Patent Litigation

Issues relating to IP rights are regulated by several laws and regulations, the most important of which are:

• the Constitution of 30 August 1995;
• the Civil Code (General and Special Part); and
• the Patent Law (Law 427-I dated 16 July 1999).

To ensure the proper application of legislation, Kazakhstan has adopted a number of bylaws and normative legal acts.

The Kazakhstan government has adopted the following resolutions:

• Resolution 345 on the Improvement of the State System for the Protection of Intellectual Property Rights dated 20 March 2002; and
• Resolution 896 on the Approval of Regulations on Service Inventions, Utility Models and Industrial Designs created in Kazakhstan dated 11 August 1994.

The Committee on Intellectual Property Rights has further adopted Order 52-OD on the Approval of Instructions for Compiling, Formatting and Reviewing Applications for the Grant of an Innovation Patent and a Patent for Invention dated 24 April 24 2007.

The following bilateral and multilateral agreements have relevance to patent litigation:

• the Paris Convention for the Protection of Industrial Property dated 20 March 1883;
• the Convention Establishing the World Intellectual Property Organization (signed in Stockholm on 14 July 1967 and as amended on 28 September 1979);
• the Patent Instruction to the Eurasian Patent Convention, approved by the Administrative Council Eurasian Patent Organization at its second (first regular) meeting on 1 December 1995; and
• Decree 2364 of the President of the Republic of Kazakhstan of 18 July 1995 on the Ratification of the Eurasian Patent Convention.

An official interpretation has the following mandatory features:

• It is issued by an authorised body;
• It is formulated through a special act; and
• It has mandatory application for certain types of actors.

The Law on Legal Acts (Law 490-V dated 6 April 2016) establishes that only the Constitutional Court or the body that adopted this act can issue an official interpretation in Kazakhstan.

Contrary to the Law on Legal Acts, legal scholars include judicial interpretations as a type of official interpretation. These are normative decisions of the Supreme Court which are generally binding and have the force of legal acts, and should thus be classified as acts of official interpretation. There are also court decisions in specific cases which are binding on persons whose interests they affect; these are called ‘casual’ interpretations.

There are several forums for patent disputes in Kazakhstan:

• the courts of general jurisdiction;
• arbitration; and
• the Board of Appeal.

Civil cases on disputes over IP rights are considered according to the rules of jurisdiction.

The courts have jurisdiction over civil cases concerning disputes involving the following matters:

• civil;
• family;
• employment;
• housing;
• financial;
• economic;
• land; and
• matters arising from other legal relations.

The disputes specified in Article 33 of the Patent Law may be resolved through arbitration or mediation by agreement of the parties, as long as this is not prohibited by the Law on Arbitration and the Law on Mediation.

According to Article 32 of the Patent Law, the Board of Appeal is a subdivision of the relevant authorised body for pre-trial consideration of disputes on objections. The regulations of the Board of Appeal are approved by the authorised body.

The following objections may be submitted to the Board of Appeal:

• objections against decisions of the relevant authorised body to refuse to issue:
• • an innovative patent for an invention;
  • a patent for an invention;
  • a utility model; or
  • an industrial design; and
• objections against the issuance of:
• • an innovative patent for an invention;
  • a patent for an invention;
  • a utility model; or
  • an industrial design.

According to Article 32 of the Patent Law, the Board of Appeal should be comprised of an uneven number of members (at least five), including:

• representatives of authorised bodies in the fields of:
• • protection of inventions, utility models and industrial designs;
  • science;
  • state support for innovation; and
  • healthcare; and
• public counsel from these authorised bodies.

Civil cases in the first-instance court are heard and resolved by a single judge who acts on behalf of the court.

Cases in the Court of Appeal are heard by a court panel consisting of an odd number of judges (not less than three) from a regional court or a court with equal status, one of whom serves as chair.

Cases in the Court of Cassation are heard by a court panel consisting of an odd number of Supreme Court judges (not less than three), chaired by the court panel chairperson or by one of the judges upon his or her instruction.

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Claimants may be citizens or legal entities that file a lawsuit for the purpose of protecting their violated or disputed rights and liberties or legal interests, or for protection of which a lawsuit has been filed by other persons according to procedure stipulated by this Law.

The right to appeal a court judgment rests with the following parties:

• the parties to the case and other persons involved in the case;
• the prosecutor general of Kazakhstan and his or her deputies, regional prosecutors and equal-status prosecutors and their deputies, and prosecutors of districts and equal-status prosecutors and their deputies, regardless of their involvement in the consideration of the case; and
• persons that were not involved in the case, but whose rights and obligations are affected by the judgment.

