Volume 03 Issue 12-2023
74
International Journal Of Law And Criminology
(ISSN
–
2771-2214)
VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
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FACTOR
(2021:
5.
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)
(2022:
5.
705
)
(2023:
6.
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)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
ABSTRACT
The article discusses a comparative analysis of the procedure for obtaining a patent for an object of industrial property
and the process of termination in the United States and the Republic of Uzbekistan. The study is based on a
comparative analysis of the legal norms governing this process in both countries, taking into account their main
legislative acts, Patent laws, established procedures and judicial decision practice. This analysis allows us to identify
differences and similarities in the procedure for obtaining a patent and terminating its validity in the United States and
Uzbekistan, identify the main stages and requirements, the roles of relevant authorities and authorities, as well as
assess the degree of protection of intellectual property rights in both countries. The findings can be useful for lawyers,
patent agents, innovative enterprises and government agencies interested in protecting and supporting intellectual
property.
KEYWORDS
Patent law, procedure for obtaining a patent, comparative analysis, termination of a patent, object of industrial
property, legal basis, intellectual property.
INTRODUCTION
Industrial property is one of the fields of intellectual
property. In turn, intellectual property covers two
branches of law, such as copyright and industrial
property. As we know from history, the protection of
intellectual property has a long history. The
Declaration of the Republic of Venice of 1474 was the
first legislative act in the field of intellectual property
protection. This document introduced the concept of
"privilege". For example, the inventor of a new
machine was granted legal protection for his
development. During 10 years from the date of
issuance of the document, other citizens were
prohibited from manufacturing similar technical
Research Article
COMPARATIVE ANALYSIS OF THE PROCEDURE FOR OBTAINING A
PATENT FOR AN OBJECT OF INDUSTRIAL PROPERTY AND TERMINATION
OF ITS VALIDITY IN THE USA AND THE REPUBLIC OF UZBEKISTAN
Submission Date:
December 17, 2023,
Accepted Date:
December 22, 2023,
Published Date:
December 27, 2023
Crossref doi:
https://doi.org/10.37547/ijlc/Volume03Issue12-13
Ochilova Aziza Ulugbekovna
4th Year Student Of The Faculty Of Private Law, Tashkent State University Of Law, Uzbekistan
Journal
Website:
https://theusajournals.
com/index.php/ijlc
Copyright:
Original
content from this work
may be used under the
terms of the creative
commons
attributes
4.0 licence.
Volume 03 Issue 12-2023
75
International Journal Of Law And Criminology
(ISSN
–
2771-2214)
VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
I
MPACT
FACTOR
(2021:
5.
705
)
(2022:
5.
705
)
(2023:
6.
584
)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
devices. Several centuries later, the important role of
intellectual property protection was first recognized in
the Paris Convention for the Protection of Industrial
Property, adopted in 1833, as well as in the Berne
Convention for the Protection of Literary and Artistic
Works, adopted in 1886. The broad significance of the
application of industrial property was stipulated in the
Paris Convention.
The Paris Convention includes issues related to
industrial property, including patents, trademarks,
industrial designs, utility models, trade names,
geographical indications and the suppression of unfair
competition. The general rules, including the rules on
patenting, specified in the Convention must be
observed by all Contracting States. It provides citizens
of the participating countries with equal rights to
protect their inventions, industrial designs, trademarks
and other objects of industrial property in all
participating countries. According to the Paris
Convention, patents granted in different countries for
the same invention are independent of each other. This
means that refusal to grant a patent in one country
does not mean that the patent will not be granted in
another country. In addition, the Convention prohibits
the rejection of a patent application or the revocation
of a patent on the grounds that the sale of a patented
product or a product manufactured in a patented
manner is subject to prohibitions or restrictions arising
from national legislation. This rule is aimed at
protecting the interests of inventors and ensuring their
right to receive remuneration for their inventions.
Today, the protection of industrial property is one of
the important industries in many countries of the
world, including the USA and the Republic of
Uzbekistan. In turn, the question arises which objects
are included in the industrial property industry. The
objects of industrial property include inventions,
industrial designs (artistic and aesthetic solutions
related to the appearance of an industrial product),
trademarks, service marks, topologies of integrated
circuits, brand names and commercial designations,
geographical indications. An object of industrial
property is a designation that informs consumers
about goods and services offered on the market. The
protection of industrial property is aimed at preventing
the illegal use of such designations that can mislead the
consumer.
