IP/C/W/626  
 
20 February 2017  
(17-1021) Page: 1/7 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
REVIEW OF LEGISLATIO N 
RESPONSES FROM KAZAKHSTAN  TO QUESTIONS POSED B Y SWITZERLAND  
By means of a communication  from the delegation of Kazakhstan , dated 20 February  2017, the 
Secretariat has received the following responses to questions posed by Switzerland as circulated in 
document IP/C/W/620.  
 
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1  GENERAL  
1. Are the provisions of the TRIPS Agreement, as far as not implemented in national 
law, directly applicable in the legal system of Kazakhstan?  
 
Paragraph 3 of Article 4 of the Constitution o f the Republic of Kazakhstan stipulates that 
international agreements ratified by Kazakhstan have priority over national legislation and this 
provision also applies to the TRIPS Agreement and the terms of the Protocol of Accession of the 
Republic of Kazakh stan to the WTO. Ratified international agreements are applied directly, except 
in cases when a law has to be adopted before an international agreement became applicable.  A 
law has to be adopted in cases, where (i)  the current legislation does not comply with the WTO 
Agreement and has to be amended to comply with the WTO Agreement; or, (ii)  issues contained in 
the WTO  Agreement are not addressed in existing legislation. However, it must be mentioned that 
in the process of its accession to the WTO Kazakhsta n ensured full compliance of its legislation 
with commitments undertaken in accordance with the TRIPS Agreement and the Protocol of 
Accession of the Republic of Kazakhstan to the WTO.  
 
Specifically, the Law of the Republic of Kazakhstan No. 365 -V "On Amend ments and Addenda to 
Certain Legislative Acts of the Republic of Kazakhstan in Connection with Accession to the World 
Trade Organization " was adopted on 27 October 2015.  
 
With the purpose of implementation of intellectual property obligations, the followin g amendments 
were made into national legislation of the Republic of Kazakhstan:  
 
• In order to bring national legislation in compliance with Article 46 of the TRIPS Agreement 
amendments were made to the Civil Code, Code on Administrative Violations and 
Trade marks Law. These amendments provide that simple removal of unlawful trademark is 
not sufficient and guarantee that counterfeit goods will be destroyed.  
 
• In order to bring national legislation in compliance with Article 39.2 of the TRIPS Agreement 
and ensu re 6 years of data exclusivity to producers of original pharmaceutical products, 
amendments were made to the Health Code of the Republic of Kazakhstan.  
 
• In order to bring national legislation in compliance with Article 31 of the TRIPS Agreement 
amendments were made to the Patent Law, providing that:  
- compulsory license for semi -conductor technology shall only be granted for public 
non-commercial use; and  IP/C/W/626  
 
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  - any compulsory license shall be issued in the first instance for providing for demands 
of the domesti c market of the Republic of Kazakhstan, except when the purpose of 
the license is to export the patented product to a territory with no or insufficient 
manufacturing capacity, in accordance with international agreements, ratified by the 
Republic of Kazakhs tan.   
 
2  PATENTS  
2. Does the legislation of Kazakhstan grant patent protection for inventions relating 
to products and processes in all fields of technology? Are there any exceptions? If yes, 
please indicate these exceptions and explain how they comply with  Article 27 of the 
TRIPS Agreement.  
 
According to paragraph 1 of Article 6 of the Patent Law inventions s hall be protected if they are 
new, involve an inventive step , and are capable of  industrial application . Paragraph 2 of Article  6 of 
the Patent Law pro vides that patent protection shall be available to inventions in any field of 
technology whether products or processes as required by Article 27 of the TRIPS Agreement.   
 
Exceptions are provided in paragraph 3 of Article 6 according to which the Patent La w does not 
recognize as inventions: (i)  discoveries; (ii) scientific theories; (iii)  mathematical methods; 
(iv) methods of economic organization and management; (v)  symbols, schedules, and rules; 
(vi) rules and methods for mental activities; (vii) algorith ms per  se and computer programs; 
(viii) projects and plans of buildings and structures, and land development; (ix)  proposals 
concerning solely the outward appearance of manufactured goods; and, (x)  proposals that are 
contrary to the public order, humanitar ian principles and morality.   
 
At the same time, diagnostic, therapeutic and surgical methods can also be protected as 
inventions under the Article  6 criteria.   
 
