Rules registration of the contract on a concession of the security document for object of industrial property, selection achievement, license contract on providing the right for their use, contract on pledge of an exclusive right to object of industrial property and contract on transfer of technology

Rules registration of the contract on a concession of the security document for object of industrial property, selection achievement, license contract on providing the right for their use, contract on pledge of an exclusive right to object of industrial property and contract on transfer of technology

Rules registration of the contract on a concession of the security document for object of industrial property, selection achievement, license contract on providing the right for their use, contract on pledge of an exclusive right to object of industrial property and contract on transfer of technology

(In edition of resolutions of the Government KR of April 1, 2013 N163, of May 20, 2014 N263)

I. General provision

1. These rules of registration of the contract on a concession of the security document for object of industrial property, selection achievement, the license contract on providing the right for their use, the contract on pledge of an exclusive right to object of industrial property and the contract on transfer of technology (further – Rules) are developed according to the Civil code of the Kyrgyz Republic, the Patent law of the Kyrgyz Republic, laws of the Kyrgyz Republic “On Trademarks, Service Marks and Appellations of Origin”, “On protection of selection achievements”.

Register in authorized state body in the field of intellectual property (further Kyrgyzpatent)in accordance to legislation of the KR the contract on a concession of the security document for object of industrial property, selection achievement and the license contract on providing the right for its use, the contract on pledge of an exclusive right to object of industrial property registered in the State register of inventions, the State register of utility models, the State register of industrial designs, the State register of trademarks and service marks, the State register of firm names and the State register of selection achievements is subject.

The contract on transfer of technology can be registered by agreement of the parties in Kyrgyzpatenta.

These rules are applied also at registration of the sublicense contract.

(In edition of resolutions of the government of KR of April 1, 2013 N 163, on May 20, 2014 No. 263)

2. Basic concepts and reductions.

The concepts and reductions used in these rules are applied in the following value:

KyrgyzpatentAuthorized state body in the field of intellectual property;
WIPOWorld Intellectual Property Organization;
Object of Industrial PropertyInvention, industrial design, utility model, trademark, service mark, firm name;
RegisterRegister of object of industrial property объектов, selection achievements of the KR, Eurasian patents;
Protect documentPatent, the patent under responsibility of the applicant, the certificate;
TechnologyKnow-how, complex enterprise license (franchizing), consulting services, rendering engineering services, leasing, option agreements;
ContractContract (transfer act) on a concession of the security document for object of industrial property, selection achievement, license contract on providing the right for their use, contract on pledge of an exclusive right to object of industrial property;
Contract on transfer of technologyContract on a concession of the right and license contract for use of technology;
Sublicense contractGranting by the licensee rights to use object of industrial property, selection achievement and technology to the third parties;
LicensorOwner of the rights for object of industrial property, selection achievement, technology;
LicenseeThe natural or legal entity using object of industrial property, selection achievement, technology;
ApplicantThe owner of the rights for object of industrial property, selection achievement, technology, or one of the parties signing the contract or their representatives;
StatementStatement for registration of the contract (transfer act) for a concession of the security document for object of industrial property, selection achievement, license contract on providing the right for their use, contract on pledge of an exclusive right to object of industrial property, contract on transfer of the right for technology;
DemandSet of the documents enclosed to the application for registration of the contract;
ROMARINDatabase of the international registration of trademarks.

(In edition of resolution of the Government of the KR of May 20, 2014 № 263)

II. The documents provided for registration of the contract

3. For registration of the contract in Kyrgyzpatenta the application in the form given in appendices 1 or 3 to these rules in the state or official language, in one copy, depending on a type of the contract which is subject to registration has to be submitted. Foreign names and names of the enterprises have to be specified in the Kyrgyz or Russian transliteration.

The application is signed by all owners of the security document or their representative which powers are issued properly.

(In edition of resolution of the Government of KR of April 1, 2013 N 163)

4. The following documents have to be enclosed to the application:

1) the contract (original) or the extract from it certified by the legislation of the country of origin of the document, in triplicate (two of which can be copies).

The contract has to include the following main conditions:

– subject of the contract;

– the volume of the transferred rights;

– the territory on which the right is transferred;

– period of validity of the contract;

– indications of the parties of the contract and their legal addresses;

– other conditions which the parties will consider necessary.

The license contract concerning the trademark has to contain a condition that quality of goods and services of the licensee won’t be lower than quality of goods and services of the licensor, and the licensor will exercise control over the implementation of this condition;

2) copy of the security document.

(The paragraph of the second of subparagraph 2 became invalid according to the resolution of the government of KR of May 20, 2014 for No. 263)

At registration of the contract concerning the international trademark listing from a database of the international registration of the ROMARIN trademarks is represented.

3) the document confirming payment of duty on registration of the contract.

At non-presentation together with the statement of the document confirming payment of duty in the established size, consideration of the application isn’t made;

4) the copy of the document certified properly, confirming the right of the applicant who is the successor or the owner’s assignee;

5) the power of attorney issued in accordance with the established procedure according to the legislation of the country of origin of the document if for business management on registration of the contract the representative is appointed the owner;

6) the original of the main contract or its copy certified properly in case of registration of the sublicense contract.

