Ukraine Drafts Amendments to Patent, Utility Model, Design and Trademark Legislation

After a previous draft law did not get support in the Ukrainian Parliament, in September 2018 the Ukrainian Ministry of Economic Development and Trade released a new draft law for public review – the Law amending certain legislative acts aiming to improve the protection and enforcement of rights relating to patents, utility models, designs and trademarks.

Besides introducing an electronic filing system for patents, utility models, trademarks and designs, one of the main goals of the draft law is to bring Ukrainian IP legislation in line with the EU-Ukraine Association Agreement and to tackle the negative effects of the existing simplified procedure for granting utility models.

According to the current legislation, a utility model does not need to involve an inventive step and is subject to only a formal examination, which means that it is not required to check if there are any prior rights that affect the new application. These provisions have led to an increasing number of highly similar utility models protecting inventions that are not new.

The draft law limits the utility model subject matter that can be protected to devices and apparatus only, excluding processes and methods, which can still be protected under the current legislation. The draft law also expands the list of inventions that cannot be patented, for instance computer programs.

Under the draft law any interested party can file an opposition against a pending patent application within six months from the application publication date (a pre-grant opposition). The draft law also introduces a post-grant opposition procedure for invalidating granted patents and utility models.

Regarding designs, the draft law introduces ‘individual character’ as an additional eligibility criterion, in line with the EU-Ukraine Association Agreement. It also introduces the possibility to challenge a design registration through administrative proceedings.

In terms of trademarks, the draft law aligns the grounds for refusal with the EU-Ukraine Association Agreement and specifies in greater detail the rules for national examination and protection of international registrations under the Madrid System.

It is expected to take the Ministry of Economic Development and Trade four to five months to collect comments and to get the approval of the Cabinet of Ministers to submit the draft law to the Parliament.

By: Yuriy Karlash and Marina Maltykh

For more information, please contact Yuriy Karlash or Marina Maltykh at our Ukraine office.