In the USA and the Republic of Uzbekistan, the legal
protection of industrial property is carried out through
patenting. A patent is an exclusive right to an invention
that gives its owner the right to decide how an
invention can or can be used by other people. In
exchange for this right, the patent holder discloses
technical information about the invention in a
published patent document. The State provides an
official certificate that entitles the owner to use an
invention or other object of industrial property for a
certain period. Patenting of an object gives the patent
holder the right to protect innovations and stimulates
innovative activity. Further, in this paper we will
consider the process of obtaining a patent for an
object of industrial property and termination of its
validity in the USA and the Republic of Uzbekistan and
make a comparative analysis.
1. General information about patent law in the USA:
In the United States, patents are regulated by federal
law and managed by the United States Patent and
Trademark Office (USPTO). A patent in the United
States can be granted for three types of industrial
property objects: a utility model, a process or method,
and a design. To obtain a patent in the United States,
you must apply to the Patent and Trademark Office
(USPTO). The application must contain a detailed
description of the invention and its drawings. After the
application is submitted, an examination takes place in
Volume 03 Issue 12-2023
76
International Journal Of Law And Criminology
(ISSN
–
2771-2214)
VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
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FACTOR
(2021:
5.
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(2022:
5.
705
)
(2023:
6.
584
)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
which the USPTO verifies the novelty and inventive
level of the proposed object. If the application meets
all the requirements and conditions specified in the
law, then the patent is issued to the owner for 20 years.
After patenting an invention, the owner of industrial
property is provided with the following advantages:
-
intellectual property rights are protected by the
state;
-
in case of disputes, a patent is an essential proof of
authorship;
-
exclusive rights to use, own and dispose of the
object of patenting arise;
-
the possibility of transferring the right of use to
third parties for a certain period of time, by
concluding a license agreement or selling your
invention;
-
it is prohibited to use the object of patenting by
third parties without the consent of the owner.
There are 3 types of patents in the USA: an invention
patent, an industrial design patent, and a plant patent.
Utility patent, that is a patent for an invention, is issued
for an invention, the process of operation, the
composition of a substance or its production and is
valid for 20 years. No one has the right to use an
invention without the consent of the patent holder.
Design patent
–
this document protects the
appearance of the product, for example, its color,
shape or ornament. A patent for an industrial design is
issued for 15 years and gives the patent holder the right
to prohibit other persons from using his design without
his permission.
Plant patent
–
protects a new variety and type of plant
obtained by breeding. The patent is granted for 20
years and gives the patent holder the right to prohibit
other persons from propagating, selling or using a new
variety without his consent.
In the USA, a utility model is not subject to patenting.
This means that patents are not granted in the United
States for technical solutions that are not inventions.
Therefore, in order to patent a technical solution, it is
necessary to apply for a patent for an invention. The
application must meet the criteria of patentability,
such as novelty, inventive step and usefulness.
There is a US Patent Law. Article 102 of this Law
establishes the criteria for patentability. The law states
that the claimed invention must necessarily meet the
criteria of patentability; otherwise, it simply will not be
registered. In the process of obtaining a patent, certain
conditions are established that must be met without
fail. The conditions of patentability include novelty,
inventive step, usefulness and applicability of the
development. Let us consider each condition in detail.
1) Novelty
–
in order for an invention to be patented in
the USA, it must be new. This means that it should not
be known to the world before the date of filing the
patent application. An exception may be that if the
invention was disclosed by the author himself, it does
not lose its novelty if the author of the invention filed a
patent application within 12 months from the date of
disclosure.
2) Inventive level
–
is estimated based on the level of
global technological progress. The invention must be
original, that is, it must represent something new and
useful that was not previously known.
3) Usefulness and applicability of the development
–
the invention must be useful to society, that is, it must
have practical value and be suitable for its intended
use. In the USA, they are quite loyal to the condition of
usefulness. Almost any invention that does not
contradict the principles of morality and does not
Volume 03 Issue 12-2023
77
International Journal Of Law And Criminology
(ISSN
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VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
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6.
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OCLC
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1121105677
Publisher:
Oscar Publishing Services
Servi
violate the legislation of the country is considered
useful. This is due to the fact that the US patent system
is aimed at stimulating innovation and technology
development.
To obtain a patent, you must collect the necessary
documents. All signs of the patented solution are
indicated in a special document PriorAct, which is
compiled after the examination. On its basis, a
preliminary and then the main application is submitted.
