questionnaire on exceptions and limitations to patent rights

State Intellectual Property Service of the Kyrgyz Republic (Kyrgyzpatent)

Section 1 General
Section 2 Private and/or non-commercial use
Section 3 Experimental use and/or scientific research
Section 4 Preparation of medicines
Section 5 Prior use
Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
Section 7 Acts for obtaining regulatory approval from authorities
Section 8 Exhaustion of patent rights
Section 9 Compulsory licensing and/or government use
Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
Section 11 Other exceptions and limitations

Section 1: General

1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.

According to the Part 1 Article 5 of the Patent Law of the Kyrgyz Republic the conditions of any invention patentability are: novelty, inventive height and industrial applicability.

Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.

In accordance with the Part 9 Article 5 of the Patent Law of the KR the following developments shall not be considered as inventions:

1) scientific theories and methods of mathematics;
2) methods of organization and management of economy;
3) reference designations, schedules and rules;
4) methods of performance of mental activities;
5) algorithms and computer programs as such;
6) drafts and schemes for planned structures, buildings and territories;
7) decisions regarding only the appearance of articles aimed for satisfaction of aesthetic needs;
8) integrated circuits topography;
9) varieties of plants and breeds of animals;
10) decisions contradicting with public interests, principles of humanity and morals, hazardous to the environment.

The presence of algorithm and software programs in the invention shall not be deemed as a fact influencing the patentability of an invention, if they are considered as a part of an invention.

2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?

In accordance with the Part 1 Article 11 of the Patent Law of the KR the patent owner shall have the exclusive right to protected by the patent for Intellectual Property subject-matters, including the right to prohibit the use of these objects by other persons, except for the cases when such use does not infringe the exclusive right of the patent owner according to this Law.

In accordance with the Part 5 Article 11 of the Patent Law of the KR the manufacture, application, import, offer for sale, sale and any other introduction to the economic turnover or storage of a product for this purpose that contains objects of industrial property protected by a patent as well as exploitation of the method protected by a patent for an invention shall be considered as the exploitation of an object of industrial property.

In addition, Article 14 of the Patent Law of KR provides that “the claimed invention since the date of publication of the information concerning application to the date of publication of the information concerning patent issue is provided by provisional legal protection in the scope of published formula but no more than the scope determined by the formula contained in the issued patent”

3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):

Experimental use and/or scientific research;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Compulsory licensing and/or government use.

Section 2: Private and/or non-commercial use

4.-10.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide exceptions related to private and/or non-commercial use.]

Section 3: Experimental use and/or scientific research

11. If the exception is contained in statutory law, please provide the relevant provision(s):

According to the Part 2 Article 13 of the KR Patent Law conducting the scientific research or an experiment with an article containing an object of industrial property are not recognized as an infringement of the exclusive right of the patent owner.

12. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

13.(a) What are the public policy objectives for providing the exception?

Observance of reasonable balance of interests between patent owners and community, as well as development and support of science and technology.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

14.-15.

[Note from the Secretariat: response was not provided.]

16. If the purpose of experimentation and/or research is relevant to the determination of the scope of the exception, please indicate what that purpose is:

Experimentation and/or research should aim to:

determine how the patented invention works;
determine the scope of the patented invention;
determine the validity of the claims;
seek an improvement to the patented invention.

17. If any of the following criteria is relevant to the determination of the scope of the exception, please indicate:

Research and/or experimentation must be conducted on or relating to the patented invention (“research on”)

Please explain by citing legal provision(s) and/or decision(s):

According to the Part 2 Article 13 of the KR Patent Law conducting of scientific research or an experiment on the article containing an object of industrial property are not recognized as an infringement of the exclusive right of the patent owner.

18.-22.

[Note from the Secretariat: response was not provided.]

Section 4: Preparation of medicines

23.-30.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide exceptions related to the preparation of medicines.]

Section 5: Prior use

31. If the exception is contained in statutory law, please provide the relevant provision(s):

Any natural person or a legal entity who before the date of priority of an object of industrial property, regardless from the author, has created and used on the territory of the Kyrgyz Republic a solution similar to the object of an industrial property or made the required preparations shall keep the right to use it free of charge without enlarging the scope of such use.

The right of prior use may be assigned to another natural person or legal entity but together with the production where the use of identical solution has taken place or the required preparations has been made for that purpose (Patent Law of the KR, Part 1 and 2 of the Article 14).