The Kazakhstan courts will consider cases involving foreign persons if the respondent is located or resident in Kazakhstan.

They will also consider cases involving foreign entities if:

• the management body, branch or representative office of the foreign person is located in Kazakhstan;
• the defendant has property in Kazakhstan;
• where compensation is sought for damage caused to property, the action or other circumstance from which the claim has arisen took place in Kazakhstan;
• in the case of a claim arising under contract, full or partial execution was to take place or took place in Kazakhstan; or
• in cases involving the protection of the rights of data subjects, including compensation for damages and/or compensation for moral harm, the applicant is a resident of Kazakhstan.

The Kazakhstan courts will also consider other cases which fall within their competence by law and/or an international treaty ratified by Kazakhstan.

A claim may be brought jointly by several plaintiffs against one or several defendants. Each plaintiff or defendant acts independently in relation to the other parties in the process, in accordance with Article 49 of the Civil Procedure Code.

The parties may entrust the conduct of the case to one of the co-plaintiffs or co-defendants respectively, on the basis of a power of attorney.

The participation of several plaintiffs or defendants is allowed where:

• the subject of the dispute is the general rights and obligations of several plaintiffs or several defendants;
• the rights and obligations of several plaintiffs or several defendants have a single basis; or
• the dispute involves the identical rights and obligations of several plaintiffs or several defendants.

According to Article 51 of the Civil Procedure Code, third parties with independent claims with respect to the subject of the dispute may intervene in the proceedings before the case is fully prepared for trial by filing a claim with one or both parties. Such third parties will enjoy all rights and bear all obligations of a plaintiff.

The following acts are deemed to constitute an infringement of the exclusive rights of the patent holder:

• the unauthorised manufacture, utilisation, import, stocking, offering for sale, sale or any other distribution for commercial purposes of products incorporating the protected subject matter; or
• the use of a protected method or the distribution for commercial purposes of a product obtained directly through such method.

Any individual or legal entity that uses protected subject matter in a manner that is contrary to the Patent Law will be deemed to have infringed the exclusive right of the patent holder.

To establish infringement, the patent holder must prove all of the following:

• A prohibited act was committed;
• The prohibited act was committed after grant of the patent;
• The prohibited act was committed in the country in which the patent was granted; and
• The prohibited act was committed in relation to a product that is the subject of the patent claims.

The doctrine of equivalents is used to establish the replacement of equivalent elements in case of an alleged violation. Under this doctrine, an infringer is prohibited from continuing to use a patented invention by simply replacing an element contained in the patent claims with an element that is its technical and functional equivalent.

Equivalence is limited to cases where the variants are used by the infringer function in essentially the same way and produce the same results as the subject matter contained in the patent claims. The doctrine of equivalents is also used in the Kazakh judicial system.

No answer submitted for this question.

According to Article 1003 of the Civil Code, liability for patent infringement:

At the request of the patent holder, the patent infringement must be terminated and the infringer must compensate the patent holder for the losses it incurred (Article 9 of the Civil Code). Alternatively, instead of the losses incurred, the patent holder has the right to recover from the infringer the income received by it as a result of its misuse of the invention, utility model or industrial design.

Further details can be found in question 5.5.

There is no specified limitation period for patent claims under Kazakh law. In such cases, the general statute of limitations will apply, which is three years.

Rule 18(2) of the Patent Regulations to the Eurasian Patent Convention further provides that an action for infringement of a Eurasian patent may be brought within three years of the date on which the rights holder knew or should have known about the infringement of its rights, subject to Article 13(2) of the convention.

According to Article 8 of the Civil Procedure Code, if the law or an agreement provides for a pre-judicial procedure in relation to dispute settlement for a certain category of cases, the court cannot be addressed until this procedure has been pursued.

Among other things, an obligatory pre-trial procedure relates to disputes in the field of copyright and IP protection according to Article 32 of the Patent Law.

In accordance with Article 148 of the Civil Procedure Code, a claim is filed with the court of first instance physically or in the form of an electronic document.

The application must specify:

• the name of the court with which the claim is being filed;
• the personal information of the plaintiff;
• the name and address of the plaintiff’s representative, if the application is submitted by a representative;
• the personal information of the defendant;
• the essence of the violation or threat of violation of the rights and freedoms of a citizen or the legitimate interests of the plaintiff, and the plaintiff’s claim;
• the circumstances on which the claim is based and the evidence confirming these circumstances;
• information on compliance with the pre-trial procedure;
• information on the actions taken by the parties with the aim of resolving the dispute;
• the value of the claim; and
• a list of documents attached to the claim.

