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Patenting of Inventions

and Utility models

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The contemporary IP legal base in Ukraine was founded in 1992, when the state attained

sovereignty. At present we have an efficient system for protecting intellectual property,

based on several international conventions and agreements. The Ukrainian laws are currently

being harmonised with the laws of the European Union.

   Ukraine is one of the Contracting Parties of the following international acts concerning

inventions and utility:

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Paris Convention for the Protection of Industrial PropertyConvention Establishing the World Intellectual Property Organization (WIPO Convention)Patent Cooperation Treaty (PCT)Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent ProcedurePatent Law TreatyStrasbourg Agreement Concerning the International Patent Classification (IPC)

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ПОРЯДОК ОДЕРЖАННЯ ПАТЕНТУПОРЯДОК ОДЕРЖАННЯ ПАТЕНТУ  Особа, яка бажає одержати патент  Особа, яка бажає одержати патент

(деклараційний патент) і має на це право, подає (деклараційний патент) і має на це право, подає до Установи заявку.до Установи заявку.

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Foreign citizens and persons without citizenship have the same rights according to international conventions, Constitution of Ukraine and code of laws of Ukraine.

However, they should communicate with the Ukrainian Patent Office only through registered Patent Attorneys of

Ukraine.What can be an invention (utility model)?

   An invention (utility model) is the result of human intellectual activity in any field of technology. An invention

(utility model) can be:a device, substance, strain of microorganisms, plant and

animal cell culturea process or method

a new use for a known device, substance or process.

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In Ukraine the basic legal act concerning inventions and utility models is

The Law of Ukraine On the Protection of Rights to Inventions and Utility Models

.    A device as the object of invention is

characterised by constructive (arrangement) features, such as the position of the

elements and their interconnection, the shapes of the elements (parts, units), the relative size of the elements, the material from which the elements are produced. Devices include assemblies, machines,

mechanisms, apparatus, tools, etc.

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A substance as the object of invention is characterised by its components or chemical

composition. In this case we differentiate between substances obtained non-chemically and chemical compositions. The former are characterised by their ingredients and their ratio (percentage, proportion, weight) and in some cases by the structure of the

ingredients.

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They include: mixtures, compositions, metals, putties, structural substances, alloys, ceramics, glass, etc. A chemical compound is a substance obtained chemically, i.e. an individual chemical

substance formed by any electronic transformation of the molecule under various

types of influence (chemical, physical, mechanical, microbiological, heat, light

radiation, etc.).

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A process or method is a combination of actions performed with material objects and aimed to attain a certain technical result. E.g. manufacture, treatment,

recycling and quality control; transformation of substance, energy, data; measurement of parameters, diagnostics, treatments, etc.

   An invention “concerning the use of a known product or process” is characterised by discovering a new relationship of a known object with others, which

gives it new, unconventional uses..

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The essence of this invention type is to find an opportunity to use the known

properties of an object under new conditions, or to find new properties in a known object. In any of these cases

the known object should be used under new unconventional conditions (“new

application"). A tongue-in-cheek example could be the use of chicken

eggs as drilling agent

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The criteria your invention (utility model) should meet

   To receive legal protection, your invention should meet three criteria:

the invention should be novelthe invention should be unobvious (i.e. have

inventive level)the invention should be industrially applicable.   To receive legal protection, your utility model

should meet two criteria:the utility model should be novel

the utility model should be industrially applicable.

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What cannot be considered an invention (utility model)?

   The following objects cannot be considered an invention (utility model):

plant types and animal breedsbiological processes of plant and animal reproduction

which are not related to non-biological and microbiological processes

topographies of microcircuitsindustrial designs and styling

discoveries, scientific theories and mathematical methods

methods of intellectual, economic, organisational and business activity (planning, financing, supplying,

accounting, crediting, forecasting, rate setting, etc.)

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guidelines and rules for physical exercise, games, contests, auctions

projects and plans for installations, housing, compounds

symbolic notations (road signs, routes, codes, types, etc.), timetables, instructions

computer softwarethe form of presentation (e.g. in charts,

diagrams, graphs, with acoustic signals, words, visuals, books, audio and video discs).

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What paper proves your right to your invention (utility model)?

   The right of ownership, priority and authorship to an invention (utility model) is proved by a patent issued by the State Department of Intellectual

Property. In Ukraine, the duration of a patent for an invention is 20 years from the date of filing the application. The duration of a patent for a utility

model is 10 years. If the invention concerns medicines, pesticides and agrochemicals, the

duration of the patent can be extended up to 25 years.

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How long does it take to obtain a patent?The Patent Office views patent applications within

approximately 2 years (invention)approximately 8 months (utility model).

There are legal ways to accelerate the procedure.

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How do you file a patent application in Ukraine?There are two ways:

file an application for an invention or utility model according to the Paris Convention

file an international application (PCT application).To file an application for an invention or utility model

according to the Paris Convention, you should submit the following papers:

Full name/title of the applicant (the name and legal address for companies; the full name and place of residence for physical

persons)Information about the inventors (full name, place of residence)

Description of the invention or utility model, claims, drafts, abstractCertified copy of the priority document

Power of AttorneyUkrainian translations of the description, claims, drafts, abstract

(the translation is provided by our agency)

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The translations, copies of priority documents, power of attorney can be submitted to the Ukrainian Patent Office within

2 months after the filing date. The application for qualifying examination can be submitted within 3 years after the application was filed to the Ukrainian Patent Office.

To enter the national phase of PCT application we need the following documents:

Copy of the international publication with the international search report

Copy of the international preliminary examination report (if available)

Copies of the PCT/IB/332 form + PCT/IPEA/402 (if available)Ukrainian translations of the description, claims, drafts,

abstract (the translation is provided by our agency)Power of Attorney

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The translations, copies of priority documents, power of attorney can be

submitted to the Ukrainian Patent Office within 2 months after the filing date.

The application for qualifying examination can be submitted within 3 years after the application was filed to

the relevant office.