(In edition of resolution of the Government of KR of April 1, 2013 N 163, of May 20, 2013 № 263)

5. Documents are filed in the state or official language. If documents are submitted in other language, their translation into the state or official language is applied to them. Foreign names and names of the enterprises have to be specified in the Russian or Kyrgyz transliteration. Responsibility for the accuracy of the translation is born by the applicant.

6. The statement and documents attached to it are filed to Kyrgyzpatent directly or go by mail.

III. Consideration and Register of Contract

7. Within ten working days from the date of receipt of the statement in Kyrgyzpatent completeness of the demand for existence of necessary documents and observance of the requirements to their registration provided by these rules is checked.

8. Consideration of the contract is made within two months from the date of application. In case of non-simultaneous submission of necessary documents, day of application it is considered day of receipt of the last of them.

9. In case of consideration of application and contract established that the documents, that documents are filed with violation of requirements of these rules and legislations of the Kyrgyz Republic, Kyrgyzpatent sends to the applicant inquiry in which indicates the need of elimination of the revealed shortcomings within two months from the date of receiving inquiry. Thus terms of submission of documents and consideration of the contract last for a while during which the applicant eliminates the revealed defects.

The basis for inquiry, in particular, is absence in the demand of one of the documents provided by these rules.

10. The term of representation by the applicant of required materials can be prolonged at submission of the corresponding petition and payment of duty on extension of term in the established size. The petition for extension of term is submitted within two months from the date of receipt by the applicant of inquiry.

In case of non-presentation in the specified time of required materials or petitions for extension of term of their consideration, office-work under the contract stops. To the applicant two copies of the contract come back. One copy of the contract (original) with materials of office-work remains in Kyrgyzpatent.

The Contract of transfer of technology shall be registered in Kyrgyzpatent after filling of application and giving of documents necessity for register.

Registration of the contract on transfer of technology is made according to requirements of the section III of these Rules. Thus the introduction of the contract on transfer of technology to force is defined by agreement of the parties.

(In edition of resolutions of the Government of KR of April 1, 2013 N 163, on May 20, 2014 No. 263)

11. At compliance of the submitted documents to requirements of these rules and legislations of the Kyrgyz Republic the conclusion about registration of the contract is taken out.

On the basis of the conclusion of Kyrgyzpatent makes the decision on registration of the contract.

In case of identification in the contract of the mutually exclusive provisions or provisions contradicting the legislation of the Kyrgyz Republic and at refusal of the parties in their elimination, Kyrgyzpatent makes the decision on refusal in registration of the contract.

IV. Registration of changes in the registered contract

12. Changes of the license contract, in particular, in the relation are subject to registration:

– definitions of the parties;

– subject of the contract;

– validity period;

– territories of action;

– volume of transfered rights.

By agreement of Parties shall be register and other amendments of the

13. Non-compliance with registration in Kyrgyzpatenta of changes of the contract attracts their invalidity.

14. The statement for registration of the changes made to the registered contract moves the applicant in the form given in the appendix 2 to these rules.

Are enclosed to the application:

– the contract (original) or the extract from it (original) certified by the legislation of the country of origin of the document confirming the agreement of the parties on entering of corresponding changes into the registered contract, in triplicate (two of which can be copies);

– copy of the security document;

– the document confirming payment of duty on modification of the registered contract.

Registration of the made changes is made according to requirements of the section III of these rules.

The registered changes are hemmed to the contract.

(In edition of the resolution of the Government of KR of May 20, 2014 No. 263)

15. In case changes concern definition of the parties of the contract, Kyrgyzpatent, in the presence of reasonable doubts in correctness and/or reliability of the presented data having the right to request necessary documents from the applicant.

V. A business management order under the registered contract and the registered changes

16. Kyrgyzpatent provides confidentiality of data and conditions of the conclusion of the registered contracts, except data of the general character, after their open publication.

One copy of the registered contract (original) is a control copy and is stored in Kyrgyzpatenta.

17. Under the registered contract, and also the registered changes in it, Kyrgyzpatent:

– puts down the last leaf of the contract (changes) a stamp about its registration with the indication of registration number, date of registration, number of sheets of the contract (changes) and its appendices on the back. Registration number includes data on object of the contract: number of registration, year of registration, look and category of the contract;

– sends the decision on registration of the contract (changes) with the appendix of two copies of the contract (changes) with a mark on registration to the address of the applicant (representative);

– brings data on the registered contract or the registered changes in the Register and in the security document;

– publishes in the official bulletin of Kyrgyzpatent data on the registered contracts and the registered changes to them in the following volume: the volume of the transferred rights, subject of the contract, definition of the parties, the territory of action, validity period, data on the early termination or extension of term of their action;

– the Eurasian patent department notifies on registration of the license contract on use of the Eurasian patent.