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.
Can one and the same person hold Russian and Eurasian patents based on the same priority application?
Yes, Russian and Eurasian patents based on the same priority application may coexist with slightly different or even identical sets of claims. However, it is important to note that a Eurasian patent covers eight countries, including the Russian Federation (in case of timely payment of patent annuities in the relevant countries). That is why obtaining both Russian and Eurasian patents based on the same priority application is usually redundant and it entails additional rightholder expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions in respect of which the risk of opposition is very high.
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.
Are software methods patentable in Russia?
Computer programs (software) are not considered inventions per se, but a software algorithm may under certain conditions be patented in the form of a method (method of processing, transmitting, converting data, etc.). Under Russian legislation, a patentable method consists in carrying out actions over material objects with the help of material means. An application for the grant of an invention patent may relate to an algorithm of a computer program described in the form of a sequence of actions on signals (material objects) providing a technical result achieved by means of a computer device (material means). In such cases, there are grounds for recognizing the claimed object as a technical solution having a technical result.
How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?
The Russian part of a PCT application (as any Russian patent or patent application) can be transferred/assigned to another party on the base of an agreement between the parties (the recordation of the transfer of rights under a Russian patent takes about two months within the RUPTO plus preparation work).
A transfer/assignment of a Eurasian patent (patent application) can only take place with regard to all the contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, Turkmenistan). Therefore, if the patent holder intends to transfer their patent rights with regard to Russia only, they will be unable to do so as long as the Eurasian patent is maintained in force in other countries. (And even if the patent holder has recently stopped paying annuities for some countries, the 3-year reinstatement right would be transferred together with the Eurasian patent).
Can the PCT national stage start before the expiration of the time limit?
In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.
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