Patents of Invention

– Law of Ukraine on the Protection of Rights to Inventions and Utility Models, in force since July 1, 1994, with amendments of July 11, 2000 and 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.
– Patent Cooperation Treaty (PCT), as of December 25, 1991.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, as of July 2, 1997.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), as of December 22, 2003.
– Patent Law Treaty, since April 28, 2005.
– WTO’s TRIPS Agreement, since May 16, 2008.
– Strasbourg Agreement Concerning the International Patent Classification, since April 7, 2010.
– (Not a member of Eurasian Patent Convention).

Filing

Applicant: individuals or legal entities. 

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

Patentability: a patent is granted for an invention which is new, involves an inventive step and is industrially applicable.

First filing requirement: compulsory. An applicant, who is a Ukrainian national, or who has his/her permanent residence or principal place of business in Ukraine, must file the first patent application in Ukraine. In case of a PCT application, the Ukrainian Patent Office will be the receiving Office. The applicant will be able to file abroad after three months following the filing date in Ukraine, provided that the invention is not classified as secret. Exceptions to this rule, for example, include situations in which there are several applicants with different nationalities/place of residence with an agreement between them on the subject of joint activity resulting in the creation of an invention. 

Novelty: an invention is new if it supersedes the prior art. The prior art includes all sources available in the world before the priority date.

Novelty grace period: twelve months for the inventor.

Patent can be granted for: a product (devices, substances, strains of microorganisms, cultures of plant and animal cells and the like), use of a known product or process for the new indication, and for a process. Patent protection for the process of preparation of a product covers the product produced by said process.

Exceptions to protection: plant varieties and animal breeds, essential biological processes for the production of plants and animals, which are not considered as non-biological or micro-biological processes, results of artistic constructions, topographies of semiconductor products. Solutions contrary to humanitarian principles, morality and public order may not obtain protection as an invention. Unity of the invention: an application for invention must cover one invention only, or a group of inventions forming a single inventive concept. 

Priorities: Convention priority may be claimed according to the Paris Convention; exhibition priority for inventions and utility models cannot be obtained on demand.

Territory covered: Ukraine.

Electronic filing: now available. Filing fee is the same as for filing of the application in hard copy (on paper).

Filing requirements for an application (to be sent to resident patent attorney):
1. Power of attorney (no legalization required);
2. Specification and abstract (to be translated into the Ukrainian language; if filed in another language, the translation must be submitted within two months from the filing date);
3. Drawings (3 sets);
4. Priority document, if any (to be filed within three months from the filing date; if necessary, the Patent Office may request submission of a translation of a priority application into the Ukrainian language).

PCT applications: time limit for entering national phase under both Chapters I and II: 31 months. Late national phase entry: possible, within twelve months after the expiration of the 31-month deadline. A Ukrainian translation of a PCT application must be submitted to the Patent Office before the expiration of the 31-month term. This term may be extended by up to 2 months. Amendment of claims: possible. An application may enter into the Ukrainian national phase either with the claims as originally filed with the receiving Office, or with the claims amended at the stage of the international preliminary examination (if the examination was requested and any amendments were made). If the applicant wishes to file the claims amended after the completion of the international preliminary examination specifically for the entry into the Ukrainian national phase, it should be borne in mind that this set of claims will be put on the records, but the Patent Office will treat the application as such that has entered into the national phase with the claims either as originally filed, or as amended at the stage of the international preliminary examination. Consequently, the filing fee will be calculated based on either the original claims or the claims amended at the stage of international preliminary examination, while, at the same time, an additional fee for making amendments in the application will have to be paid for the new claims. It is thus always recommended to submit the new claims upon filing a request for examination. Multiple dependent claims are permitted.

Examination Procedure

Examination: provisional, formal and substantive examination. During the provisional examination an application is examined as to its contents to determine whether the invention may be classified as a State Secret. During the formal examination, the filing date is allocated and an application is examined on the subject of its conformity with the formal requirements set forth by law. If the formal requirements are met, the Patent Office issues the corresponding decision and the application particulars, including claims, are published (eighteen months after the filing date or, if a priority was claimed, eighteen months from the priority date). Publication may be effected at an earlier date at the applicant’s request. Provisional protection: provided for, starts with the publication of the patent application. The substantive examination is carried out at the applicant’s (or any third parties) request filed within three years from the filing date. A third party may file such request after the publication of the application particulars. This term may be extended by up to six months provided that the corresponding request and the payment document are submitted before expiration of this term. If the provided term was missed, an applicant may file a request for its renewal within twelve months from the date of expiry of the term. The purpose of the substantive examination is to determine whether the claimed invention meets the requirements of patentability and novelty. If these requirements are met, the Patent Office issues a decision on grant of a patent. An applicant may file an appeal against any decision issued by the Patent Office within two months from the date of receipt of said decision or copies of the documents sent by the Patent Office at an applicant’s request, either with the court or with the Chamber of Appeals. An appeal shall be examined by the Chamber of Appeals within two months from the date of its receipt. A decision of the Chamber of Appeals may be opposed in the court within two months from the date of receipt of the decision.