32.-34.

[Note from the Secretariat: response was not provided.]

35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:

The Patent Law of the Kyrgyz Republic does not provide for such remuneration. As stipulated in Article 14 “Any natural person or a legal entity who before the date of priority of an object of industrial property, regardless from the author, has created and used on the territory of the Kyrgyz Republic a solution similar to the object of an industrial property or made the required preparations shall keep the right to use it free of charge without enlarging the scope of such use.”

36. According to the applicable law, can a prior user license or assign his prior user’s right to a third Party?

Yes.

37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?

Yes.

If yes, please explain what those conditions are:

As provided in Article 14 of the Patent Law of the Kyrgyz Republic “The right of prior use may be assigned to another natural person or legal entity but together with the production where the use of identical solution has taken place or the required preparations has been made for that purpose (Patent Law of the KR, Part 1 and 2 of the Article 14).

38.-41.

[Note from the Secretariat: response was not provided.]

Section 6: Use of articles on foreign vessels, aircrafts and land vehicles

42. If the exception is contained in statutory law, please provide the relevant provision(s):

The exception is contained in the Part 1 Article 13 of the KR Patent Law “Actions Not Considered as an Infringement of the Exclusive Right of the Patent Owner”:

1) application of the means containing objects of industrial property protected by patents in the construction or during exploitation of transport facilities (sea-going, river, air, land and cosmic) of other countries under condition that said facilities temporarily or accidentally stay in the territory of the Kyrgyz Republic and are used for the needs of transport facility. Such actions shall not be considered as an infringement of the exclusive right of the patent owner if transport facilities belong to natural persons or legal entities of the countries that provide the same rights to the owners of transport facilities of the Kyrgyz Republic.

43. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

44.(a) What are the public policy objectives for providing the exception? Please explain:

On the bases of obligations of the Kyrgyz Republic resulting from signing of international agreements and observance of balance between the interests of patent owner and the whole community aiming at development.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

45. The exception applies in relation to:

Vessels;
Aircrafts;
Land Vehicles;
Spacecraft.

Part 1 Article 13 of the KR Patent Law “Actions Not Considered as an Infringement of the Exclusive Right of the Patent Owner”

46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

Part 1 Article 13 of the KR Patent Law “Actions Not Considered as an Infringement of the Exclusive Right of the Patent Owner”

47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):

As provided in Article 13 of the Patent Law of KR, such protected by patent objects shall be used for the needs of transport facility.

48.-50.

[Note from the Secretariat: response was not provided.]

Section 7: Acts for obtaining regulatory approval from authorities

51.-59.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide exceptions related to acts for obtaining regulatory approval from authorities.]

Section 8: Exhaustion of patent rights

60.-64.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide exceptions related to exhaustion of patent rights.]

Section 9: Compulsory licensing and/or government use

Compulsory licenses

65. If the exception is contained in statutory law, please provide the relevant provision(s):

Article 12 of the Patent Law of the Kyrgyz Republic provides:

If the object of industrial property is not used or insufficiently used by the patent owner or persons to whom the rights for it has been transferred, within three years as of the date of granting a patent, that leads to insufficient supply of the appropriate goods or services at the market of goods and services, any person wishing and ready to use patent of an industrial property, in the event of refusal of the patent owner to conclude licensing agreement with this person on the conditions pursuant to the common practice, has the right to apply to court with an action to provide him a compulsory license for the use of this object.

If the patent owner fails to prove that the non-use or insufficient use of an object of industrial property is conditioned by excusable reasons, the court shall grant the indicated license specifying the scope of use, the amount, time limits and procedures of payment. The amount of payment must not be lower than the price of the license, which is determined in compliance with the established practice.

The patent owner that can not use an invention without infringing the rights of the other owner of a patent for an invention or for a utility model, who has refused to conclude a licensing agreement based on the conditions that are in compliance with the common practice, has the right to apply to court with an appeal to grant him a compulsory license for the exploitation of an invention or utility model under condition that his invention presents an important technological achievement of the significant economic value with respect to the invention or utility model patent for which belongs to the other person.

If the indicated license is provided, the court must establish the limits for the use of an invention or utility model, patent for which belongs to the other person, in the scope necessary to exploit an invention patented by the person requiring to provide him a compulsory license, as well as the amount, terms and payment order. The amount of payment must be established not less than the price for a license, which is determined in compliance with the common practice.

