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Ukraine: The Ministry of Economy Introduces New Rules for Drafting, Filing, and Examining Applications for Inventions and Utility Models — Challenges and Opportunities for Clients

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On 25 October 2024, new rules for the registration of inventions and utility models in Ukraine ("Rules") came into force. Pursuant to Order of the Ministry of Economy of Ukraine No. 23301 dated 9 September 2024, the Rules set out the requirements for the drafting, filing and examining of an invention and utility model applications.

In general, the procedure for registering inventions and utility models in Ukraine has not changed, but the Rules now encapsulate both the changes that have occurred in this area since the adoption of the previous version of the Rules for Registration of Inventions and Utility Models 2002, and the current business requirements designed to make the state registration system a convenient and effective tool for the protection and enforcement of patent rights.

The Rules specifically state the following:

  • The subjects eligible to submit applications;
  • The list of documents required for the submission of applications and the procedure for document submission;
  • Requirements for the content of the application, including in various industries;
  • Procedure for the examination of the application;
  • Peculiarities of registering secret inventions (utility models) and filing international applications;
  • Actions regarding the application that may be initiated by the applicant.

Key changes

  • Digitalization of certain processes, particularly the submission of an electronic application and introduction of a procedure for communication regarding the application;
  • Priority examination of applications in significant areas for Ukraine such as green energy, transportation technologies, nano- and biotechnology, and the defense sector;
  • Introduction of a check on the application of personal special economic and other restrictive measures/sanctions on the applicant (the so-called "Sanctions Clause");
  • The procedure for filing objections to the application;
  • Information search based on the claims of the filed application;
  • Issuance of a certificate of additional protection to the holder of a patent for an invention, the subject matter of which is an active pharmaceutical ingredient of a medicinal product, a process for obtaining a medicinal product or using a medicinal product, an animal protection product, or a plant protection product.

Overall, the Rules can be considered positive from the point of view of doing business in Ukraine. The Rules play an important role in Ukraine's European integration, as they provide for the implementation of certain requirements under the EU-Ukraine Association Agreement. Moreover, the Rules are also in line with the provisions of the Patent Cooperation Treaty (PCT) and the Patent Law Treaty (PLT).

Recommendations

Note that the new Rules entered into force on 25 October 2024. From this date, the registration of inventions and utility models is carried out in accordance with the new requirements.

By Oleksiy Stolyarenko​, Partner, and Alla Smorodyna, Associate, Baker Mckenzie

Ukraine Knowledge Partner

AVELLUM is a leading Ukrainian full service law firm with a key focus on Finance, Corporate, Dispute Resolution, Tax, and Antitrust.

Our aim is to be the firm of choice for large businesses and financial institutions in respect of their most important and challenging transactions.

We build lasting relationships with our clients and make them feel secure in new uncertain economic and legal realities.

We incorporate the most advanced Western legal techniques and practices into our work. By adding our first-hand knowledge, broad industry experience, and unparalleled level of service we deliver the best results to our clients in their business endeavours. Our partners are taking an active role in every transaction and ensure smooth teamwork.

AVELLUM is recognised as one of the leading law firms in Ukraine by various international and Ukrainian legal editions (Chambers, The Legal500, IFLR1000, The Ukrainian Law Firms, and others).

Firm's website: www.avellum.com

 

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