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HOW TO GET A PATENT ?

A person who wishes to obtain a patent for an invention and has the right (the applicant), applies for its issue to the State Enterprise “Ukrainian Institute of Industrial Property” (Ukrpatent), which carries out the acceptance, examination and examination of applications.

The application is submitted directly to Ukrpatent or sent to it at: Glazunova str., 1, Kyiv-42, 01601, Ukraine.

Requirements for the composition and registration of the application materials, the application defined in the “Rules for the compilation and submission of applications for invention and applications for utility model”, approved by the order of the Ministry of Education and Science of Ukraine dated January 22, 2001 No. 22, registered with the Ministry of Justice of Ukraine under No. 173 / 5364 of 27.02.2001 (hereinafter the Rules) are obligatory for the applicants. In the case of several applicants, one of them may be appointed by other applicants as a joint agent (joint representative).

On behalf of the applicant, an application may be filed by a representative on intellectual property matters (patent attorney), registered in accordance with the “Regulation on a representative on matters of intellectual property (patent attorney)”, approved by the Resolution of the Cabinet of Ministers of Ukraine dated August 10, 1994 No. 545 in the wording of the decree of the Cabinet of Ministers Ukraine dated August 27, 1997, No. 938 as amended by the resolution of the Cabinet of Ministers of Ukraine dated August 9, 2001, No. 996, or another authorized person.

Foreign and stateless persons who live or have a permanent place outside of Ukraine exercise their rights, in particular the right to apply, only through patent attorneys, unless otherwise provided by international agreements.

Thus, according to agreements on cooperation in the field of industrial property protection between the Government of Ukraine and the Governments of the Russian Federation and the Republic of Belarus, citizens and legal entities residing or having their permanent residence in these states have the right to apply directly to the Ukrpatent.

If the applicants include a natural person residing in Ukraine or a legal entity that has a permanent residence in the territory of Ukraine, the application may be filed without the involvement of a patent attorney provided that the address for correspondence in Ukraine is indicated.

The application is a collection of documents necessary for the issuance of a patent of Ukraine for an invention.

The application should relate to one or a group of inventions associated with a single inventive plan (requirement of uniqueness of the invention).

The application is in Ukrainian and must contain:

  • an application for the grant of a Ukrainian patent for an invention;
  • description of the invention;
  • formula of the invention;
  • drawings (if there is a link in the description);
  • abstract

 

The application form is given in the Appendix to the Regulations.

The application shall be accompanied by a document confirming the payment of the fee for filing the application. Such a document is a copy of the payment order for the transfer of the fee with the mark of the bank institution or a receipt (form number 04005). The timing and procedure for payment of fees for submitting an application, as well as their size, are specified in “On Approval of the Procedure for Payment of fees for actions related to the protection of rights to intellectual property objects”, approved by the Decree of the Cabinet of Ministers of Ukraine dated December 23, 2004 No. 1716 (hereinafter referred to as the Regulations).

The period of submission of the document for payment of the fee for filing an application may be extended, but not more than for 6 months (Part 11 of Article 12 of the Law). The request for the extension of the missing period together with the document for payment of the fee for extension of the term must reach the Ukrpatent no later than 6 months after the expiration of the term.

If the applicant, in accordance with the current legislation of Ukraine, has privileges to pay fees for activities related to the protection of rights to intellectual property, then the application is accompanied by a request for the grant of a privilege and a certified copy of the document confirming the right to the privilege. A copy shall be submitted to each application.

If the application is filed through a patent attorney or other trustee, then the application must be accompanied by a power of attorney issued by the applicant (a copy of the power of attorney) certifying his / her powers.

If the application is filed in accordance with the Paris Convention for the Protection of Industrial Property and the applicant wishes to avail himself of the law of the Convention priority, he must add the following documents to the application: a priority application, with reference to the filing date and the number of the previous application submitted to the relevant body of the State party to the Paris Convention; a copy of the previous application certified by the said authority. These documents must be submitted to Ukrpatent together with the materials of the application or not later than the term established by the Law.

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The procedure for examining an application for an invention is determined by the “Rules for consideration of an application for an invention and an application for a utility model” (hereinafter the Rules of Consideration).

Patent of Ukraine for an invention is issued on the basis of the results of a qualification examination of an application for an invention, which establishes the conformity of the invention to the conditions of patentability (novelty, inventive level, industrial suitability).

The invention is recognized as new if it is not part of the state of the art. Objects, which are part of the state of the art, should be taken into account only separately for the novelty of the invention. The level of technology includes all information that has become publicly available in the world before the filing date or, if claimed, prior to the date of its priority.

The level of technology also includes the content of any application for the grant of a patent in Ukraine (including an international application in which Ukraine is indicated) in the version, in which the application was filed initially, provided that the date of its submission (and if the priority is claimed, then the priority date) is preceded by the filing date of the application or, if the priority is claimed, the date of its priority and that it was published on or after that date.

