The reform of the intellectual property industry in Ukraine has reached its final stage. The Government of Ukraine continues the implementation of new requirements of Ukrainian legislation in the field of intellectual property to harmonize national legislation with the EU legislation in accordance with the Ukraine-EU Association Agreement. In accordance with the Law of Ukraine “On Introducing Amendments to Certain Laws of Ukraine regarding the Establishment of the National Intellectual Property Authority” dated June 16, 2020, No. 703-IX, the National Intellectual Property Authority (NIPA) was established.
In accordance with the Decree of the Cabinet of Ministers of Ukraine dated October 28, 2022, No. 943-р on “Some issues of the National Intellectual Property Authority”, the Ukrainian National Office for Intellectual Property and Innovations is designated as an entity performing the functions of a National IP Authority since November 8, 2022, and the State enterprise “Ukrainian Intellectual property institute” (Ukrpatent) no longer acts as NIPA.
On November 8, 2022, the filing of materials (electronically and on paper) was unavailable. After November 9, 2022, only paper submission of materials (by mail or in person) is available. All submitted materials are dated, but the receipts with application numbers are not issued. The works on restoring the electronic submission are ongoing. The electronic submission is expected at the nearest time this November (probably after November 22, 2022).
The services for accelerating the examination of industrial property objects are suspended for the period of martial law.
As a result of the implementation of the intellectual property reform, the new body is to begin to operate as the NIPA in full. The legislation of Ukraine in the field of protection of intellectual property rights requires further improvement and more detailed regulation. By-laws should be amended to bring them into line with the laws.
For example, on October 5, 2022, Ukrainian IP professionals were discussing the problem of issuing certificates of supplementary protection in Ukraine. The problem is that patent owners who did not apply to the NIPA before the adoption of Law No. 816-IX unexpectedly (with the adoption of Law 816-IX) lost their rights to extend the term of validity of intellectual property rights in inventions, the use of which requires the permission of the competent authority (the right in a certificate of supplementary protection), since the Law shortened the terms for submitting a request for the extension of the patent term and introduced additional requirements related to obtaining the first permission of the competent authority in any country in the world. The transitional provisions of the law do not take into account the rights of such patent holders. It was agreed by the professional community that Ukrainian laws regarding SPC should be amended.
It is expected that the adoption of amendments to laws and new regulations will be accelerated after staring of Ukrainian National Office for Intellectual Property and Innovations creation adoption of new laws and regulations will be accelerated.
Terms and deadlines
It is worth noting that, accordingly, on April 1, 2022, the Ukrainian parliament adopted the Law of Ukraine No. 2174-IX “On Protection of Interests in the Field of Intellectual Property During Martial Law Imposed in Connection with the Armed Aggression of the Russian Federation against Ukraine” (effective from April 13, 2022). It provides for suspension of terms (for example, terms for payment of official fees, submission of documents) from February 24, 2022, until the end of martial law + 90 days. Currently, martial law in Ukraine is valid until February 19, 2023. Another extension of martial law in Ukraine is likely to be applied. The possibility of amending this Law is being discussed, but currently, there is no draft law available for analysis.
It is difficult to make a forecast regarding the terms of the adoption of new by-laws, but the Ministry of Economy of Ukraine and the Government pay priority attention to this issue.