The amendments introduced by the Cabinet of Ministers to the Resolution "On Approval of the Procedure for Payment of Fees for the Actions Connected with Intellectual Property Rights Protection" will come into force on 16 September 2023. The draft law provides for changes in certain types of fees, as well as the introduction of new fees and the removal of some outdated ones to adapt the fees to the current IP protection legislation.

Thus, among the new fees to appear soon are the fees for:

• extending the term of assigning a representative and address for correspondence for a foreign person or stateless person – 800 UAH;
• filing an opposition to an application for an invention – 6,000 UAH;
• conducting an information search – 3,000 UAH;
• filing a request to divide an application for an invention, utility model, or industrial design – 800 UAH;
• annuities for the certificate of supplementary protection – from 30,000 UAH to 38,000 UAH for 1-5 years of validity;
• filing a divisional application for an industrial design – 6,800 UAH;
• extending the term of validity of rights to an industrial design – 800 UAH;
• invalidating the rights to an invention, utility model, or industrial design before the Chamber of Appeals – 32,000 UAH;
• including a designation depicting or imitating the official name and/or international letter code of the state of Ukraine in a trademark – 24,000 UAH;
• including in the trademark application each class over the number of classes indicated in the application, according to the examination report – 5,000 UAH.

In addition, the fees for the full/partial waiver of rights to an invention or utility model, as well as for the restoration of rights to certain IP objects in case of missed terms for payment of fees, are introduced.

The most anticipated and significant change was the introduction of new fees to enable the post-grant opposition mechanism for inventions, utility models, and industrial designs. This administrative mechanism of invalidation of intellectual property rights has long been provided for in the relevant laws. However, the absence of established fees made it impossible for the NIPO Chamber of Appeals to consider this category of cases and the relevant rights could only be invalidated in court.

It is worth noting that certain fees are expected to increase, namely the fees for:

• issuing a certificate of additional protection (for inventions relating to a medicinal product, animal protection product, plant protection product, etc.) – 12,000 UAH (instead of 7,600 UAH);
• filing an opposition against a decision on an industrial design application to the Chamber of Appeals – 4,000 UAH (instead of 3,400 UAH);
• filing an opposition against a decision on a trademark application to the Chamber of Appeals – 6,800 UAH (instead of 3,400 UAH);
• filing an application for a geographical indication – 4000 UAH (instead of 2,400 UAH).

At the same time, the annuities for the first and second years of invention patent validity will be reduced from 600 to 450 UAH, fees for filing oppositions against geographical indications will increase by 50%, and most fees for extending/restoring the terms for providing documents in respect of various actions will be fixed at 800 UAH, regardless of the date of the expiration of such terms.

In addition, the draft law updates the definition of the types of fees, supplements the Procedure with the amount of fees for the electronic form of filing, and determines the fact of payment of the fee on the date of such payment instead of the date of receipt of the payment document.

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