Upon the request of the parties, a court may take measures to secure the claim at any stage of the case if not taking such measures would make it difficult or impossible to enforce the decision of the court.

Interim measures for securing a patent claim might include:

• the imposition of an arrest on property owned by the defendant and held by it or other citizens;
• a prohibition on the defendant performing certain actions;
• a prohibition on other persons transferring property to the defendant or performing other obligations in relation to it, as provided by the law or contract; and/or
• suspension of the sale of property in the event of a claim for the release of property from seizure.

If necessary, the court may take other measures to secure the claim. However, the measures for security of the claim must be commensurate to the requested requirement.

The distribution of court costs between is determined in Article 109 of the Civil Procedure Code.

Under national law, a patent application must disclose the nature of the invention sufficiently clearly and completely to enable any person skilled in the art to carry out the invention.

Inventions are first publicly disclosed only after a patent or patent application has been published. Thus, patents and published patent applications provide an opportunity to learn about the results of the latest developments and innovations long before the innovative product first appears on the market.

The disclosure of the invention becomes part of the prototype if the disclosure is made in printed publications, orally and by prior use; and consideration is given to where such publications of the disclosure occurred.

A few exceptions exist – including, for example, in relation to public disclosure of information relating to the invention by the applicant, or any person that has obtained the information directly or indirectly from the applicant, to demonstrate the invention as an exhibit at an official or officially recognised international exhibition.

In addition, an industrial design that meets the requirements of novelty and originality may be protected without registration or the issue of a document of protection for three years from the date on which it was first disclosed Kazakhstan. An unregistered design is considered to be disclosed for the first time when it is published, exhibited, used in trade or communicated correctly to circles specialising in the relevant business sector operating in Kazakhstan.

An unregistered design disclosed only to a third party under specified or implied conditions of confidentiality will not be deemed disclosed.

The application and information on its progress will not be provided to third parties.

If an international convention ratified by Kazakhstan establishes other rules than those contained in this Law, the rules of the international convention will apply.

The UN Convention on Jurisdictional Immunities of States and their Property Adopted by General Assembly Resolution 59/38 of 2 December 2004 provides as follows:

In accordance with Article 63(1) of the Civil Procedure Code, ‘evidence’ is legally obtained information about the facts of a case, on the basis of which the court will determine the existence of:

• circumstances that substantiate the demands and objections of the parties; and
• other circumstances that are important for the correct consideration and adjudgment of the case.

In accordance with Article 73(1) of the Civil Procedure Code, evidence must be submitted by the parties and other persons involved in the case to the court of first instance at the time of acceptance of the claim. A pre-trial protocol will then be drawn up setting out the process and timeframe for the parties and other persons involved in the case to disclose, present and exchange the evidence on which they intend to rely as a basis for their claims or defences, and which they intend to use at trial.

Evidence may be presented at the trial stage if the impossibility of presenting it during the pre-trial preparation can be justified by the party presenting the evidence.

Article 63(2) of the Civil Procedure Code provides that evidence on the facts can take the form of:

• explanations of the parties and third parties;
• witness testimony;
• expert opinions;
• material evidence;
• minutes of proceedings;
• court records;
• audio and video data, and data obtained using video conferencing systems; and
• other sources.

Article 68(6) of the Civil Procedure Code provides that cumulative evidence will be deemed sufficient to resolve a civil case if the relevant admissible and reliable evidence relating to the case indisputably confirms the circumstances relevant to the case and is not disproved by the other party.

Аrticles 72 and 73 of the Civil Procedure Code establish the obligation of each party to prove the circumstances to which it refers. The court will base its decision only on the evidence that was presented by the parties and examined in court. In this scenario, the patent holder must prove patent infringement by providing evidence of such a violation of or challenge to its rights by the defendant. The court will not independently investigate anything that has not been presented in court; in this regard, courts often refuse to uphold patent holders’ claims due to a lack of proof of violation of their exclusive rights.

Thus, when applying to the court, the patent holder must collect evidence in advance, on which the court will base its decision. Usually, documents confirming the fact of the purchase of the infringing goods are submitted to the court.

In a patent infringement action, ‘claim construction’ refers to the process of determining the meaning and scope of the claims in the patent being asserted. Claim construction is typically performed by the court and aims to interpret the language used in the claims to define the boundaries of the patent holder’s rights.

