MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

Intellectual Property Law Reform in Ukraine




August 25, 2020

On August 16, 2020 the Laws "On Amendments to Certain Legislative Acts of Ukraine regarding Strengthening Protection of Trademarks and Industrial Designs and Combating Patent Trolling" and "On Amendments to Certain Legislative Acts of Ukraine regarding the patent law reform" came into force. The adopted Laws concern the following main changes in the legislation in the field of the intellectual property of Ukraine.

Trademarks:

  • The concept of a "trademark" has been changed

Instead of the designation "sign for goods and services", the concept of "trademark" has been adopted at the legislative level.

  • The list of designations that cannot be registered as trademarks has been expanded

In particular, designations that reproduce the names of plant varieties and geographical indications that have received legal protection in Ukraine or have been filed for registration cannot be registered as trademarks.

  • The possibility of electronic filing of an application at the applicant`s discretion has been implemented
  • An opposition period has been established

Any person can submit a reasoned objection to the registration of a trademark within three months after the publication of the data on the application in the Official Bulletin.

  • The term for re-registering a trademark has been changed

Only a previous right holder or a third party with the consent of the previous right holder may apply for an identical mark within two years after the expiration of the trademark certificate.

  • Appealing the refusal to satisfy the objection has become possible

If a third party has been refused to consider trademark registration objection, such decision of the Office may be appealed to the Appeals Chamber within two months from the date of receipt of a copy of the decision.

  • The provisions of the Association Agreement between Ukraine and the EU have been implemented

In particular, the permissible period of a trademark non-usage is five years, and the procedure for calculating this period has been established as starting from the date of data publication.

Industrial designs:

  • A new criterion for the protection of industrial design has been added

The individual character criterion has been added to the previously existing novelty criterion.

  • A new period of industrial design rights protection has been outlined

The rights for design are now valid for 5 years and may be renewed for one or more five-year terms. Moreover, the total period of validity should not exceed 25 years.

  • The possibility of the legal protection of unregistered industrial designs has been adopted

An industrial design may receive the legal protection as an unregistered industrial design if it has been promulgated in the manner prescribed by the law. The term of such protection is 3 years from the date of promulgation of the industrial design on the territory of Ukraine.

  • A new multiple application concept has been introduced

A multiple industrial design application may combine several industrial designs that belong to the same class of industrial designs. A multiple application may contain no more than 100 industrial designs.

  • New objects that cannot receive legal protection as industrial designs have been added

Among such objects there are some products, which are the part of a composite product, and that are invisible during its normal use, i.e. the use by a final consumer.

  • The possibility of pre-trial contestation of industrial design in the Appeals Chamber has been established

Any person may apply to the Appeals Chamber to declare the rights to industrial design as invalid. Such an application may be submitted during the entire period of the validity of these rights, as well as after the termination of their validity.

The Law also establishes that industrial design may not be re-registered if it is recognized by the court or the Court of Appeal as not complying with the conditions for granting legal protection or violating the rights of third parties.

The last two amendments are directed towards combating patent trolling, which has widespread in Ukraine in the recent years.

Inventions and utility models:

  • The list of objects that may be registered as inventions or utility models has been changed

Thus, an invention may be a product (device, substance, the strain of a microorganism, cell culture of plants and animals etc.) or a process (method), and the object of a utility model is only a device or a process in any field of technology. A new use of the previously known product or process is no longer patentable.

  • The possibility of submitting documents in electronic form has been established

The applicant has the right, at his discretion, to submit application documents in paper or electronic form. In the latter case, further processing of the application will also be carried out electronically. Also, the official filing fees are payable at a reduced rate in case of electronic filing.

  • New objects have been added to the list of unprotected objects

As in certain foreign countries, in Ukraine, according to the new legislation, surgical or therapeutic methods of treating or diagnosing a person or animal may not be registered as invention or utility model. Besides, the legal protection is not provided to the processes of human cloning, changes in genetic identity, the human body itself at different stages of its formation etc.

  • Now it is possible to oppose the application for an invention by the third parties at the stage of its consideration thereof

Any person may file a reasoned objection to the application by paying the appropriate fee within 6 months from the date of publication of the application. The Office forwards a copy of such objection to the applicant, who has the right to submit a reasoned response and amend the application. The results of the consideration of the objection are reflected in the corresponding decision of the examination.

  • The process of granting additional protection of rights to inventions has been regulated

The procedure for extending the validity period of a patent for invention after the expiration of standard 20 years for objects related to medicinal products, methods of protecting animals and plants has been already previously provided. However, a separate article has been introduced, which regulates the aspects of obtaining a supplementary protection certificate for the above-mentioned objects.

The specialists of Mikhailyuk, Sorokolat and Partners follow all the changes in the current legislation and will be glad to advise you on registration and protection of the intellectual property rights. Use the form to order a free consultation and our specialists will contact you as soon as possible.


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