Ukraine: Changes to IP Legislation

23 July 2020

On July 21, 2020, the Verkhovna Rada of Ukraine adopted bills concerning the protection of intellectual property rights.

The adopted bills are meant to bring Ukraine’s laws in harmony with those of the European Union. These changes will be enforced once the laws are signed by the President of Ukraine and are officially published; this is expected to take place before September 1, 2020.

The law “On Amendments to Certain Legislative Acts of Ukraine Concerning Strengthening the Protection and Enforcement of Rights to Trademarks and Industrial Designs and the Fight Against Patent Trolling” (Bill No. 2258) makes the following changes to trademarking policies:

  • Applications for trademark registration can now be submitted electronically.
  • The grounds for refusing to register new trademarks and invalidating existing trademarks have been modified.
  • Registration of collective trademarks has been introduced.
  • The procedure for granting legal protection to international trademark registrations (under the Madrid system) has been amended.
  • The sanctions for infringing on trademark rights are now stronger.

The following changes have been made regarding industrial designs:

  • An additional patentability criterion has been introduced (individual character),
  • Applications can now be submitted electronically.
  • egal protection of unregistered industrial designs becomes possible.
  • It will be possible to split applications.
  • The title protection type has changed from patent to certificate.
  • The rights will be valid for a period of 25 (instead of 15) years subject to the submission of an application for certificate renewal every five years.
  • The Chamber of Appeals may now revoke certificates to aid the fight against “patent trolling.”

The law “On Amendments to Certain Legislative Acts of Ukraine Concerning the Reform of Patent Legislation” (Bill No. 2259) expands the list of objects that are not subject to legal protection. These objects are:

  • plant varieties and animal breeds;
  • layouts of semiconductor products;
  • surgical or therapeutic methods for treating humans or animals;
  • diagnostic methods;
  • cloning processes; and
  • new forms of a drug known from the prior art.

Additionally, the law dictates the following:

  • Applications may be submitted electronically.
  • Anyone may file a reasoned objection to an application within six months of its publication date.
  • Inventions or utility models may be invalidated administratively through post-grant opposition.