It is also necessary to provide an Information
Disclosure Statement. In it, the developer indicates all
the signs of a new solution, the level of technology that
he has become aware of. The decision of the experts
will depend on the composition of the documents,
their completeness and literacy of filling. Next, you
need to apply to the USPTO. The application must
contain a description of the invention, the claims,
drawings and a declaration of disclosure. After
reviewing the application, the USPTO decides whether
to grant a patent or refuse to grant it.
Next, let us look at the procedure for patenting
industrial property in the United States. The first stage
of registration is a preliminary patent search. It is
carried out even before filing an application to
determine the possibility of registering an object and
identify potential obstacles to patenting, since after
the search results, changes can be made to the claimed
technical solution in order to reduce the possibility of
rejection by the Office. After conducting a preliminary
patent search, the applicant may submit a preliminary
application. The preliminary application fixes the
priority date of the application and provides the
applicant with 12 months to improve its development.
Within 12 months after submitting the preliminary
application, the applicant may submit an official
application, which must contain a description of the
invention, the claim, drawings, a description of the
best way to apply the invention, images that identify
the appearance of the product and a detailed
description of the design. After submitting an official
application,
the
USPTO
conducts
a
formal
examination, during which it verifies that the
application meets the formal requirements.
After the formal examination, the USPTO conducts a
substantive examination, in which it verifies that the
invention meets the patentability requirements and
legal requirements. The substantive examination may
take several years.
After conducting a substantive examination, the
USPTO decides whether to grant or refuse to grant a
patent. A patent fee must be paid for the grant of a
patent. Based on the results of the examination, the
USPTO decides whether to grant a patent or refuse to
grant it. The decision of the USPTO can be appealed on
appeal.
The process of registering intellectual property objects
in the United States differs in the amount of fees, the
timing of the procedure, as well as the possibility of
filing a Provisional Application exclusively for patenting
inventions. The date of filing an application for an
invention determines the time from which it is granted
legal protection in the event of the grant of a patent.
However, in order to keep the patent in force,
government fees must be paid. For the entire period of
validity of the security document, they are paid only
three times, unlike the annual payment of duties in
many countries of the world.
In accordance with U.S. law, a patent application may
be rejected on the following grounds:
1) Disclosure of information. An invention cannot be
patented if it was disclosed before the date of filing the
patent application. The disclosure of information is
considered to be the publication of the invention in the
press, the use of the invention in industry, the offer of
Volume 03 Issue 12-2023
78
International Journal Of Law And Criminology
(ISSN
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2771-2214)
VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
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(2021:
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5.
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(2023:
6.
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OCLC
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1121105677
Publisher:
Oscar Publishing Services
Servi
the invention for sale or other communication about it
to third parties.
2) The known state of the art. An invention cannot be
patented if it is obvious to a specialist with an average
level of knowledge in this field of technology. The fame
of the invention is determined on the basis of an
analysis of the state of the art, which includes
information that was available to the public before the
date of filing the patent application.
3) Lack of inventive step. An invention cannot be
patented unless it is new and original. An invention is
recognized as original if it is not obvious to a specialist
with an average level of knowledge in this field of
technology.
4) Lack of usefulness. An invention cannot be patented
if it is not useful. An invention is recognized as useful if
it can be used in industry or other fields of human
activity.
5) Violation of the law. An invention cannot be
patented if it violates applicable U.S. law.
In addition, a patent application may be rejected on
other grounds provided for by U.S. law. For example,
an application may be rejected if it does not contain all
the necessary information or if it is made up with
errors.
2. General information on patent legislation in the
Republic of Uzbekistan:
In the Republic of Uzbekistan, a patent is a form of
intellectual property protection and grants the owner
the exclusive right to use and commercialize an
invention, industrial design or utility model. It is valid
for a certain period of time, protecting the owner from
the misuse of his intellectual property. In Uzbekistan,
the Law of the Republic of Uzbekistan «On Inventions,
Utility Models and Industrial Designs» regulates this
industry.
To obtain a patent for an object of industrial property
in the Republic of Uzbekistan, it is necessary to
perform the following actions:
1. Prepare a patent application. According to the law
"On Inventions, Utility Models and Industrial Designs",
in order to obtain a patent, an application should be
submitted to the Agency for Intellectual Property
under the Ministry of Justice of the Republic of
Uzbekistan. The application must contain a detailed
description of the invention or industrial design, as well
as the necessary drawings or samples. The application
for the grant of a patent is submitted in Uzbek or
Russian in the form. If the application documents are
submitted in another language, then their translation
into Uzbek or Russian is attached to the application,
which can be submitted within two months from the
date of filing the application with the Ministry.
