Extension of the term of the title of protection for an invention

The extension of the validity period of a patent and a petty patent for an invention is carried out in accordance with the “Rules for the filling and consideration of an request for the extension of the validity of a title of protection for an invention”, drawn up in accordance with article 4 of the law of the Republic of Tajikistan “On inventions”. The rules were approved by the Order of the Minister of economic development and trade of the Republic of Tajikistan from 13.03.2019, № 22 and registered with the Ministry of justice of the Republic of Tajikistan dated 13.05.2019, № 971.

 

The term of the title of protection after the expiration of 20 years for a patent for an invention and 10 years for a petty patent for an invention, in accordance with the law, can be extended by the Patent office only for inventions relating to medicinal products, pesticides and agrochemicals on the basis of an request by the right holder for a period not exceeding for 5 years.

To extend the term of the title of protection for an invention, a fee should be paid in accordance with the established mandatory and procedural fees.

 

 

 Approved

by Order of the Ministry

of economic development and

trade of the Republic of Tajikistan

dated March 13, 2019 № 22

 

Procedure for

filing and considering an application for an extension

 term of the title of protection for an invention

1. The Procedure for filing and considering an application for extending the validity of a title of protection for an invention (hereinafter referred to as the Procedure) was issued in accordance with article 4 of the law of the Republic of Tajikistan “On inventions”, and regulates relations on extending the term of validity of titles of protection for invention relating to medicinal products , pesticides and chemical agro-industrial substances (agrochemicals).

2. In this Procedure, the following terms are used:

– the official bulletin “Navidi patenti” – the official periodical on the protection of industrial property objects;

– Patent office – State institution “National center for patents and information” of the Ministry of economic development and trade of the Republic of Tajikistan;

– certificate – a document of state registration for medicinal product of which should be issued by a competent authority;

– certificate – a document on state registration of a pesticide and an agrochemical issued by the competent authority;

– in relation to  medicine – a state body that exercises leadership in the field of public health protection, medical and pharmaceutical science, medical and pharmaceutical education, circulation of medicines, medical devices and medical equipment, control over the quality of medical services;

– in relation to pesticides and agrochemicals – the state body for environmental protection, which exercises leadership in the field of plant protection, as well as cross-sectoral coordination;

– medicinal products – substances used for prevention, diagnosis, treatment of diseases, prevention of pregnancy and other substances, obtained from blood, blood plasma, as well as organs and tissues of a person or animal, plants, minerals, by synthesis methods or using biological technologies.

Medicinal products include substances of plant, animal or synthetic origin that have pharmacological activity and are intended for the production and manufacture of medicines, as well as biologically active additives and perfumes that have therapeutic and prophylactic properties:

– pesticides – chemical or biological substances used to fight pests (plant diseases, weeds, microorganisms that cause the destruction of agricultural products and materials, parasites, vectors of diseases of people and animals), as well as intended for pre-harvesting removal of leaves (defoliants), for pre-harvest drying of plants (desiccants) to scare away, attract and sterilize insects;

– agrochemicals – fertilization, chemical ameliorants, feed additives necessary for the growth and development of plants, regulation of soil fertility and feeding animals;

– documents of title for an invention – patents and petty patents for an invention issued in accordance with the law of the Republic of Tajikistan “On inventions”.

3. In accordance with article 4 of the law of the Republic of Tajikistan “On inventions”, the validity period of the title of protection for an invention relating to drugs, pesticides and agrochemicals, for the application of which, in accordance with the established procedure by the legislation of the Republic of Tajikistan, which requires a certificate of registration of a drug by the relevant authority, is extended by the petition of the owner of the title of protection by the Patent office, if more than four years have passed from the date of filing an application for a title of protection for an invention to the receipt of this certificate. The specified period is extended by the time elapsed from the date of filing an application for the issue of a title of protection for an invention till the day of receiving a certificate of registration of a medicinal product for the use of the product, minus four years, but not more than five years.

4. The invention relates to a medicinal product, pesticide or agrochemical of which is characterized as a composition, compound or group of compounds described by the general structural formula, and from the description of the invention follows that it is used as an active ingredient of a drug, pesticide and agrochemical.

5. The petition, a sample of which is attached in appendix 1, is filed during the period of validity of the title of protection before the expiration of six months from the date of receipt of the evidence for the use of the invention or the date of issue of the title of protection for the invention, depending on which of these terms expires later.

6. The application is filed in the state language. An application submitted in a foreign language is accompanied by its translation into the state language.