In the emergency situations (disasters, catastrophes, big accidents), as well as in the interests of the national security, the Government of the Kyrgyz Republic shall have the right to grant a compulsory license coupled to payment of an applicable compensation to a patent owner, in this case the volume and time of exploitation of the patented object of industrial property shall be restricted by the purposes for which it was allowed. Disputes arising due to such exploitation shall be decided by court.

The compulsory license shall always be non-exclusive license; it cannot be reassigned to another person. (Article 12, Patent Law of the Kyrgyz Republic).

66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):

Non-working or insufficient working of the patented invention;
Refusal to grant licenses on reasonable terms;
National security;
National emergency and/or extreme urgency;
Dependent patents.

68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:

Observance of balance at protection providing to population; science and technology development.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

69. If the applicable law provides for the grant of compulsory licenses on the ground of “non-working” or “insufficient working”, please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

70. Does the importation of a patented product or a product manufactured by a patented process constitute “working” of the patent? Please explain your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

71. In case of the grant of compulsory licenses on the grounds of non-working or insufficient working, does the applicable law provide for a certain time period to be respected before a compulsory license can be requested?

Yes.

If yes, what is the time period?

To be determined by the Court (Article 12, Patent Law of the Kyrgyz Republic).

72. In case of the grant of compulsory licenses on the grounds of non-working or insufficient working, does the applicable law provide that a compulsory license shall be refused if the patentee justifies his inaction by legitimate reasons?

Yes.

If yes, what are “legitimate reasons”?

To be determined by the Court (Article 12, Patent Law of the Kyrgyz Republic)

73. If the applicable law provides for the grant of compulsory licenses on the ground of refusal by the patentee to grant licenses on “reasonable terms and conditions” and within a “reasonable period of time”, please provide the definitions given to those terms by citing legal provision(s) and/or decision(s):

Article 12 of the Patent Law of KR provides that: “[…] in the event of refusal of the patent owner to conclude licensing agreement with this person on the conditions pursuant to the common practice, has the right to apply to court with an action to provide him a compulsory license for the use of this object”. Explanation of that statement is not provided in the Patent Law.

74. If the applicable law provides for the grant of compulsory licenses on the ground of anti-competitive practices, please indicate which anti-competitive practices relating to patents may lead to the grant of compulsory licenses by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:

Article 12 of the Patent Law of the KR provides: “The patent owner that can not use an invention without infringing the rights of the other owner of a patent for an invention or for a utility model, who has refused to conclude a licensing agreement based on the conditions that are in compliance with the common practice, has the right to apply to court with an appeal to grant him a compulsory license for the exploitation of an invention or utility model under condition that his invention presents an important technological achievement of the significant economic value with respect to the invention or utility model patent for which belongs to the other person.

76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:

According to the Part 4 Article 12 of the Patent Law – “The amount of payment must be established not less than the price for a license, which is determined in compliance with the common practice”.

77. If the applicable law provides for the grant of compulsory licenses on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

According to the Part 5 Article 12 of the Patent Law the emergency situations are: disasters, catastrophes, big accidents.

78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:

The compulsory licenses have not been issued.

79.-80.

[Note from the Secretariat: response was not provided.]

Government use

81. If the exception is contained in statutory law, please provide the relevant provision(s):

For purposes of national security (Article 12 of Patent law of KR).

82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):

Public health;
National security;
National emergency and/or extreme urgency.

84.(a) What are the public policy objectives for providing government use in your country?

To allow the government to use invention at epidemic complicated emergency situations.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

85. If the applicable law provides for the grant of government use on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

Article 1 of the Law of the Kyrgyz Republic “On Civil Protection” provides that:

“Emergency is a situation that developed in a certain area as a result of a dangerous natural or man-made phenomena, accidents, disasters, natural or other disasters that may cause or have caused casualties, damage to human health or the environment, significant financial loss and deterioration of conditions of life people.”

86.-88.

[Note from the Secretariat: response was not provided.]

Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions

89.-100.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide exceptions and limitations related to farmers’ and/or breeders' use of patented inventions.]

Section 11: Other exceptions and limitations

101.-103.

[Note from the Secretariat: the applicable law of the Kyrgyz Republic does not provide other exceptions and limitations.]

[End of questionnaire]

September 2011