March 18, 2024

Legal protection of intellectual property. Part 1.

Contents:

1. Main regulations
2. Assignment of rights to IP

Legislation

– Constitution of the Republic of Uzbekistan;

– Civil Code of the Republic of Uzbekistan;

– The Law “On Copyright and Related Rights”;

– The Law “On inventions, utility models and industrial designs”;

– The Law “On Trademarks, Service Marks and Appellations of Origin of Goods”;

– The Law “On Breeding Achievements”;

– The Law “On Brand Names”;

– The Law “On Legal Protection of Computer Programs and Databases”;

– Resolution of the Plenum of the Supreme Court of the Republic of Uzbekistan No. 19 of June 23, 2023 “On some issues of consideration of cases related to intellectual property”.

1. Main regulations

Intellectual property is not only a key factor of economic development, but also the main tool for the protection of creative and innovative achievements. In the Republic of Uzbekistan, legal protection of intellectual property is one of the priority areas, which allows to ensure sustainable development of the economy and attract investments. This sphere in our Republic began to form since 1991, when it became a member of the World Intellectual Property Organization. Full development began after April 19, 2005, when Uzbekistan joined the Berne Convention for the Protection of Literary and Artistic Works. In the following year 2006, the Law “On Copyright and Related Rights” was adopted, for the enforcement of which amendments were made to the Civil Code and a number of legislative acts.

It is worth noting that the field of intellectual property law is subdivided into such institutions as:

1. Copyright;
2. Related rights;
3. Patent law;
4. Right to means of individualization;
5. Right to secrets of production (Know-how);
6. Right to new varieties of plants and new breeds of animals.

The legal regulation of relations in the field of intellectual property is based on the provisions of the Constitution of the Republic of Uzbekistan. According to Article 53: “Everyone is guaranteed freedom of scientific, technical and artistic creativity and the right to use cultural achievements. Intellectual property shall be protected by law. The state shall take care of the cultural, scientific and technical development of society”.

The most important legal act containing the norms of intellectual property law is the Civil Code of the Republic of Uzbekistan and in particular its Special Part, adopted on August 29, 1996 and enacted on March 1, 1997. Chapter 59, starting from Article 1031 to 1111, includes norms establishing a general list of intellectual property objects, the concept and general system of intellectual rights, general rules for establishing, conditions for exercising, grounds and methods of protection of intellectual rights, general provisions on contracts, on the disposal of exclusive rights, etc.

Among other laws containing norms regulating relations related to the legal protection of the results of intellectual activity and means of individualization, it should be noted:

• The Law “On Copyright and Related Rights”;
• The Law “On Inventions, Utility Models and Industrial Designs”;
• The Law “On Trademarks, Service Marks and Appellations of Origin of Goods”;
• The Law “On Selective Breeding Achievements”;
• The Law “On Firm Names”;
• The Law “On Legal Protection of Computer Programs and Databases” and others.

The subordinate level of legal regulation of relations in the field of intellectual property consists of Decrees, Resolutions of the President of the Republic of Uzbekistan, Resolutions of the Cabinet of Ministers and departmental normative legal acts. It should also be noted the Resolution of the Plenum of the Supreme Court of the Republic of Uzbekistan dated June 23, 2023 № 19 “On some issues of consideration of cases related to intellectual property”.

2. Assignment of rights to Intellectual Property 

Assignment of rights to IP is the legal process of transferring ownership and other rights associated with intellectual property from one person or organization to another. It may involve the sale, purchase, licensing or other transfer of the owner’s rights to copyrights, trademarks, patents, trade secrets or other intangible creations.

To begin with, intellectual rights are a composite category that includes:

1) personal non-property rights;

2) property (exclusive) rights;

3) other rights.

Personal non-property intellectual rights are the rights of the author of the result of intellectual activity. Only a citizen whose creative labor created the result of intellectual activity is recognized as the author. Personal non-property rights of the author (the most important of which is the right of authorship, i.e. the right to be recognized as the author of the result of intellectual activity) are inalienable, non-transferable and protected indefinitely.

Exclusive (property) right is the intellectual right to use the result of intellectual activity at one’s own discretion in any manner not contrary to law, as well as the right to authorize or prohibit others to use the result of intellectual activity at one’s own discretion.

Other intellectual rights are the rights of the author or another person aimed at securing personal non-property or property intellectual rights (for example, the right to file an application for an invention). The terms of validity, negotiability and methods of protection of other rights are determined on a case-by-case basis and depend on the gravitation of the other right to property or non-property rights.