A patent in the Republic of Uzbekistan can be granted
for three types of objects of industrial property: a
patent for an invention, a patent for a utility model and
a patent for an industrial design. Let us take a closer
look at the procedure for filing applications for
patents.
The application for the grant of a patent must contain
the following information: - Application for the grant of
a patent. The application must specify the object of
industrial property for which the patent is being
sought, as well as information about the applicant.
-
Description of the object of industrial property. In
the description, it is necessary to reveal the
essence of the object of industrial property, its
distinctive features and purpose.
Volume 03 Issue 12-2023
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International Journal Of Law And Criminology
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SJIF
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5.
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(2023:
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Publisher:
Oscar Publishing Services
Servi
-
The formula of the invention. The claim must
contain the exact and complete characteristics of
the invention.
-
Drawings, diagrams, drawings or other materials
necessary to understand the essence of the object
of industrial property.
2. Pay the state fee for reviewing the application. The
amount of the state fee is determined in accordance
with Law of the Republic of Uzbekistan “On State
Duty”. The amount of the state fee for consideration
of a patent application is determined depending on the
type of industrial property object for which a patent is
being sought:
-
Invention - 100 minimum wage (2,000,000 soums).
-
Utility model - 50 minimum wage (1,000,000
soums).
-
Industrial design - 25 minimum wage (500,000
soums).
3. Pass the examination of the application. The
examination of the application includes the following
stages:
-
The entrance stage. At this stage, the compliance
of the application with the requirements of the
legislation of the Republic of Uzbekistan is
checked.
-
The preliminary stage. At this stage, it is checked
whether the object of industrial property for which
the patent is being sought meets the established
requirements.
-
The main stage. At this stage, an examination of
the object of industrial property is carried out for
its novelty, inventive step and industrial
applicability.
The Agency conducts an examination of the
application for its compliance with the requirements of
the legislation of the Republic of Uzbekistan.
According to article 20 of the Law of the Republic of
Uzbekistan "On Inventions, Utility Models and
Industrial Designs", the Agency conducts a state
examination on an application for a patent, consisting
of a formal examination, examination of an application
for a utility model and a scientific and technical
examination on the merits of an application for an
invention or industrial design. Within two months from
the date of filing the patent application, the applicant
has the right to make corrections, clarifications or
additional materials to it without changing the essence
of the claimed object of industrial property. The
applicant is obliged to submit the necessary
documents and materials within the prescribed period.
The applicant is obliged to pay patent fees. Liability in
accordance with the law is provided for the disclosure
of information contained in the application materials
before the official publication of information on the
application for an invention or on the state registration
of a utility model and an industrial design.
4. Get a patent. If the application meets the
requirements of the legislation of the Republic of
Uzbekistan, the Agency issues a patent for an object of
industrial property. A patent is issued for a period of 5
to 20 years, depending on the type of industrial
property object. After making a decision on the grant
of a patent, the Agency performs state registration of
an object of industrial property in the State Register of
Inventions, in the State Register of Utility Models or
the State Register of Industrial Designs. The issuance
of a patent for an object of industrial property is carried
out by the Agency after ten days from the date of
publication of information on its registration in the
official bulletin.
5. Termination of the patent. The patent may be
terminated in the following cases:
Volume 03 Issue 12-2023
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International Journal Of Law And Criminology
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VOLUME
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Pages:
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SJIF
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Publisher:
Oscar Publishing Services
Servi
- After the expiration of the patent. The validity period
of the patent is indicated in the patent.
- By court order. The patent may be terminated by a
court decision if:
1) the patent holder does not use the object of
industrial property for 3 years from the date of its
issuance.
2) the patent holder intentionally or negligently
allowed the use of an object of industrial property in
violation of the requirements of the legislation of the
Republic of Uzbekistan.
- At the request of the patent holder. The patent holder
has the right to terminate the patent upon his
application. The application for termination of the
patent is submitted to the Agency.
Comparative analysis of patent laws between the USA
and Uzbekistan:
Patenting industrial property is one of the main ways
to protect intellectual property. A patent grants the
patent holder the exclusive right to use an object of
industrial property for a certain period of time.
In both countries, the process of obtaining a patent
includes filing an application, conducting an
examination and research of inventions, as well as
evaluating the degree of inventive level of the object.
However, there are a number of differences that are
worth noting.