The invention has an inventive step, if for a specialist, it is not obvious, that is, it does not follow clearly from the state of the art.

An invention (utility model) is considered to be industrially suitable if it can be used in industry or in another field of activity.

On the basis of a decision on granting a patent and in the presence of a document on payment of the state fee for its issuance, the state registration of a patent and the publication of information about its issue in the official bulletin is carried out.

The grant of a patent is made within a month after its state registration.

Terms and procedure for payment of fees for actions related to the protection of the rights to inventions, as well as the amounts of these fees are determined by the Regulation.

The Procedure of fees payment for actions related to the protection of rights to intellectual property objects

  1. This Procedure determines the terms and mechanism of fees payment for actions related to the protection of rights to intellectual property objects, as well as the amounts of said fees in accordance with the appendix.
  2. {Paragraph one of paragraph 2 is excluded on the basis of the Resolution of the Cabinet of Ministers No. 1148 (1148-2007-n) dated 19.09.2007}

{Paragraph two of paragraph 2 is excluded on the basis of the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

Individuals permanently residing outside of Ukraine and legal entities with locations outside of Ukraine may pay fees in hryvnias, euros or US dollars at the official rate of the National Bank on the day of payment of the fee. {Paragraph three of clause 2 as amended in accordance with the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

{Paragraph four of clause 2 is excluded on the basis of the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

The amount of the fee does not include the cost of services associated with its payment.

(Paragraph 2 in the wording of the CM Decree No. 754 (754-2005-n) of 18.08.2005)

  1. If the applicant (s) or owner (s) of the relevant patent or certificate of state registration of the topography of the integrated circuit are the inventor (s) of the invention or utility model or the author (s) of the industrial design or topography of the integrated circuit, related to the protection of rights to these objects, with the exception of fees for codes 13300, 13400, 22200, 22400, 32100 and 32300, shall be paid at the rate of 5 percent of the established amount.

In the case of further inclusion in the applicants of a person who is not an inventor or author, the additional fee paid for the last three years before such inclusion is paid to the full amount established in accordance with the annex to this Procedure.

In the case of further, for a period of five years from the date of state registration of a patent for an invention, utility model, industrial design or registration of the topography of an integral microcircuit of inclusion in the ownership of the corresponding patent or certificate of a person who is not an inventor or author, an additional payment of fees paid for the last three years before such inclusion, to the full size, established in accordance with the annex to this Procedure.

{Paragraph 3 as amended by the CM Decree No. 1148 (1148-2007-п) dated 19.09.2007}

3-1. In case when the applicant (applicants) or the owner (owners) of the patent for the invention (utility model) are non-profit institutions and organizations, each fee for actions related to the protection of the rights to the invention (utility model), except for fees for codes 13300, 13400 and 13500, is paid at the rate of 10 percent of the established size.

{The order was supplemented by item 3-1 in accordance with the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

  1. The fees are paid to the current account of the authorized MES of the examination institution, which is part of the state system of legal protection of intellectual property (hereinafter – the institution of expertise).

Information about the requisites of current accounts of the institution of examination is published in the official bulletin of the Ministry of Education and Science and in the newspaper Uriadovyi Kuriier.

Revenues from meetings have a specific purpose and are used exclusively for the development and functioning of the state system of legal protection of intellectual property in the procedure established by MES.

  1. When paying the fee in the relevant settlement document (on a paper or electronic medium), the following shall be indicated:
  • name of the payer;
  • the word ” fee “;

{Paragraph four of clause 5 is excluded on the basis of the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

  • Type of collection (abbreviated) and its code, determined in accordance with the annex to this Procedure; {Paragraph five of clause 5 as amended in accordance with the CM Decree No. 1148 (1148-2007-п) dated 19.09.2007}
  • the amount of the fee in the amount established in accordance with the annex to this Procedure;
  • the application number for the relevant intellectual property object provided by the examination institution, or, if this number is not notified to the applicant, the serial number of the application identified by the applicant at the time of submission of the application. In the case where the payment of the fee relates to the issued patent or certificate, instead of the application number, the number of the corresponding patent or certificate is indicated;
  • in the case where the fee is paid on behalf of an individual who is permanently residing outside Ukraine, or a legal entity with a location outside Ukraine, – the code of his country. {Paragraph eight of clause 5 as amended by the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

The document on payment of the fee is an extract from the personal bank account of the institution of examination.

In the absence of an extract from a personal bank account, the indication of the application number for the relevant intellectual property object by the document on payment of the fee is a settlement document on a paper medium (payment order, cash receipt, receipt, etc.) contained in the application materials and meets the requirements established this item.

The payer has the right to pay several fees by drawing up one settlement document.

