On 16 September 2023 the Resolution of the Cabinet of Ministers of Ukraine "On Amendments to the Procedure for Payment of Fees for Actions Related to the Protection of Intellectual Property Rights" ("Resolution") will enter into force. The Resolution introduces new fees, provides additional reductions and clarifies existing ones.
Key takeaways
Overall, new changes are positive from a business standpoint. First of all, they pave the way for administrative proceedings before the Appellate Chamber which, from now on, may be used as an alternative to litigation in court. Secondly, they reduce some procedural fees and provide bigger discounts for filing trademarks electronically, thus encouraging paperless document flow.
In particular, the Resolution introduces the following changes:
- New types of fees relating to the filing of oppositions by third parties against applications for inventions, administrative revocation of patents, obtaining a certificate of additional protection for inventions, carrying out information searches, restitution of rights by applicants and right holders, etc. (This also paves the way for administrative proceedings to be brought before the Appellate Chamber.)
- Extended list of fee reductions, including fees for extension and renewals of missed terms ➢ Increased discount for the electronic filing
- Changes to the wording in accordance with the new terminology
Detailed overview Among other reductions and discounts, the Resolution proposes the following changes. In the case of filing a trademark application in electronic form, the fees will amount to the following:
- 75% of the established fee (comparative to the previous 80% discount)
Extension or renewal of missed term
- Fees for requesting the extension or renewal of a missed term have been reduced by 50%.
An individual who is an applicant, patent owner or holder of a certificate for industrial design or a certificate for a semiconductor product layout must pay each fee for actions related to the protection of rights to such objects, except for some exclusions, in the following amount:
- 10% of the established fee — if they are the inventors of the invention or the authors of the semiconductor product layout
- 20% of the established fee — if they are the inventors of the utility model or the authors of the industrial design
Non-profit institutions and organizations that are applicants or patent owners for the invention/utility model shall pay each fee for actions related to the protection of rights to such objects, except for some exclusions, in the following amounts:
- 12% of the established fee — if they are applicants for the invention or patent owners
- 30% of the established fee — if they are applicants for the utility model or patent owners
Where the applicant or patent owner of the invention/utility model is the inventor together with the non-profit institution or organization, each fee for actions related to the protection of rights to such objects, except for some exclusions, shall be paid in the following amounts:
- 15% of the established fee — if they are applicants for the invention or patent owners
- 40% of the established fee — if they are applicants for the utility model application or patent owners
By Ruslan Drobyazko, Partner, and Myroslava Koval-Lavok, Senior Associate, Baker McKenzie