Patents and utility models in Ukraine

► What is patentable?

► What is required to file a patent/utility model application?

► What are the requirements for a power of attorney (POA)?

► Is the translation of the priority application required?

► What is the time limit for a PCT application to enter the national phase?

► What is required for a PCT application to enter the national phase?

► May the applicant amend the PCT application when entering national phase?

► When must a request for substantive examination be filed?

► Is it possible to reduce fees for examination?

► When may a divided application be filed?

► How long does it take to obtain a patent?

► How long does a patent/utility model protection last?

► When must annuities be paid?

► Is patent term extension available?

► Can a patent be restored after its cessation?

► What are the fees for obtaining and maintenance of a patent?

What is patentable?

Subject matter for a patent may be a product (device, chemical compound, composition of matter etc.) and a process. New use of a known product or process, and methods of medical diagnosis and treatment are excluded from protection. New forms of a known medicinal product, including salts, esters, ethers, complexes, combinations, and other derivatives, polymorphs, metabolites, pure form, particle size, isomers, may be considered as clearly arising from the prior art unless the new form of the known medicinal products differs significantly from the original medicinal products with respect to efficacy.

Subject matter for a utility model may be a device or a process. A utility model application must contain only one independent claim.

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What is required to file a patent/utility model application?

1. Filing instruction containing:
   – Title of the invention
   – Name(s) and address(es) of the applicant(s)
   – Name(s) and country(ies) of residence of the inventor(s)
   – Priority data (if any)
   – Type of protection requested (patent or utility model)

1. Description, claims, abstract and drawings (if any).
2. Power of attorney.
3. Certified copy of the priority document (within 3 months after filing date).

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► What are the requirements for a power of attorney (POA)?

The power of attorney must be simply signed. No notarization or legalization is required.

The original is required, but it is advisable to send first a scanned copy.

The power of attorney can be sent to the Patent Office after the action has already been taken by the patent attorney.

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Is the translation of the priority application required?

The full or partial translation of the priority application may be demanded at the stage of substantive examination of the application.

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What is the time limit for a PCT application to enter the national phase?

31 months from the earliest priority date.

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What is required for a PCT application to enter the national phase?

1. Filing instruction containing:
   – Number of the PCT application;
   – Title of the invention;
   – Name(s) and address(es) of the applicant(s);
   – Name(s) and country(ies) of residence of the inventor(s);
   – Priority data (if any);
   – Type of protection requested (patent or utility model).
2. Any amendments which have been filed during the international phase.
3. Description, claims, abstract, drawings and amendments (if any) in English when the international application is in Chinese, Japanese or Korean.
4. Power of attorney.

The following must be filed to the Patent Office not later than due date:

1. Request,
2. Translation of the PCT application (as amended during the international phase, if amended) into Ukrainian, or the request for two months extension of time to file the translation,
3. Filing fees.

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May the applicant amend the PCT application when entering national phase?

No. The PCT application must enter national phase only with amendments that were made during the international phase.

The application may be amended only after entering national phase.

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When must a request for substantive examination be filed?

The request for substantive examination must be filed within a period of three years from the filing date of the patent application (international filing date of the patent application based on the PCT application).

Utility model applications are not examined for compliance with the substantive requirements such as novelty and inventive step, therefore no request for examination is filed.

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Is it possible to reduce fees for examination?

Amount of fees for examination depends on number of independent claims. Therefore, before filing the request for examination applicant may amend the claims by reducing the number of independent claims.

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When may a divided application be filed?

A request to divide an application may be filed at any time between the application filing date and the final decision date.

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How long does it take to obtain a patent?

At least two years. Six months for utility model.

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How long does a patent/utility model protection last?

Subject to payment annuities, up to 20 years for patents and up to 10 years for utility models.

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When must annuities be paid?

Annuities are not paid for the years preceding the year in which the patent is registered.

The first annuity must be paid within 4 months from the registration date of the patent.

Annuity for each next year must be paid within period of 4 months before due date which is next anniversary of the filing date (international filing date). But when the year following the year in which the patent is registered begins earlier than 4 months from the date of registration, annuity for this year is paid together with the annuity for the year of registration.

Annuity may be paid within one year after due date with a 50% fine.

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Is patent term extension available?

Yes, but only for patents protecting active substance of medicinal product and plant or animal protection product.

The request for supplementary protection must be received by the Patent Office within six months from the date of registration of correspondent patent or from the date of issuance of the first marketing authorization (MA) in Ukraine (whichever is later). Wherein the request for issuance of the first MA in Ukraine must be received by the competent authority within one year after filing the first marketing authorization request in another country.

Patent Office issues Supplementary Protection Certificate (SPC). The term of the SPC depends on the date of issuance of the first MA in Ukraine and can be determined by the equation:

Term = date of 1st MA in Ukraine − date of filing of corresponding patent − 5 years, but the term can not be more than 5 years.

Fee for each year of extension is 34000 UAH = 1214 USD

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Can a patent be restored after its cessation?

Yes. A request for restoration of patent must be filed not later than 24 months from the date of cessation along with the prescribed fee

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What are the fees for obtaining and maintenance of a patent?

All fees are defined in hryvna – official currency of Ukraine (UAH). Only the registration fee for

non-residents is defined in USD. Basic fees are presented in the table below.

Columns 3 and 5 show the reduced fees (10% for patents and 20% for utility models) that are payable when the applicant(s)/patentee(s) is/are inventor(s).

Fees in USD presented in the table are defined at the rate: 1 USD = 28 UAH.

 

	Patents		Utility models
	Basic fee UAH/USD	10% fee UAH/USD	Basic fee UAH/USD	20% fee UAH/USD
1	2	3	4	5
Obtaining a patent
Filing fee for patent/utility model application (ordinary or based on a PCT application) a) with not more than 3 claims b) each further claim	place place 1280/46 128/5	place place 128/5 12,8/0,5	place place 920/69 192/7	place place 384/14 38,4/1
Substantive examination fee for  patent application a) with one independent claim b) each further independent claim	6000/214 6000/214	600/21 600/21	– –	– –
Publication fee for the patent with not more than 15 pages each further page	400/14 20/0,7	40/1 2/0,07	600/21 30/1,1	120/4 6/0,2
Registration fee	/100	/100	/100	/100
Annuities
1	600/21	60/2	900/32	180/6
2	600/21	60/2	900/32	180/6
3	800/29	80/3	1200/43	240/9
4	1100/39	110/4	1500/54	300/11
5	1200/43	120/4	1800/64	360/13
6	1400/50	140/5	2100/75	420/15
7	1600/57	160/8	2400/86	480/17
8	1800/64	180/6	2700/96	540/19
9	4200/150	420/15	6300/225	1260/45
10	4200/150	420/15	6300/225	1260/45
11	4200/150	420/15
12	4200/150	420/15
13	4200/150	420/15
14	4200/150	420/15
15	7600/271	760/27
16	7600/271	760/27
17	7600/271	760/27
18	7600/271	760/27
19	7600/271	760/27
20	7600/271	760/27
21   SPC	34000/1214	3400/121
22   SPC	34000/1214	3400/121
23   SPC	34000/1214	3400/121
24   SPC	34000/1214	3400/121
25   SPC	34000/1214	3400/121
Surcharge (12 months grace period)	50%	50%	50%	50%

Other official fees and our professional fees are presented in our Schedule of fees which we will send to you on request to mog@innotec.ua