{Paragraph 5 as amended by the CM Decree No. 1148

(1148-2007-n) dated 19.09.2007}

  1. The date of receipt of the document of payment of the fee is the date of entry of the amount of the fee into the current account of the examination institution. In the case of enrollment of the amount of the fee before the receipt of the corresponding application for the object of intellectual property, a petition, objection, etc. (hereinafter – the application) to the examination institution, then the date of receipt of the document on the fee payment is considered the date of receipt of this application to the examination institution, when it arrived:
  2. a) within three months from the date of deduction of the amount of the fee, provided that during this period the size of the corresponding fee remained unchanged;
  3. b) within one month from the date of entry into force of the amended fee.

If the date of entry of the fee to the current account of the examination institution is later than the legal deadline for payment, then the date of receipt of the document for payment of the fee is the date indicated in the settlement document on a paper medium that meets the requirements specified in paragraph 5 of this Procedure.

  1. The paid the fee is subject to return:

1) completely in case of:

  •  payment of the fee without filing the application within the timeframes established by paragraph 6 of this Procedure;
  •  declaring the application to be considered unspecified or not subject to review;
  •  payment of the fee after the expiration of the statutory term;
  •  accepting the Appeals Chamber’s objection in whole or in part;

2) partially in the event of payment of a fee in excess of that provided for by this Procedure;

3) in other cases, established by the legislation.

In the event of the payment of a taxpayer’s termination due to the activities stipulated by the law related to the protection of the rights to the object of intellectual property, in particular, if the application for the corresponding object of intellectual property is recognized as withdrawn, part or all of the collection of the return is not subject to .

The fee is returned upon submission of the relevant application for returning to the examination institution within three years from the date of the payment of the fee to the current account of this institution, taking into account the reimbursement of expenses incurred by the examination institution in connection with its return. The return of the fee for filing an objection to the Appeals Chamber shall be made without refunding the expenses of the examination institution for its return.

The funds recognized as being recoverable, at the request of the payer, may be redeemed by the examination institution at the expense of the corresponding fee established in accordance with the annex to this Procedure, which the payer must make for the commission of another action related to the protection of the rights to the object Intellectual Property, taking into account the reimbursement of expenses for the recalculation of these funds.

{Paragraph 7 as amended by the CM Decree No. 1148 (1148-2007-n) dated 19.09.2007}

  1. Verification of documents on payment of fees for compliance with the requirements established by this Procedure, as well as the registration of funds, is carried out by the institution of expertise.
  2. Privileges for payment of fees are provided in accordance with the law.
  3. Explanations on the application of this Procedure are provided by the Ministry of Education and Science.

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STATE REGISTRATION OF AUTHOR’S RIGHTS AND CONTRACTS COVERED BY THE AUTHOR’S RIGHT ON WORK

State registration of copyright in Ukraine is carried out in accordance with the Law of Ukraine “On Copyright and Related Rights” of December 23, 1993 No. 3792-12 (hereinafter – the Law) and the Resolution of the Cabinet of Ministers of Ukraine dated December 27, 2001 No. 1756 “On State registration of copyright and contracts relating to the author’s right to work “(hereinafter – the Order).

Applications for state registration are submitted to the following address: street. Uritskogo, 45, Kyiv-35, SME, 03680, State Department of Intellectual Property. Applications are accepted on working days from 9.30 to 12.30. Telephone: (044) 498-37-08, (09, 10).

Types of registrations:

Registration of the copyright to the work

  • Registration of the copyright to the work
  • Registration of copyright for a work product

Registration of contracts concerning the rights of the author to the work

  • Registration of a contract on the transfer (alienation) of property rights to a work
  • Registration of the agreement on the transfer of the exclusive right to use the work
  • Registration of the contract on the transfer of the non-exclusive right to use the work

Documents required for the registration of copyright and contracts relating to the author’s right to work (provided in a complete paper folder!):

An application for the registration of a copyright to a work must contain:

  • an application form (filled in the Ukrainian language, in accordance with the established form). Note: objects of copyright in paragraph 3 of the application are indicated in accordance with Article 8 of the Law;
  • a copy of the work (in material form, specified in paragraphs 3, 15 of the Procedure);
  • a document certifying the fact and date of publication of the work (if any);
  • a document or a copy of the document for payment for the preparation for the registration of copyright, or a copy of the document confirming the availability of benefits;
  • a document on payment of fees for registration and issuance of a certificate or a copy of a document confirming the availability of benefits;
  • power of attorney, issued in the established manner, if the application is filed by a trustee.

An application for the registration of copyright to a work product, in addition to the materials listed above, must also contain a document confirming who owns the property rights of intellectual property to an object created in connection with the implementation of the employment contract (in accordance with Article 429 of the Civil Code Code of Ukraine).

