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.
Do I have any protection after publication of a Russian patent application and before the grant of the patent?
As in most patent jurisdictions, an applicant receives in Russia provisional legal protection of his or her rights during the period between the publication of the patent application and the publication of the granted patent (Article 1392 of the Russian Civil Code).
Any third party having used the invention during the said period shall pay to the patent holder a reasonable compensation. If the parties do not agree about the amount of the compensation, the same should be defined by the court. It is important to understand that the right holder can bring a legal action against such a third party only after the registration and publication of the patent.
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.
Can the applicant file voluntary amendments during the processing of a Russian invention patent application?
It goes without saying that an applicant can file amendments to the application in response to an office action. In addition, he or she has an opportunity to file voluntary amendments (irrespective of received office actions) once, at any time after receiving the search report.
Can I use arguments for invalidity as a defense in an infringing action brought in Russia by the patent’s owner?
The defendant in a patent infringement case brought to a Russian court can challenge the patent validity. However, since the Russian patent system is bifurcated, the defendant cannot assert invalidity of the patent in question to the infringement court, but has to initiate a separate proceeding at the Chamber for Patent Disputes in the Russian Patent and Trademark Office. Accordingly, infringement and invalidity of the patent at issue will be examined in separate proceedings.
The court judgment on the infringement suit is appealable to a local court of appeals and the appeal decision comes into force immediately. The decision of the court of appeals can be challenged before the Court for intellectual property rights as a cassation instance.
The decision of the Chamber for Patent Disputes on the patent’s validity is appealable to the Court for intellectual property rights, and its decision can be challenged before the Presidium of the same Court as a cassation instance.
Therefore, a judgment by an infringement court may come earlier than that by the Chamber for Patent Disputes, and an injunction could be enforced by a patentee even if the patent is invalidated later on.
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.
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