One of the largest countries in Eastern Europe, as well as one of the largest economies, Ukraine is an essential destination for innovators desiring to expand the market for their novel products. Accordingly, obtaining patent protection for their technical solutions in Ukraine is a must for most international players. Ukraine is not a member of such regional patent treaties as the European Patent Convention and the Eurasian Patent Convention and, therefore, the only way to obtain a patent is to file an application directly with the Ukrainian PTO – the Ukrainian Intellectual Property Institute (Ukrpatent).
Most international applicants seeking patent protection in Ukraine use the option provided by the Patent Cooperation Treaty and enter the PCT national phase. Many rights holders file Ukrainian patent applications claiming priority (under the Paris Convention) from earlier applications filed abroad.
In general, the Ukrainian patent system complies with common international approaches. In accordance with Ukrainian legislation, a result of a person’s intellectual activity in any technical field may be recognized as an invention if it meets standard patentability criteria and relates to a product (substance, device, microorganism strain, animal cell, plant culture), a process, a use of a product and/or a method for a new purpose.
The patentability criteria are: novelty, inventiveness, and industrial applicability.
The prosecution is conducted in Ukrainian language only. An applicant should bear in mind that translation into the Ukrainian language from Russian is usually less expensive than that from other widely used languages (including PCT languages). Therefore, it may help to save translation costs if the applicant simultaneously files applications with other PTOs that accept filings in Russian: the Eurasian Patent Office, the Russian, Belorussian, or Kazakhstani Patent and Trademark Offices.
Ukrainian patent examination consists of formal (2-3 months from the filing date) and substantive examinations (to be requested within 3 years calculated from the filing date). Prosecution of a Ukrainian patent application takes on average 2 - 3 years depending on the volume of the application materials and complexity of examination.
Ukrainian patent validity is 20 years. Ukrainian inventions related to pharmacy and/or animal and plant protection requiring a special permit from a Ukrainian governmental body may obtain an additional five year extension supported by an officially issued certificate.
UA patent costs depend on the volume of the application materials and the complexity of prosecution. Please provide us with application particulars so we can calculate and provide filing costs.
Deadlines for filing a patent application in Ukraine are:
The exception to lack of novelty (novelty grace period) in Ukraine is 12 months from the first disclosure made by the inventor or any other person receiving the information from the inventor directly or indirectly.
Ukrainian non-resident applicants must be represented by local agents who are registered Ukrainian patent attorneys. The power of attorney must be submitted in original along with the filing, but not later than 2 months after the patent application is filed with Ukrpatent. Legalization is not required.
Patent filing requirements in Ukraine:
A UKRAINIAN UTILITY MODEL PATENT protects the same subject matter as an invention patent, i.e. a product, a process, or a new use thereof. The examination is formal. Patentability requirements: novelty and commercial applicability (may be put under examination on the applicant’s or another party’s voluntary request).
A utility model patent (instead of an invention patent) can be requested by the applicant when entering the PCT national stage.
Sojuzpatent will help you to file your patent applications with the Ukrainian Patent Office in any technical field with assistance of reliable local agents and will help you professionally through each step of the examination and granting. Our attorneys will take on all the substantive issues in every field of art, our state-of-the-art docketing system will help to keep track of the due dates, and our trusted agents will ensure that all the formalities within the Patent Office are fulfilled. We also provide after-grant guidance on annuities, licenses, assignments, recordation of changes, legal enforcement, litigation, negotiations, mediation, and dispute resolution.
What happens if the applicant does not meet the time limit for entering the national phase in Russia?
The rights of the applicant with respect to an international application in Russia can be reinstated within 12 months upon the applicant’s request. The request should state the reasons for not meeting the time limit. The official fee charged for reinstatement amounts to 5,000 RUB.
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
What is the time limit for entering the Eurasian regional phase? Can this term be reinstated?
The time limit for entering the regional phase before the Eurasian Patent Office is 31 months from the priority date or the earliest priority date of several claimed priorities; if no priority is claimed, the time limit is 31 months from the filing date of the international application. The said time limits can be reinstated within 12 months on the applicant’s request in case the Patent office acknowledges the validity of the reason for the delay. The official fee for the reinstatement amounts to 25,000 RUR.
Do foreign applicants need a Russian or Eurasian attorney?
It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is listed in the Russian Register of Patent Attorneys.
Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.
To be successfully guided through the intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.
What is the process for validating a Eurasian patent in the respective countries?
One of the convenient features of the Eurasian patent system is the absence of a separate validation procedure. The patent holder chooses the countries in which the patent should be valid simply by paying the requisite annuities. The annuities are paid to the Eurasian Patent Office, and the patent is automatically valid in all the countries for which the payments have been effected.
And even if a patent is declared invalid in some countries due to non-payment of the annuities, it can be reinstated in any of the countries within three years.
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