On February 1, 2018, a draft law aimed at improving the protection of inventions and utility models was submitted to the Ukrainian Parliament for approval. The law aims to harmonize current Ukrainian patent legislation with the following EU regulations:
- Directive 98/44/EC on the protection of biotechnological inventions;
- Regulation (EC) No 469/2009 concerning supplementary protection certificates for medical products; and
- Regulation (EC) No 1901/2006 on medicinal products for pediatric use.
The draft law also aims to implement the EU-Ukraine Association Agreement provisions relating to the protection of inventions and utility models.
Among significant changes, the draft law:
- Introduces definitions for terms “biological material”, “bulletin” and “state registration of the invention (utility model)”;
- Introduces an electronic filing system
- Eliminates “declarative patents” granted on the basis of a formal examination only and valid for six years;
- Defines actions that foreign applicants can take without involving local patent attorneys;
- Expands the list of inventions that can be protected; and
- Limits the utility model subject matter that can be protected to devices only, while the subject matter for inventions remains the same as under the current law, where the subject matter for both utility models and inventions can be a product (for instance a device, substance, microorganism strain, plant or animal cell culture) or a process or method, including a new use of a known product or process.
The draft law also introduces the possibility for any person to file:
- An opposition against a pending patent application within six months from the application publication date (a “pre-grant opposition”);
- A request for a patent search based on the set of claims, description and drawings available in a patent application, any time after the application publication date; and
- A request for a substantive examination of a granted utility model.
The draft law also introduces procedures for:
- Filing divisional applications;
- Granting supplementary protection certificates to pharmaceutical and plant protection products that are subject to an administrative authorization procedure; and
- Invalidating a patent as a result of an opposition against a granted patent or utility model (“post-grant opposition”).
If adopted, the law would help achieve European standards of protection for inventions and utility models and provide incentives for research and development. In terms of utility models, the possibility to request a substantive examination and the post-grant opposition procedure will prevent abuse of rights and provide a high level of protection for bona fide right holders.
Nataliya Zakharash, Patent Attorney, PETOŠEVIĆ Ukraine