Intellectual property contracts Kazakhstan

Today, the value of business is increasingly connected to intellectual property (IP) assets. IP can be loaned, assigned, contributed to the charter capital, etc. One of the tools for profit making and IP management is execution of IP contracts.

According to Kazakh legislation, only the owner of the intellectual property has the right to dispose and prohibit its use by other persons. In this regard, for the lawful use of the intellectual property object, companies enter into licensing agreements with the owners of intellectual property.

It is important to note that the license agreement will be valid only after its registration with the patent office, otherwise, the contract will be null and void.

Contracts which are subject to registration:
– Contract on assignment/transfer of exclusive rights;
– Franchise agreement;
– License agreement;
– Pledge agreement;
– Other agreements on IP rights transfer;

The application for registration of the agreement is submitted online, using the official website of the National Institute of Intellectual Property – NIIP www.kazpatent.kz through a personal account, by certifying the electronic digital signature.

The contract should include the following sufficient terms:
– subject matter of the contract;
– scope of the transferred rights;
– territory to which the right is transferred;
– term of the contract;
– the parties to the contract and their legal addresses;
– other material terms.

The application and attached documents shall be submitted in Kazakh or Russian language. Foreign names and names of legal entities shall be indicated in Kazakh or Russian transliteration.

The application shall be supported by:
1) a document confirming the payment of the state duty;
2) electronic version of the contract on IP rights transfer or scanned version of the contract certified by a notary public;
3) copy of the power of attorney, if the application is submitted through a representative.

The time limit for registration is 10 working days from the date of receipt of the application. However, at the request of the patent office, term of registration is extended in cases where the applicant is required to submit missing, corrected documents or make amendments and additions.

In order to change and extend the term of the license, franchise or pledge agreement, it is required to execute an additional agreement. The additional agreement to the registered agreement shall be submitted in accordance with the requirements provided for license agreements. Changes to the license agreement shall be registered, in particular with respect to:
– subject matter of the contract;
– scope of rights;
– term of the contract;
– territory of the contract;
– other material terms.

To register the transfer or granting the right to use intellectual property, the applicant shall pay state fee. Lack of a document confirming payment or in case of discrepancy in the amount paid by the applicant with the established amounts, the Patent Office shall return the documents without consideration.

Aizhan MUKHAMMAD
Country Director
Kazakh Patent Attorney