Industrial Designs

– Law of Ukraine on the Protection of Rights to Industrial Designs, in force since July 1, 1994, with amendments of February 6, 2001, last amended on October 16, 2012.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), as of April 26, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, as of December 25, 1991.
– Hague Agreement Concerning the International Registration of Industrial Designs, since August 28, 2002, Geneva Act as of December 23, 2003.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 22, 2003.
– WTO’s TRIPS Agreement, since May 16, 2008.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since July 7, 2009.

Filing

Applicant: individuals or legal entities. 

Foreigners: must elect a patent attorney in Ukraine; enjoy the same rights as nationals. 

Protectable: industrial designs, which are new.

Not registrable: architectural objects, with the exception of minor architectural forms; industrial or hydrotechnical engineering, printed products, unstable objects of liquid, gaseous, free flowing and similar materials; designs which are contrary to humanitarian principles and to morality.

Novelty: a combination of essential features of a new design has not become open for general use in the world as from the date of filing the application with the Patent Office of Ukraine, or if a priority of an industrial design is claimed before the priority date. In addition, when determining the novelty, the content of an application filed earlier with the Patent Office is taken into consideration.

Priorities: Conventional and exhibition priority.

Multiple applications: one design application can comprise an unlimited number of designs if they belong to the same Locarno class. 

Territory covered: Ukraine.

Electronic filing: not available.

Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney (no legalization required);
2. General view of the article (picture) and other views (2 sets);
3. Specification of the design (1 set);
4. Priority document, if any (to be filed within three months from the filing date).

Note: there is no minimum or maximum number of figures to be filed. Broken lines or surface shadings are not allowed on figures.

Examination Procedure

Amendment of application: possible before the receipt of the granting decision or a decision on the refusal of the grant by the applicant, provided that the amendments do not go beyond the scope of the application as filed. 

Examination: formal.

Appeal: may be filed against a decision of the Patent Office issued in the application, to the Chamber of Appeals, within two months from the receipt of the decision. 

Corrections: possible at any time either on the applicant’s initiative, or at the request of the Patent Office. In the latter case, the corrections shall be submitted within two months after the receipt of the official notification by the applicant. 

Publication: the design particulars are published in the Official Gazette within three months after the granting decision is issued, provided that the granting and publication fees are paid. At the same time, the design is entered in the Register. The term of payment of the granting and publication fees may be extended by up to six months.

Granting

Scope of protection: is defined by essential features of the design represented on the drawings as published in the Official Register. At the same time, the Law reads that those features are to be interpreted within the scope of the description. The title of the design and/or the Locarno International Class do not influence the scope of protection.

Issuance of document: one month after the registration. 

Duration – extension: five years from the date of filing, renewable up to a maximum of twenty-five years.

Modification of Protection after Registration

Right of prior user: provided for. 

Opposition: possible, before the court only.

Invalidation: a design can be declared to be invalid in full or in part only in the court.

Assignment – license: registration with the Patent Office is not compulsory. A party to a license or assignment agreement may inform third persons about the grant of the license or assignment of rights. Such notice is made through the publication of the corresponding particulars in the Official Bulletin, and such particulars are simultaneously entered in the Register.

Infringement and penalties: the law provides for administrative (such as fines and confiscation of infringing products), civil and penal sanctions, including imposition of fines on infringers, confiscation of goods illegally incorporating the patented design, equipment and materials used for their manufacture, as well as destruction of such infringing goods and equipment, hard labor or imprisonment.