Abovementioned exceptions were discussed  with the members during the process of Kazakhstan’s  
accession to the WTO and it was agreed that they comply with exceptions allowed under the 
Article 27 of the TRIPS Agreement.   
 
3. Does the legislation of Kazakhstan, in accordance with Article 27.1 in combination 
with Article 31 of the TRIPS Agreement, c onsider importation as "working " a patent and 
therefore preclude compulsory licensing, if a product is being imported?  
 
Paragraph 2 of Article 11 of the Patent Law stipulates the requirement that a patented invention be 
used, while "use" is defined as manu facturing, application, importation,  offer for sale, sale, as well 
as other means of putting the industrial property into circulation, including storage in view of 
subsequent use.  Therefore,  in the case of importation of a patented product, non -use for th e 
purpose of compulsory licensing cannot be established under Kazakhstan's Patent Law.   
 
4. Does the legislation of Kazakhstan make the granting of a compulsory license 
subject to all the conditions enumerated in Article 31 TRIPS of the TRIPS Agreement? 
Please cite the relevant provisions of the legislation.  
 
All the conditions enumerated in Article 31 of the TRIPS Agreement can be found in paragraphs 4 
and 5 of Article 11 of the Patent Law of the Republic of Kazakhstan.  
 
According to the abovementioned pr ovisions, when the patentee does not use the industrial 
property object and refuses to conclude a licensing agreement on acceptable commercial terms 
within 90 calendar days from the day of request, any person have the right to apply to a court with 
a claim  on being granted a compulsory non -exclusive licence when the object of industrial property 
was not continuously used after the first publication of information on the issue of the protection 
document on the industrial property object during any three year s preceding the date of 
submission of such claim.  
 
If the patentee does not prove that the non -use is stipulated by good reasons, the court grant the 
indicated license  with determination of limits of use, deadlines, amount and procedure for IP/C/W/626  
 
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  payments. The amount of payments is established not lower than the market price of the license  
as defined in accordance with the established practice.  
 
Compulsory license in respect of an invention in the field of semi -conductor technology is only 
granted for public no n-commercial use or where a judicial body has determined that the existing 
practice is in violation of anti -competitive legislation of the Republic of Kazakhstan and that the 
grant of compulsory license can remedy such practice.   
 
Any compulsory license i s issued in the first instance for providing for demands of the domestic 
market of the Republic of Kazakhstan, except when the compulsory license concerns a patent 
claiming a pharmaceutical product or a process to obtain a pharmaceutical product, and the 
purpose of the license is to export the patented product or the product manufactured by the 
patented process to a territory with no or insufficient manufacturing capacity, in accordance with 
international agreements, ratified by the Republic of Kazakhstan.   
 
The right to use the indicated industrial property object may be assigned by the person to whom 
the compulsory license was granted to other person only together with the relevant production in 
which this item is used.  
 
The compulsory license is subject to revocation by the court in the case of termination of the 
circumstances which were the reason for its issue.  
 
The patentee who cannot use the object of industrial property without infringing the right of the 
holder of another patent who has refused to c onclude a licensing agreement on acceptable 
commercial terms has the right to apply to the court with application claim on being granted a 
compulsory non -exclusive license to use the object of industrial property in the territory of the 
Republic of Kazakhs tan. 
 
If the patent holder who cannot use the object of industrial property without infringing the rights 
of the holder of another patent proves that his industrial property object represents an important 
technical advance and has a considerable economic s ignificance in relation to the object of 
industrial property of another patent, the court may decide to grant him a compulsory license.  
 
When granting the indicated license the court determines the limits of use of the object of 
industrial property the pa tent on which belongs to other person, deadlines, amount and procedure 
for payments.  In this respect, the amount of payments is established not lower than the market 
price of the license as defined in accordance with the established practice.  
 
The right to use the object of industrial property obtained on the basis of the present paragraph 
may be assigned only with the assignment of the protection document on this object of industrial 
property in connection therewith this right is granted.  
 
In the case of  granting in accordance with this paragraph of a compulsory license to the patent 
holder of protection document the right to use on which was granted on the basis of indicated 
license will also have a right to receive a license to use the dependent inventi on in connection 
therewith compulsory license was granted.  
 
5. Does the legislation of Kazakhstan provide for the principle of the reversal of 
burden of proof in patent litigation? Please cite the relevant provisions of the legislation.  
 
