Conversion of the application

Procedure for Conversion of an Invention Application into a Utility Model Application or a Utility Model Application into an Invention Application 

In accordance with Article 28 of the Patent Law of the Republic of Kazakhstan, the applicant shall have the right to convert an invention application into a utility model application or vice versa. This right of the applicant may be exercised provided that the following requirements are met. 86 of the Rules on Examination of Industrial Property Objects, Annex to the Order of the Minister of Justice of the Republic of Kazakhstan No. 1349 dated 29.08.2018:

- a petition for conversion of an invention application into a utility model application (or vice versa) must be filed before the issuance of the relevant decision of the expert organization on the invention (or utility model) application. In case of said conversions, the priority and filing date of the first application shall be preserved;

- simultaneously with the petition for conversion and the document of payment in the prescribed amount, a request for the grant of a patent for the utility model (or for the invention), description, claims, drawings shall be submitted.

Where the petition is not executed in accordance with the prescribed requirements, the applicant shall be notified thereof in writing.

The applicant shall be notified of the conversion within one month from the date of conversion and that further examination of the application will be conducted in accordance with the requirements for the utility model (or invention) application.

In what cases conversion of an application may not take place:

- If the conversion request is received after the decision on granting a patent has been rendered, the applicant shall be notified that conversion of the application cannot take place within five working days from the date of receipt of the request.

- Conversion into an application for the grant of a utility model patent shall not be carried out in respect of applications in which the subject matter of the patent is diagnostic, therapeutic and surgical methods for the treatment of humans or animals. Where the application claims a group of inventions which, in addition to diagnostic, therapeutic and surgical methods of treatment of humans or animals, also contains subject matter recognized as utility models, conversion shall be carried out in respect of the latter.

- Conversion shall not be carried out in respect of applications for inventions (or utility models) withdrawn or deemed to have been withdrawn.

An application whose conversion has not taken place remains on the subject matter originally filed.

Where a petition for conversion is received for an application considered withdrawn in accordance with Article 22, paragraphs 3 and 8 of the Law and a request for restoration of the missed time limit is submitted together with the petition, the latter shall be considered in accordance with Article 22, paragraph 13 of the Law.

Where the applicant requests the reverse conversion of a utility model application into an invention application (or an invention application into a utility model) after the notification of the earlier conversion has been sent to the applicant, the applicant shall, within five working days from the date of receipt of such request, be notified of the impossibility of conversion.

A request by the applicant to consider his request for conversion of the application as unsuccessful, received after the notification of the conversion of the application has been sent to him, shall not constitute grounds for the reverse conversion of the application.