Intellectual property plays an important role in various areas of the state, especially in trade and promotion of goods and services. In the transfer of intellectual property rights in Uzbekistan, special attention is paid to the institution of copyright and related rights. Under article 5 of the Law “On Copyright and Related Rights”, the objects of copyright are works of science, literature and art resulting from creative activity, irrespective of their purpose and value or their mode of expression. Within the institute of copyright, it is possible to distinguish the author’s contract, license contract and contract of author’s order. According to Article 38 of the Law, the transfer of the author’s property rights can be carried out through an author’s contract on the transfer of exclusive rights or on the transfer of non-exclusive rights. The contract on the alienation of exclusive rights allows the use of the work only in a certain way and only to the person who receives these rights in accordance with the terms of the contract. On the other hand, a contract for the transfer of non-exclusive rights gives the user the right to use the work in the same way as the exclusive rights holder who transferred these rights, as well as to other persons with permission to use the work. The contract of copyright order is another method of transferring rights to a work and is closely related to the copyright contract. According to Article 41 of the Law “On Copyright and Related Rights”, under a copyright contract, the author undertakes to create a work in accordance with the terms of the contract and transfer it to the customer. Personal non-property rights to the created work remain with the author, but when transferring property rights under the contract of order, it is necessary to comply with the provisions of Articles 38, 39 and 42 of this Law.

Unlike a copyright contract, for which the term of granting rights is not an essential condition, for a license contract the term is essential. According to Article 1036 of the Civil Code of the Republic of Uzbekistan, a license agreement involves the transfer by the holder of the exclusive right to the intellectual property object (licensor) of permission to another party (licensee) to use this object. It is also common to conclude a sublicense agreement, which allows the licensee to transfer the right to use the intellectual property object to a third party.

The institution of related rights, under Article 47 of the Law “On Copyright and Related Rights”, allows the performer to transfer his rights under the contract to others. Similar provisions apply as in the case of a copyright contract, including Articles 38, 39 and 42. The performer may grant permissions for the use of his performances and in the case of collective performances – this right may be exercised by an authorized representative of the collective of performers by means of a written contract. When a contract is concluded between the performer and the producer of an audiovisual work for the creation of such a work, the performer transfers certain rights established by law. The performer may transfer his rights to use an audiovisual work, but this does not include the rights to the separate use of the sound or image that has been recorded in that work, unless otherwise specified in the contract. When a phonogram containing a recording of a performance by a participating performer is published for commercial purposes, the right to rent the phonogram passes to the phonogram producer. However, the performer shall retain the right to receive remuneration for the rental of copies of the phonogram.

It is worth noting that the performer’s rights to the name and protection of the performance from any distortion or any actions that may harm the honor and dignity of the performer are protected indefinitely. However, the performer’s personal non-property rights are valid for 50 years after the first performance. With respect to the producers of phonograms, the same term shall apply for 50 years after the first publication or for 50 years after its first recording, if the phonogram was not published within this period. The expiration of the term of validity of objects of related rights indicates their transfer into the public domain.

Patent Law. A natural person who has created an object of industrial property by his creative labor is considered its author. However, the patentee may be not only the author himself, but also other co-authors, heirs, as well as legal or natural persons specified in the patent application or application for amendment of the applicant, subject to their consent. In certain cases, an employer may also be a patentee, as provided by law. According to Article 32 of the Law “On Inventions, Utility Models and Industrial Designs”, any person who is not the owner of the patent may use the industrial property object protected by the patent only after obtaining permission from the patent owner on the basis of a license agreement. The agreement on assignment of rights to a patent must be concluded in writing and registered with the authorized state body. Failure to comply with the form or registration requirements shall render the agreement invalid. In addition, the Institute has an open license option, whereby the patent owner can apply to the Ministry to grant anyone the right to use the industrial property object. A person interested in obtaining an open license must conclude a non-exclusive license agreement with the patent owner. The right to new plant varieties and new animal breeds is also protected subject to the issuance of a patent.

Means of individualization. The right to a trademark is always certified by a certificate of registration of a trademark (service mark). That is, the legal protection of a trademark (service mark) is granted on the basis of its registration. Having a certificate of registration of a trademark (service mark), the owner secures the exclusive right to use, manage and make changes to this mark. The owner may also use it in respect of all classes of goods, works and services specified in the certificate or parts thereof. In addition, may transfer this right to another person by contract. In order to carry out the transfer of rights, a contract on the transfer of the right to a trademark or on granting must be concluded, which has a written form and is registered with the authorized state body. As for the appellations of origin of goods, it shall also be registered by the authorized state body. However, it is impossible to alienate, transfer or grant to other persons the right to use this name on the basis of a license.

The right to trade secrets (Know-how) is often used to refer to confidential information that brings competitive advantage to a company. According to Article 1097 of the Civil Code of the Republic of Uzbekistan, a person who possesses undisclosed information has the right to transfer part or all of this information to another person under a license agreement. The licensee must ensure adequate protection of the confidentiality of the information received and has the same rights to protect it from unlawful use as the licensor. Unless otherwise agreed in the contract, the responsibility for maintaining the confidentiality of the information rests with the licensee, even after the license agreement has ended, if the information remains undisclosed.