Accelerated examination: the Ukrainian legislation does not provide for the possibility to accelerate the procedure of the examination of a patent application. However, the publication of the application particulars after carrying out the formal examination may be accelerated at the request of an applicant. PPH is also not available.

Fees: each independent claim is subject to an examination fee. 

Amendments of application: may be filed either on the applicant’s initiative or within two months from the date of receipt of the official inquiry or copies of publications cited against the application. Filing a request for introduction at the applicant’s initiative of amendments and rectifications into application materials upon receipt of the decision on allocation of an application filing date shall be subject to the payment of a fee. Additional materials extending the subject matter disclosed in the application are not accepted and may be drawn up as an independent application. A renewal of the missed term is possible. 

Conversion of application: the applicant has the right to convert the application for grant of a patent for an invention into grant of a patent for a utility model and vice versa, at any time before a decision of grant or a decision of refusal of grant is received. 

Division of the application: the division of an application from an original application may be carried out at the initiative of an applicant himself or at the initiative of an expert of the Patent Office who conducts the examination of an application, prior to issuance of a decision with regard to such application.

Granting

Publication: based on a decision of grant and timely payment of the granting fee (within three months from the date of receipt of the decision), the Patent Office enters the corresponding particulars into the Register and publishes the mention of grant in the Official Bulletin. The Patent Office issues the Letters Patent within one month after registration. 

Duration of protection – extension: for a patent of invention: twenty years from the filing date of the patent application; for a declaratory patent: six years from the filing date (formal examination). The term of validity of a patent of invention relating to a drug, plant or animal protection means, the use of which should be supported by a license/marketing authorization issued by the respective competent authority, may be extended by request of the patent owner, by the term equivalent to the period from the filing date to the date of issuance of such a license, but not more than five years. 

Paediatric extension: not provided for. 

Annuities: the first annuity for the current year in which the patent was granted is paid only after granting. It must be paid within four months from the publication of the mention of grant of a patent. Each next annuity must be paid within the last four months of the current year of the patent term.

Annuity grace period: twelve months with a 50% fine.

Modification of Protection after Granting

Right of prior user: provided for. 

Opposition: a patent may be declared invalid only by the court in the following cases: the patented invention does not meet the requirements of patentability; the claims contain features of the invention which were not present in the application as filed; a procedure for filing an international application according to the PCT has been violated; a patent has been granted as a result of filing an application with violation of rights of third parties.

Appeal: no appeal is possible after grant. Decisions of the Patent Office issued in the course of prosecution are appealable. 

Invalidation: possible. A patent may be declared to be invalid in full or in part only in a court.

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

Open license: the patent owner is entitled to apply to the Patent Office for his willingness to grant permission to any person to exploit a patented invention (apply for a license of right). In the latter case, the annual maintenance fee is reduced by 50% beginning from the year following the year of publication of the application.

Working: compulsory.

 Obligation to use: if the invention is not used or is used insufficiently during a period of three years after the publication of the patent, or from the date when the last use was terminated, any person may obtain the right to use the invention through a court procedure (if the owner refuses to sign a license agreement).

Compulsory license: without consent of the patent owner, the Cabinet of Ministers of Ukraine may authorize exploitation of an invention for purposes related to the national defense or special public interest.

Working conditions: use of an invention (utility model) is constituted by manufacturing a product with the use of a patented invention (utility model), application of such product, offering for sale, including e-commerce, sale, importation and other marketing or storage of such product for said purposes.

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 invention, equipment and materials used for their manufacture, as well as destruction of such infringing goods and equipment, hard labor and imprisonment.

Enforcement: the courts have the following powers relating to the protection of patent rights: (1) recognition and establishing authorship in an invention; (2) cancellation of the legal acts infringing a person’s rights to an invention; (3) stopping of actions constituting infringement of a person’s right to an invention; (4) compensation of damages and other means of reimbursement of property damage caused in result of infringement of the rights to an invention; (5) declaring unlawful a decision, actions or inaction of the public authority or a local government authority, which constitute infringement of person’s rights to an invention. With the implementation of the new Customs Code on June 1, 2012, IPR border measures extend to patents of inventions.