7. To preserve the filing date of the application, determined in accordance with article 14 of the Law “On inventions”, the translation into the state language of the application documents received in another language must be submitted to the Patent office within three months from the date of their receipt in another language …

8. In case of failure to submit the translation within the specified time limit, the application shall be deemed not filed.

9. The petition is signed by the patent holder (if the patent holder is a group of persons, the petition is signed by all persons) or by the patent attorney, or another representative of the patent holder acting on the basis of a power of attorney. When a legal entity submits an petition directly, the signature is certified by a seal.

10. The petition is submitted on a standard form in accordance with the appendix to this Procedure and must contain the following information:

– the name and address of the place of residence (location) of the applicant;

– number of the title of protection for the invention;

– the name of the pharmaceutical product / pesticide or agrochemical;

11. The following documents are attached to the petition:

– a certified copy of the title of protection for an invention;

– copies of official documents containing information about the medicinal product, pesticide or agrochemical, for the use of which the first permission of the competent authority was obtained, allowing the invention to be classified in the independent claim of the invention to the specified medicinal product, pesticide or agrochemical;

– a copy of the description of the invention (the corresponding independent claim), in respect of which the extension of the term of the exclusive right is requested, a statement that the said permission is the first in relation to the invention and an explanation from which it follows that the specified drug, pesticide or agrochemical is characterized in the corresponding independent claim;

– a power of attorney duly executed (in the case of conducting business through a patent attorney or other authorized representative of the right holder).

12. The petition and the documents attached are considered within one month from the date of their receipt by the Patent office.

13. The term for consideration of submitted petition in a foreign language should be calculated from the date of receipt of its translation into the state language.

14. Within a month from the date of filing the petition, the Patent office checks following:

– compliance with the conditions of filing the petition;

– availability of the required documents and their compliance with the requirements established by this Procedure;

– the fact of protection of the invention  according to the current of the  title of protection for an invention.

15. Consideration of the petition includes checking the possibility of attributing the invention described in the independent claim of the considered title of protection to a drug, pesticide or agrochemical for the use of which a drug registration certificate has been obtained.

16. Verification of the possibility of attributing the invention, characterized in the form of a compound (a group of compounds described by the general structural formula), to a drug, pesticide or agrochemical, for the use of which this certificate is obtained, consists in comparing the compound described in the independent claim of the invention with an active ingredient of a medicine, pesticide or agrochemical specified in the certificate. At the same time, it is checked whether the description of the invention contains information that the compound has such an activity that allows it to be used in the specified drug, pesticide or agrochemical.

17. The invention under consideration relates to a drug, pesticide or agrochemical specified in the certificate if the compound is an active ingredient of such a drug, pesticide or agrochemical, and the description of the invention contains relevant information.

18. Verification of the possibility of attributing the invention, characterized in the form of a composition, to a drug, pesticide and agrochemical for the use of which this certificate was obtained, consists in comparing the characteristics of the patented composition and the characteristics of the composition of the drug, pesticide or agrochemical specified in the certificate (purpose, composition , the form given in the claims).

19. The invention under consideration relates to a drug, pesticide or agrochemical if the independent claim includes the characteristics of the drug, pesticide or agrochemical specified in the certificate.

20 Extension of the validity period of a title of protection issued to a group of inventions, including both a compound and a composition of a medicinal product, a pesticide containing a compound, is carried out in accordance with paragraph 15 of this order and is carried out in relation to each invention of the group in accordance with paragraphs 18 of this order …

21. Subject to the conditions for filing an application specified in clauses 5 – 7, 9 – 11 of this Procedure, the validity period of the title of protection shall be extended and calculated in accordance with clause 5 of this Procedure.

22. Information on the extension of the term of the title of protection for an invention is entered into the State register and immediately published in the official bulletin “Navidi patenti”. Simultaneously with the official publication of the information, the right holder is sent an appendix to the title of protection in accordance with appendix 2 to this Procedure.

23. In the absence or incorrect execution of the documents specified in clauses 5, 7, 9, 10 and 11 of this Procedure, a person who submitted the application is sent within a month is requested a proposal for submitting the missing and / or corrected documents within three months from the date of its sending …

24. If the documents are not submitted within the specified time limits in clause 23 of this Procedure, as well as if the proposed documents do not comply with the requirements of clauses 17 and 19, the application remains unsatisfied and the validity of the title of protection for the invention is not extended, and at the same way, the owner of the title of protection is notified in compliance with appendix 3 to this Procedure.

 

Appendices

Appendix 1

Appendix 2

Appendix 3