With regard to re versal of the burden of proof in civil proceedings concerning the infringement of 
process patents, it must be mentioned that the requirements of Article  34 of the WTO 
TRIPS  Agreement are not covered by the Patent Law, but contained in Article  65 of the Civ il 
Procedure Code, which stipulates that each party is responsible for providing proof for its own 
claims and statements.  Other parties involved in the process can also provide evidence.  
 
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  3  PROTECTION OF UNDISC LOSED INFORMATION  
6. Please explain in detail if the legislation of Kazakhstan ensures that undisclosed 
test or other data submitted by an applicant to the responsible State agency in the 
procedure for market authorization  of a pharmaceutical or of an agricultural chemical 
product is protected against  disclosure and against unfair commercial use by a 
competitor, for example by prohibiting a second applicant from relying on, or from 
referring to the original data of the first applicant, when applying subsequently for 
market authorization  for their own p roduct.  
 
According to paragraph 19 of Article 71 of the Code of the Republic of Kazakhstan "On People's 
Health and Healthcare System " of 18 September 2009 (further – the Health Code) State Expert 
Organization as well as state body in the field of circulati on of pharmaceutical products, medical 
devices and equipment shall not be allowed without consent of the applicant to disclose and use 
with commercial purpose of undisclosed information contained in application for state registration, 
documents on examinat ion as well as in registration dossier of pharmaceutical product that contain 
new chemical entities during the period of 6 years after state registration of a pharmaceutical 
product.  
 
With regard to agrochemical products it must be mentioned  that  accordin g to Law No.  302-III 
"On Safety of Chemical Products " of 21  July 2007 and Government Resolution No.  1396 
"On Approval of the Rules on Registration and Production Testing and State Registration of 
Pesticides " of 30 November 2011, registration requirements f or chemical products, pesticides and 
poisons are the same for every applicant and does not permit the reliance on undisclosed data 
developed or submitted by another applicant to obtain product registration.   
 
7. Does your legislation provide for exception s to this protection of undisclosed 
information? If so, please explain under what conditions would such exceptions apply?   
 
According to paragraph 19 of Article 71 of the Code of the Republic of Kazakhstan "On People's 
Health and Healthcare System " of 18 S eptember 2009 State Expert Organization as well as state 
body in the field of circulation of pharmaceutical products, medical devices and equipment shall 
not be allowed without consent of the applicant to disclose and use with commercial purpose of 
undiscl osed information contained in application for state registration, documents on examination 
as well as in registration dossier of pharmaceutical product that contain new chemical entities 
during the period of 6 years after state registration of a pharmaceut ical product.  
 
Based on decision of the court, disclosure and use of undisclosed information indicated in 
paragraph 19 of Article 71 of the Health Code shall be allowed if:  
 
1)  supplies of pharmaceutical product are not sufficient for satisfaction of needs o f population 
during the period of 12 month from the date of registration in the Republic of Kazakhstan;  
 
2)  it is necessary to protect health of population in emergency or guarantee national security;  
 
3)  legislation of the Republic of Kazakhstan in the field of competition was infringed ". 
 
8. Does your legislation provide for a specific term of protection for such undisclosed 
test data?  
 
As it was mentioned above,  the period of such protection is 6 years after state registration of a 
pharmaceutical product.  
 
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  4  PROVISIONAL MEASURES  
9. Do the judicial authorities of Kazakhstan have the authority to adopt, on the 
request of a right holder, a provisional measure inaudita altera parte  before an action 
leading to a decision on the merits of the case has been lodged? P lease cite the relevant 
provisions of the legislation.  
 
According to paragraph 2 of Article 157 of the Code of Civil Procedure the court can order any 
provisional measure without prior notice to the participants of the case or parties of arbitration 
(inaud ita altera parte ) and without holding court proceedings.   
 
In the cases where provisional measures had been adopted inaudita altera parte , parties affected 
had to be given notice without delay after the execution of the measures at the latest.  
10. Does th e legislation of Kazakhstan provide for any restrictions for obtaining 
provisional measures? If so, what are these restrictions? Please cite the relevant 
provisions of the legislation.  
 
According to Article 155 of the Code of Civil Procedure, provisional m easures shall not be applied 
with regard to:  
 
• financial organization in the process of restructorization in cases provided by the legislation 
of the Republic of Kazakhstan;  
 
• suspension  of validity of the contested legal acts of the National Bank of the Rep ublic of 
Kazakhstan on suspension  of activity at the financial market, conservation of financial 
organizations, as well as its written instructions;  
 
• suspension  of validity of the contested legal acts of the state revenue bodies that serve as a 
basis for t ax examinations.  
  
