05 11 2021
Invention or Utility Model
In the Republic of Kazakhstan, an application for a title of protection for a foreign entity is possible only through a patent attorney. The result of the registration of industrial property objects is the issuance of a title of protection by the National Institute of Intellectual Property.

An invention and a utility model are the most common objects of industrial property. Both of these objects have almost identical definitions in the legislation and both characterize technical solutions, in connection with which there is a false opinion that a "utility model" is a different name for an invention.

According to paragraph 7 of Article 1 of the Patent Law of the Republic of Kazakhstan dated July 16, 1999 (hereinafter referred to as the Patent Law), inventions, utility models, and industrial designs are recognized as industrial property objects. Based on the above norm, it can be seen that a utility model and an invention are independent objects with different conditions of patentability.

The invention and its parameters.

Clause 1 of Article 6 of the Patent Law sets out the conditions for patentability of an invention: an invention is granted legal protection if it is new, obtains an inventive step, and is industrially applicable.

Novelty. For an invention (utility model) to be new, it mustn't be known earlier from worldwide information sources.

An invention has an inventive step if it is not obvious to a specialist from the knowledge of the prior art. This is the most difficult and controversial criterion for obtaining a patent for an invention. The inventive step is revealed by comparing the invention with its closest analog, then their differences and additional sources of information are revealed. If differences are identified and allow achieving the same result as in the claimed invention, it may be recognized that the invention does not have an inventive step.

An invention is industrially applicable if it can be used in industry, agriculture, healthcare, and other fields of activity.

The protection period is 20 years with a possible extension for the next 5 years.

Utility model and its parameters.

As for the utility model, following clause 1 of article 7 of the Patent Law, the utility model is granted legal protection if it is new and industrially applicable.

Due to the lack of an inventive step criterion, obtaining a patent for a utility model is easier than for an invention. However, clause 2 of the Patent Law states that a utility model is new if the totality of its essential features is unknown from information about the prior art. In this regard, the criterion of novelty for a utility model is somewhat more complicated, since any difference from the closest analog is sufficient to obtain a title of protection for an invention. It is also necessary that this difference, along with other characteristics, be essential for the technical result of the utility model. For example, a utility model where two already known independent objects have been combined will not be considered new.

The protection period is 5 years with possible prolongation for the next 3 years. The patentee is obliged to pay annually for the maintenance of the patent.

In practice, not every person who has applied for a title of protection for the results of his activities knows what he needs. Due to the rather serious requirements for inventions, often an object that has not passed the inventive step criterion is registered as a utility model. Since, even despite the shorter term of protection of the object, the utility model is sometimes more advantageous in terms of the criteria of patentability and the cost of registration itself, as well as maintaining the title of protection in force.

It is also important to note that both the utility model and the invention are protected by the legislation of the Republic of Kazakhstan with equal force.

Author: Alexandra Nechayeva, Junior Associate at MG Partners