An application for registration of a contract concerning the author’s right to work must contain:

  • an application form (filled in the Ukrainian language, in accordance with the established form). Note: objects of copyright in paragraph 3 of the application are indicated in accordance with Article 8 of the Law;
  • copy of the work (in the form specified in paragraphs 3, 15 of the Procedure);
  • a copy of the copyright agreement certifying the transfer (alienation) of the property right to the work (in accordance with Article 31 of the Law), or a copy of the copyright agreement on the transfer of the right to use the work (in accordance with Article 32, 33 of the Law);
  • a document confirming the existence of transferable property rights (if necessary);
  • a document or a copy of the document on payment of the fee for preparation for the registration of the contract;
  • power of attorney, issued in the established manner, if the application is filed by a trustee.

The processing and storage of the original and a copy of an audiovisual work requiring special storage conditions is provided by the Ministry of Culture and Tourism of Ukraine on the basis of the State Enterprise “National Center of Oleksandr Dovzhenko” (Kyiv, Peremohy Avenue, 44, 03057). The procedure for submitting the said work to the state enterprise “National Center of Oleksandr Dovzhenko” is determined by the Ministry of Culture and Tourism of Ukraine.

Application forms

  • about the transfer (alienation) of property rights to a work
  • about the transfer of exclusive / non-exclusive right to use the work
  • about the registration of the copyright to the work
  • about the registration of copyright for a work product

Payment of fees for state registration

Payment of fees is through banking institutions.

Each type of payment is paid separately, with mandatory indication of the purpose of the payment and the name, full name of the payer or full name of the payer.

Details of the payment

Recipient of UDC in Shevchenkivskyi district of Kyiv

ZKPO 26077968

MFO 820019

Bank of State Tax Administration of Ukraine in Kyiv

Account 31211217700011

Purpose of payment 24060200; EDRPOU code (for legal entities) or identification

code (for individuals); charge for:

Formulation of the purpose of the payment

for preparation for state registration of copyright from individuals 55.25 UAH.

for the registration and issuance of a certificate of registration of copyright to a work from individuals 8.5 UAH.

for preparation for state registration of copyright from legal entities, UAH 161.5.

for the registration and issuance of a certificate of registration of copyright to a work from legal entities 25.5 UAH.

for the preparation for state registration of contracts concerning the rights of the author to the work, from individuals 72.25 UAH

for the preparation for state registration of contracts concerning the rights of the author to the work, from legal entities, 195.5 UAH.

Legislation

Law of Ukraine “On Copyright and Related Rights” of December 23, 1993 No. 3792-XII

The Civil Code of Ukraine (chapters 35, 36, 75)

Resolution of the Cabinet of Ministers of Ukraine dated December 27, 2001 No. 1756 “On state registration of copyright and treaties concerning the author’s right to work”

Examination of application, issue of certificates and decisions

Copyright registration

Consideration of the application and the decision to register the copyright of the work or the refusal of registration is made within a month from the date of receipt of properly completed application documents.

If the application meets the requirements of Sections II and III of the Procedure, a decision is made to register the copyright to the work. Otherwise, a reasoned decision to refuse registration is sent to the applicant. At the same time, the documents submitted by the applicant for registration, he does not return.

On the basis of the decision on the registration of copyright in the work and in the presence of a document on payment of the fee for the registration and issuance of the certificate information on the registration of copyright to the work are recorded in the State Register of certificates of registration of copyright to the work. The date of registration of the copyright to the work is the date of entry of the information on registration in the State Register of certificates of registration of copyright to the work.

The issuance of the certificate is carried out by the State Department of Intellectual Property of the Ministry of Education and Science of Ukraine within a month from the date of registration. The certificate is issued directly to the applicant, his creditor or sent to the address indicated in the application.

Registration of contracts concerning the rights of the author to the work

Consideration of the application and the decision on registration of the contract, which concerns the author’s rights to the work, is carried out within a month from the date of receipt of the properly executed documents of the application.

If the application meets the requirements, the decision on registration of the contract is taken. Otherwise, the applicant receives a reasoned decision refusing registration.
On the basis of the decision on registration of the contract, information about its registration shall be entered in the State Register of treaties concerning the rights of the author to the work.

The date of registration of the contract is the date of entry of the registration data into the State Register of contracts.

The issuance of the decision on registration of the contract is carried out by the State Department of Intellectual Property of the Ministry of Education and Science of Ukraine within a month from the date of state registration. The decision is issued directly to the applicant, his authorized representative, or sent to the address indicated in the application.

Publication of the details of the registration of copyright and agreements concerning the author’s right to the work.

The information on the registration of copyright and contracts concerning the author’s right to the work is published in the catalog of all state registration of copyright of the State Department of Intellectual Property of the Ministry of Education and Science of Ukraine “State Registration Catalog” and in the official bulletin of the State Department of Intellectual Property of the Ministry of Education and Science of Ukraine “Copyright and Related Rights”.