11. Please describe the provisional measures provided for in the legislation of 
Kazakhstan, including those for combatting counterfeiting and piracy. Please describe 
the procedures that must be followed and cite the relevant provisions o f legislation.  
 
According to Article 155 of the Code of Civil Procedure, upon application of participants of the case 
or parties of the arbitration, the court can apply provisional measures in cases where, in their 
absence, the court will not be able to is sue a ruling or its work will be hindered . 
 
Parties of the arbitration must provide the document confirming submission  of the arbitration claim 
together with the application for provisional  measure.  
 
According to Article  156 of the Code of Civil Procedure,  provisional measures can be the following: 
(i) seizure of the defendant's property; (ii)  prohibition for the defendant to take certain actions; 
(iii) prohibition for other persons to transfer property or perform certain actions in respect to the 
defendant ; (iv) suspension  of the sale of property in cases where a claim was filed to cancel the 
seizure of property; (v) suspension  of a contested legal act issued by a State body, organization or 
an official; and, (vi)  suspension  of a penalty imposed by an execu tive document, contested by the 
debtor in court; (vii) suspension of trading on the extrajudicial sale of pledge; (viii) suspension of 
the contested acts and actions of the judicial executor related to foreclosure on the property, made 
during execution pro ceedings. The court could also apply other provisional measures for the 
purposes of Article  155 of the Code of Civil Procedure.  
 
Measures for satisfaction of a claim must be proportionate to the demand of a plaintiff, and not 
violate public interest and t he interests of third parties.  
 
12. Please describe the measures provided by the legislation of Kazakhstan to combat 
counterfeiting and piracy at the border. Please explain whether the competent 
authorities are empowered to act ex officio  and, if so, pleas e indicate the enforcement 
actions that may be taken. Please cite the relevant provisions of the legislation.  
 
Border measures in Kazakhstan are applied pursuant to Chapter 46 (Articles 328 -333) of the 
Customs Code of the Customs  Union of 27 November 2009 and Section 53 of the Customs Code of IP/C/W/626  
 
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  Kazakhstan (Articles  436-445). Consistent with the procedures set -out in Chapter 46 and 
Section  53, Kazakhstan's customs authorities are authorized to take action to prevent the import 
and export of goods containing ob jects of intellectual property rights.  Kazakhstan's State Revenue 
Committee maintains a Registry of goods containing intellectual property, which is published 
periodically. Goods are included in the Registry free of charge, at the request of right holders . This 
guarantee that the rights of applicants will be protected by the customs authorities for the duration 
specified in the application, with the maximum period being two years from the date of inclusion in 
the Registry (with a possible extension, which cannot exceed the period of validity of the right 
itself). Although right holders can register their intellectual property with the State Revenue 
Committee, customs officials can exercise ex officio  authority to seize suspect goods even if right 
holders do  not have the registration.   
 
The CU Customs Code and the Customs Code of Kazakhstan authorize the national customs 
authorities to suspend the customs processing of goods containing intellectual property for up to 
ten working days if the right holder appl ied for such protection and if they found that the goods 
violated the intellectual property rights of the applicant. When such goods are discovered, the 
customs authorities attempt to identify right holders by consulting the Unified Customs Registry or 
Kazakhstan's national Customs Registry. If a right holder did not register its intellectual property 
rights on these registers, the customs authorities attempt to identify and contact the right holder 
by consulting the registries of the Ministry of Justice. A fter the right holder is identified, the 
customs authorities inform him/her about the goods under investigation and provide the right 
holder, or his/her representative, with the opportunity to inspect samples/specimens from the 
goods under customs supervis ion at the place of temporary storage (Article  440 of the Customs 
Code of Kazakhstan and CU Commission Decision No.  258 "On Customs Examination under 
Customs Control " of 20 March 2010). Pursuant to Article  440 of the Customs Code of Kazakhstan, 
the customs  authorities have to provide the right holder with the name and address of the 
declarant, as well as provide the declarant with the name and address of the right holder. This  has 
to be done within one day of taking a decision to suspend the release of the goods, i.e.,  before the 
matter is taken to court and before the infringement is identified by the right holder. Pursuant to 
the Customs Code of Kazakhstan, the customs authorities are entitled to receive compensation to 
cover expenses incurred in connectio n with the suspension of the goods (e.g., for warehouse 
storage). For goods that proved to be counterfeit, such compensation has to be provided by the 
declarant, and for goods that proved not to be counterfeit, by the applicant. For goods that proved 
not t o be counterfeit, the right holder compensate the declarant for any damages incurred 
(minimum security/guarantee of €10,000 is a requirement for right holders wishing to include 
goods in the national Customs Registry). The exact amount of compensation can be agreed 
between the declarant and the right holder, or can be determined by the court.   
 
