PATENTS IN UKRAINE JURISDICTION REPORT: UKRAINE
Oleksandr Mamunya Vasil Kisil & Partners
Swiſtly developing technology has always been an integral part of a growing economy. As one of the main engines of progress, innovation deserves to be legally protected. Such protection is secured by patents that constitute a fundamental part of the intellectual property domain in most countries. Ukraine is no exception.
In terms of patent protection, Ukraine is party to a number of international treaties: Paris Convention for the Protection of Industrial Property (1883), Patent Cooperation Treaty (1970), Patent Law Treaty (2000), Strasbourg Agreement Concerning the International Patent Classification (1971), Agreement on Trade Related Aspects of Intellectual Property Rights (1994), and Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977). In turn, the Civil Code of Ukraine, the Act of Ukraine On Protection of Inventions and Utility Models, and a number of acts by the Ministry of Education and Science ensure the secure domestic regulation of patents. In general, Ukrainian legislation on patents complies with international standards in this area.
According to the Act of Ukraine On Protection of Inventions and Utility Models, a patent is the protective document confirming priority, authorship and ownership of an invention or utility model.
Notwithstanding certain differences in processing patent applications for inventions and utility models in Ukraine, the following common prosecution stages may be mentioned: (i) draſting and filing the application; (ii) examination of the application by the Ukrainian Institute of Industrial Property (Ukrpatent); (iii) application-related decision by Ukrpatent; and (iv) appeal to the Appellate Chamber of the State IP Service (if appropriate).
Like in most jurisdictions, in Ukraine, a patentable invention must be new, not obvious to the ‘average specialist’ in the field, and industrially applicable. In fact, the role of the ‘average specialist’ is normally performed by experts/ examiners of Ukrpatent. However, Ukrpatent experts normally examine an invention just for novelty and non-obviousness. If an applicant convinces the expert of the novelty and the non-obviousness of the invention, a patent will most probably be issued. It is assumed that industrial applicability is checked by the market. If the applicant does not see a clear market perspective for the invention then there is probably not much sense in obtaining patent.
Utility models in Ukraine must comply with only two criteria of patentability: novelty and industrial applicability. Unlike non-obviousness, these may be quite easily proven. Accordingly, utility models are much more frequently
72 World Intellectual Property Review May/June 2011
“ UKRAINIAN LAW EFFECTIVELY ALLOWS, SUBJECT TO A SUCCESSFUL SUBSTANTIVE EXAMINATION, A UTILITY MODEL PATENT TO BE TRANSFORMED INTO AN INVENTION PATENT.”
patented in Ukraine than inventions. Notably, in Ukraine, utility models may refer to any technical object, i.e. a device, substance, micro-organism strain, culture cell and means of production of any goods.
Ukrainian law effectively allows, subject to a successful substantive examination, a utility model patent to be transformed into an invention patent. Ukrainian companies have been good at taking advantage of this two-stage patenting scheme; they have focused more on utility model patent protection, given that it is much simpler, cheaper and faster to secure. Despite the lack of substantive examination and the shorter term of protection (10 years from filing date), the value of utility model patents should not be underestimated, as such patents may, for example, be successfully used for defensive purposes in patent litigation.
Tere are three main industrial sectors of patenting in Ukraine: chemicals, biotechnology and electronics. Te vast majority of commercialised patents are in those sectors.
Ukraine is a first-to-file jurisdiction; unregistered rights such as trade secrets and know-how are more difficult to protect under the current legal framework. In view of this, it is recommended to obtain patents, if applicable, rather than to protect intellectual property contractually or on the basis of the statute (i.e. without any specific state registration).
Te quality of Ukrainian patents has room for improvement. Even those Ukrainian patents that were filed on the basis of the priority EU or US patents are sometimes of a lower quality than their foreign counterparts (something is usually lost in translation—Ukrpatent lacks experts in some specific industry sectors, and this affects the quality of examination, etc.). Local entities, on the other hand, are quite litigious, since they resolutely react to patent infringement actions by initiating invalidity proceedings. Terefore in Ukraine, efforts should be redoubled to obtain high-quality Ukrainian patents that can withstand validity challenges.
Oleksandr Mamunya is a senior attorney at Vasil Kisil & Partners. He can be contacted at:
mamunya@vkp.kiev.ua
www.worldipreview.com
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