Recent changes in the work of Ukrainian intellectual property institute (Ukrpatent), which performs the functions of the National Intellectual Property Office (NIPO).
Ukrpatent continues its work in normal mode but with some peculiarities caused by wartime conditions:
Filing the documents in hard copy is temporarily ceased.
The copies of power of attorney, assignment agreements, other attached documents must be signed by QES.
Ukrpatent will send the documents via electronic systems or by email.
Work on examination of applications for inventions, utility models, and layout designs, trademarks, industrial designs and geographical Indications of Ukrpatent continues in normal mode.
Suspension and extension of terms
On 13.04.2022 was published the Law of Ukraine "On Protection of Persons' Interests in Intellectual Property during the Martial Law, imposed in connection with the military aggression of the Russian Federation against Ukraine", which provides for the suspension of the expiration of the protection and acquisition of intellectual property rights provided by special legal acts on the protection of specific intellectual property objects.
1) The law provides for the suspension, including but not limited to the following terms:
· To file an opposition to the application or to the effect of the international registration.
· To appeal the decisions of the NIPO on the application to the court or the Appeals Chamber.
· To file an application for the invalidation of the right to an invention.
· During which the missed deadlines may be renewed,
except for the terms necessary for acquiring the rights to plant varieties.
2) Expiration of these terms continues (taking into account the time that elapsed before their suspension) from the day following the day of termination or cancellation of martial law.
3) Validity of the certificates and patents shall not be suspended.
4) In case of expiration of intellectual property rights during martial law, starting from 24.02.2022, they remain valid until the day following the day of cancellation of martial law.
5) If the validity of the trademark certificate, the period of extension or maintenance of the intellectual property rights falls on 24.02.2022 or another date during martial law, this period continues for 90 days from the day following the day of termination or cancellation of martial law.
Missing of the time-limits
The imposition of martial law in Ukraine does not relieve the rightsholders and applicants from executing the obligations prescribed by law within the established time frames. At the same time, by its notification dated 21 March 2022 Ukrpatent informs that if the deadlines related to filing of applications on registration of IP objects are missed, it is possible to renew them if an applicant/rightsholder: (1) files an appropriate application for renewal and explains the reasons for missing the term; (2) relies on the letter of the Ukrainian Chamber of Commerce and Industry (UCCI) dated 2 December 1997 No. 671/97-VR on existence of force majeure circumstances.
In the letter in question, UCCI confirms that the imposition of martial law in Ukraine is extraordinary, unavoidable and objective circumstances for business entities and / or individuals inter alia under obligations the fulfillment of which occurred in accordance with legislative or other regulations and the fulfillment of which became impossible in the set deadline due to the occurrence of such force majeure circumstances (force majeure).
The applicants are obliged to fulfill their obligations prescribed by law after the martial law is canceled. It is important to bear in mind that Ukrpatent is precluded from amending IP legislation even in wartime. It is only empowered to provide an explanation and to inform applicants/rightsholders on their possible actions. Consequently, the notification dated 21 March 2022 is solely of informative nature.
Wartime activity of the Appeals Chamber of NIPO
Copyright registration in wartime
Signing the documents by QES is available via the website czo.gov.ua/. Ukrpatent published the Instructions for signing documents related to the application for copyright registration and agreements related to the author's right of work.
Applications, related documents for copyright registration and agreements concerning the author's right to a work shall be sent in one complete item. The documents in one email must relate to one specific application.
The application and a copy of the work in one email should not exceed 250 MB. If the copy of the work exceeds 250 MB, the application may be sent by several emails, attaching to each of them one of the parts of the copy of the work, which divided into parts of the ZIP-archive.
The applications on copyright registration, agreements concerning the author's right to the work, copies of the work, power of attorney shall be filed in pdf format.
Copies of works submitted as part of applications for copyright registration and agreements relating to the author's right to a work shall be submitted in the following formats.
European Union Intellectual Property Office (EUIPO)
The EUIPO in its letter from 9 March 2022 informed the following:
The EUIPO has issued a one-month extension of time limits from 24 February 2022 for all parties in proceedings before the Office having their residence or registered office in Ukraine and will review the need for further extensions and additional measures.
The already identified entries in EUIPO's EUTM and RCD registers indicating the region of Crimea, Donetsk and Luhansk with the State identified as being Russia instead of Ukraine will systematically be amended.
The EUIPO will discontinue collaboration held in the framework of the Memorandum of Understanding signed in July 2017 with the Federal Service for Intellectual Property of the Ministry of Economic Development of the Russian Federation (Rospatent) and suspend collaboration held in the framework of the Memorandum of Understanding signed in March 2019 with Eurasian Patent Organization (EAPO), intergovernmental organization with the participation of Russia and the Republic of Belarus.
By Daria Ganzienko, Senior Associate, Head of IP, Integrites