The act prioritises the areas of green energy, transport technology, nano- and biotechnology, as well as national security and defence.

 

On 25 October 2024, the Rules for drafting, filing and examining the patent application to invention and the patent application to utility models came into force. This act was approved by the Ministry of Economy’s order of 9 September 2024, registered under no. 23301.

 

A patent for an invention or utility model allows its owner to exercise exclusive property rights, such as the right to use it and to prohibit or permit others to use it.

 

What are the rules?

 

Among other things, the Rules provide for:

 

• the entitlement to file patent applications;

 

• the list of documents to include with the patent application and the procedure for its filing;

 

• features of the content of the patent application in various fields of technology;

 

• procedure for holding an examination of the patent application;

 

• peculiarities regarding secret and international patent applications; and

 

• actions that the applicants can take at their initiative concerning their patent applications.

 

The Rules also:

 

• lay out the provisions on new opportunities in accordance with the legislation, such as comments on the patentability of a claimed invention, objections to the patent application, and an information search at any person’s request;

 

• determine the procedures for a partial waiver of rights, issuing a supplementary protection certificate and examination of a utility model for compliance with the patentability criteria;

 

• determine the procedure for verifying whether the applicant or the applicant’s state is subject to sanctions and the applicable legal consequences of such sanctions.

 

Significance for Ukraine’s accession to the EU

 

The new Rules implement some of the European standards provided for by the Ukraine-EU Association Agreement.

 

Also, the Rules:

 

• comply with the provisions of the Patent Cooperation Treaty (PCT) and the Patent Law Treaty (PLT);

 

• implement certain provisions of the EU acquis. It is especially prominent in light of Ukraine’s European integration, as patenting the results of scientific and technical activity is an important stage on the path of innovative development and integration into a high-tech society.

 

The new Rules also provide for a so-called “sanctions clause.” During the examination of the patent applications, the respective applicants will be checked for the introduction of sanctions against them based on the information contained in the decisions of the National Security and Defence Council of Ukraine, put into effect by the Decrees of the President of Ukraine. The checks will be performed where established by law and approved by a resolution of the Verkhovna Rada of Ukraine.

 

If, at any stage of the application process, it is found that sanctions have been applied to the applicant or the applicant’s country, the application process will be carried out considering the type of sanctions applied. The IP Office will notify the applicant of this.

 

“The recently adopted Rules create new opportunities for inventors to obtain patents for their developments, especially in priority areas for our country. In addition, the detailing of the procedures for filing objections to patent applications, observations on the patentability of claimed inventions, as well as conducting an information search at any person’s request allows us to approach a fair balance between the rights of the owner and the needs of society, which is unimaginable without scientific and technological progress. It is also necessary to emphasise that the provisions of the Rules relating to biotechnological inventions have been approximated to EU acquis, which undoubtedly contributes to our path to European integration,” said Ms Olena Orliuk, Director of the Ukrainian IP Office.

 

For a quick reference:

 

An invention and utility model are new technical solutions that solve an existing problem in any technological field. To be patented, an invention and utility model must be novel and susceptible of an industrial application (i.e., they could be used in the industry or another field of activities). In addition, to be granted legal protection, an invention must involve an inventive step (i.e., it must not be obvious to a person skilled in the art – meaning, in a relevant field of technology).

 

Further readings:

 

Representatives of the IP Office joined the WIPO Working Group on Legal Development of the Hague System

 

IPR Dialogue 2024: Ukraine briefs the European Commission on the main achievements of the IP sphere