Ukraine Creates New IPO

The law No. 703-IX on the creation of the national intellectual property office entered into force in Ukraine on October 14, 2020. The law establishes a two-level system of intellectual property protection in Ukraine and finalizes the institutional IP reform envisaged by the National Strategy for Sustainable Development “Ukraine 2020”.

The Old System

For a long time, Ukraine had a three-level state IP protection system comprising the Ministry of Economy, the State Service of Intellectual Property as the national IPO, and the State Enterprise “Ukrainian Intellectual Property Institute” (Ukrpatent) as the examining authority. The State Service of Intellectual Property ceased to exist in 2016 and its functions were transferred to the Ministry of Economy.

The New System

The new two-level system includes:

• The Ministry of Economy, which remains the primary supervisory authority responsible for the development and implementation of the state intellectual property policy; and
• The newly created National Intellectual Property Authority (NIPA), a non-profit state organization acting as the single national IPO and performing public functions in order to implement the state IP policy.

According to the explanatory note to the law, the NIPA should be established based on the Ukrpatent in order to preserve Ukrpatent’s existing knowledge and expertise.

The NIPA’s Functions

The NIPA, absorbing the functions of the Ukrpatent and certain functions of the Ministry of Economy, will be responsible for the following:

• Examination of applications for IP rights (patents, utility models, trademarks, industrial designs, topographies of integrated circuits, geographical indications and copyright);
• Registration of IP rights and issuance of letters patent and certificates;
• Invalidation and cancellation of IP registrations;
• Training, attestation, and registration of patent attorneys;
• Publication of official information, maintenance of IP rights registries, provision of excerpts and extracts, etc.; and
• Representation of Ukraine before regional and international organizations, particularly before the WIPO; the NIPA will perform functions of the International Searching Authority and the International Preliminary Examining Authority under the Patent Cooperation Treaty, and of the national Office under the Hague Agreement and the Madrid Agreement and Protocol.

The NIPA’s Structure

The head of the NIPA will be appointed by the Ministry of Economy based on the results of an open competition. The NIPA head may have three deputies, each also appointed by the Ministry.

The law also provides for the establishment of the NIPA’s Supervisory Board consisting of representatives appointed under a quota system by the Parliament, Ministry of Economy, Ministry of Education and Science, Ukrainian associations of patent attorneys and the National Academy of Sciences. The Board may also have two representatives from international or regional IP organizations, with the right to an advisory vote.

The NIPA will also include:

• The Chamber of Appeals, an independent collegial body which will consider objections to the NIPA’s decisions, applications for cancellation of IP rights and applications for recognition of trademarks as well-known in Ukraine; and
• Attestation and Appellate Commissions for patent attorney attestation matters.

Further regulations regarding these NIPA bodies should be adopted by January 14, 2021 (within six months from the law’s publication date).

The Current Situation with the NIPA and Its Formation

At the initiative of the Ministry of Economy and with the support of the Ukrainian Government, the Ukrpatent started performing the NIPA’s functions on October 14, 2020.

It was expected that the NIPA would be a new state organization, absorbing Ukrpatent’s functions along with several functions of the Ministry of Economy, which is why this de facto launch of the NIPA through Ukrpatent provoked a discussion among IP practitioners. Their main concern is that the new status of the Ukrpatent and its newly assigned functions are not explicitly outlined. The IP community also expects the establishment of the Chamber of Appeals as an integral part of the NIPA-Ukrpatent.

It is expected that the situation will be clarified by January 14, 2021, when further regulations should be adopted and all legal acts brought in line with the new law. After this date, the institutional reform of the Ukrainian state IP system may be considered as finalized.

Prepared by: Igor Alfiorov

For more information, please contact ukraine@petosevic.com.

Sources: Ukrainian Government portal, Ukrpatent website, American Chamber of Commerce in Ukraine website, Ukrainian Parliament website, Unian news website