By virtue of Article 148(2) of the Civil Procedure Code, the claim must specify:

• the name of the court;
• the personal information of the plaintiff, including:
• • date of birth;
  • place of residence;
  • individual identification number or, for a legal entity, business identification number;
  • bank details; and
  • if the application is submitted by a representative, the representative’s name and address;
• the personal information of the defendant, including:
• • place of residence; and
  • individual identification number or, for a legal entity, bank details and business identification number;
• the essence of the violation or threat of violation of the rights and freedoms or the legitimate interests of the plaintiff and the plaintiff’s claim;
• the circumstances on which the plaintiff bases its claims and the evidence confirming these circumstances;
• information on a pre-trial procedure;
• information on actions taken by the plaintiff aimed at reconciliation; and
• the value of the claim, if the claim is subject to evaluation, as well as a calculation of the recoverable or disputed monetary amounts.

In accordance with Article 63 of the Code of Civil Procedure, ‘evidence’ is legally obtained information about the facts of a case, on the basis of which the court will determine the existence of:

• circumstances that substantiate the demands and objections of the parties; and
• other circumstances that are important for the correct consideration and adjudgment of the case.

Evidence may take the form of:

• explanations of the parties and third parties;
• witness testimony;
• expert opinions;
• material evidence;
• minutes of proceedings;
• court records;
• audio and video data, and data obtained using video conferencing systems; and
• other sources.

In accordance with Article 63 of the Code of Civil Procedure, ‘evidence’ is legally obtained information about the facts of a case, on the basis of which the court will determine the existence of:

• circumstances that substantiate the demands and objections of the parties; and
• other circumstances that are important for the correct consideration and adjudgment of the case.

Evidence may take the form of:

• explanations of the parties and third parties;
• witness testimony;
• expert opinions;
• material evidence;
• minutes of proceedings;
• court records;
• audio and video data, and data obtained using video conferencing systems; and
• other sources.

Under Article 48(1) of the Civil Procedure Code, the plaintiff has the right:

• to change the cause or subject of action;
• to increase or decrease the amount of the claim; or
• to abandon the claim.

The defendant has the right to admit the claim.

Patent disputes are often resolved through:

• pre-trial settlements;
• negotiations;
• amicable settlements; and
• mediation.

However, in the absence of an agreement between the parties, the protection of patent rights must be applied for in court at the location of the defendant.

Disputes on patent cancellation are considered only in court and are subject to the jurisdiction of the Specialised Interdistrict Economic Court of Nur-Sultan, at the location of the authorised body of NIIS.

The defendant has the right to submit a counterclaim to the plaintiff for joint consideration with the initial claim before completion of the preparation of the case for judicial examination.

The court will accept the counterclaim if:

• the counterclaim is aimed at offsetting the initial claim;
• satisfaction of the counterclaim would exclude, completely or partially, satisfaction of the initial claim; and
• there is a mutual link between the counterclaim and the initial claim, and their joint consideration would lead to the faster, more expedient settlement of disputes.

The grounds for revocation of a patent are failure to comply with at least one of the conditions of patentability, as follows:

• Inventions: Industrial applicability, novelty and inventive step;
• Utility models: Industrial applicability and novelty; and
• Industrial designs: Novelty and originality.

Anyone that, before the priority date of the patent and independently of the patent holder, had conceived and was using in good faith in Kazakhstan a similar solution, or was making the necessary preparations for such use, will have the right to proceed with that use free of charge, provided that the scope thereof is not extended (right of prior use).

The right of prior use may be transferred to another person together with the enterprise only where the use of a similar solution or the necessary preparations for use have been made.

Anyone that, after the priority date of the patent but before the date of publication of the particulars of the granted patent, had started using a similar solution in Kazakhstan must cease such use at the request of the patent holder. However, that person will not be required to compensate the patent holder for damages sustained as a result of such use.

Mediation or other amicable settlement of disputes is not binding on the parties. However, a pre-trial procedure for the settlement of disputes is an obligatory requirement.

There is no provision for the Board of Appeals to suspend the consideration of an objection while negotiations towards an amicable settlement are ongoing.

However, the Board of Appeals may leave objections unexamined at the request of the objector.

In judicial proceedings, conciliation procedures such as amicable settlement, mediation and participatory procedures are provided for.

A petition for conciliation may be filed in any lawsuit. The conciliation procedure is conducted before the case is removed to the deliberation room. These rules also apply to litigation at the courts of appeal and cassation.

The court will suspend the proceedings if the parties have entered into a mediation agreement with a mediator. If the mediation period is extended, the parties must notify the court thereof by joint written notice.

The court has the right to suspend the case while mediation or a participatory procedure is ongoing.

Furthermore, the law provides for a conciliation procedure following receipt of the claim in court and before its acceptance by the court.

The parties must inform the court of the results of the mediation. If the parties come to an agreement, the court will review the agreement and make a ruling approving or refusing to approve it.

If the parties come to an agreement within the framework of a conciliation procedure, the proceedings will be terminated by court order. If the parties do not come to an agreement, they must notify the court and the proceedings will continue in accordance with the general procedure.

