Procedural rules of law

The Patent Instruction to the Convention contains details concerning the procedural rules of law established by Part III of this Protocol, in particular:

(i) requirements for the form, composition, and content of the Eurasian industrial design application;

(ii) office work on the Eurasian industrial design application and the Eurasian industrial design patent;

(iii) requirements for patent attorneys, the procedure for their certification and registration;

(iv) setting the filing date of the Eurasian industrial design application;

(v) the calculation of time limits, the consequences of their omission, the conditions and procedure for the continuation of office work and the restoration of rights;

(vi) requesting priority;

(vii) the procedure and time limits for payment of fees;

(viii) amendments and corrections to the Eurasian industrial design application;

(ix) examination of the Eurasian application for an industrial design, including preliminary and substantive examination, decisions taken based on their results, as well as the filing and consideration of objections;

(x) documentation and information services of the Eurasian Office in relation to industrial designs;

(xi) registration of industrial designs in the register of Eurasian patents for industrial designs, the composition of information entered in the said register, the procedure for maintaining it and providing extracts from it;

(xii) issuance of Eurasian patents for industrial designs;

(xiii) publication of information on Eurasian applications for industrial designs and Eurasian patents for industrial designs;

(xiv) the official bulletin of the Eurasian Office on industrial designs;

(xv) the procedure for invalidating Eurasian patents for industrial designs;

(xvi) transformation of Eurasian applications for industrial designs into national applications;

(xvii) contacts of the Eurasian Office regarding industrial designs with applicants, holders of Eurasian patents for industrial designs, representatives and other persons and the procedure for familiarizing these persons with the documents of the Eurasian Office regarding industrial designs.

PART V FINAL PROVISIONS

Article 22 Signature. Entry into force of the Protocol

(1) This Protocol is signed in Russian.

(2) Membership in this Protocol is open to any Member State of the United Nations bound by the Convention, and The Paris Convention.

In order to become a party to this Protocol, a State must either sign the Protocol and deposit its instrument of ratification with the depositary, or deposit its instrument of accession with the depositary.

This Protocol is open for signature at an international conference in the city of Nur-Sultan after its adoption, and then at the headquarters of the World Intellectual Property Organization until its entry into force.

This Protocol is open for accession by any State referred to in part one of this paragraph that has not signed the Protocol.

(3) No reservations may be made with respect to this Protocol.

(4) This Protocol shall enter into force in respect of the first three States that have ratified or acceded to it three months after the deposit of one of the above-mentioned instruments with the depositary by a third State. In respect of any other State, this Protocol shall enter into force three months after the deposit of its instrument of ratification or accession. In this case, the Eurasian patent for an industrial design is valid on the territory of such a State if the corresponding Eurasian application for an industrial design was filed after the entry into force of this Protocol in respect of that State.

Article 23 Transitional provisions

Until all States Parties to the Convention become Contracting States, decisions of the Governing Body of the Organization on matters within its competence in accordance with Article 3(3) (vi) - (ix) The Convention and this Protocol, in respect of industrial designs, will be adopted by authorized representatives (their deputies) Of the Contracting States.

Article 24 Settlement of disputes under the Protocol

In the event of any dispute between the Contracting States concerning the interpretation or application of this Protocol, the Director General of the World Intellectual Property Organization, at the request of any of the parties involved in the dispute, shall act as an intermediary to bring the parties to a settlement of the dispute.

Article 25 Revision of the Protocol

(1) This Protocol may be reviewed by the Contracting States at any time.

(2) The question of convening a conference of the Contracting States for the purpose of revising this Protocol shall be decided by the Governing Body of the Organization. The Governing Body of the Organization also decides on the rules of procedure and other details related to the review conference of this Protocol.

Article 26 Denunciation of the Protocol

(1) A Contracting State may denounce this Protocol by notification addressed to the Director General of the World Intellectual Property Organization. Such denunciation shall take effect twelve months after the date of receipt of the relevant notification by the Director General of the World Intellectual Property Organization.

(2) Eurasian patents for industrial designs issued on applications filed prior to the entry into force of the denunciation shall be valid in the territory of the State that denounced this Protocol for the entire period of their validity, including cases of extension of such period permitted by this Protocol.

Article 27 The Depositary of the Protocol

The Director General of the World Intellectual Property Organization is the depositary of this Protocol.

Done in the city of Nur-Sultan on September 9, 2019, in one original copy in Russian.

For the Government of the Republic of Azerbaijan

For the Government of the Kyrgyz Republic

For the Government of the Republic of Armenia

For the Government of the Republic of Belarus

For the Government of the Republic of Kazakhstan

For the Government of the Republic of Tajikistan

For the Government of the Russian Federation

For the Government of Turkmenistan

President

Republic of Kazakhstan

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