Amendments to the Ukrainian IP Laws
The Ukrainian Patent Office initiated several bills on July 21, 2020, introducing changes into the already existing trademark, industrial design and patent laws of Ukraine. The amended legislation took effect as of August 16, 2020. The alterations have been established with the view of aligning Ukrainian trademark law with that of the counterpart countries across the European Union, as well as refining patent and industrial design legislation.
Among the most considerable ones, the amendments to the trademark law involve the introduction of electronic registration procedure, a decision which will reduce the amount of paper applications over time, in line with this year's World IP Day theme of creating a greener future. Furthermore, applicants will henceforth be able to register collective trademarks, an option that was not previously available under the legislation. Amendments have also been made to the procedure of granting trademarks according to the Madrid Protocol.
The proceedings for trademark registration have been amended based on the EU directive, with grounds for refusal and invalidation of a mark altered. The procedure of opposition has also undergone significant changes. Previously, oppositions were to be filed not later than 5 days prior to the trademark decision, however, the amendments now allow for oppositions to be filed within 3 months from the publication date of a trademark.
The law in relation to industrial designs has been updated to also allow for filing electronic applications, thus contributing to a decrease in paper filings. Furthermore, from now on it will be possible to obtain legal protection for unregistered designs, as well as split applications.
The amended legislation has introduced a new criteria for protection of a design, now requiring it to possess individual character to be eligible for registration. The term of 6 months which previously constituted the novelty grace period has now been extended to 12 months.
Once design protection has been obtained, the title of protection will henceforth constitute a certificate, as opposed to the previous title of a patent. Additionally, the period of protection for a design will now be 25 years, previously being 15 years. A renewal request must be submitted every 5 years in order to secure the maximum period of protection.
The Ukrainian patent law has altered slightly due to the introduction of the bills, now also allowing the submission of electronic patent applications.
The most substantial amendment brought about by the updated legislation is the expansion of non-protectable items, including plant varieties and animal breeds, layouts of semiconductor products, surgical or therapeutic methods for treating humans or animals, diagnostic methods, cloning processes and new forms of drugs known from the prior art. In regard to the opposition proceedings, objections to a patent application may now be filed within 6 months from the publication date.
The substantial amendments to the intellectual property laws in Ukraine signify a new and increasingly harmonised IP field within the country. The efforts of international cooperation and development in Ukraine symbolise an ever advancing IP industry, and they are aimed at increasing filings and trust in the IP system in Ukraine.