17 November, 2020 Company news

Patent laws reform

Recently, significant changes were made to the Law of Ukraine "On the Protection of Rights to Inventions and Utility Models". The main purpose of the innovations of the Law is to ensure the fulfillment of Ukraine's obligations in the field of European integration in terms of harmonizing the requirements of the current legislation of Ukraine on the protection of rights to inventions and utility models with EU law.

Among the main changes are the following:

Narrowing the circle of objects subject to patenting.
The object of the invention may be a "product" (device, substance, strain of a microorganism,

plant and animal cell culture, etc.) and "process" (method).

The object of a utility model can be a "device" or "process".

The list of objects not covered by legal protection has been expanded:

  • biological processes (cloning and genetic intervention in human beings and the human body as such)
  • surgical or therapeutic methods of treatment and diagnosis of the human or animal body;
  • computer programs, a form of information presentation, schemes, rules and methods for carrying out intellectual, organizational, in particular economic, activities and the like.

Submission of documents in electronic form using a qualified electronic signature.
The opportunity is given to non-residents to independently perform certain actions related to the filing of an application. At the same time, within 2 months, a message must be received on the appointment of a representative - a patent attorney of Ukraine, otherwise the application will be considered withdrawn. This period can be extended by 2 months.

Third parties are given ample opportunities to prevent the state registration of an invention or utility model by filing a reasoned objection to the application, a request to conduct an information search based on the claims, taking into account the description and available drawings, comments on the compliance of the claimed invention with the conditions for granting legal protection.

The procedure for extending the term of a patent for an invention for pharmaceutical (pharmacy) means has been changed - while the extension of the term of the patent is carried out by obtaining a certificate of additional legal protection. Obtaining such a certificate is possible for a product (active substance or a set of active pharmaceutical ingredients of a medicinal product), the introduction of which into circulation in Ukraine requires the permission of a competent authority, and its use in accordance with a medicinal product, animal protection product, plant protection product.

Introduce into the law a full-fledged regulation of the rules on the division of the application until the receipt of a decision on the application: on its own initiative or in response to the proposal of the examination institution.

Invalidation of rights or partial waiver of rights is carried out by exclusion of independent claims or amendments to independent claims.

Recognition of rights as administratively invalid by the Court of Appeal is possible for any person within 9 months from the date of publication of information on registration of an invention, and for utility models during the entire period of validity of the rights and after their termination.

The period of the “novelty benefit” has been reduced from 12 to 6 months, that is, the recognition of an invention (utility model) as patentable does not affect the disclosure of information about it by the inventor or a person who received such information from the inventor directly or indirectly within 6 months prior to the filing date of the application with the NIV or, if priority is claimed, before its priority date.