 
5  ENFORCEMENT OF INTEL LECTUAL PROPERTY RIG HTS 
13. Please describe how the legislation of Kazakhstan meets the requirements of 
Article 41 TRIPS Agreement. Please cite  the relevant provisions.  
 
Kazakhstan fully applies  the provisions of the WTO Agreement on Trade -Related Aspects of 
Intellectual Property Rights, including provisions for enforcement that can be found in the Civil 
Code, the Code of Civil Procedure, the Cod e of Administrative Offences, the Criminal Code and the 
Code of Criminal Procedure.  
 
14. Please indicate the authorities responsible for the application of the measures 
provided by the legislation of Kazakhstan to combat counterfeiting and piracy. Please 
explain whether the competent authorities are empowered to act ex officio  and, if so, 
please indicate the enforcement actions that may be taken. Please cite the relevant 
provisions of the legislation.  
 
Besides the customs authorities, the court, the office of the public prosecutor, the internal affairs 
authorities and the financial police are among those who are actively involved in the enforcement 
of intellectual property laws in Kazakhstan. Police units work in close cooperation with right 
holders as well as conduct repeated, unannounced inspections in order to examine compliance with 
intellectual property rights legislation. If evidence of unauthorized use of intellectual property 
rights protection is found, administrative or criminal proceedings are initi ated.   
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  15. Please describe any new initiatives that are planned to improve the enforcement of 
intellectual property rights in your country. Is there a particular action plan in place?  
 
Within the process of WTO accession Kazakhstan has increased efforts in order to improve 
protection and enforcement of intellectual property rights. National legislation was significantly 
amended in order to bring it in full compliance with the WTO rules. Statistic data for 2015 -2016 
shows that despite decrease in number of  inspections, number of cases on infringement of 
intellectual property that were revealed is still growing. Every year the Ministry of Justice regularly  
hold the national campaign "CONTRAFACT " aimed at prevention and detection of infringements as 
well as p ersons involved in illegal production and dissemination of goods. It must be mentioned 
that beyond this campaign number of government bodies involved in economic, anticorruption, 
financial and criminal investigations also take part in everyday intellectual  property rights 
enforcement actions.  
 
The Ministry of Justice of the Republic of Kazakhstan developed and in November 2016 submitted 
to the Majilis of the Parliament of the Republic of Kazakhstan a draft Law "On introducing 
amendments and addenda to some legislative acts of the Republic of Kazakhstan on improvement 
in the field of intellectual property law ". 
 
The purpose of the draft Law - further improvement of the legislation in the field of intellectual 
property, development of scientific and technologi cal progress and free competition, simplification 
of registration procedures, elimination of legal gaps and exclusion rules that create administrative 
barriers in the field of intellectual property.  
 
Drafting of the Law involved participation of the releva nt public authorities, National Chamber of 
Entrepreneurs of Kazakhstan "Atameken ", non-governmental organizations, representatives of the 
Foreign Investors Council, Members of the Council for improvement of the investment climate, 
patent attorneys.  
 
Prepar ation of the draft Law was carried upon reflection on the experiences of the OECD countries.  
 
Discussions of the proposed amendments involved participation of experts and judges from several 
OECD countries (Germany, Japan, France, the United States ) and Ru ssian Federation . 
 
The main new features of the draft Law are as follows:  
 
• creation of a single -level intellectual property registration system by delegating to the expert 
organization (RSE "National Institute of Intellectual Property ") of the authority to  issue 
registration rights on intellectual property;  
 
• expansion of the pre -trial examination possibility related to trademark registration disputes;  
 
• publication of trademark applications from the moment their arrival to the expert 
organization;  
 
• simplific ation of the registration of contracts.  
 
 
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