In Kazakhstan, civil cases are heard in one of two forms: in open court session or in closed court session.

As a general rule, the trial of civil cases in all courts is public. Judicial acts are announced in public.

Cases and judicial acts containing information constituting state secrets, as well as cases involving the adoption of children, are heard in closed court session.

However, at the request of a person involved in the case or on the initiative of the court, a civil case may be heard and resolved in closed session if:

• this is necessary to protect the privacy of the parties, or to preserve personal, family, commercial or other secrets protected by law;
• there are other circumstances that would prevent an open trial; or
• there is a mass violation of order by the participants in the process.

No answer submitted for this question.

No answer submitted for this question.

No answer submitted for this question.

In accordance with Article 1003 of the Civil Code, at the request of the patent holder, the patent infringement should cease and the infringer should compensate the patent holder for its losses (Article). As an alternative to incurred losses, the patent holder may recover from the infringer the income which it obtained through improper use of the invention, utility model or industrial design.

The patent holder may demand:

• cessation of the patent infringement
• compensation for damages sustained, including moral damages, from the date of first publication of the particulars of grant of the patent;
• recovery of the profits derived from the unauthorised use of the patent in lieu of compensation for damages sustained from the date of first publication of the particulars of grant of the patent;
• compensation of between 10,000 and 50,000 times the monthly calculated index provided for by the legislation. The amount of compensation will be determined by court in lieu of compensation for damages sustained or payment of the derived profits;
• surrender of the infringing products that have been commercialised or stocked for commercial purposes, and of materials that have been used to commit the infringement, from the date of first publication of the particulars of grant of the patent; and
• mandatory publication of details of the infringement, including the particulars of the patent holder.

The aggrieved patent holder shall be entitled to demand that:

Factors that often come into play in patent infringement litigation include:

• the nature of the violation;
• the market value of the original goods; and
• the expenses incurred in pursuing the infringement.

Appeals may be filed against court judgments which have not yet become effective in law within one month of the date on which the judgment is issued.

The parties and other persons involved in the case have the right to appeal. An appeal may also be filed by persons not involved in the case in relation to rights and obligations affected by the judgment.

In accordance with Article 434 of the Civil Procedure Code, decisions may be further appealed to the Supreme Court under the cassation procedure within six months of the entry into force of the decision, resolution or ruling of the court of first instance or appellate instance.

• In the court of first instance, the consideration period starts from three months.
• In the court of appeal, the consideration period starts from two months.
• In the court of cassation, the consideration period starts from five months.

The following costs and fees may arise when litigating in Kazakhstan:

• State fee: The amount which must be paid to the tax authority at the location of the court. This amount is determined by the Tax Code as follows:
• • For individuals: 1% of the claim amount, but not more than 10,000 times the monthly calculation index (MCI) (MCI = 3450 tenge); and
  • For legal entities: 3% of the claim amount, but not more than 20,000 times the MCI.
• Expenses for legal representation in court.

During the litigation, various additional charges may be incurred, such as payments for:

• expert opinions;
• notarial services;
• translation of documents; and
• other necessary procedural actions.

With regard to the reimbursement of court costs, the court will order the party in whose favour a judgment was rendered to be paid all court expenses incurred in the case by the losing party. If the claim is only partially satisfied, the costs will be awarded to the plaintiff in proportion to the claims satisfied by the court, and to the defendant in proportion to the claims that were denied.

These may be stipulated by agreement between a legal representative and his or her client; however, the reimbursement must be based on the actual costs incurred.

Payment of the court fee is a personal tax obligation of the plaintiff which submits a property or non-property claim to the court. This obligation cannot be transferred to another person.

Individuals and legal entities that file the following must pay the court fee directly:

• a statement of claim with the court;
• an application for special proceedings; or
• an application for the reissuance of a judicial act or materials from civil proceedings.

The Supreme Court has clarified that the state fee can be paid by the applicant or through the applicant’s representative, provided that the documents proving payment indicate that the corresponding amount of the state fee has been paid by the plaintiff.

No answer submitted for this question.

One of the most controversial issues in patent litigation concerns evidence and the burden of proof. According to Article 15 of the Patent Law, “A new product shall be deemed to have been manufactured by a protected method unless proved contrary.” Basically, this means that the burden of proof rest on the defendant; this provision is widely invoked by plaintiffs. However, the court will make its decision based on the evidence provided by parties. Thus, if the plaintiff does not collect and present appropriate proof to the court, the case will end up being dismissed due to a lack of evidence.

Co-Authored by Inna Revazova and Daria Markina