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