The procedure for obtaining a patent for an object of
industrial property and terminating its validity in the
United States and the Republic of Uzbekistan has a
number of common features. In both countries, a
patent can be obtained for inventions, utility models
and industrial designs. In both countries, a patent may
be terminated upon expiration of its validity, by a court
decision or at the request of the patent holder. At the
same time, there are significant differences between
the procedure for obtaining a patent in the United
States and the Republic of Uzbekistan.
In the United States, a patent application may be filed
with the United States Patent and Trademark Office
(USPTO) in electronic form or in writing. In the
Republic of Uzbekistan, a patent application may be
submitted to the Intellectual Property Agency of the
Republic of Uzbekistan (Agency) in writing.
In the United States, the amount of the state fee for
reviewing a patent application depends on the type of
industrial property and the category of the applicant.
In the Republic of Uzbekistan, the amount of the state
fee for consideration of a patent application also
depends on the type of industrial property object, but
does not depend on the category of the applicant.
In the USA, the examination of a patent application is
conducted by the USPTO within 18 months from the
date of its filing. In the Republic of Uzbekistan, the
examination of a patent application is carried out by
the Agency within 6 months from the date of its filing.
In the USA, a patent is issued by the USPTO for a period
of 17 to 20 years, depending on the type of industrial
property object. In the Republic of Uzbekistan, a
patent is issued by the Agency for a period of 5 to 20
years, depending on the type of industrial property
object.
In the United States, a patent may be terminated by a
court decision if:
- The patent holder does not use the object of industrial
property for 3 years from the date of its issuance.
Volume 03 Issue 12-2023
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International Journal Of Law And Criminology
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Pages:
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SJIF
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(2021:
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(2022:
5.
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)
(2023:
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OCLC
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Publisher:
Oscar Publishing Services
Servi
- The patent holder intentionally or negligently allowed
the use of an object of industrial property in violation
of the requirements of US law.
- The patent holder committed actions that led to the
loss of patentability of the object of industrial
property.
In the Republic of Uzbekistan, a patent may be
terminated by a court decision if:
- The patent holder does not use the object of industrial
property for 3 years from the date of its issuance.
- The patent holder intentionally or negligently allowed
the use of an object of industrial property in violation
of the requirements of the legislation of the Republic
of Uzbekistan.
In addition, in the Republic of Uzbekistan, a patent may
be terminated by a court decision at the request of a
person who has the right to obtain a patent for an
object of industrial property, if:
- The patent holder is not the author of an invention,
utility model or industrial design.
- The patent holder has received a patent for an object
of industrial property in violation of the requirements
of the legislation of the Republic of Uzbekistan.
Based on all of the above, we conclude that, in general,
the procedure for obtaining a patent in the United
States and the Republic of Uzbekistan is similar.
However, there are some differences, in particular,
with regard to the method of filing the application, the
amount of the state fee and the period of
consideration of the application, which we discussed
above.
Regulatory legal acts:
1.
The Law of the Republic of Uzbekistan dated
May 6, 1994 "On inventions, Utility models and
industrial designs".
2.
Order No. 22 of the Director of the State Patent
Office dated April 21, 2004. RULES for the preparation,
filing and consideration of an application for the grant
of a patent of the Republic of Uzbekistan for an
industrial design.
REFERENCES
1.
The main provisions of the Paris Convention for
the Protection of Industrial Property (1883).
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World Intellectual Property Organization, 34,
chemin des Colombettes, Mailbox 18 CH-1211
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3.
John Giust, Comparative Analysis of the United
States Patent Law and the New Industrial
Property Code of Brazil, 21 HastingsInt'l &
Comp. L. Rev. 597 (1998).
4.
Tarasova O.I., Ryzhova A.A., Savinova M.I.,
Borodin V.D. How to get a patent for invention.
Recommendations for drawing up application
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https://cyberleninka.ru
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https://www.mjil.ru/jour/article
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https://kursk.tpprf.ru
6.
https://zaochnik.com
Volume 03 Issue 12-2023
82
International Journal Of Law And Criminology
(ISSN
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2771-2214)
VOLUME
03
ISSUE
12
Pages:
74-82
SJIF
I
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FACTOR
(2021:
5.
705
)
(2022:
5.
705
)
(2023:
6.
584
)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
7.
http://lawlibrary.ru
1.
8.https://litgid.com/read/mezhdunarodnoe_ch
astnoe_pravo
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https://www.wipo.int/ - World Intellectual
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https://www.uspto.gov/ - United States Patent
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https://www.wto.org
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https://intels.ru/stati/istoriya-prava-
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https://www.wipo.int/patents/ru
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https://xn--b1afkisbcjmk.xn--p1ai/patentovanie-
v-ssha
