On October 25, 2024, unified Rules for Compiling, Filing and Examination of Applications for Inventions and Utility Models came into effect, in accordance with Order No. 23301 issued by the Ministry of Economy on September 9, 2024.
The Rules regulate the following:
parties having right to file an application;
list of required documents and application filing procedure;
content of an application depending on technical field thereof;
peculiarities of application examination process;
procedures related to secret and international applications;
actions allowed to be taken by applicant in respect of application.
Additionally, the Rules address such provisions as observations on patentability of inventions, oppositions against applications, and informational searches upon request by any party. The document also regulates procedures of partial waiver of rights, issuance of supplementary protection certificates, examination of utility models for compliance with patentability requirements, verification of sanctions applied to applicant or applicant’s country, and legal consequences of such sanctions.
The Rules implement certain EU standards outlined in the Association Agreement between Ukraine and the EU. They also prioritise technical fields such as green energy, transportation technologies, nanotechnology, biotechnology, and areas of national security and defence.
On September 18, 2024, new rules regulating the process of drawing up and filing a trademark application, as well as international trademark registration with extension to Ukraine, entered into force. This document was approved by Order No. 19889 of the Ministry of Economy of Ukraine dated August 6, 2024.
The rules define:
requirements for application documents;
application procedure;
procedure for examination of the application;
grounds for refusing to grant legal protection to a trademark;
the procedure for submitting and considering an international application in accordance with the Madrid system;
peculiarities of examination of international trademark registration with extension to Ukraine, as well as other actions provided for by the Protocol to the Madrid Agreement.
Among the innovations of the rules, the following changes to the procedure should be highlighted:
registration of specific types of trademarks, such as sound, positional, ornamental, motion, holographic, multimedia, color and color combinations;
issues of submission and examination of electronic applications for trademarks;
the procedure for checking the application of special economic and other restrictive measures (sanctions) against applicants;
conditions of refusal to register a trademark, if the applicant is related to the aggressor state.
The new rules take into account Ukraine's international obligations and comply with the Singapore Agreement and the Protocol to the Madrid Agreement. They also implement the standards of the European Union, established in the Association Agreement between Ukraine and the EU, and take into account important provisions of the Acquis communautaire, which promotes the products of Ukrainian manufacturers to European markets.
On September 25-26 Oleksandra Chala, partner of InIP, attended the highly anticipated sixth edition of London IP Week, the annual event for IP professionals, innovators, and industry leaders. The interactive IP conference explored Tech for IP and IP Management and Commercialisation.
Oleksandra had an amazing time immersed in captivating panels, presentations and roundtable discussions and enjoyed very interesting conversations with colleagues, friends and potential clients during the coffee and networking breaks. The last day of the event culminated in a delightful reception where everyone could chat in a relaxing atmosphere!
On September 16, 2023, Resolution No. 859 of the Cabinet of Ministers of Ukraine dated August 15, 2023 "On Introducing Changes to the Procedure for Payment of Fees for Actions Related to the Protection of Rights on Intellectual Property Objects" entered into force.
The Resolution provides for new types of fees related to third-party observations on applications for inventions, cancellation of patents in an administrative procedure, obtaining a certificate of additional protection for inventions, conducting information searches, restoration of rights by applicants and right holders, etc.; increase in discount of fees for non-profit establishments and organizations; exclusion of separate fees for the publication of registered color images of industrial designs and trademarks; and insignificant increase in discount of fees for electronic filing of trademark applications.
On April 15, 2023, Law No. 2974-IX "On Amendments to Certain Legislative Acts of Ukraine Regarding Strengthening the Protection of Intellectual Property Rights" entered into force.
With the adoption of this legislative act, Ukraine has taken another step on the way to bring its own legislation in the field of protection of intellectual property rights closer to the standards of the European Union.
This Law provides for:
the possibility of removing from civil circulation goods manufactured or introduced into civil circulation in violation of intellectual property rights, and materials and tools that were used mainly for the manufacture of goods in violation of intellectual property rights, at the expense of the person who committed the violation;
additional powers to apply a one-time monetary payment instead of other methods of protecting intellectual property rights, provided that the right was violated by the defendant unintentionally and without negligence, and the application of the methods of protection is disproportionate to the damage caused to the plaintiff;
specification of procedures for demanding evidence in the form of information about the origin and distribution network of goods or services that violate intellectual property rights;
additional possibilities of publishing in the mass media or making public by another means of information designated by the court, the violation of intellectual property rights and the content of the court decision regarding such violation at the expense of the person who committed the violation.
The purpose of the Law is to implement into the national legislation of Ukraine the provisions of the Association Agreement between Ukraine and the EU and Directive 2004/48/EC of the European Parliament and the Council of Europe on the protection of intellectual property rights.
Since the beginning of the war and till June 8, 2022, the communication with the Ukrainian Patent Office (Ukrpatent) was held electronically only. However, as of June 8, 2022, Ukrpatent resumed receipt of documents on applications for intellectual property objects in a paper form at the address of Ukrpatent. Sending notifications about receipt of primary documents for IP applications via the Ukrainian post (Ukrposhta) was also resumed.
Since the beginning of the war and till June 16, 2022, the Board of Appeals of the National Authority of Intellectual Property suspended conducting hearings on appeals on the merits, including by videoconference, due to the war. Appeals were examined and filed electronically in written form. However, as of June 16, 2022, the Board of Appeals resumed oral hearings on oppositions and requests for recognition of a trademark as well-known in Ukraine.
New amounts of official fees for legally significant and other actions performed in relation to Eurasian applications and patents for inventions come into force starting from July 1, 2022. For example, the single procedural fee for filing a Eurasian patent application for an invention will be about 640 EUR (compared to the current amount of about 500 EUR).
Starting from July 1, 2022, the Eurasian Patent Office (EAPO) begins to act as an International Searching Authority (ISA) and an International Preliminary Examination Authority (IPEA) in accordance with the Patent Cooperation Treaty (PCT). Only 24 patent offices in the world have such a status.
The official fee of conducting an international patent search by the EAPO for a patent application written in English language is about 710 EUR.
Since the beginning of the war in Ukraine, the Ukrainian Patent Office (Ukrpatent) has been monitoring all filed applications for registration of intellectual property rights (trademarks, inventions, utility models, industrial designs, etc.), requests for extension and maintenance of such objects, as well as the transfer of rights and license agreements, which contain applicants or owners from the Russian Federation, and blocks them until the issue is resolved at the legislative level.